Vimal Jain, Trading As Vimal Agency vs Singh Mehandi Industries Rep. By Its Sole Proprietor Manohar Singh And The Deputy Registrar Of Trade Marks

S. Usha, J

The instant appeal arises out of the order passed by the Deputy Registrar of Trade marks on 04.07.2007 allowing the opposition No. MAS 190467

and dismissing application No. 1100719 in class 3.

2 . The appellant herein filed on 30.04.2002 an application for registration of the trade mark 'Sher Singh' under application No. 1100719 in class 3 in

respect of ""Cosmetics including mehandi"" claiming user since 01.04.1994. The said application was advertised before acceptance for registration in

Trade Marks Journal No. 1327 Suppl (2) dated 10.01.2005 at page No. 126.

The first respondent herein filed the notice of opposition on 21.04.2005 opposing the registration on the ground that the opponents are well known

manufacturers and marketers of the mehandi products for several years and the public may associate the applicant's trade mark with that of the

opponents; that the opponents have been using several other trade marks also and have filed application for registration; that by long use and publicity

the opponent's goods bearing the impugned trade has acquired distinctiveness; that the rival trade marks are deceptively similar and the adoption as

such is with the malafide intention to misappropriate and trade upon the goodwill earned by the opponents and that the registration of the impugned

trade mark would be contrary to the provisions of Sections 9(1)(a), 9(2) (a), 11(1), 11(3) (a), 1 (10)(ii), 12 and 18 (1) of the Trade Marks Act, 1999

(hereinafter referred to as the Act). The appellant herein filed their counter statement denying the various material allegations made in the notice of

opposition.

4 . On completion of the formal procedures, the learned Deputy Registrar of Trade Marks heard the arguments of both the counsel and passed the

impugned order - The impugned trade mark is prohibited from registration as per the provisions of Section 9 of the Act as the applicants i.e. the

appellant is the subsequent user of the impugned trade mark. The applicant's trade mark is prohibited registration under Sections 11(1) and 11(3) of

the Act as the marks are likely to deceive or cause confusion among the public. The trade mark was not registrable under Section 12 of the Act as the

opponents had extensive sale and were prior in use of the trade mark. The applicant's adoption is dishonest and fraudulent and are subsequent

adopters and users of the trade mark and are not, therefore the proprietor of the impugned trade mark and the registration is not possible as per the

provisions of Section 18(1) of the Act and to maintain the purity of the Register, the Registrar had refused registration as the applicants have failed to

discharge the onus laid down on them to prove their proprietorship.

Aggrieved by the said order, the appellant is before us on appeal. The brief facts of the case are: The appellant is engaged in the business of

manufacturing and marketing of 'Mehandi Cones' for the past several years. The appellant adopted the trade mark 'Sher Singh' with a distinct label

accompanied with the device of a 'Sher' a lion on 01.04.1994. The trade mark is being used continuously, extensively and uninterruptedly. The

appellant's trade mark is unduly used and the public associate the said trade mark with the appellant only and with none else.

The appellant filed the appeal on the grounds that the respondent No. 2 erred in holding that the registration would be contrary to the provisions of

Sections 9(1) (a), 9(2) (a), 11(1), 11(3) (a), 11(10) (ii), 12 and 18(1) of the Act; that the respondent No. 2 erred in observing that documents filed are

fabricated and not genuine; that the respondent No. 1 is the subsequent user and is in the market since 1997; that the respondent No. 2 failed to

appreciate the documents filed by the appellant; the respondent No. 2 erred in holding that the appellant's trade mark did not satisfy the requirements

of registration under Sections 11(1) and 11(3) (a) of the Act; the respondent No. 2 failed to appreciate that the appellant is entitled for registration as

per the provisions of Section 12 of the Act; the appellant's adoption is honest and bonafide and are the proprietors of the trade mark within the

meaning of Section 18 of the Act.

7 . The respondent No. 1 filed his counter statement denying all the material allegations made in the grounds of appeal. The respondent No. 1 stated

that they are established manufacturers and merchants of Mehandi Cones since 1997 under their house mark 'Singh' and had been using the same

continuously and extensively. They are registered proprietors of various trade marks and have also obtained copyright registration. They were vigilant

in taking action against unscrupulous persons for safeguarding their trade mark. The registration is based under the provisions of the Act and

therefore, the Registrar was right in holding that the application be refused registration.

The matter came up for hearing on 21.7.2009. Learned Counsel Shri Ashok Kumar J Daga appeared for the appellant and learned Counsel Shri

K.S. Devaraj appeared for the respondent No. 1.

9 . Learned Counsel for the appellant submitted that the application for registration was applied for a label mark on 30.04.2002 claiming user since

01.04.1994 whereas the respondent No. 1 herein, the opponent in the opposition proceedings has nowhere mentioned the date of user. The counsel

further submitted that the appellant had clearly mentioned in the Form TM-6 the counter statement about the date of user of the appellant's trade

mark. The counsel also submitted that they had filed the latest bills of the year 2003 and also advertisements pertaining to the year 2002.

The counsel submitted that the word 'Singh' is common and has become public juris. The rival marks are totally different and there was no

possibility of confusion. The registration of the impugned trade mark was not in contravention of the provisions of the Act and hence the registration

ought to be granted.

11 . The learned Counsel for respondent No. 2 mainly contended that though the appellant claims it to be a whole label mark, the word Singh is

prominent with 'Singh' as a pending mark and the letters TM within a circle and drew our attention to the trade marks journal marked as Exhibit A-1

filed along with the memo of grounds of appeal. They had spent a huge amount towards promotion of sales. The products bearing the impugned trade

mark had acquired a wide reputation among the public. The counsel also submitted and pointed out that though the appellant has claimed user since

1994 and have also furnished sales figures since 1994, the appellant has filed documents only from the year 2003.

12 . The counsel also pointed out to some discrepancies in the bills filed by the appellant. The appellant has not proved his user since 1994. The

counsel drew our attention to the evidence in support of application under Rule 54 filed by the appellant before the Registrar at para 16 wherein the

appellant had stated that he is a small businessman and though he has put in efforts to promote the business, the growth has not been phenomenal and

submitted that when the appellant's sale was less and thus the mark could not have acquired reputation in the market.

1 3 . Learned Counsel for the appellant in rejoinder to the reply made by the respondent No. 1 submitted that the respondent No. 1 had not filed any

invoices to prove his sales except for the registration certificate.

We have carefully considered the arguments of both the counsel and have gone through the records placed before us.

On perusal of the records, we find that the appellant though claims to have used the impugned trade mark since 1994, no documentary evidence

placed before us except a bill dated 2003. A mark to be registered should have acquired distinctiveness either by use or if it is a well known mark. The

impugned trade mark should also not be of such a nature that it would cause confusion or deception among the public. In determining whether a mark

is so capable of distinguishing, we must consider both inherent capability to distinguish and factual capability to distinguish. A mark is considered as not

inherently capable of distinguishing which has a direct reference to the character or quality of the goods. The trade mark is factually capable of

distinguishing by virtue of use of the mark or by other circumstances. Apart from use, there must be something in the mark itself to make a mark

capable to distinguishing the particular goods.

1 6 . An application to register a trade mark which is likely to deceive or cause confusion has to be refused registration even if the mark might not

have any resemblance with the other trade mark. In deciding an issue of confusion or deception the interest of the public should also be considered.

While considering so, the nature of goods, the class of consumers are to be taken into account. In the instant case, it is cosmetic products namely

Mehandi which is being purchases by illiterate persons too. From the records, it is seen that the respondent No. 1 has been using the mark 'Singh' with

some word as a prefix or suffix since the year 1997. While looking at the impugned application for registration which is a label mark, though the

appellant claims that the trade to be 'Sher Singh', the word 'Sher' is not prominently seen whereas the word 'Singh' is prominently seen and it goes

without saying that the appellant is only trying to trade on the reputation of respondent No. 1 which cannot be allowed. Even following the principle

that the mark is to be compared as a whole, the impugned label mark when looked into has the word 'Singh' prominently seen. While comparing the

marks it is not correct to take a part of the word and compare it with the part of the other word. In Corn Products v. Shangrila Food Products Ltd.

AIR 1960 SC 142 the Suprem Court held that, "" it is well recognized that in deciding a question of similarity between two marks, the marks have to be

considered as a whole.... We have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man

the overall structural and phonetic similarity and the similarity of idea in the two marks is reasonably likely to cause a confusion between them.

The greatest risk of confusion would be there when the marks are identical. Here, in the instant case, the marks are identical and the goods are

also identical. The possibility of confusion is not likely but certain. The registration of the impugned trade mark is, therefore, hit by the provisions of

Section 9 and 11 of the Act.

Under Section 12 of the Act, the onus of establishing a case for registration of a mark is on the applicant for registration, on whom the burden lies

to prove honesty of adoption and use of the mark. Once the honesty of use of the mark has been established the fact of knowledge loses much of its

significance. When the applicant was aware of the other similar marks, the adoption by the applicant cannot be considered to be honest adoption. In

the instant case, the appellant has filed the application in the year 2002 claiming user since 1994, but has produced documents only of the user from

2003 which is subsequent to that of respondent No. 1 who claims to have been using the same since 1997. The question of volume of use is always a

relevant question in considering ""honest concurrent user.

The appellant has also not given the reason for the adoption of the mark. We find force in the arguments of the respondent No. 1 that the appellant

does not belong to Singh community and his name is also not Singh whereas they are only Jains and to adopt 'Singh' is only to enrich themselves on the

reputation earned by respondent No. 1

We are of the opinion that ""triple identity situation"" arises in this case. Here we find that the marks are identical, goods are the same and the area

of sale is also the same where both the parties are form the same place. In such circumstances registration under Section 12 of the Act cannot be

allowed.

2 1 . In our opinion, the Registrar has rightly exercised the discretion as per the provisions of Section 18 of the Act in passing the impugned order. We,

therefore, find no merits in the appeal and hence the same is dismissed with no costs.