Tuesday, 16 May 2017

Leading judgment on doctrine of honest concurrent use of Trademark

Interesting question, which has arisen incidentally, is how far the length of the concurrent, continuous and uninterrupted user would be sufficient to allow the Assistant Registrar to register the trade mark of the applicant. In this regard, following five points are required to be seen:
"(1)The extent of use in time and quantity and the area of the trade;
(2)the degree of confusion likely to ensue from the resemblance of the marks which is to a large extent indicative of the measure of public inconvenience;
(3)the honesty of the concurrent use;
(4)whether any instances of confusion have in fact been proved; and 
(5)the relative inconvenience which would be caused if the mark were registered." (para 17)
Delhi High Court
S. Mehar Singh vs M.L. Gupta & Co. on 30 May, 1997
Equivalent citations: 1997 IVAD Delhi 542, AIR 1998 Delhi 64, 1997 (2) ARBLR 250 Delhi, 67 (1997) DLT 759, 1997 (42) DRJ 403

Bench: S Kapoor

(1) This is an appeal under Section 109 of the Trade and Merchandise Marks Act, 1958 (hereinafter called the "Act" for short). S. Mehar Singh, trading as Motion Levers (India), 180-B, Industrial Area, Ludhiana made an application No. 271631 to register a trade mark consisting of the letters `MLI' in a geometrical device in Class 7 in respect of parts of sewing machines excepting needless for sale in States of Punjab, Maharastra, Tamil Nadu, Andhra Pradesh and Union Territory of Delhi.
(2) Objections were filed by Madan Lal Gupta and Co., comprising of three partners, viz, Madan Lal Gupta, Ramesh Kumar Gupta and Ravinder Nath, 99, Industrial Area-A, Ludhiana-3 on 5th April, 1975 under Section 21(1) of the Act claiming that they are the proprietors of the mark `ML' label in respect of sewing machine parts registered under No. 230568-B and mark an respect of goods of the same description will be contrary to Section 12(3) of the Act by reason of user and reputation of the mark of the appellants, the use of the applicant's mark is likely to deceive and cause confusion. The applicant's mark is neither distinctive for capable of being distinct. The applicant is neither proprietor of the mark nor the concurrent user claimed by the applicant is honest, nor he is entitled to seek protection under the Act.
(3) The applicants have denied the aforesaid allegations in the notice of opposition. The applicant's claim that the opponents have acquiesced in the use of trade mark `MLI' by him since 1968 as the applicant advertised his mark in the same journal in which the opponent's mark was advertised. The opponents were buying sewing machines bearing the same mark from the applicant in the years 1970, 1971 and 1972. Consequently, the opponents are estopped from challenging the applicant's registration and ass such applicant's mark registerable under Section 12(3) the Act.
(4) The learned Assistant Registrar of trade marks rejected the application No. 271631 and allowed the opposition with cost.
(5) Feeling aggrieved, the appellant has filed present appeal inter alia on the ground that there is no confusion or deceptive similarity in the two trade marks, specially on the ground of use of geometrical device and a circle in black background in the other and a different get up and overall design of the marks; the respondents have allowed the appellant to grow in trade despite the open honest, concurrent user along with the fact that `MLI' was adopted by the appellant bona fide as an abbreviation of their trading style Motion Lever(India). It is also claimed that `MLI', i.e., "Motion Levers(India)" has acquired distinction of the products of the appellants widely marketed and advertised in the States of Punjab, Maharashtra, Tamil Nadu, Andhra Pradesh, Union Territory of Delhi and other parts of the country. It is the house name of appellant. The appellants have advertised the mark in large scale. The opponents purchased goods bearing the same Trade Mark from the appellant in substantial quantities as early as 1970 and onwards. The opposition could not succeed on account of acquiescence, waiver and estopples. It is further contended that learned Assistant Registrar has misapplied the judgment in The Commission of Income-Tax, Madras Vs. Ajax Products Ltd. Air 1965 Sc 1359. Rule 54 of the Trade and Merchandise Marks Rules, 1959 (hereinafter called the "Rules" for short) being directory only non-delivery of the copies of the evidence laid at the pre-advertisement stage could be remedied.
(6) I have thoroughly gone through the record. The question arising for consideration relates to the question of causing confusion and/or using the deceptively similar mark.
(7) One of the arguments raised before the learned Assistant Registrar was the question of res judicata in view of the decision in rectification No. DEL-173 dated 23rd September, 1975 in respect of a registered trade mark No. 230568-B of the opponents. Rectification was sought on the ground that the proprietors/opponents obtained registration by making several mis-statements regarding the use of their mark with the intention to get improper advantage. It may be mentioned that the counsel for the applicants/appellants Sh. B.S. Narain on 23rd September, 1975 withdrew their application for rectification as it was not properly instituted, relating to the allegations of the aggrieved persons. It appears that on that score the view taken by the learned Assistant Registrar is justified that since the said application for rectification was withdrawn as it was badly framed or on the ground that it contained a technical mistake, the decision in rectification No. DEL-173 not being on merits would not operate as res judicata. Therefore, this plea was not obviously available to the opponents.
(8) Now, before entering into the question of resemblance leading to deception, and causing confusion and its effect, it is notable that while Section 9 of the Act provides for requisites for registration of a Trade Mark; Section 10 provides for the limitation as to colour. It is Section 11 which provides certain "prohibition of registration of certain marks". Section 12 provides "prohibition of registration of identical or deceptively similar trade marks". It would be desirable to reproduce Section 11 and 12 of the Act which read as under:
"11.Prohibition of registration of certain marks - A mark -
(A)the use of which would be likely to deceive or cause confusion; or (B)the use of which would be contrary to any law for the time being in force; or (C)which comprises or contains scandalous or obscene matter; or (D)which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or (E)which would otherwise be disentitled to protection in a Court;
SHALL not be registered as a trade mark". 12. Prohibition of registration of identical of deceptively similar trade marks - (1) Save as provided in sub-section (3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods.
(2)Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the Registrar may defer the acceptance of the application or applications bearing a later date until after the determination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any.
(3)In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the registrar may think fit to impose."
(9) What are the tests for determining that a particular label or trade mark is likely to cause deception and confusion in the presence of another label/trade mark in the market? As to "deception", it is perhaps appropriately described in the present context and should mean "knowingly and willingly making a fake statement or representation, express or implied, pertaining to a present or past existing fact". (See Black's Law Dictionary, 6th Edn. p.406). The term "deceptively similar" should therefore mean a phonetic or visual or otherwise made false representation made willingly and knowingly so as to make such a similar presentation of one's own products that his products should be sold in the market as products of another well established trader. In this respect, it must be kept in mind that "a mark shall be deemed to be deceptively similar to another mark, if it so nearly resembles that other mark as to be likely to deceive or cause confusion" in terms of Section 2(i)(d) of the Act. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark or goods which he has previously bought , but is doubtful whether that impression is not due to imperfect recollection (See Amritdhara Pharmacy Vs. Staya Deo Gupta, ). There is distinction between causing deception and causing confusion in English Law (See Parket Knoll Ltd. Vs. Knoll International, 1962 Rpc 263. But Sections 2(i)(d) of the Act by its deeming provision has obliterated that distinction.
(10) In my humble view, following principles have been laid down in various authorities to judge whether there is deceptive resemblance between the two labels or whether registration of the trademark would cause confusion:
I)The question whether the two marks are likely to cause confusion or not is a question of first impression and it is for the Court to decide that question. (See Corn Products Refining Co. vs. Shangrila Food Products Ltd., ).
II)In deciding a question of similarity between the two marks, the marks have to be considered as a whole, and not by splitting numerals, expressions, designs and colour scheme used in the trade marks. (See Corn Products Refining Co. vs. Shangrila Food Products Ltd. (Supra), F. HoffimanLa Roche & Co. Ltd. vs. Geoffery Manners & Ltd., ). The trade mark is the whole thing - the whole words has to be considered. (See Amritdhara Pharmacy vs. Staya Deo Gupta, ). It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion. (See HoffimanLa Roche & Co. Ltd. vs. Geoffery Manners & Co. Pvt. Ltd (Supra).
III)The test of commonness of the idea between the two marks could be applied in deciding the question of similarity between them. In deciding the question of similarity or dissimilarity, one must consider the nature and kind of customer who are likely to buy those goods and approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man, the overall structural or phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them. (Corn Products Refining Co. vs. Shangrila Food Products Ltd. (Supra) IV)The absolute identity of two competing marks or their close resemblance is only one of the tests and a comparison has to be made out a glance and not with strenuous effort to find the similarity.
V)Trade connection between different goods is anther such test, Ex-hypothesi this test applies only when the goods are different. But there is no reason why the test of trade connection between different goods should not apply where the competing marks closely resemble each other, just as much as it applies where the competing marks are identical. (See Corn Products Refining Co. vs. Shangrila Food Products Ltd. (Supra).
VI)A composite word having acquired worldwide reputation on account of expensive multi-media advertisement coupled with some prior user of the trade mark in India, could not be used or sought to be registered in the name of another person though dealing in different goods. (See N.R. Dogre & Ors. vs. Whirlpool Corporation ).
VII)All the above tests are totally independent tests. (See Corn Products Refining Co. vs. Shangrila Food Products Ltd. (Supra).
VIII)In absence of criteria for determining what is likely to deceive or cause confusion within meaning of Section 8Section 10 (or Section 11) every case must depend on its own particular facts and the value of authorities lies not so much in the actual decision as in the test applied for determining what is likely to deceive or cause confusion. What degree of resemblance is necessary to deceive or cause confusion must in the nature of things be incapable of definition a priori. (See Amritdhara Pharmacy vs. Satya Deo Gupta (Supra).
IX)In the case of commonly used words in trade, descriptive of the nature or colour or laudatory of the quality of the goods or words of generic terms like "micro" and "SUN", cannot be permitted to be monopolised, excepting when two or more such words are used as a composite word in circumstances mentioned herein-after and "not being a geographical name or a surname or a personal name or any common abbreviation thereof or the name of set, caste or tribe in India." But invented words and composite words stand on different footing. An invented word means a word coined by using the first letter and the letters of different commonly used and known words having no meaning or no obvious meaning until one, has been assigned to it. A composite word is coined by using several commonly used and known words or parts thereof. When the invented or composite words are to be compared for determining whether they are likely to deceive or cause confusion, they must be judged by their look and visual impression and by their sound with splitting words. (See HoffimanLa Roche & Co. Ltd. vs. Geoffery Manners & Co. Pvt. Ltd. [supra]) or letters and considering their etymological or ideological meaning of the invented or composite words. What we have to consider here is the overall similarity of the invented or composite words having regard to all the surrounding circumstances. That the goods are bearing the two names were or were not of the same kind and same description. The admission of mark is not to be refused because unusually stupid people, fools or idiots might be deceived or confused (See Amritdhara Pharmacy Vs. Staya Deo Gupta [supra]).
X)Where there is no chance of deception or confusion, a trade mark may be registered; where there appears to be doubt as to whether deception or confusion is likely or not, the application should be refused and application has to be refused where a trade mark is likely to deceive or cause confusion by its resemblance to another already on the register, if it is required to do so in the course of its legitimate use in the market where the two marks are assumed to be used by the traders in that market.
(11) Now, the fact of the case may be seen in the light of the concerned articles, i.e. parts of sewing machine. The letters in the trade mark of the opponents are M.L. in the circle and `MLI' in a geometrical device of the appellants.
(12) It appears from the evidence on record and as stated by the Assistant Registrar at page-9 of the impugned judgment that on the date of application it has been proved that while opponents claim of user for 12 years had been established, the applicant had established use of his mark for a period of more than 3 years accordingly.
(13) As has already been pointed out that both the parties are dealing in sewing machine parts. Both are stationed at Ludhiana. Seeing the two trade marks as two distinct and different identities, the impression of the totality of the proposed trade mark - without splitting into letters etc. - on a comparison at a glance, is such that there is possibility of phonetic as well as ocular confusion, mistake, deception or confusion in the mind of the purchasers accustomed to the existing mark. In case one hears `ML' and `MLI' then I may be uttered so swiftly that it may not be heard or understood by a person having superficial knowledge of the concerned language. There is also a distinct possibility of ocular confusion between the two marks due to close resemblance. Seeking the extent of resemblance of the two marks in their broad and essential features, the two trade marks are of such character that it appears essential to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered trade mark as is likely to mislead a person dealing with it, for one to accept the other. The learned Assistant Registrar was absolutely justified when he observed that phonetic and visual similarity both in the proposed Trade Mark is virtually deceptively similar to the marks of the appellants. Accordingly registration of the applicant's mark appears to be prohibited under Section 12(1) of the Act.
(14) Before proceeding further, it is also required to be seen whether the appellants have discharged preliminary onus of establishing vested use of their mark on the date of the application. It would be desirable here to quote the observations of the learned Assistant Registrar, which reads as under:- "THE Opponents have placed reliance on the affidavit, dated 21.12.65 by Madan Lal Gupta, filed in their Application No. 230568 (since registered trade mark). In his affidavit filed as evidence in support of opposition, Madan Lal Gupta has furnished sales figures of the goods of the Opponents under the trade mark `M.L'. From modest figure of Rs. 852-3-6 in 1955-56, the Opponents sales have increased up to Rs. 234083.61 in 1970-71. In paragraph 8 of his affidavit the same deponent has said that the Opponents have spent Rs. 15,000.00 on the publicity of that trade mark. In paragraph 12 of his affidavit, Shri Mehar Singh has merely denied the contentions raised by Shri Madan Lal Gupta. The learned counsel for the Applicant pointed out that out of 17 exhibits filed with Madan Lal Gupta's affidavit, one post card is from Rajkot and other 16 exhibits are from Ludhiana. Exhibit No. 7 pertains to the earliest date, namely, 3.8.62. However, on the basis of the Opponent's evidence, it can be concluded that the Opponents have established prior user of their trade mark `M.L.', as on the date of the application. Having regard to vested use of the Opponent's mark `M.L.' the mark applied for if used in normal and fair manner will be likely to cause confusion and deception. Accordingly, registration of the Applicant's mark is prohibited under Section 11(a) of the Act."
(15) So far as the question of ownership of the trade mark is concerned, it may be stated as a proposition of law that a trader acquires a right or property to a distinctive mark merely by using it or in connection with the goods, irrespective of the length of such user, at the extent of his trade. The trade who adopted such a mark is entitled to protection directly when the article having assumed a vendible character is launched upon the market. In view of this requirement it is necessary to refer to the evidence. There is no dispute that the opponent is proprietor of Trade Mark registration No. 230568 registered on 2nd August, 1965. The opponents have claimed user of the trade mark since 1965, whereas documentary evidence and affidavit in support of the contention of the evidence is such that goes to prove the user of opponent's mark in 1962, 1964 and onwards. As against it, the applicant claims user since 1968. Since in the present case the opponent owned a registered trade mark and using it for a period of more than 16 years, opponents certainly appear to be the proprietors of the trade mark `ML'. Consequently, the applicant would not be entitled to claim proprietorship rights in the trade mark `MLI' which is, I need not repeat, deceptively similar to the opponent's mark. As such the Assistant Registrar was justified in deciding the point in favour of the respondent.
(16) Now, coming to the question of applicability of Rule 54 of the "Rules" about rejection of evidence filed later on, Rule 54 reads as under: "R.54.Evidence in support of application.-- Within two months from the receipt by the applicant of the copies of affidavits in support of the opposition or of the intimation that the opponent does not desire to adduce any evidence in support of this opposition, the applicant shall leave with the Registrar such evidence by way of affidavit as he desire to adduce in support of his application and shall deliver to the opponent copies thereof or shall intimate to the Registrar and the opponent that he does not desire to adduce any evidence but intends, to rely on the facts stated in the counter statement and or on the evidence already left by him in connection with the application in question. In case the applicant relies on any evidence already left by him in connection with the application, he shall deliver to the opponent copies thereof."
RULE54 indicates that the applicant on receipt of the copies of the affidavits in support of the opposition shall leave the evidence within a period of 2 months and shall deliver to the opponent copies thereof. Rule 55 relates to evidence in reply by opponent and that also provides for filing evidence in reply within one month thereafter and the evidence was supposed to be confined to matters strictly in reply. Rule 56 provides a mandatory prohibition for further affidavits except by leave and it reads as under: "56.Further evidence -- No further evidence shall be left on either side; but in any proceedings before the Registrar, he may at any time, if he thinks fit, give leave to either the applicant or the opponent to leave any evidence upon such terms as to costs or otherwise as he may think fit."
IN view of the above I feel that the Assistant Registrar was absolutely justified in taking the view that in view of the specific provisions of Rule 54 he could not look into the evidence filed by the appellant at pre-advertisement stage of his application on account of non-compliance of Rule 54.
(17) Another interesting question, which has arisen incidentally, is how far the length of the concurrent, continuous and uninterrupted user would be sufficient to allow the Assistant Registrar to register the trade mark of the applicant. In this regard, following five points are required to be seen:
"(1)The extent of use in time and quantity and the area of the trade;
(2)the degree of confusion likely to ensue from the resemblance of the marks which is to a large extent indicative of the measure of public inconvenience;
(3)the honesty of the concurrent use;
(4)whether any instances of confusion have in fact been proved; and (5)the relative inconvenience which would be caused if the mark were registered."
IN the case in hand though the opponent's claim user for about 16 years they did succeed in establishing user for about more than 12 years by producing documentary evidence, such as, bills, orders, etc. The applicant's user is for about 3 years on the date of application. Now, in terms ofSection 12(3) the public interest as well as rights of the applicant inter se are required to be considered.
IN the aforesaid connection, let us examine the word `MLI'. `MLI' is based on the alleged trading style, i.e., "Motion Levers (India)". Learned Assistant Registrar took the view that it was fictitiously and deliberately chosen to closely resemble similar to the mark of the opponent.
IT is apparent that under Section 12(3) the registration of the new trade mark could be allowed only when there is very clear evidence that the person who is seeking to register it has a right to the protection of the registration and onus is on the applicant for the registration to show that he is entitled, to registration under Section 12(3) on the ground of honest concurrent user or on the ground of any other special circumstance. If the user of the applicant is very small and that of opponent is very large, the Registrar is entitled to refuse application for concurrent registration.
IT may be added that the applicant Meher Singh, though claimed user since 1963, has failed to furnish year wise sales figures and publicity expenses. It is not the quantity of evidence but the quality of evidence which tilts the balance on one or the other side.
(18) The learned Assistant Registrar has also taken into consideration the question of relative convenience and it appears from his observations that the opponents own only one trade mark `ML' while the applicant owns other trade marks, viz., `span' and `kkk'. If in this light the learned Assistant Registrar has taken the view that on account of possibility of mistake, confusion and deceptive similarity, it was not in public interest to register the trade mark on the ground of honest concurrent user, there does not appear any error, factual or legal; in the approach.
(19) Now, the points of laches acquiescence estoppel are required to be seen. In absence of sales figures, there are several reasons not to accept the contention, of the appellant in this regard. Firstly, the appellant failed to produce documentary evidence, indicating any amount spent on the advertisement, etc. to market his products under the similar trade mark before 1972. The bare affidavits are of no help to the appellants. It appears that the opponents had already filed a suit for infringement and passing-off against the appellant in the Court of Additional District Judge, Delhi in 1972. Neither any prior use nor expenditure on advertisement etc., had been established before 1972. Since 1972 the suit had been filed, the question of laches, acquiescence and estoppel would not arise. Consequently, the view taken by the learned Assistant Registrar has to be upheld.
(20) For the foregoing reasons, I do not find any force in this C.M.(M) No. 143/80 and dismiss the same without any order as to costs.
Print Page

No comments:

Post a Comment