Intellectual Property Appellate Board
Kalyanpuri Flour Mills Pvt. Ltd. vs Jagmohan Kumar on 28 June, 2004
Equivalent citations: 2004(29)PTC314(IPAB)
JUDGMENT
S. Jagadeesan, Chairman
1. The appeal is against the order of the Deputy Registrar of Trade Marks, Chennai dated 13.3.2002 allowing the opposition No. MAS/2666 filed by the respondent and rejecting the Application No. 397696B in class 30 filed by the appellant for registration of the trade mark 'APPU BRAND'.
2. The Appellant herein is a company incorporated under the Companies Act, 1956. They filed the application No. 397696 to register a trade mark label containing the device of an 'elephant' and the word 'APPU' in respect of their product Maida, Sooji and Atia. The goods fall under class 30 of the Fourth Schedule of the Trade and Merchandise Marks Act, 1958. The said Trade Mark is stated to be proposed to be used on the date of the application i.e., 18.11.92. Though some preliminary objections were raised to the said application by the Registrar of Trade Marks, after hearing the counsel for the appellant, the application for registration was directed to be converted into one for registration in part B of the Register and thereafter the same was ordered to be advertised before acceptance for registration. The application of the appellant was eventually advertised under the proviso to Section 21 of the said Act in the Trade Mark Journal No. 1023 dated 16.1.92 at page 1313.
3. The respondent herein filed a notice of opposition on 16.3.92 to the aforesaid application of the appellant for registration of the trade mark 'APPU BRAND' raising the following objections.
(i) The respondent is the proprietor of the trade mark consisting of a device of 'elephant' and the words 'HATHI CHAAP' in respect of flour, gram flour, besan, rise, atta and gram dall and has been using the said trade mark since 1954.
(ii) The opponent is the proprietor of the said trade mark in respect of gram flour and gram dall (broken) under Trade Marks Nos. 292411 and 366084 falling under class 30.
(iii) By the reason of long, extensive and continuous use of their mark, the opponent had acquired a great reputation and goodwill.
(iv) The registration of the mark applied for will be contrary to the provisions of Section 11 (a) and 11 (e) as well as Section 9 of the Act.
4. The applicants filed their counter statement on 25.9.92 denying the averments of the opponent and contended that the applicant's trade mark sought to he registered is not similar to that of the respondent's 'HATHI CHAAP' trade mark and the two marks are totally different and distinct one. Both the parties have produced evidence with regard to the use of the trade mark. Both the applicant and opponent notified the Registrar in Form TM 7 in terms of Rule 59 of the Trade and Merchandise Marks Rules, 1959. Both the parties are represented by the counsel before the Registrar. After hearing both the counsel, the Registrar rejected the application filed by the appellant for registration of the trade mark 'APPU BRAND' in application No. 397696B under the impugned order finding that the appellant's trade mark is deceptively similar to the opponent's registered trade mark and as such Section 12(1) constitutes a bar to the registration of the appellant's trade mark. The Registrar further found that since the products of the appellant as well as the respondent are of same nature and if the appellant is allowed to use the trade mark sought to be registered, it is likely to cause deception and confusion in the trade and as such Section 11 (a) as well as Section 11(e) of the said Act are attracted. So far as Section 12(3) is concerned, the Registrar held that the registration sought for by the appellant is not one under Section 12(3) and as such he is not entitled for the benefit of the same. So far as the plea of the respondent that the appellant copied the trade mark of the respondent and as such Section 18 is attracted is concerned, the Registrar held that the applicant had not copied the respondent's mark and consequently held that Section 18(1) of the said Act is not attracted. Ultimately, the application of the appellant was rejected under Section 18(4) of the Act. Aggrieved by the same, the appellant filed an appeal on the file of the High Court of Judicature at Madras in TMA 3/2002. After the constitution of the Appellate Board under the Trade Marks Act, 1999 the appeal has been transferred to this Board and we heard both the learned counsel. The only argument advanced by the learned counsel for the appellant is that the appellant's trade mark 'APPU BRAND' is totally a different one compared to the respondent's trade mark for the 'HATHI CHAAP' with the device of an elephant. In view of this limited argument, it is unnecessary for us to go into the other question discussed by the Registrar. It is for us to compare both the trade marks of the appellant as well as the respondent and to find out as to whether they are identical and whether it would cause any deception and confusion in the trade.
5. The learned counsel for the appellant made all efforts to convince us that the device "APPU BRAND" is totally a distinct one and having separate identity. Further, it has no similarity with the device adopted by the respondent which is the image of the elephant. The appellant's trade mark 'APPU BRAND' has no similarity with the device of the elephant used by the respondent.
6. The learned counsel for the appellant further contended that the trade mark along with the device used by the respondent must be taken in toto to consider the similarity of the said trade mark with that of the respondent. The learned counsel also placed reliance on the judgment of this Board in TA/28/03 dated 31.12.2003 and contended that the objections of the appellant for the registration of the similar mark by one Tirupati Roller Flour Mills (P) Ltd., was upheld and as such the appellant has got every right to use the disputed mark. The device of the elephant used by the appellant is a well known mark having associated with the Asian games and has wide popularity because of the same. The device used by the respondent is an ordinary figure of the elephant and as such there are lot of difference between the two devices used by the appellant and the respondent.
7. On the contrary the learned counsel for the respondent contended that there is no dispute that the product of the appellant and the respondent are the same. In such cases, to find out the similarity or dissimilarity among the two marks the essential factors to be considered are;
(i) to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark.
He relied upon the judgment of the Supreme Court in National Sewing Thread Co. Ltd. case, AIR 1953 SC 357.
8. We have carefully considered the above contentions of both the counsel. The questions falls in a very narrow compass as to whether the mark 'HATHI CHAAP' of the respondent is identical, or deceptively similar to that of the mark 'APPU BRAND' proposed to be used by the appellant. It may be worth to refer to some of the principles laid down by the Apex Court on this issue. In National Sewing Thread Co. Ltd. v. James Chadwick and Bros. Ltd., AIR 1953 SC 357 at page 363 para 21 the learned Judges held as follows:-
"Under this section an application made to register a trade mark which is likely to deceive or to cause confusion has to be refused notwithstanding the fact that the mark might have no identity or close resemblance with any other trade mark... What the Registrar has to see is whether looking at the circumstances of the case a particular trade mark is likely to deceive or to cause confusion".
The Supreme Court further elaborated this principle as under:-
"The principles of law applicable to such cases are well settled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of Section 8 and therefore it should be registered. Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not dis-charged by arriving at the result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing."
9. In the latest judgment in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 PTC 541 at page 561 para 35 the Supreme Court has held as follows:
"Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:-
(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on. their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
10. On the above principles it is clear that it is not only the visual or phonetic similarity of the name or the device to be considered but also the nature of goods in respect of which they are used as trade marks; the similarity in the nature, character and performance of the goods of the rival traders; the class of purchasers who are likely to buy the goods bearing the marks they require, their education and intelligence and degree of care they are likely to exercise in purchasing and/or using the goods as well as the mode of purchasing the goods or placing orders for the goods are to be taken into consideration. In the case on hand, both the appellant as well as the respondent are traders in various flours and dalls. Though the device used by the appellant and the respondent may be slightly different, but it relates to the common animal the 'elephant.' The appellant used the name 'APPU BRAND' with a device of ordinary figure of the elephant to identify their goods. The word elephant commonly identify the particular animal elephant and is more commonly prevailing in the minds of the public to identity the particular animal elephant. The respondents' mark 'HATHI CHAAP' also relate to elephant. The picture or the device may be different, but the word 'APPU' is very familiar among the public as a dancing elephant signifying the Asian games. Hence, there is no doubt that the word 'APPU' used by the appellant and the word 'HATHI' used by the respondent because of its association with Asian games symbol, the dancing elephant would identify a common animal the 'elephant'.
11. When we come to the question of the class of purchasers who are likely to buy the goods, it goes without saying that in most of the houses only the maid servant or the servant goes to the grocery shop the fetch commodities. Sometimes, over the phone orders are being placed and the grocery shop owner will send commodities. Thus, ordinarily commodities such as groceries are placed in the store room of the house by the maid servant or the servant without even noticing the trade mark. When such class of purchasers who are to buy the goods, it is for us to consider whether there is any distinctiveness between the marks of the appellant and the respondent which may be able to make out by a particular class of purchasers. As stated already when it is commonly known as 'ELEPHANT BRAND,' there is every possibility that for 'APPU BRAND', the 'ELEPHANT BRAND' (HATHI CHAAP in Hindi) may be substituted and equally for the 'ELEPHANT BRAND' the 'APPU BRAND' may be substituted. Since both the words would commonly refer only to the elephant, in such circumstances definitely there will be a confusion in the minds of the purchasers.
12. It may also be noted that in many of the grocery shops only the uneducated, small boys are employed to take the groceries from the shelves. When they are the persons in charge of the delivery of the commodities asked for and the class of purchasers also being rustic and uneducated maid servants or servants, there is every possibility of mis-identification of the goods. When that is so, naturally there is similarity of both the trade marks. Hence, we are of the view that no interference is called for in the order of the Registrar.
13. Even though the learned counsel for the appellant contended for concurrent registration as contemplated under Sub-section (3) of Section 12, we are of the view that the same cannot be entertained on two grounds. One is no such plea was put forth in their application for registration by the appellant. The other ground for rejection of such plea is that in the advertisement it is clearly stated that the appellant has proposed to use the trade mark in respect of commodities maida, sooji and atta. When the case of the appellant is to propose to use the disputed trade mark, Sub-section (3) of Section 12 is not attracted. Hence, this plea is rejected.
14. Coming to the reliance of the learned counsel for the appellant on the judgment of this Board in TA 28/03, we have to hold that the judgment has no relevance to the facts of the present case. In TA/28/2003 the respondent therein sought for registration of the trade mark 'APPU BRAND' with the device of an elephant in respect of wheat products. Appellant herein who is appellant in that appeal also filed objection stating that the trade mark sought to he registered is identical with the 'APPU BRAND' of the appellant. There we have upheld the objection of the appellant on the ground that the respondent therein sought to register the 'APPU BRAND' trade mark which is in all respects similar to that of the appellants' trade mark. In our view that will not give any right on the appellant to use the 'APPU BRAND'. In this case we are concerned with the two trade marks 'HATHI CHAAP' used by the respondent, 'APPU BRAND' used by the appellant and to consider whether there is similarity among the same and whether the use of both the trade marks would cause any confusion the in trade. The issue involved in this appeal is totally a different one and we are unable to accede to the contention of the learned counsel for the appellant.
15. For all these reasons the appeal is dismissed. However, there will be no order as to costs.