Intellectual Property Appellate Board
P.M. Diesel Private Limited Now P.M. ... vs Thukral Mechanical Works And The ... on 11 February, 2005
Equivalent citations: 2005(30)PTC454(IPAB)
ORDER
Raghbir Singh, Vice Chairman
1. Appeal Nos. 1 to 10 of 1993 were filed in the High Court of Gujarat at Ahmedabad and have been transferred to this Board in terms of section 100 of the Trade Marks Act, 1999 and numbered as TA No. 240 to 249/04.
2. Appellant filed application Nos. 423258 to 423267 in class 7 on 16.6.1984 for registration of label mark consisting of word 'FIELD MARSHAL' in different Indian languages. The specification of goods in all the 10 applications are 'Diesel Oil Engines' (not for land vehicles) and parts thereof, centrifugal pumps, submersible pumps, electric motors (not for land vehicles), mono block, foot valve being all goods included in class 7 and the user claimed is since the year 1975. The mark was advertised in the Trade Marks Journal No. 960 dated 1.6.1989.
3. First respondent filed opposition on 28.7.1989 contending inter-alia that they are the prior user of the mark being the registered proprietor of trade mark No. 228867 dated 13.5.1965 in class 7 for the specification of goods reading as flour mills, circulating and centrifugal pumps, couplings for machines, pulleys included in class 7 and valves (parts of machines). They submitted that the impugned mark is objectionable under sections 11(a), 11(e) and 12(1) of the Act and also prayed for the exercise of discretion vested in the Tribunal under section 18(4) of the Act in their favour.
4. Appellant filed their counter statement on 20.3.1990 controverting the averments of the first respondent. They also submitted that they are the registered proprietors of the mark 'FIELD MARSHAL' under registration Nos. 224879 dated 16.10.1964, 252070 dated 4.10.1968 and 252071B dated 4.10.1968 in class 7. They also contended that the trade mark No. 228867 acquired by the first respondent from the previous holder is tainted and is under challenge for rectification in the Delhi High Court.
5. In due course evidence was filed by both the sides. Since the parties to all the applications are the same and the issues involved being also the same, learned Assistant Registrar, with the concurrence of both the counsel, chose to hold a combined hearing for all the 10 applications. The hearing was held on 31.7.1992 in the presence of learned counsel Shri Y.J. Jasani for the appellant and Shri Amarjeet Singh learned counsel for the first respondent. The Assistant Registrar held that the existence of an earlier identical registered trade mark 'FIELD MARSHAL' for the goods in question under No. 228867 as of 13.5.1965 is not in dispute. Some of the goods under the impugned mark are covered under the earlier registration 228867 held by the first respondent. Thus the Assistant Registrar held that the impugned mark is prohibited for registration for the goods which forms part of an earlier identical registered trade mark No. 228867 in terms of section 12(1) of the Act.
6. In matter of eligibility of the mark under section 12(3) of the Act, the Assistant Registrar proceeded to examine the mark under that section having mentioned that there is no request from the appellant in that regard. He decided that goods are different and there had not been an honest and concurrent use of the marks. So the appellant is not entitled for registration under section 12(3) of the Act. He made a reference to the agreement dated 23.4.1975 entered into between M/s J. Chandrakant & Company and M/s Indira Engineering Ahmedabad Pvt. Ltd. which is in the nature of correspondence between the dealers of the appellant , and thus held that that letter is no substitute for an agreement. He did not put reliance upon that as an agreement in the nature of a registered user. In view of he having held that the mark is not registrable in view of the provisions of sections 12(1) and 12(3) of the Act, he chose not to go into the examination of the mark under section 11(a) and 11(e) of the Act. He held that in matter of proprietory rights of the appellant in terms of section 18(1) of the Act, they have every right to extend their claim for the registration of the same mark in respect of other goods included in class 7. He chose not to exercise his discretion under section 18(4) of the Act. In conclusion, he allowed all the 10 oppositions and held that the appellants are not entitled to registration of the impugned mark for the specification of goods as sought for in their applications.
7. All the 10 appeals were listed together for hearing at Ahmedabad on 26.7.2004, 29.9.2004, 20.12.2004 and in the hearing held on 20.12.2004 learned counsel for the appellant sought adjournment. It was ordered vide order No. 224 dated 20.12.2004 with the consent of the counsel for both the sides that the matter may be adjourned and be listed for disposal on 27.1.2005 in the sitting of the Board to be held at Delhi. Accordingly, the appeals were listed for hearing on 27.1.2005 at Delhi. Appellant moved M.P. No. 136 of 2004 to bring on record the documents relating to the tile of trade mark No. 228867. It was considered and allowed. Learned counsel Sudhir Chandra assisted by Shri R.K. Agarwal and Shri Y.J. Jasani appeared on behalf of the appellant and learned counsel Shri Amarjeet Singh appeared for the respondent.
8. The appellant in all the 10 appeals has made similar submissions. It has been contended that the Assistant Registrar has grossly erred in allowing the opposition to the extent that the appellant is not entitled for the registration of the mark for the specification of goods as sought for in the applications. He further erred in not allowing at least for the goods which are not covered under the registration No. 228867 of the first respondent. The Registrar has erroneously interpreted the provisions of section 12(1) of the Act and has drawn unwarranted inferences there from. The assignment of the trade mark 228867 is under challenge in the Delhi High Court and the Assistant Registrar was wrong in reaching his conclusions based upon that registration. Assistant Registrar should have held that the prohibition resulting from section 12(1) of the Act is subject to provisions of section 12(3) of the Act and thus should have allowed registration for goods covered under registration No. 228867. Assistant Registrar failed to appreciate that appellant and their predecessor in title has made honest concurrent use of the trade mark since 1963-65. Assistant Registrar has failed to appreciate that the honest concurrent use in terms of section 12(3) is not necessarily of a registered trade mark but also are in relation to an unregistered trade mark. Assistant Registrar should have negatived the contention of the first respondent that the appellant was guilty of misrepresentation by putting letter 'R' in a circle on their impugned mark. The Assistant Registrar erred in appreciating the appellant's contention that the goods "Centrifugal pumps, Submersible Pumps, Electric Motors (not for land vehicles), Monoblock, Foot Valve" specified in the appellant's applications for registration were allied and cognate goods to "Diesel oil Engines (not for land vehicles) and parts thereof" and, therefore, the appellant was entitled to registration. The Assistant Registrar having held that the appellant is the registered proprietor of the trade mark 'FIELD MARSHAL' for diesel oil engines had every right to extend its claim for the registration of the said mark in respect of other goods erred in denying registration.
9. In the hearing held at New Delhi, the learned counsel for the appellant at the outset explained that the rejection of the mark under section 12(1) of the Act is wrong. He should have allowed the registration thereto under section 12(3) of the Act. He submitted that the predecessor in interest of the first respondent M/s Jain Industries Limited never used the mark 'FIELD MARSHAL' under registration No. 228867 for centrifugal pumps and he only used it for the flour mills. The Assistant Registrar has either grossly misread the evidences or ignored the substantial portion of evidence produced by the appellant. He drew our attention to page Nos. 82 to 86 of the compilation of record wherein a letter dated 26.4.1975 written by Patel Manufacturers the predecessor in interest of the appellant to M/s Indira Engineering Ahmedabad has been placed, wherein they had informed the addressee that M/s Patel Manufacturers have permitted J. Chandrakant & Company, Rajkot to place order for 'FIELD MARSHAL' centrifugal pumps to them (M/s Indira Engineering Ahmedabad Pvt. Ltd). Thus he intended to imply that M/s Indira Engineering Ahmedabad was a licencee in this regard and thus there had been an effective use of the mark as back as in 1975. He drew our attention to an invoice placed at page 93 wherein the said M/s Chandrakant & Company had Supplied certain 'FIELD MARSHAL' power driven pumps to a firm at Farukkabad, Uttar Pradesh vide invoice dated 6.5.1975. There are similar invoices placed at pages 94,95 and 96 from the said M/s J. Chandrakant & Company relating to power driven pumps. He drew our attention to invoice placed at page Nos. 100 to 111 which related to invoices of 1982 from M/s P.M. Diesel Private Limited to different firms. However, none of these invoices make a mention of centrifugal pumps - neither of M/s J. Chandrakant & Co., nor of M/s P.M. Diesel Private Limited. He drew our attention to copies of certain advertisements placed at pages 112 to 140 wherein M/s P.M. Diesel Private Limited has put caution notice for certain people infringing upon their trade mark referred to in those advertisements. Certain affidavits placed at pages 194, 204 to 206 from certain dealers from Palwal have been filed indicating that they are aware about the centrifugal pumps manufacture red by M/s Thukral Mechanical Works and by M/s P.M. Diesel Private Limited, but they deal only in the centrifugal pumps manufactured by M/s P.M. Diesel Private Limited. Learned counsel further drew our attention to certain invoices of the first respondent wherein he alleged that either the mark 'FIELD MARSHAL' is absent or has been interpolated. He drew our attention to the affidavits filed by Mr. Sunilkumar of Thukral Mechanical Works under Rule 55 of the Trade and Merchandise Marks Rules, 1959. Learned counsel for the appellant took us to L.D. Malhotra Industries V. Ropi Industries PTC SUPPL (2) 564 DEL wherein the Delhi High Court held that anterior use by a person of a trade mark is protected under law and priority in adoption and use of trade mark is superior to priority on registration. He then took us to Vishnudas V. Vazir Sultan Tobacco Co. 1996 PTC (16) 512 wherein the Supreme Court held that if a trader or manufacturer actually trades or manufactures only one or some of the articles coming under product classification and such trader or manufacturer has no bonafide intention in or manufacturing other goods or articles which also fall in the said broad classification, the said trader or manufacturer should not be permitted to enjoy the monopoly in respect of all the articles. He made a reference to E. Merck Aktiengesellschaft V. Schering Ltd. PTC SUPPL (1) 640 BOM wherein the Bombay High Court held that once user by a proprietor of a trade mark is shown the application for registration under section 18(1) of the Act can be filed. He drew our attention to J & W Hardie V. Joseph E Seargram PTC Suppl 1 567 CAL wherein the extent of use in relation to honest concurrent use was discussed by the Calcutta High Court and it was held that it is upto the discretion of the Registrar for taking into consideration the extent of concurrent use.
10. Learned counsel for the first respondent drew our attention to the counter statement of the appellant placed at page 66 in TM-6 wherein no pleadings in relation to section 12(3) of the Act have been made. No evidence has been let in that regard. Hence he argued that pleas being raised about entitlement under section 12(3) of the Act are beyond the pleadings and as such are not admissible. He drew our attention to the registered mark No. 228867 of the first respondent. Its registration was granted as from 13.5.1965 and user claimed therein is January 1963 and thus he pleaded that the first respondent is much prior as user. He pointed out that the rectification application filed by the appellant in relation that mark has been dismissed by the IPAB in its order No. 177/2004 issued on 27.10.2004. Registration No. 252070 of the appellant is as from 4.10.1968 and is restricted to diesel engines only. Similarly registrations of the appellant under No. 252071 and 224879 are respectively for the years 1968 and 1964 and relate to only diesel engines. In registration under number 389729 dated 10.5.1982 user is as from 1965 for diesel engines and it is proposed to be user in relation to pumps and motors.
11. Learned counsel for the first respondent drew our attention to P.M. Diesels Pvt. Ltd. V. Thukral Mechanical Works AIR 1988 Delhi 282 where Mr. Justice B.N. Kripal held that by a reading of the provisions of sections 28(1) and 31(1) together, the implication would be that as long as the trade mark stands registered in the name of a proprietor, the said registration shall be deemed to be valid and the registered proprietor would have an exclusive right to use the said trade mark. If the registration is cancelled by an action being taken under section 56 of the Act, then, the protection and right afforded under section 28(1) read with section 31(1) would no longer be available. Learned counsel drew our attention to the evidence in support of their user relied upon by the appellant being the agreement between M/s J. Chandrakant & Co. and M/s Indira Engineering Ahmedabad Pvt. Ltd. placed at pages 83 and 84 of the paper book along with the letter written by M/s Patel Manufacturers to M/s Indira Engineering Ahmedabad Pvt. Ltd. informing that they have permitted M/s J. Chandrakant & Co., to place order for 'FIELD MARSHAL' centrifugal pumps to addressee. The appellant relied upon this as a piece of evidence in support of his user. The learned counsel assailed these documents as no substitute for a licence agreement. He submitted that it is a vaguely written correspondence having no certain terms or the purpose therefore. He drew our attention to the invoices and other related documents placed at pages 94 to 97 and 99 relied upon by the appellant and submitted that these are the invoices from M/s J. Chandrakant & Co having no locus standi in the matter and thus are the documents which cannot be relied upon as an evidence for user. Then there are certain invoices of M/s P.M. Diesels placed at pages 100 onwards which are dated 1982. These invoices in no certain terms convey that M/s P.M. Diesels had been manufacturing centrifugal pumps. In any case those evidences are for the period beginning 1982 onwards. He took us to evidence placed at page 223 which is a telegram sent to M/s Thukral Mechanical Works, Sirhind by Shri Karam Chand Aneja who is the authorized representative of the appellant placing order for 6 pumps. There are other documents placed at pages 228,229, 231 in support of the evidence of the first respondent in the nature of correspondence in relation to the 'FIELD MARSHAL' centrifugal pumps. Learned counsel emphatically stated that section 12(1) of the Act creates a statutory bar against the appellant. There is complete identity of the mark and identity of goods. First respondent is the registered proprietor of mark 'FIELD MARSHAL' since 1965 for the same description of goods wherefore the impugned applications have been filed. Learned counsel took us to National Sewing Thread Co. Ltd. V. James Chadwick and Bros Ltd., AIR 1953 SC 357 wherein it was held that the burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of section 8 of the Trade Marks Act, 1940 and therefore it should be registered. He drew our attention to a suit filed by the appellant against the first respondent wherein a plea has been taken that the use of the trade mark 'FIELD MARSHAL' for centrifugal pumps by the first respondent will cause confusion. He took us to Prem Nath Mayer V. Registrar of Trade Marks AIR 1972 CAL 261 wherein the said High Court has held that the burden to prove that the impugned mark is not likely to deceive or cause confusion is upon the applicant. The rules under the Act do not enjoin a shifting of the onus from the applicant to the opponent at any stage of the proceeding. In K.R. Beri & Co. V. The Metal Goods Mfg. Co. Pvt. Ltd. AIR 1980 DEL 299 it was held that under section 48(2) the permitted use of a trade mark is deemed to be use by the proprietor. While explaining this proposition the learned judge elaborated that that being the scheme of the Act, it is not possible to accept the contention that even without the use by a registered user, use by any person can be concluded as to use by the proprietor. Thus the proposition of law being that the use of a trade mark by an unregistered user cannot be equated to the use by a proprietor. He argued that in the instant case user by M/s Indira Engineering Ahmedabad Pvt. Ltd., if any, is a user by an unauthorized person having no locus standi. He argued that the very claim of the appellant for grant of honest concurrent use under section 12(3) is based upon the premise of having accepted the use of the mark by the first respondent, that is position at law. He submitted that this is in spite of the fact that they are not entitled to the benefit of section 12(3) of the Act in view of the fact that in the pleadings they have nowhere claimed that the benefit of section 12(3). Learned counsel submitted that the proposition of law for entitlement under section 12(3) is well laid down. Honest concurrent use mandates an uninterrupted continuous use. In the given case, the honesty of purpose lacks. Evidence of use prior to the filing of application are nowhere to be found. In conclusion, he submitted that the ratios of the L.D. Malhotra and Vazir Sultan cases are of no avail to the appellant.
12. In reply learned counsel for the appellant drew our attention to the judgment of Calcutta High Court reported as Caprihans (India) P. Ltd. V. Registrar of Trade Marks 80 CWN 222 wherein it was held that the use of an unregistered trade mark under licence granted by the proprietor bonafide under his control and supervision is a lawful use.
13. We have carefully gone through the pleadings filed by the appellant and the first respondent and heard the arguments from both the sides. Appellant is the registered proprietor of the trade 'FIELD MARSHAL' under registration No. 228867 dated 13.5.1965 in class 7 for circulating and centrifugal pumps besides certain other machinery items. The impugned application Nos. 423258 to 423267 in various Indian languages relate to registration of trade mark 'FIELD MARSHAL' in relation to various machinery items including centrifugal pumps. The whole bone of contention had been in matter of registration for the centrifugal pumps. Learned counsel for the first respondent had submitted at various stages that they shall not have any objection if the appellant withdraw their applications and file fresh applications for the items not covered under their registration No. 228867. However, the appellant does not appear to be aggreable to that proposal.
14. The main proposition of law which has been raised in the present case relate to sections 11 (a) read with section 11(e), 12(1), 12(3) and 18(1) of the Act. Section 12(1) of the Act creates a statutory bar against registration of identical marks and for identical goods or description of goods. There is no dispute in the present case that there is a complete identity of the mark, the mark being word per se 'FIELD MARSHAL'. The goods also happen to be identical being the centrifugal pumps. Learned counsel for the appellant has tried to prove his user dating back to 1975 by relying upon a letter written by their predecessor in interest M/s Patel Manufacturers. Again reliance has been placed upon the agreement of dealership entered between M/s J. Chandrakant & Co., and M/s Indira Engineering Ahmedabad Pvt. Ltd. Nothing has been adduced to prove linkage of these companies in matter of they being the registered users of the registered trade marks of the appellant hereinabove. Since the burden of proof of user is upon the appellant, the appellant has utterly failed in that regard. Thus they failed to prove that their user is earlier to the user of the first respondent which in the instant case is 1965. In view of the above the impugned applications fail.
15. Learned counsel for the appellant strenuously argued for the entitlement of benefit under section 12(3) of the Act. Learned counsel for the first respondent submitted that since that issue is beyond the pleadings. Thus in the instant case the appellant is not entitled to raise that at this juncture. Without detriment to the claim of the first respondent, on that score, if we examine the matter at the anvil of section 12(3) of the Act, we do not find anything on the basis of evidence brought on record to help the appellant. He has to fall back upon his user in relation to the same goods. It must be a long uninterrupted and unchallenged user. There is hardly anything on record to support his claim of user prior to 1982. Even since 1982 there are invoices in the name of the appellant wherein products under consignment or sale are not exactly centrifugal pumps. In such a situation, the benefit of section 12(3) of the Act cannot accrue to the appellant. We find that the learned Assistant Registrar in his order has concluded that the appellant is the proprietor in terms of section 18(1) of the Act. Having reached at a conclusion in relation to entitlement of the impugned mark under section 12(1) and 12(3) of the Act, any exercise towards appraising information given to the registrar on this score will be an exercise in an academic direction only. The test of proprietorship under section 18(1) appears to be that the proprietorship under that section is in relation to a trade mark and a trade mark is defined in section 2 (v) as a mark used or proposed to be used in relation to goods and the 'Goods' as defined in section 2(g) means anything which is the subject of trade or manufacture. Here in this situation goods in relation to the impugned mark are centrifugal pumps which are distinct from other goods, namely, diesel pumps etc., which are the subject matter of other registrations the appellant is holding. In view of that we find that the appellant is not the proprietor of the trade mark in the given situation. Thus, the Assistant Registrar is wrong in concluding that since the appellant is the registered proprietor for the goods " Diesel Oil Engines" they can extend their right of proprietorship to other goods in class 7. In view of our findings under section 12(1) and 12(3) we do not find any necessity of examining the mark under section 11(a) and section 11(e) of the Act.
16. Accordingly the oppositions are accepted and the applications shall not proceed for registration. The appeals under TA/240 to 249 fail. Accordingly the same are dismissed. No orders as to cost.