Delhi High Court
Sarda Plywood Industries Ltd. vs Tac Construction Materials Ltd. And ... on 12 September, 2003
Equivalent citations: 107(2003)DLT687, 2003(27)PTC391(DEL)
Author: Pradeep Nandrajog
Bench: Pradeep Nandrajog
JUDGMENT Pradeep Nandrajog, J.
1. Whether the mark "DURACEM" used as a trade mark in respect of non-metallic building materials included in Class 19 so nearly resembles the words "DUROPLY, DUROBORD, DUROMAC, DURODERBY and DUROTEAK in respect of goods in Class 19 and particularly the trade mark "DUROPLY" in respect of laminates, teakply, panes, etc. so as to cause deception or likely to cause confusion within the definition of Section 2(1)(d) read with Sections 11(a) and 12(1) of the Trade and Merchandise Act, 1958 arises for consideration in the present proceedings.
2. On 19.4.1984, the respondent filed an application for registration of the trade mark "DURACEM" which was registered as application No. 420899 in Class 19 in respect of non-metallic building material as proposed to be used. On being advertised, petitioner filed the notice of opposition on 10.9.1990 opposing the registration of the mark, alleging that the same would be contrary to the provisions of Sections 9, 11(a), 18(1) and 18(4) of the Act. It was averred that the petitioner is met registered proprietor of the trade mark "DUROPLY", "DUROBORD", "DUROMAC", "DURODERBY" and "DUROTEAK" in Class 19 pertaining to laminates, teakply, pane, etc. In particular the trade mark "DUROPLY" was highlighted as being continuously and extensively used since the year 1964. Phonetic, as well as visual deceptive similarity was brought in aid.
3. By order dated 31.12.1993, the opposition was overruled and the Registrar of Trade Marks proceeded to register the trade mark "DURACEM" applied for by the respondent.
4. In so directing the Registrar of Trade Marks held that the mark applied was neither phonetically nor visually nor structurally similar to that of the petitioner and, therefore, there was no question of the same being identical or deceptively similar to the mark of the petitioner. It was also held that the goods of the petitioner are basically derivates of wood being laminates, teakply, pane, etc. whereas those of the respondent are non-metallic building material.
5. I have considered the submissions made by Mr. Manmohan Singh, learned Counsel for the petitioner, who has vehemently contended that the impugned order dated 31.12.1993 has proceeded to wrongly appreciate the law; has not applied the correct legal principles and therefore the discretion exercised by the Registrar of Trade Marks is not only with material irregularity but in registering the trade mark of the respondent, Registrar of Trade Marks has exercised jurisdiction which is not vested in him by law.
6. The law on the subject to deceptive similarity is well crystallised and I need not refer to the various authorities cited by learned Counsel for the petitioner.
7. The principle of law can be traced back to the decision in Eno v. Dunn, (890) 15 AC 252 : 7 RPC 311. There the following passage with which all subsequent decisions have completely agreed may be taken to be a fair statement of the duty cast upon the Court in such cases. The passage reads as under:
"The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of Section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants."
8. Section 2(1)(d) of the Trade and Merchandise Act defines "deceptively similar" as:
"a mark shall be deemed to be deceptively similar to another mark, if it so nearly resembles that other mark has to be likely to deceive or cause confusion."
9. Section 9(1)(e) stipulates that a trade mark shall not be registered in part 'A' unless it contains or consists of a distinctive mark. Section 11(a) of the Act prohibits the registration of a mark, the use of which would be likely to deceive or cause contusion. Section 12(1) of the Act, subject to Sub-section (3) thereof prohibits the registration of trade mark in respect of goods or description of goods which is already registered in the name of different proprietor in respect of the same goods or description of goods.
10. The concept of goods falling in the same class also needs a little clarification. Physical or Chemical attributes of the goods are not relevant to determine whether the goods fall in the same class or would fall in the same description. The test has to be : what is the trade channel through which the goods reach the consumer and which is the class of consumers purchasing the goods. For example, rice is different than wheat. However, the same are marketed to the consumer through the same medium i.e. retail departmental stores and being food item are purchased across the counter by the same class of consumers. Thus rice and wheat would fall in the category of goods falling in the same description. Further guidance can be taken to the classification of goods in various classes under the Trade and Merchandise Marks Act, 1958 and all goods classified under one entry would be presumed to be falling in the same class.
11. Turning to the test of visual and phonetic similarity, as applied in India, a few judgments may be noted : In AIR 1989 Delhi Bombay Oil Industries Pvt. Ltd. v. Ballarpur Industries Ltd., mark "SAFFOLA" was held phonetically similar to the mark "SHAPOLA". In ; Corn Products Refining Company v. Shangrila Food Products Ltd., dealing with the marks "GLUCOVITA" and "GLUVITA", the Hon'ble Supreme Court, in reference to English words held that no doubt, assistance from cases in England could be taken where phonetic or visual similarity in two marks was being alleged but these cases must be applied with a little caution in India. Because, it could not be overlooked that an English word used in India, to the mass of Indian people, being a foreign word would deceive differently than the manner in which an English can could be deceived. It was observed:
"Again, in deciding the question of similarity between two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structure and phonetic similarity and the similarity of the idea in the two marks is reasonable likely to cause a confusion between them."
12. In ; Amritdhara Pharmacy v. Satya Deo Gupta, the Hon'ble Supreme Court held that the names "LAKSHMANDHARA" and "AMRITDHARA" were deceptively similar. The judgment is illustrative of the legal proposition that where a word could split into two parts, the first part being quite distinct from the other but the second part being common, it was no argument that a major part of the word was different. It was held that an unwary purchaser of average intelligence and imperfect recollection would not split the name into two components and consider the etymological meaning thereof or even consider the meaning of the composite words. The overall similarity of the composite word had to be looked into.
13. On the principles of law extracted above and as explained in the judgments noted above, let us look to the trade mark "DURACEM" and "DUROPLY". The respondent proposed to use the mark in respect of non-metallic building materials which were included in Class 19. The petitioner made an opposition in respect of material used in the construction of buildings, though being derived from wood but falling in Class 19. The trade channel of the two goods would therefore be same. They would be reaching the consumer in the construction activity through the same set of retail shops selling construction material. It cannot be said that an average consumer of ordinary intelligence and imperfect memory would not be confused that the two emanated from the same source. Phonetically, the sound "Duro"... "Dura" would ring in his mind. Visually the imprint of "Duro"...."Dura" would linger in his memory.
14. For the reasons stated above, the petition is allowed. The impugned order dated 31.12.1993 passed by the Registrar of Trade Marks is set aside. Opposition No. DEL-6889 filed by the petitioner is allowed. Application No. 420899 filed by the respondent would as a consequence stand rejected. Since there was no appearance on behalf of the respondent, there shall be no order as to costs.