Intellectual Property Appellate Board
Nagarathna Textiles A Partnership Firm ... vs Sundaram Clayton Limited And The ... on 12 December, 2007
ORDER S. Usha, Member (T)
1. This appeal arises out of the order dated 29/11/2004 passed by the Assistant Registrar of Trade Marks by allowing the opposition No. MAS-59017 and refusing registration of Application No. 681345 in Class 24.
2. The appellant herein had filed on 25.09.1995 an application for registration of the trade mark TVS 50 with label device of moped written TVS 50 on its petrol tank in respect of lungies, dhotis and Towels in Class 24 under No. 681345 claiming user since 1.01.1986. The application was advertised before acceptance in Trade Marks Journal No. 1241 dated 16.02.2001 at page 4482.
3. The respondent herein had filed their notice of opposition on 14.05.2001 opposing the registration of the above trade mark on various grounds. The respondents are carrying on an established business in respect of two wheeler vehicles under the trade mark TVS 50 and the same has been registered under No. 372863 B in respect of vehicles apparatus, apparatus for locomotive by land, air or water, mopeds in Class 12. By long and extensive use and wide sales promotional work, their goods under the impugned trade mark has acquired considerable goodwill and reputation among the public. The rival marks are identical. The appellants have not given any explanation for the adoption of an identical mark. The appellants have adopted an identical mark only to defraud the public. As the rival marks are identical, there is every possibility of deception and confusion being caused among the public.
4. Registration of the impugned trade mark is in contravention of the provisions of Section 11 (a), (b) & (e) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The respondents denied the appellants user and also stated that not only the trade mark TVS 50 was copied by the appellants but also the use of the respondents' mark on the goods. The appellants adoption is itself dishonest and fraudulent. The applicants are not the proprietors of the Trade Mark. The appellants trade mark is not distinctive of the goods and so do not qualify for registration under Section 9 of the Act. The respondents are greatly affected by the appellants adoption of an identical mark.
5. The appellants had filed their counter statement on 02/01/2004 denying the various allegations made in the notice of opposition. After completion of the formal procedures, the matter was heard by the Assistant Registrar of Trade Marks on 16/11/2004. The Assistant Registrar of Trade Marks allowed the opposition and rejected the application for the reasons hereunder.
6. The applicants have not proved that when the marks are similar it will not cause any deception or confusion and therefore, the objection under Section 9(2)(a) of the Trade Marks Act, 1999 is sustained. As the appellants use and adoption is intended to defraud the public, the mark is not entitled to be protected under Sections 11(3), 11(3)(a) and (b) of the Trade Marks Act, 1999. The appellants adoption is not bonafide and is not honest, therefore, the appellants are not proprietors of the Trade mark. Aggrieved by the said order, the appellants are before us on appeal.
7. We have heard Mr. Rajesh Ramanathan, Counsel for the appellants and Mr. M.K. Rao, Counsel for the respondents at Chennai on 05/11/07 and certain clarifications were required to be sought from the parties, the Appellate Board suo moto re-opened the matter and posted it on 20.11.07 for hearing. The counsel had clarified the Appellate Boards queries and orders were reserved.
8. The learned Counsel for appellant submitted that the respondents have allowed the appellants to expand their business and that there has been a delay on the part of the respondent in taking action against the appellants. The appellants brought to our notice the trade mark registration certificate filed in the typed set of documents and submitted that they had adopted the Trade Mark TVS 50 as early as 1986 and had applied for registration as of 1995 itself. The appellants referred to the contents of the legal notice issued in the year 2004 by the respondents to the appellants and submitted that the respondents are trying to confuse this Appellate Board by stating that it came to their notice only in the year 2004 about the appellants trade mark whereas in the year 2000 itself they were aware of the appellants' trade mark and had issued a legal notice and had also initiated rectification proceedings. The appellant also forcefully denied the submission of the respondents that they had stopped using the trade mark after the issuance of the legal notice in the year 2000 and pointed out that in reply to the legal notice they had stated that they will not cease to use the trade mark. The respondents have not filed any documentary evidence to prove that the appellants have stopped using the trade mark. The appellants further submitted that the respondents have not proved any deception or confusion. The counsel for appellant pointed to the sales turnover mentioned in the Memorandum of appeal. By long and continuous use, the appellants' trade mark has acquired reputation and goodwill among the public. The respondents have not produced any documentary evidence to prove that their trade mark is a well-known mark.
9. The appellants' counsel also submitted that they had filed invoices for the periods from 1986 continuously and submitted that the respondent have falsely stated that the appellants had stopped using trade mark after issuance of the legal notice.
(i) The appellants counsel relied on the Judgment reported in 2007 (34) PTC 136 (IPAB) Bal Krishan Jindal v. Mohinder Singh and Anr. to support his argument that failure to discharge burden of proof of deception and confusion, application for rectification be rejected.
(ii) Rectification application to be rejected on the ground that the mark was on the Register for more than nine years on the date of filing of application for rectification reported in 2007 (34) PTC 621 (IPAB) Kabushiki Kaisha Toshiba v. Tosiba Appliances & Co. and Anr. was relied for the above argument.
(iii) Judgment in 2000 PTC 561(DB) Delhi Hindustan Pencils Private Limited v. Universal Trading Company and Anr. was relied to say that when the trade mark was on the register for 25 years, the removal of the trade mark would cause serious loss to the applicant for registration.
(iv) In support of the argument that when there was honest concurrent use with no evidence of deception or confusion even if the mark was deceptively similar the mark to remain on the Register, the respondents relied on PTC (Suppl.) (1) 567 (Cal.) J & W Hardie Ltd. v. Joseph E. Seargram & Sons Inc. and Anr.
(v) 2004 (29) PTC 468 (IPAB) Bata India Limited v. Deputy Registrar of Trade Marks and Ors. was relied on to support his argument that even when the goods were different and no proof of confusion or deception shown then the mark to continue on the Register.
10. The appellants concluded their arguments by submitting that a similar mark had been on the register for several years and also that the appellants have been using the mark for 21 years and that the trade mark has got to be protected.
11. The learned Counsel for the respondents mainly contended that the mark TVS 50 was a well-known mark and was popularly known among the public. The word TVS was coined from the company's name, namely, TVS group of companies which was the initial of the founder Mr. TV Sundaram Iyengar. The respondents also submitted that the numeral 50 was to denote the cubic capacity of the vehicle. The trade mark TVS 50 was the respondent's house hold mark.
12. The learned Counsel submitted that only from the newspaper advertisement in the year 2000, the respondents came to know that the appellants had adopted an identical trade mark as that of the respondents and had immediately issued a cease and desist notice to the appellants to refrain from using the impugned trade mark. The learned Counsel for the respondents forcefully submitted that the appellants had not only copied the words TVS 50 but also the vehicle which was totally dishonest act on part of the appellants. The counsel also submitted that the appellants have not given any explanation for the adoption of the impugned trade mark and as such the adoption is dishonest and fraud has been played by the appellants before the Assistant Registrar of the Trade Mark in getting the earlier trade mark registered.
13. The learned Counsel referred to various judgments to support his contention that even if the goods were different, a well-known mark should be protected.
14. The matter was heard along with TRA/171/2007/TM/CH and ORA/55/07/TM/CH with the consent of both the counsel that a common argument be made. Though common arguments were made or heard, we are of the view that separate orders be passed as the transferred application is under the 1958 Act and the original application is under the 1999 Act and this Original Appeal is to be decided on the findings of the Registrar. We have gone through the entire pleadings and documents and considered the arguments of both the Counsel.
15. The appellants had file this appeal on the contention that they had been using the impugned trade mark since 1986 and had the same registered as early as 1995 and the same has not caused any confusion or deception among the public. The respondents had allowed the appellants to expand their business by not taking any steps and have acquiesced the use of the trade mark by the appellants. The rival goods are different. We are of the opinion that even though various contentions were raised, the appellants have not satisfied this Board as to the reason for adoption. Moreover, the appellants have not submitted any arguments on these contentions except for a vague pleading in the Memorandum of Appeal.
16. Be that so, the appellants have not given the reason for their adoption of the trade mark TVS 50 along with the device of a vehicle. We find not only the letters TVS along with the numeral 50 has been adopted but also the vehicle which in no way connected with the textile goods. From the above, it is clear that the appellants are trying to trade on the goodwill of the respondents. Therefore, the appellants adoption of the trade mark is dishonest.
17. The other Rectification Petitions filed by the respondents herein have been allowed for removal of the similar trade marks on this ground alone. We, therefore, have no other option except to dismiss this appeal.
18. In view of the above, we are of the opinion that the order of the Registrar is in order and as such the order does not suffer any illegality. Appeal is, therefore, dismissed. However, there shall be no order as to costs.