Intellectual Property Appellate Board
Reckitt And Colman Of India Limited vs Charmy Industries And Anr. on 6 October, 2006
Equivalent citations: 2006(33)PTC718(IPAB)
ORDER S. Usha, Member (T)
1. This appeal has been filed challenging the order of the Assistant Registrar of Trade Marks, New Delhi dated 14.7.1999. The first respondent herein M/s Charmy Industries represented by its partners had filed an application for registration of a trade mark, inter alia, consisting of label having the word 'CHARMY' with device of container of shoe polish and device of shoe in class 3 in respect of shoe polish and the same was numbered as trade mark application No. 480566 in class 3. The first respondent had claimed user since 1.6.1987 in the said application. After completion of all the formalities the above application was advertised in the Trade Marks Journal No. 1103 dated 16.5.1995 at page 594. On 18.9.1995 the appellant herein had given a notice of their intention to oppose the above application for registration. The first respondent filed their counter statement on 4.10.1996.
2. Learned Assistant Registrar of Trade Marks heard the matter on 17.6.1999 and had passed an order dismissing the opposition based on Sections 9, 11 (a), 11(e), 12(1) and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act).
3. Aggrieved by the said order the appellant herein filed an appeal (M) No. 718/1999 in the High Court of Delhi and the same was transferred to this Board by virtue of Section 100 of the Trade Marks Act, 1999 and numbered as TA/156/2003/TM/DEL.
4. The appeal was taken up for hearing on 14.7.2006 in the circuit bench sitting at New Delhi. Learned Counsel Shri Hemant Singh appeared for the appellant and learned Counsel Shri Ashok Chhabra appeared for the first respondent.
5. Learned Counsel for the appellant drew our attention to the label mark of both the parties. He mainly contended that both the trade marks were substantially identical, confusingly and deceptively similar. He also submitted that as per Section 10(2) of the Act there was no limitation as to colour. Learned Counsel for the appellant further pointed out to the counter statement of the first respondent filed before the Assistant Registrar wherein it was stated that the trade mark 'CHARMY' and 'CHERRY' are phonetically different and they did not cause any confusion in the minds of the public. He also submitted that the first respondent had not produced any evidence and the learned Assistant Registrar while passing the order had not dealt with the question of onus that lay on the first respondent to prove that their mark was not likely to deceive or cause confusion.
6. Learned Counsel for the appellant argued that the learned Assistant Registrar had gone beyond his powers by directing the first respondent to carry out amendment in the label after deleting the black colour as agreed by the first respondent and directed the first respondent to file form TM-16 for the amended label to be brought on record.
7. Learned Counsel for the appellant relied on a few judgments in support of his contentions. Reliance was placed on E. Griffiths Hughes Ltd. v. Vick Chemical Co. in support of his argument that the Assistant Registrar cannot direct the first respondent to amend the mark while the matter was being contested.
8. The learned Counsel for the appellant also sought help from the decision in Amritdhara Pharmacy v. Satya Deo Gupta AIR 1963 SC 449 in support of his contention that when the marks are deceptively similar, the question whether the marks are likely to deceive the public or cause confusion must be approached from the point of view of a man of average intelligence and imperfect recollection.
9. Reliance was placed on Parle Products (P) Ltd. v. J.P. & Co. Mysore in support of his contention that the goods should not be placed side by side to find out if there are any differences between the two. The Supreme Court had also held that the overall similarity to the impugned mark would lead to confusion.
10. Learned Counsel for the first respondent Mr. Ashok Chhabra contended that the colour on the box was already changed and the question of similarity did not arise. He also submitted that the appeal itself was not maintainable as it was an abuse of process of law and had been filed with an oblique motive and that the appeal was hopelessly barred by time.
11. Learned Counsel for the first respondent further submitted that as the mark was not even remotely similar and that no chance of confusion or deception will arise. He also denied the contention of the appellant that the trade mark was deceptively similar and also the colour scheme and get up was a total copy. He also submitted that the trade mark 'CHARMY' is a coined word and has no dictionary meaning and that it had been taken from their trading style, namely, Charmy Industries and that they had been using the mark since 1987 and they had no intention of infringing the appellants mark.
12. Learned Counsel for the first respondent also submitted that the trade mark 'CHARMY' is not at all prohibited for registration under Sections 9 and 12(1) of the Act. He relied on the decision in Hofffmann-La Roche and Co. Ltd., v. Geoffrey Manners and Co. Private Limited in support of his argument that the mark must be compared as a whole and that it was not right to take a portion of the word and say that f he portion of the word differs from the corresponding portion of the word in the other cases. He also relied on two more judgments - Cadila Laboratories Ltd. v. Kandelwal Laboratories Ltd. and Anr. 2004 (29) PTC 749 IPAB and Sandoz Limited v. Hico Products and Ors. 2004 (29) PTC 488 IPAB for the same contention.
13. In rejoinder to arguments advanced by the learned Counsel for the first respondent, the learned Counsel for the appellant drew our attention to para 11 of the same decision relied by the first respondent reported in AIR 1970 SC 2063. He submitted that the Apex Court had arrived at the conclusion whether the mark is similar or not has to be seen from the point of view of a man of average intelligence and imperfect recollection.
14. We have carefully considered the arguments advanced by both the counsel. We are of the view that in order to the qualify for registration as per provisions of Section 9 of the Act, the mark must be distinctive of the goods or if it is not distinctive, it should be capable of distinguishing the goods of the proprietor from the goods of others. With a view to be capable of distinguishing the goods the mark has to acquire distinctiveness over a long period of user. The user of a mark for a period of five months prior to the date of filing the application for registration has no capacity to acquire distinctiveness. The claim under Section 9 of the Act does not sustain as the user claimed is only from 1.6.1987 which is only five months from the datetef filing of application for registration.
15. As far as the question of confusion and deception is concerned, we are of the view that the trade marks are deceptively similar. As a whole the impugned mark bears the entire colour scheme and get up and there is every possibility of confusion and deception being caused among the unwary purchasers. Since the goods are neither distinctive nor capable or being distinguishable, the rights under Section 18(1) of the Act is also not available. The registration is also prohibited under Section 11 (a) of the Act. Moreover, the consumers being same and trade channels also being the same, there is every likelihood of confusion being caused.
16. Taking into consideration the judgment of the Apex Court, it is for the applicant to satisfy that the trademark applied for is not likely to deceive or cause confusion. In the instant case the first respondent has not produced any document to show that there is no confusion or deception caused and as such miserably failed to prove the same. Considering the facts in the instant case, not only the trade mark is deceptively similar, the overall get up and colour scheme of the label is similar and we are of the opinion that there is every possibility of confusion being caused in the public and the mark, if registered will cause confusion among the public.
17. In view of the reasons that the order of the learned Assistant Registrar is set aside, we are not dealing with the powers of the Assistant Registrar in directing the first respondent to carry out amendment by way of filing form TM-16.
18. Accordingly, the appeal is allowed and the order of the Assistant Registrar of Trade Marks, New Delhi is set aside. However, there will be no order as to costs.