Intellectual Property Appellate Board
Bata India Limited vs Deputy Registrar Of Trade Marks And Ors. on 31 August, 2004
Equivalent citations: 2004(29)PTC468(IPAB)
JUDGMENT
S. Jagadeesan, Chairman
1. The appellant preferred this appeal against the order of the first respondent dated 17.8.1994 where under the appellant's opposition No. DEL - 7729 in respect of second and third respondents' application No. 446013 for registration of the trade mark 'BSC' was disallowed.
2. Respondents No. 2 and 3 are carrying on business under the name and style Chane Machinery Works and they filed application No. 446013 on 25.11.1985 for registration of the trade mark containing an artistic device with words 'BSC' in respect of sewing machine parts. The said application was advertised in the Trade Marks Journal No. 1025 dated 16.2.92 at page 1417. The appellant herein on 18.5.92 filed a notice of opposition to oppose registration of the mark advertised on the following grounds:-
(i) That the appellants are the registered proprietors of the trade mark 'Bata' under No. 132294 as of 20.1.1948.
(ii) Appellants are also registered proprietors of trade mark 'BSC' in different classes in respect of footwear made of rubber, leather and other materials. The impugned mark seeking registration is identical with and / or deceptively similar to the appellant's registered trade mark BSC. BSC stands for Bata Shoe Company.
(iii) The registration of the mark applied for is contrary to the provisions of Sections 9, 11 (a), 11(e), 12(1) and 18(1) of the Trade and Merchandise Mark Act, 1958 (hereinafter referred to as the Act).
3. On 30.7.1993, respondents No. 2 and 2 filed their counter refuting the material averments in the opposition and further slated that they adopted the impugned mark in the year 1975 which is a composite trade mark in respect of sewing machine parts and that the impugned mark has attained goodwill and reputation in the market due to long user. Further, it was pleaded that the appellants are dealing in footwears and leather goods included in class 25, whereas respondents are dealing in sewing machine parts included in class 7. The parties filed their evidences by way of affidavits and documents and after the completion of the procedure, the Deputy Registrar heard counsel of respective parties. Ultimately under the impugned order the Deputy Registrar has overruled the objection of the appellant under Section 12(1) of the Act on the ground that the goods of respondents No. 2 and 3 are totally different from the goods of the appellant and further the impugned trade mark contains as artistic device with letters 'BSC' and the same device distinguishes the impugned mark from that of the appellant's mark. The Deputy Registrar further held that Sections 11 (a) and 11 (e) of the said Act are not attracted on the ground that the appellants have not established extensive use of the trade mark 'Bata* and 'BSC' as the sales statistics do not contain the particulars. He has also found that the appellant has not chosen to file the statistics for the rest of the period except from 1982 to 1992. He also overruled the objection under Section 9 of the Act on the ground that the impugned mark has distinct features to distinguish itself from the appellant's mark. The Deputy Registrar also overruled the objection of the appellant existing under Section 18(1) of the Act on the ground that the goods are different and consequently disallowed opposition DEL - 7729 filed by the appellant and directed to proceed with registration of application No. 446013 in class 7 filed by respondents No. 2 and 3. As against the same, the appellants preferred to file an Appeal CM(M) No. 171/95 on the file of High Court of Delhi at New Delhi which stood transferred to this Appellate Board by virtue of Section 100 of the Trade Marks Act, 1999.
4. We heard Ms. Prathiba M. Singh learned counsel for the appellant and Shri Manmohan Singh learned counsel for respondents No. 2 and 3. Learned counsel for the appellant vehemently contended that the appellant is the registered proprietor of the trade mark 'Bata' and 'BSC' and the appellant is manufacturing footwear and leather goods. The appellant have registered the trade mark 'BSC' as mentioned below:-
Trade Mark Registration No. Date of Registration 183580 12.02.58 183582 12.02.58 269834 22.01.71 269144B 04.01.71 270091 15.02.71 270092 15.02,71 270202 15.02.71 277602 07.01.72
The appellant has got a very good reputation and goodwill and taking advantage of the same respondents No. 2 and 3 have adopted the impugned mark. The learned counsel further contended that the annual turnover of the goods under the trade mark 'BSC was Rs. 53,80,55,000 in the year 1982 and increased to Rs. 114,64,15,000 in the year 1992. Further the use of the impugned mark by respondents would also create confusion in the mind of the general public as if the appellants are the manufacturers of the sewing machine parts manufactured by respondents No. 2 & 3. The Deputy Registrar has totally failed to consider the relevant provisions and also committed a grave error in overlooking some of the evidences filed by the appellant, including the sale statistics.
5. Learned co unsel for respondents with equal force contended that the goods of the respondents are totally different from that of the appellants since the goods of the respondents fall under class 7 whereas the goods of the appellant fall under class 25. Learned counsel for the respondent also pleaded that his client is willing to restrict the use of the impugned mark within the State of Punjab where they are having their business. Moreover, the appellant is using the mark 'BSC' alongwith 'Bata'. Appellant never used either 'Bata' or 'BSC' separately in any of the advertisements. When the appellant is using the mark 'BSC' alongwith 'Bata', then, both should be taken together and each one cannot be separated. When there is no possibility of any confusion so far as the goods are concerned, the impugned order of the Deputy Registrar need not be interfered with. In fact the Deputy Registrar has taken into consideration all the relevant facts and materials and finally disallowed the opposition of the appellant. There is no infirmity in the order of the Deputy Registrar and as such there is no need for making the appeal.
6. We have ca refully considered the above contentions of both the counsel. The appellant under Trade Mark No. 277602 dated 7.1.72 has registered the mark 'BSC' in respect of footwear and parts of footwear included in class 25, under Trade Mark No. 183470 dated 4.2.58 registration of the trade mark 'Bata' is in respect of Banian (hosiery). The Trade Mark No. 183469 dated 4.2.58 is mark 'Bata' in respect of Umbrella. In Trade Mark No. 183467 dated 4.2.58, the mark 'Bata' is in respect of dusters made of cotton fabric. Similarly, under Trade Mark No. 132294 dated 20.1.48 the mark 'Bata' is in respect of machines for making shoes, machinery for making rubber goods like shoes, toys, balls, machinery for sewing shoes. From the above it is clear that the appellant had registered the mark 'BSC in class 25 for footwear and parts and the mark 'Bata' for different goods including machines for making shoes, machinery for making rubber goods like shoes, toys, balls and machinery for sewing shoes. From the evidence before the Deputy Register as well as before us, only one trade mark No. 277602 relates to the mark 'BSC' in respect of footwear and parts of footwear included in class 25. The mark 'Bata' has not been registered in respect of shoes, but under different classes including machines in class 7. The mark 'BSC' is not registered under class 7. We have also perused the advertisements available at pages 79 to 85 of the type set. In pages 79 to 83 the mark is advertised as 'Bata /BSC'. In pages 84 and 85 alone the mark 'BSC' appears with the figure of chappal. So it is clear that most of the advertisements of the appellant contains both the marks 'Bata and BSC'. Except in advertisement at pages 84 and 85 there is nothing on record to show that the appellant has used the mark 'BSC' in respect of shoes individually. Their own case is that 'BSC' stands for Bata Shoe Company. The word mark 'Bata' also stand for Bata Shoe Company. When that be so, it is not clear as to how the sales statistics can represent only the 'BSC' mark. Even if it is so it can be only in respect of shoes and footwear. In that case the appellant must have filed separate sales statistics in respect of the mark 'Bata' which is not before us. When the appellant uses the mark 'Bata' as well as 'BSC' as a combined mark and only in respect of footwear, now it is not open to him to claim that he is using the trade mark 'BSC' separately, especially in the absence of any evidence to establish the same. The two isolated advertisement pamphlets cannot be conclusively taken that BSC mark is being used by the appellant as independent mark without the word mark 'Bata'.
7. Coming to the impugned trade mark, the case of the Respon dents 2 and 3 is that they have adopted the said trade mark since 1975, the letters 'BSC' with a device as given below:
Respondents have also produced evidence of their bills and invoices wherein this device with a letter mark had been used since 1978. When the respondents are dealing only in sewing machine parts falling under class 7, it cannot be said that the goods of the appellant as well as of the respondents are of the same kind or same description. There is no dispute with regard to the nature of goods. The appellant also did not dispute seriously the use of the impugned device and word mark by the respondents since 1978. When that be so, the respondents have also built up a reputation and goodwill of their own in respect of the impugned mark relating to their products. Sewing machine parts cannot in any way be compared with the appellant's goods under their 'BSC' mark as the goods are distinct and different, having independent identity, we are of the view that there cannot be any confusion in the trade or in the minds of the consumer. Further taking into consideration the statement made by the learned counsel for respondents that respondent Nos. 2 and 3 are restricting the use of the impugned trade mark within the State of Punjab, we find that the appellant may not be in any way be prejudiced by the registration of the impugned trade mark restricting the territorial jurisdiction of the same within the State of Punjab alone. Respondent Nos. 2 and 3 are entitled to use the impugned trade mark only within the State of Punjab. The appellant also did not produce any evidence with regard to confusion. Hence we are of the view that the Deputy Registrar had rightly held that the objections of the appellant deserves no merit. Though both the counsel cited several judgments, we are of the view that there is no need to go in for any precedents. Consequently, we confirm the impugned order of the Deputy Registrar and dismiss the appeal. However, we restrict the use of the impugned trade mark by respondent Nos. 2 and 3 to the State of Punjab. There will be no order as to costs.