Intellectual Property Appellate Board
Narendra Kumar Tank vs Classic Electricals Limited And Anr. on 4 February, 2004
Equivalent citations: 2004(28)PTC550(IPAB)
JUDGMENT
Raghbir Singh, Vice Chairman
1. The appellant/applicant filed an application No. 520424B on 28th November, 1989 for registration of a trade mark label consisting of CF monogram and the word 'CLASSIC as its essential feature of the mark in respect of lighting fixtures included in class 9. They claimed to have been using the mark since 1st January, 1982. The said mark was advertised in the Trade Marks Journal No. 1106 dated 1st July, 1995.
2. On 25th September, 1995 M/s. Classic Electrical Limited of Bombay filed a notice of opposition No. MAS 3363 to the aforesaid application on the grounds that they are the proprietors of the trade mark 'CLASIC in respect of electrical fittings for fluorescent lamps included in class 9, electrical bells and buzzers, transformers, electric chokes, electric switches, elec-cut-outs, electric plugs and sockets, electric connectors, electric connection and electric contact devices all being goods included in class 9, electric switch holders, starters, electric flat irons, electric wires and electric cables, electronic and electrical instruments under registered trade mark No. 410712B dated 16th September, 1983 in class 9 and have been using the said mark since the year 1978. The opponent also claim that they are the proprietors of the trade mark consisting of word 'CLASSIC' in classes 11, 9 and 11 under trade mark Nos. 410710, 625186 and 625187 respectively. They further claimed that having regard to the establishment user and reputation associated with their trade mark, the use of the applicant's mark will result in deception and confusion. They also claim that the impugned mark sought to be registered under application No. 520424B is identical with or deceptively similar to the opponent's trade mark mentioned above and the goods covered by the applicant's present application and the opponent's goods are also goods of the same description. The mark submitted for registration is neither adapted to distinguish nor capable of distinguishing the goods of the applicants and the same fails to qualify for registration under Section 9 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The registration of the impugned mark is prohibited under provisions of Sections 9, 11(a), 12(1) and 18(1) of the Act. The appellant/applicant filed his counter statement on 19th March, 1996 in support of application denying all the allegations of the opponent including disputing the similarity between the trade mark of the opponent and the applicant. They claimed that they had been continuously and extensively using the mark since 23rd December, 1982 which was wrongly mentioned as 1.1.1982 in the Trade Marks Journal and claimed entitlement to its registration under Section 12(3) of the Act. The Deputy Registrar of Trade Marks heard the case on 29th April, 2002. The opponent did not attend the hearing nor there was any communicate from them. The applicant was represented by Shri V. Balakrishnan, Registered Trade Mark Agent at the hearing.
3. The Deputy Registrar identified the matter to be heard as relatable to Sections 9, 11(a), 11(e), 12(1), 12(3) and 18(1) of the Act. His findings in the matter are that since "CLASSIC" is a descriptive or laudatory word and hence is not as such prima facie distinctive under Section 9 of the Act. The learned Deputy Registrar held the impugned mark was deceptively similar to the opponent's trade mark 'CLASIC and the rival goods are the same and the goods of the same description. He concluded that Section 12(1) constitute a clear bar to the registration of the applicant's mark. In matter of Section 12(3), the Deputy Registrar has come to the conclusion that on the basis of evidence filed, the appellant/applicant has used the mark 'CLASSIC' since December, 1982 on a moderate scale. By reason of that use, the word 'CLASSIC' has not lost its primary significations as a descriptive word and also not acquired secondary signification as denoting his goods only. On this score also, he decided as against the appellant/applicant. In matter of opposition under Section 11, in view of absence of any evidence regarding use and reputation of the opponent's mark, the learned Deputy Registrar did not sustain the objection of the respondent/opponent under this section. In the result, he allowed opposition No. MAS-3363.
4. The present appeal is being pursued for registration under Section 9 on the ground that the opponent's registered trade mark is also 'CLASIC' and so they should have been estopped from setting up a plea that the same trade mark of the appellant is prohibited from registration under Section 9 of the Act. The application should have been allowed under Section 12(3) as an honest and concurrent user which provides for a discretionary power in the Registrar to allow to an applicant who is an honest concurrent user of an identical or nearly resembling mark to be registered.
5. The appeal came up for hearing before the Intellectual Property Appellate Board (IPAB) on 30th December, 2003. Shri Satish Parasaran, Advocate represented the appellant and Shri A.A. Mohan, Advocate represented the respondent.
6. As regards Section 9, the learned counsel for the appellant submitted that they have been using the mark for about seven years before filing of the application and because of the use, it has become adapted to distinguish their goods from others. He submitted that the cases relied upon in the order of the Deputy Registrar were decisions when registration in Part B was non-existent. In their case, the application has been accepted in Part B of the Registrar and also in view of the fact that their mark is a composite mark containing the word 'CLASSIC' and monogram CF represented in a stylised manner. In reply, the learned counsel for the respondent submitted that the Deputy Registrar has carefully considered the mark under Section 9 and has held that it is not adapted to distinguish the goods of the applicant and hence not distinctive as the mark is similar to the descriptive word 'BEST' etc.
7. We have carefully considered the argument of both the counsels. The opponent's mark is 'CLASIC (word per se) and the same has been allowed to be registered by the Registrar. If it is to be equated with the descriptive word 'BEST' as has been argued by the counsel for the respondents, then any amount of user would not make it distinctive of the goods of the opponent. It appears that the counsel for the respondent/opponent wanted a different yard stick to be applied when deciding the case of the appellant. The meaning of the word 'CLASSIC' as per Chambers Dictionary refers to an excellent work on music, literary work, clothes etc. It also refers to excellent works in respect of films. However, this word is not used to indicate excellence in other fields like light fittings, etc. Hence, we are of the view that the composite mark of the respondent is registrable under Section 9 of the Act.
8. As regards Section 12(1) of the Act, the Deputy Registrar has held that as the rival marks are deceptively similar and the rival goods are goods of the same description, the applicant's mark is prohibited from registration. We agree with the findings of the Deputy Registrar.
9. Next we would take up for consideration the objection under Section 12(3) of the Act. At the hearing, the learned counsel for the appellant submitted that they have honestly and concurrently used the mark since 23rd December, 1982 and hence their mark is eligible for registration. In reply, the learned counsel for the respondent submitted that as they have not honestly adopted the mark, they cannot claim registration under Section 12(3) of the Act. Section 12(3) is an exception to Section 12(1) of the Act. Even if an opponent succeeds under Section 12(1), then, also the applicant can succeed under Section 12(3) provided he can prove through evidence that he has honestly and concurrently used the mark. Also where the applicant's date of commencement of use is prior to the opponents' use and date of registration, the provision of Section 33 of the Act allows for registration of the applicants' mark. In fact the word 'other special circumstances in Section 12(3) include any circumstances peculiar to the subject matter of the application and this includes use by an applicant of his mark before the conflicting mark was registered or used (London Rubber Co. Ltd. v. Durex Products AIR 1963 SC 1882). In the present case the first relevant date is the date of use of the mark by the applicants. The applicants have proved through evidence of the earliest invoice filed that they have been using the mark from 14th January, 1983. The next relevant date is the date of use of the mark by the opponents. The opponents have not adduced any evidence of user of their mark even though they have claimed use from 1978. The next relevant date is the date of registration of the opponent trade mark 'CLASIC under No. 410712B as per the record is 16th September, 1983. In order to come under the purview of Section 12(3) the applicant has to prove through evidence that they have been using the mark prior to the use of the mark by the opponent or prior to the registration of the marks of the opponent whichever is earlier. It is seen that the applicant has been using the mark since 14th January, 1983 where as the opponents have not filed any evidence of the use of their mark. However, the opponents have registered their mark with effect from 16th September, 1983 under No. 410712B. The earliest of the date between the use by opponents and registration of the opponent's mark is 16th September, 1983. As the applicants have been using their mark from 14th January, 1983 which is a date earlier than the date of registration of the mark by the opponents that is 16th September, 1983 the applicant can claim the benefit of Section 12(3) read with Section 33 of the Act. Hence, the applicants are entitled for registration under Section 12(3) of the Act.
10. As regards Section 18(1) of the Act, the Counsel for the respondents contended that the respondents have not honestly adopted the mark. It is seen from the records that the appellants have been using the mark 'CLASSIC from 14th January, 1983 with the CF monogram. On the other hand, the opponents have not filed any evidence of use of their mark. However, they have registered their mark from 16th September, 1983, which is a date later than that of the appellants. Hence, it cannot be said that the appellants have copied the mark of the respondents. Hence, the objection under Section 18(1) is not sustained.
11. Taking into consideration the above, we allow the appeal. There is no order for costs.