Intellectual Property Appellate Board
Raj Bahadur Gupta And Anr. vs Registrar Of Trade Marks And Ors. on 29 December, 2006
Equivalent citations: 2007(34)PTC341(IPAB)
JUDGMENT
S. Usha, Technical Member
1. Appeal arising out of the order dismissing the opposition and allowing the application to proceed for registration by the Deputy Registrar of Trade Marks, Kolkata on 20.7.2005.
2. The third respondent herein filed an application for registration of their trade mark 'M.P. Jewellers & Co' in different languages as given below in class 14 claiming user since 18.1.1945. The nine applications are:
Application Date of filing Journal No. Trade Mark Opposition No.
and Date
678322 29.8.1995 1254 Dt. M.P. Jewellers CAL-60118
1.9.2001 Logo
678324 29.8.1995 1254 Dt. M.P. Jewellers CAL-60154
1.9.2001 & Co.
678325 29.8.1995 1254 Dt. M.P. Jewellers CAL-60153
1.9.2001 & Co (English)
678326 29.8.1995 1248 Dt. M.P. Jewellers CAL-59344
1.6.2001 & Co (Bengali)
678327 29.8.1995 1248 Dt. M.P. Jewellers CAL-59343
1.6.2001 & Co (Bengali)
678327 29.8.1995 1248 Dt. M.P. Jewellers CAL-59345
1.6.2001 & Co. (Bengali)
678328 29.8.1995 1248 Dt. M.P. Jewellers CAL-59345
1.6.2001 & Co. (Bengali)
678564 31.8.2005 1254 Dt. M.P. Jewellers CAL-60152
1.9.2001 & Co (English)
Logo
678565 31.8.2005 1248 Dt. M.P. Jewellers CAL-59346
1.6.2001 & Co
(Assamese)
678566 31.8.2005 1254 Dt. M.P. Jewellers CAL-60116
1.9.2001 & Co (Hindi)
After due examination the application were advertised in various Trade Mark Journals. The appellants herein filed their notices of opposition on the same grounds in all the applications. The grounds of opposition were that they carry on an old established business of repute and have been manufacturing and selling gold, silver and jewellery ornaments of all kinds and that they had been using the trade mark 'NATIONAL M.P. JEWELLERS' since 1982. They also stated that they had applied for registration of their trade mark in class 14 under application No. 723827. The appellant/opponent had stated that the trade mark was exclusively identified and associated with their goods. Therefore, registration of the impugned mark which were identical were likely to cause confusion and hence prohibited for registration under Section 11 of the Trade Marks Act, 1999 (hereinafter referred to as the Act). They further stated that the user claimed by the third respondent/applicant since 1945 was not admitted and objected to registration under Sections 11, 18(1) and 18(4) of the Act.
3. The third respondent/applicant filed their counter statement denying the averments made in the notice of opposition. They further stated that they were in the business of jewellery and precious stones since more than 50 years. They further averred that they were in the business since 1945, whereas the appellants were only from the year 1982. The third respondent also stated that the appellants were restrained from using the trade mark by an order of injunction in Suit No. 85 of 1985 by the Hon'ble District Court at Alipore. The third respondent further stated that the appellants have virtually copied their mark and hence had no right to object the registration.
4. The Deputy Registrar set down all the matters for hearing after the formal procedures were completed. At the request of both the counsel all the nine oppositions were disposed of as the issues and the parties were one and the same and one order was passed by the Deputy Registrar on 20.7.2005.
5. The Deputy Registrar held that the opponents i.e., the appellants cannot raise any objection under Section 11 of the Act read with Section 12 thereof as they were under an order of injunction since 28.2.1996 i.e., now for more than nine years as on the date of passing the order on 20.7.2005. He held that as such the question of opponent's use or reputation does not arise. He also held that the applicants i.e., the respondent had every right to claim proprietory right under Section 18(1) of the Act as their use was since the year 1945. The Deputy Registrar had thus with the above findings dismissed the opposition and allowed the application to proceed for registration.
6. The appellants being aggrieved by the said order of the Deputy Registrar on 20.7.2005 are before us on appeal. The appellants have also filed M.P. No. 74/2005 for stay of operation of the order of the Deputy Registrar till the disposal of the appeal.
7. We have heard the counsel for appellant Mr. Ranjan Bachawat and counsel for the third respondent Shri Section Majumdar in the Circuit Bench at Kolkata on 6.9.2006.
8. The learned Counsel for the appellant mainly contended that the Deputy Registrar had passed an erroneous order even without considering the fact that they were using the trade mark 'NATIONAL M.P. JEWELLERS' since the year 1982. He further submitted that necessary bills and vouchers were filed in proof of their statement that they were using the mark since 1982 which was not considered by the Deputy Registrar while passing the order dismissing the opposition.
9. The learned Counsel for the appellant also submitted that they had applied for registration of their trade mark claiming user since 1982 and the same was pending registration. He further submitted that by way of long user, their mark gained reputation and goodwill among the public and as such registration of such similar/identical mark would cause confusion and deception.
10. The learned Counsel for appellant further contended that the observations made by the Deputy Registrar in his order about the finding of the Intellectual Property Appellate Board in one another matter was irrelevant here, as the dispute was between the third respondent herein and a third party.
11. He further submitted that when the third respondent was carrying on business of jewellery and precious stones in and around Kolkata alone, to have the trade mark 'M.P. Jewellers' registered in other languages was meaningless. The learned Counsel for the appellant, therefore, prayed that the appeal be allowed and the application for registration be rejected.
12. The learned Counsel for the third respondent vehemently contended that they are in the business of jewellery and precious stones since the year 1945. by way of long and extensive use their mark 'M.P. Jewellers' has acquired great reputation in the market. He drew our attention to the sales figures and promotional expenses given in the counter statement filed before the Deputy Registrar.
13. The learned Counsel for the third respondent further submitted that they had been vigilant enough to take necessary legal action against several in fringers including the appellant herein. The third respondent has filed a Suit in T.S. No. 85 of 1995 before the District Court, Alipore for injunction restraining the appellant from using the trade mark/trade name 'NATIONAL M.P. Jewellers' and the Hon'ble District Court Judge was pleased to pass an order of injunction on 28.2.1996. against the said order the appellant moved the Hon'ble High Court by appeal. The Hon'ble High Court admitted the appeal but did not pass any interim orders. The learned Counsel for the third respondent submitted that by the interim orders, the appellant were not using the mark since 1996. The learned Counsel further submitted that the appellants had no right to oppose these applications as they were under an order of injunction on the date of opposition.
14. Learned Counsel for the third respondent also submitted that as their trade mark 'M.P. Jewellers' was in use since 1945 whereas the appellant's trade mark 'National M.P. Jewellers' was used only from 1982, they had valid rights than the appellant. The learned Counsel for the third respondent thus prayed that the appeal be dismissed and their applications be proceeded for registration.
15. We have considered the rival submissions of both the counsel and have gone through the pleadings and documents filed before us. The learned Counsel for the third respondent mainly contended that they had adopted the trade name 'M.P. Jewellers' since 1945 and to prove the same the third respondents have produced sufficient documentary evidence for the same. On perusal of the documents, we also find that the third respondents have filed some registration certificate in respect of the trade name 'M.P. Jewellers' in different languages. The sale figures and the promotional expenses are also shown to be on the increasing side as seen from the counter statement. By reason of long and extensive user since 1945, i.e., for more than 50 years the trade mark 'M.P. Jewellers' has attained reputation and goodwill and has thus acquired distinctiveness. The third respondent's mark, while it is seen that it has acquired distinctiveness, definitely qualifies for registration under Section 9 of the Act.
16. The next issue for consideration is about the similarity of the marks. To find out the similarity between the two marks the underlying principles of the Supreme Court in Parle Products (P) Ltd. v. J.P. and Co., Mysore is to be referred.
In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other it would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.
17. With the assistance of the above principles, if we look at the marks before us except for the first word 'National', we hold that the marks are identical and same. We further observe that when the marks are identical, the possibility of confusion or deception is always there. When the issue of confusion or deception is raised, though the burden lies on the applicant to prove that there will be no confusion, but still the initial burden will be on the opponent to prove his user and reputation. The burden to prove no instance of confusion will shift to the applicant only after it is discharged by the opponent. Here we observe the appellant has neither filed any evidence nor any affidavit as to deception or confusion. The user claimed by the appellant is also from the year 1982 which is subsequent to the third respondents and when the question of confusion or deception has not been proved by the appellant, the third respondent's application for registration is qualified as per Section 11 of the Act and the objection of the appellant under Section 11 of the Act does not sustain.
18. We also observe that the third respondent's use of the trade mark 'M.P. Jewellers' from 1945 is clear from the documents filed before us and hold that the third respondents are the proprietors of the trade mark as per Section 18(1) of the Act.
19. We find that the third respondent's mark has acquired distinctiveness by long and extensive user and thus qualifies for registration under Section 9 of the Act. No instance of confusion or deception has been proved by the appellant to disqualify registration under Section 11 of the Act. The third respondent has proved their user for over a period of 50 years and as such their right is more valid than the appellants.
20. In view of the above findings we have no hesitation in agreeing with the findings of the Deputy Registrar of Trade Marks. Consequently the appeal is dismissed. As the main appeal itself has been dismissed, nothing survives in the miscellaneous petition for stay and the same is dismissed. The applications are directed to be proceeded for registration. No costs.