Intellectual Property Appellate Board
Aktiebolaget Skf A Company Organised ... vs B.N. Mondal, G.N. Mondal, P.N. Mondal, ... on 15 February, 2008
ORDER
M.H.S. Ansari, J. (Chairman)
1. The appeal is directed against the order dated March 25, 2003 read with the order dated 11.4.2005 in the Review Petition asking review of the earlier mentioned order dated March 25, 2003. By the order dated March 25, 2003 the application of respondent for registration of the Trade Mark SKE under Application No. 552741 in respect of plummer block cast iron being goods included in class 6 was allowed to proceed to registration subject to restriction of the goods for sale in the state of West Bengal only. Though, the user was claimed in the application for registration since July 1949, the application was accepted for registration subject to amendment of the statement of user to read as since 17.8.1974. Appellant before us was the opponent before the Registry and had filed its opposition on the ground that it is the registered proprietor of the mark "SKF" which is also their house mark and is registered in various classes i.e. in class 6, 7, 8, 9 & 12.
2. Respective parties filed their evidence in support of opposition and applicant filed evidence in support of their application. The application for registration is opposed mainly on the objections taken under Sections 9, 11(a), 11(e), 12(1) and 18 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act)
3. Learned Assistant Registrar in the order under appeal rejected the opponent's objection under Section 9 of the Act mainly on the ground that the mark submitted for registration is pronounceable word although it consists of three letters SKE.
4. While dealing with the opponent's objection under Section 11(a) of the Act, it was held that the onus is on the opponent to establish use of the mark and reputation in the trade. It was held that the opponents have filed their evidence to establish the use and reputation of their mark but there is not a single instance of confusion or deception have been brought to the notice of the Tribunal and, therefore, the opponents have failed to make out the case under Sections 11(a) and 11(e) of the Act.
5. While dealing with the objection under Section 12(1) of the Act learned Assistant Registrar rejected the same on the ground that "in this case the goods of the opponents and the applicants are similar, but both the rival marks are not identical or deceptively similar".
6. With regard to the objection under Section 18 of the Act it was held that "The applicants have given the convincing explanation for the adoption of the trade mark 'SKE' and made out a strong and valid case to the registration of the impugned trade mark and, therefore, the opponents objection under Section 18(1) of the Act cannot be sustained".
7. The above findings and conclusions have been assailed in the instant appeal.
8. Shri Ajay K. Gupta relied upon 40 LX RPC 87, a judgment of the Chancery Division in the matter of an application by Rysta wherein it was reiterated that the onus to prove that there is no reasonable probability of deception is cast upon the applicant. The onus, it is well settled is on the applicant to prove that there is no reasonable probability of deception or confusion, if the mark applied for is registered. We are of the view that the learned Assistant Registrar erred in holding that the opponents have failed to establish confusion or deception. The burden of proving that the mark which a person sought to register was not likely to deceive or cause confusion was upon the applicant. The Act or the Rules framed thereunder do not enjoin shifting the onus from the applicant to the opponent at any stage of the proceedings. National Sewing Thread Co. Ltd. v. James Chadwick & Bros. Ltd. relied upon by Shri A.K. Gupta is an authority for the proposition that the burden of proving that the trade mark which a person seeks to register is not likely to deceive or cause confusion is upon the applicant. It is, therefore, for the applicant to establish that the mark applied for registration is not likely to cause confusion or deception in the minds of the purchasing public with the goods bearing similar mark of the opponents - appellants. Let us now consider whether the rival marks are similar or there is a likelihood of mistake being committed by the unwary purchaser in identifying the trade mark of the applicant with the goods of the appellant.
9. The Delhi High Court in Aktiebolaget SKF v. Rajesh Engineering Corporation 1997 PTC (16) page 160 considered the trade marks 'SKF' and 'SKI' and held that it was manifest from the two trade marks that the first two letters thereof are common. Only the last letters in the two marks are different. Since the first two letters of the competing marks being identical they bear a close similarity. It was further held that there is possibility and likelihood of mistake being committed by an average man of ordinary prudence and intelligence in identifying the trade mark 'SKI' with the goods of the appellant.
10. Also an earlier Bench of this Board in its order No. 54/05 considered the question of similarity between the appellant's registered trade mark 'SKF' and registration of the trade mark 'SKE' applied for in that case. It was held that the rival marks are deceptively similar with two strong consonants S & K being at the first two places. It was further held that in its geometrical presentation, the letter E & F bear too much of resemblance leading to confusion.
11. In view of the above two decisions, there is hardly any scope to doubt that the rival marks 'SKE' and 'SKF' bear too much resemblance leading to confusion and there is every likelihood of the goods bearing the mark applied for being mistaken with the goods of the appellant bearing similar mark. We hold accordingly
12. Already, as noticed above, learned Assistant Registrar held that the goods covered by the rival marks are similar. The appellant being the registered proprietor of the trade mark 'SKF' which is also their house mark registered in various classes 6, 7, 8, 9 and 12, the (SKE) mark applied for registration by the respondent ought to have been refused on the grounds of violation of Section 11(a) and 12(1) as also under Section 18(1) of the Act. The appellant being the prior registered proprietor of a similar mark for identical goods, the respondent / applicant was not entitled to registration of a similar trade mark for identical goods as that would be in violation of Sections 11(a) and 12(1) of the Act.
13. Besides, the appellant being the prior adopter and user of the registered mark, respondent cannot claim proprietorship. The objections under Section 18(1) of the Act ought to have been sustained.
14. In our view, therefore, the order under appeal cannot be sustained and is accordingly set aside. The appeal is allowed. However, as none has appeared on behalf of the respondent, there shall be no order as to costs.