Intellectual Property Appellate Board
Atlas Cycle Industries Limited vs Ralson (India) Limited And Anr. on 27 August, 2004
Equivalent citations: 2004(29)PTC464(IPAB)
JUDGMENT
S. Jagadeesan, Chairman
1. The appellants have filed these appeals against the order of the Assistant Registrar of Trade Marks, the second respondent herein, rejecting their opposition under Nos. DEL-6548 and DEL-6549 in respect of application Nos. 450685 and 450688, filed by the first respondent for registration of their trademarks 'RALSON SUPER STAR' and 'RALSON SILVER STAR' and directing the registration of the trademarks of the first respondent.
2. The first respondent herein filed two applications before the second respondent, the Registrar of Trade Marks, New Delhi. The first respondent filed one application bearing No. 450685 dated 6.3.1986 for registration of the words 'RALSON SUPER STAR' as trademark, for the goods tyres and tubes for cycles and rickshaws, falling in Class 12 of the Trade and Merchandise Marks Act, 1958, hereinafter called the said Act. They also filed another application bearing No. 450688 on 6.3.1986 for the registration of the words 'RALSON SILVER STAR' as trademark for their goods types and tubes for cycles and rickshaws, failing in Class 12 of the said Act. Both the applications were accepted by the second respondent subject to disclaimer of the words 'SUPER STAR' and 'SILVER STAR'. Those were published in the Trade Mark Journal No. 973 dated 16.12.1983 at page 1171.
3. The appellants herein lodged their opposition on 2.1.1990 in their opposition Nos. DEL-6548 and DEL-6549 stating that they are the proprietors of the trademark 'EASTERN STAR' under Nos. 12052 and 11426 for the goods saddles, cycle bells, cycle pumps, cycle tubes, etc. It is further stated that they are the registered proprietors of the same trademark 'EASTERN STAR' under No. 264019 for the goods cycles and cycle parts and all these three marks were inter-associated. The appellants also claimed that they are a reputed company engaged in the trade of cycles and cycle spare-parts thereof since the year 1952 and are having extensive business with a turnover of crores of rupees. Their objection for the registration of the first respondent's trademark is that the impugned mark is hit by Sections 12(1), 11(a), 11(e) and 18(1) of the said Act and as such, the impugned mark cannot be registered.
4. The first respondent filed their counter statement to the opposition of the appellant stating that the first respondent is the registered proprietor of the trademark 'RALSON' and other trademarks starting with words 'RALSON'. There is a clear distinction between the trademark of the appellant and the first respondent. Hence, Section 11(a) is not attracted. Thereafter, both the parties filed their evidences. But unfortunately neither of the parties appeared before the second respondent on any of the hearing dates and ultimately, the second respondent perused the evidence produced by the parties and disposed of the matter after considering the evidences. Under the impugned order, the second respondent held that though the goods may be of same description, the trademark of the appellants and the first respondent are distinctive by itself and as such, there cannot be any confusion or deception and consequently ordered the registration of the first respondent's applications. As against the same, the appellants filed two appeals CM(M) 469 of 1993 and CM(M) 472 of 1993 on the file of Delhi High Court. Both the appeals stood transferred to this Appellate Board pursuant to Section 100 of the Trade Marks Act, 1999.
5. Before us, the learned counsel for the appellant vehemently contented that the appellant being the registered proprietor of the trademark 'EASTERN STAR', the word 'STAR' in the name of the appellant's trademark as well as in the trademark of the first respondent being common, there is every possibility for the confusion and deception in the trade. Normally, the consumer may ask for the goods of the appellants by using the word 'STAR'. In such cases, the dealer may supply to the consumer the goods of the first respondent as that also bears the name 'STAR'. In view of this, the order of the second respondent is liable to be set aside and the first respondent is not entitled for the registration of the impugned trademark. The learned counsel for the first respondent, however, contented that no consumer would use the last word 'STAR' alone, for purchase of the article. If they are particular about appellants' goods, then, they would specifically ask for 'EASTERN STAR'. So far as the first respondent's mark is concerned, the Word trademark 'RALSON' is of no dispute. The first respondent is the registered proprietor of the word mark. Now they want to add 'SILVER STAR' and 'SUPER STAR' as suffix to their original trademark in respect of the new goods. The Registrar had made it clear that the first respondent has to disclaim those suffix words and they also agreed. In such circumstances, the first respondent is not entitled to claim any right in the word mark 'SUPER STAR' or 'SILVER STAR' and consequently, the appellant cannot be aggrieved by the use of the words 'SILVER STAR' as well as 'SUPER STAR'. Moreover, the words Trade Marks are composite one and cannot be separated. Hence, there is no merit in these appeals.
6. Having heard both the counsel, we have carefully considered the above contentions of the learned counsels on either side. As rightly pointed out by the Registrar, both the appellants as well as the first respondent are dealing in the cycle tyres and cycle tubes. So there is no distinctiveness in the goods and the goods of both the parties are of the same nature. Hence, the earlier part of Sub-section (1) of Section 12 of the Act is attracted. The same provision also contemplates deceptive similarity of the trademark. Hence, we have to consider whether there is any deceptive similarity between the trademarks of the appellant and the first respondent. The appellant's trademark is 'EASTERN STAR'. The first respondent's trademark is 'RALSON SUPER STAR' and 'RALSON SILVER STAR'. At the outset, we are of the view that the name of the trademark cannot be bifurcated for the purchase of goods. The mark has to be taken in entirety especially to consider the deceptive similarity. The appellant's mark being 'EASTERN STAR' and the respondent's marks 'RALSON SUPER STAR' and 'RALSON SILVER STAR', we are unable to see any similarity between the two marks, much less the deceptive similarity. The trademark is of composite nature and no word can be bifurcated and used for the use of the purchase of the goods. There is absolutely no evidence on behalf of the appellant that the customers are identifying the goods of the appellant only by the word 'STAR'. Similarly, there is no evidence of any dealer that they are supplying the goods of the appellant for the mere asking of the customers using the word 'STAR'. When the Word trademark per se is taken into consideration for comparison, as to either the similarity or the deceptive similarity, we are of the view that the appellant has no case as each of the trademark has its own distinctiveness and individualism and hence there is no similarity or deceptive similarity.
7. When the trademarks of the appellant as well as the first respondent are not similar, there cannot be any confusion or deception attracting Section 11 (a) of the Act. In fact, the Registrar has also held that Section 11 (a) is not attracted. We are in entire agreement with the view taken by the Registrar of Trade Marks. Accordingly, we do not find any merit in either of the appeals. Consequently, both the appeals are dismissed with the cost of Rs. 10,000/-. The appellant is directed to pay the cost either to the first respondent directly or through their counsel.