Delhi High Court
Fybros Electric Private Limited vs Hira Lal Jain Trading As Vikram Cable ... on 25 May, 2023
Author: C.Hari Shankar
Bench: C.Hari Shankar
$~55
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.O. (COMM.IPD-TM) 14/2021 & I.A. 13375/2021
FYBROS ELECTRIC PRIVATE LIMITED ..... Plaintiff
Through: Mr. Ajay Amitabh Suman, Adv.
versus
HIRA LAL JAIN TRADING AS VIKRAM CABLE
INDUSTRIES AND ANR & ANR. ..... Defendants
Through: None
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
J U D G M E N T (ORAL)
% 25.05.2023
1. This is a petition under Section 57 of the Trade Marks Act, 1999. The petitioner is the registered proprietor of the following marks:
S. TRADE DATE OF APP. NO. CLASS STATUS
No. MARK/ FILING AND
LABEL USER CLAIM
1. 10th December 1762041 09 Registered
2008
Proposed to be
used
2. 20th March 2015 2927191 09 Registered
User claim:
06.11.2008
3. 26th November 1758032 09 Registered
2008
Proposed to be
used
4. 26th November 1758036 09 Registered
2008 Proposed
to be used
Signature Not Verified
Signed By:KAMLA
RAWAT
Signing Date:29.05.2023
C.O. (COMM.IPD-TM) 14/2021 Page 1 of 12
14:55:49
5. 26th November 1758033 11 Registered
2008 Proposed
to be used
6. 26th November 1758037 11 Registered
2008 Proposed
to be used
th
7. 10 December 1762045 11 Registered
2008 Proposed
to be used
th
8. 20 March 2015 2927192 11 Registered
6th
November
2008
2. The petitioner avers that the petitioner has been using the mark in relation to a wide range of electrical goods including electrical accessories and fittings, electrical switches, main switches and fuse units, wires and cables and other allied and cognate goods since 2008. It is claimed that, by dint of continuous user, the mark has built up considerable reputation and is, by now, a source identifier, identifying the goods of the petitioner.
3. To vouchsafe its credibility and reach in the market, the petitioner has provided particulars of its sales figures from the years 2011-12 to 2019-20. During the year 2019-20, the sales figures of the petitioner are to the tune of ₹ 252 crores.
4. Notice was issued in this petition on 11th October 2021, and accepted by learned Counsel on behalf Respondent 2, who is merely a pro forma respondent.
Signature Not Verified5. Vide order dated 3rd November 2022, this Court observed that Signed By:KAMLA RAWAT Signing Date:29.05.2023 C.O. (COMM.IPD-TM) 14/2021 Page 2 of 12 14:55:49 notice on Respondent 1 stood served via email. Mr. Umesh Mishra, who represented Respondent 1 before the Registry of Trade Marks, on 22nd March 2023, agreed to accept notice on behalf of Respondent 1 in the present case. Subsequently, however, Mr. Mishra stated, on 24th May 2023, that despite repeated efforts, Respondent 1 was not responding. The Respondent 1's right to file reply was closed vide said order. Respondent 1, therefore, was proceeded ex-parte and the matter was re-notified for today i.e., 25th May 2023.
6. There has been no appearance or reply filed on behalf of Respondent 1. I have heard Mr. Ajay Amitabh Suman, learned Counsel for the petitioner at some length and proceed, on the basis of the submissions made and the material on record, to dispose of this petition.
7. The petitioner is aggrieved by the registration of the mark NEBROS as a word mark in favour of the respondent in Class 9 w.e.f 6th August 2014, covering Wire And Cables, Hearing Elements Included In Class 9.
8. The mark is, therefore, registered in favour of the petitioner in, inter alia,
(i) Class 9 covering "Electrical Accessories And Fittings, Switches, Switch Gears, Wire And Cables Scientific, Nautical, Surveying, Electric, Photographic, Cinematographic, Optical, Weighing, Measuring, Signaling, Checking (Supervision), Life Saving And Teaching Signature Not Verified Signed By:KAMLA RAWAT Signing Date:29.05.2023 C.O. (COMM.IPD-TM) 14/2021 Page 3 of 12 14:55:49 Apparatus And Instruments; Apparatus For Recording, Transmission Or Reproduction Of Sound Or Images; Magnetic Data Carriers, Recording Discs; Automatic Vending Machines And Mechanisms For Coin-Operated Apparatus; Cash Registers, Calculating Machines, Data Processing Equipment - And Computers; Fire Extinguishing Apparatus", With Effect From 10th December 2008 And
(ii) Class 11, Covering "Apparatus For Lighting, Heating, Steam, Generating, Cooking, Refrigrating, Drying Ventilating, Water Supply And Sanitary Purpose", Also With Effect From 10th December 2008.
9. As such, clearly, the rival marks are registered in favour of the petitioner and Respondent 1 not only for goods in the same class but, in fact, for identical goods.
10. Mr. Ajay Amitabh Suman, learned Counsel for the petitioner submits that the impugned mark NEBROS is liable to be removed from the register of trade marks under Section 57(2)1 of the Trade Marks Act, and the register rectified accordingly, as Section 11(1)(b)2 proscribes its registration. He submits that 1
57. Power to cancel or vary registration and to rectify the register. -
***** (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the Registrar, and the Registrar or the High Court, as the case may be, may make such order for making, expunging or varying the entry as it may think fit.
211. Relative grounds for refusal of registration. -
(1) Save as provided in Section 12, a trade mark shall not be registered if, because of -
(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or Signature Not Verified (b) its similarity to an earlier trade mark and the identity or similarity of the goods Signed By:KAMLA or services covered by the trade mark, RAWAT Signing Date:29.05.2023 C.O. (COMM.IPD-TM) 14/2021 Page 4 of 12 14:55:49
(i) the mark NEBROS is deceptively similar to the mark ,
(ii) the goods in respect of which the two marks are presently being used are allied and cognate,
(iii) the petitioner has, moreover, a subsisting registration for its mark in Class 9, for the same goods in respect of which the impugned NEBROS mark is registered in favour of the respondent and
(iv) there is, therefore, a likelihood of confusion in the minds of the public, if the marks are allowed to co-exist.
11. Mr. Suman submits that, while the petitioner claims user since 2010-11 and has placed, on record, invoices from the said period, evidencing such user, as well as an agreement dated 21st May 2019 executed among the petitioner, M/s Balaar Marketing Pvt. Ltd. and Ms. Shruti Hasan, the respondent applied for registration of the impugned mark claiming user since 1st April 2011.
12. As such, submits Mr. Suman, the petitioner has over the respondent, the advantage of priority of registration as well as priority of use. Ergo, Mr. Suman invokes Section 11(1)(b)3 of the Trade Marks Act, to contend that the impugned mark of Respondent 1 was not there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
311. Relative grounds for refusal of registration. -
(1) Save as provided in Section 12, a trade mark shall not be registered if, because of -
(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, Signature Not Verified there exists a likelihood of confusion on the part of the public, which includes the likelihood of Signed By:KAMLA association with the earlier trade mark.
RAWAT Signing Date:29.05.2023 C.O. (COMM.IPD-TM) 14/2021 Page 5 of 1214:55:49 entitled to registration as, owing to its similarity with the petitioner's mark, and the fact that the marks were registered in respect of identical goods, there was a likelihood of confusion on the part of the public.
13. Mr. Suman submits that the marks and NEBROS are deceptively and phonetically similar. He relies, for this purpose, on the judgment of the Supreme Court in Amritdhara Pharmacy v. Satyadeo Gupta4 and K.R. Chinna Krishna Chettiar v. Shri Ambal & Co.5
14. Mr. Suman submits that, apart from the fact that the respondent's user is later in point of time to the petitioner's, as the respondent was, in 2014, applying for registration of the impugned mark on proposed to be used basis, there is not a single document of user placed on record by the respondent.
Analysis
15. A few days ago, the petitioner's mark had been asserted before me, in CO (Comm IPD-TM) 10/2021 (Fybros Electric Pvt Ltd v. Mukesh Singh), which was decided vide judgment dated 18th May 20236 . In that case, the conflicting marks were the asserted mark in the present case and the device mark .
4 Signature Not VerifiedAIR 1963 SC 449 5 Signed By:KAMLA MANU/SC/0303/1969 RAWAT Signing Date:29.05.2023 C.O. (COMM.IPD-TM) 14/2021 Page 6 of 12 14:55:49
16. On the basis of the material which has been cited by Mr. Suman in the present case - which was also cited in that matter - I have already upheld the claim of the petitioner to user of the device mark since 2010-11. That finding applies, mutatis mutandis, to the present case as well. The findings, in that regard, which would apply equally to the present case, may be reproduced thus:
"12. Mr. Suman submits that was registered in favour of the petitioner on a proposed to be used basis, and the petitioner had furnished documents evidencing user since 2011. He has drawn my attention to invoices, placed on record, which indicate user of the mark by the petitioner from 2011 to 2018. He has also drawn my attention to an agreement dated 21st May 2019, executed between a sister concern of the petitioner, Ms. Shruti Haasan and M/s Pab Entertainment Solutions. The covenants of the agreement are of no relevance; suffice it to state that the term "product" is thus defined in the said agreement:
"They shall mean and include electrical products, including with limitation, wires & cables, switch-gears, LED lights, and modular switches & accessories, and particularly excluding any electronic goods, chandeliers, and white goods (as is commonly understood), manufactured, marketed, distributed and sold by the Company, under the brand "Fybros" which brand may also be marketed as "Fybros by Kundan Cab" in any part of the Territory during the Term.
13. Mr. Suman submits that, inasmuch as the application seeking registration of the impugned mark had been filed by Respondent 1 on 7th September 2020 on proposed to be used basis, the user of the impugned mark, by Respondent 1, could not be earlier than 7th September 2020.
14. The petitioner has, therefore, both priority of user and priority of registration, vis-à-vis Respondent 1."Signature Not Verified 6
Signed By:KAMLA 2023 SCC OnLine Del 2948 RAWAT Signing Date:29.05.2023 C.O. (COMM.IPD-TM) 14/2021 Page 7 of 12 14:55:49
17. All that is left, therefore, is to examine the aspect of whether the impugned mark NEBROS is liable to be taken off the register by applying Section 57 read with Section 11(1)(b) of the Trade Marks Act.
18. This issue is also substantially covered by my decision in Fybros12, in which I have held that the marks and are phonetically similar. The classic test to be applied in the case of phonetic similarity is that propounded by Parker, J in Pianotist Co. Application7, which reads thus:
"You must take the two words. You must judge them, both by their look and by their sound. You consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks"
19. Applying the Pianotist7 test, the Supreme Court, in Amritdhara4 and K. R. Chinna Krishna Chettiar5, held the marks "Amritdhara and Lakshmandhara, in the first case" and "Sri Ambal and Sri Andal" in the second case to be phonetically similar. It was further held by the Supreme Court, in the said cases, especially in K. R. Chinna Krishna Chettiar5, that, where the asserted mark essentially consisted of the word, and the word which constituted the dominant part of the defendants/respondents mark was phonetically similar, the presence of added material in the rival device marks would not derogate from the similarity between the two marks. The Signature Not Verified 7 Signed By:KAMLA [1906] 23 RPC 774 RAWAT Signing Date:29.05.2023 C.O. (COMM.IPD-TM) 14/2021 Page 8 of 12 14:55:49 relevant passages from Amritdhara Pharmacy4 and K.R. Krishna Chettiar5 may be reproduced, to advantage, as under:
From Amritdhara Pharmacy4 "7. Let us apply these tests to the facts of the case under our consideration. It is not disputed before us that the two names "Amritdhara" and "Lakshman-dhara" are in use in respect of the same description of goods, namely a medicinal preparation for the alleviation of various ailments. Such medicinal preparation will be purchased mostly by people who instead of going to a doctor wish to purchase a medicine for the quick alleviation of their suffering, both villagers and townsfolk, literate as well as illiterate. As we said in Corn Products Refining Co. v. Shangrila Food Products Ltd.8 the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity-of the two names "Amritdhara" and "Lakshmandhara" is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words "Amritdhara" and "Lakshmandhara". We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as "current of nectar" or "current of Lakshman". He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between "current of nectar" and "current of Lakshman". "Current of Lakshman" in a literal sense has no meaning; to give it meaning one must further make the inference that the "current or stream" is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsman will perhaps know Lakshman, the story of the Ramayana being familiar to him; but we doubt if he would etymologise to the extent of seeing the so-called ideological difference between "Amritdhara" and "Lakshmandhara". He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments.Signature Not Verified 8
Signed By:KAMLA AIR 1960 SC 142 RAWAT Signing Date:29.05.2023 C.O. (COMM.IPD-TM) 14/2021 Page 9 of 12 14:55:49
8. We agree that the use of the word "dhara" which literally means "current or stream" is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words, having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description. We are aware that the admission of a mark is not to be refused, because unusually stupid people, "fools or idiots", may be deceived. A critical comparison of the two names may disclose some points of difference, but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. The trade mark is the whole thing-the whole word has to be considered. In the case of the application to register "Erectiks" (opposed by the proprietors of the trade mark "Erector") Farwell, J., said in William Bailey (Birmingham) Ltd. Application9:
"I do not think it is right to take a part of the word and compare it with a part of the other word; one word must be considered as a whole and compared with the other word as a whole.... I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word."
*****
12. On a consideration of all the circumstances, we have come to the conclusion that the overall similarity between the two names in respect of the same description of goods was likely to cause deception or confusion within the meaning of Section 10(1) of the Act and the Registrar was right in the view he expressed. The High Court was in error in taking a contrary view."
(Emphasis supplied)
20. As such, as the petitioner and the respondents both have registrations of the competing marks in Class 9, covering the same goods. Even if one were to go by user of the competing marks, it is seen that the petitioner uses the mark in respect of wires, cables, switchgears and lightning systems and the respondent uses Signature Not Verified 9 Signed By:KAMLA (1935) 52 RPC 137 RAWAT Signing Date:29.05.2023 C.O. (COMM.IPD-TM) 14/2021 Page 10 of 12 14:55:49 NEBROS for wires and Cables. The nature of goods in respect of which the respective marks have been registered in favour of the petitioner and respondent and are used by them, both fall in Class 9. The likelihood of confusion, therefore, is ex facie apparent.
21. The first two criteria envisaged by Section 11(1)(b), i.e. similarity of the petitioner's and respondent's marks and identity or similarity of the goods or services covered by the rival marks, therefore, stands satisfied.
22. All that has to be established, then, for Section 11(1)(b) to apply is that, owing to these factors, there exists a likelihood of confusion on the part of the public. The two marks are used in respect of similar goods and, falls under the same Class 9, there is every likelihood of confusion in the public if both the marks are allowed to subsist.
23. Even otherwise, it is, by now, common knowledge that most industries embark on a variety of enterprises which, at times, may be entirely unconnected with each other. Where two marks are similar, therefore, in the perception of a customer of average intelligence and imperfect recollection, the facts that the marks may be used in respect of goods which may not be the same cannot be treated as a factor which would lessen, or mitigate, the possibility of confusion arising as a result of similarity of the mark.
24. As such, Section 11(1)(b) of the Trade Marks Act clearly applies in the present case.
Signature Not Verified Signed By:KAMLA RAWAT Signing Date:29.05.2023 C.O. (COMM.IPD-TM) 14/2021 Page 11 of 12 14:55:4925. In view thereof, the continuance of the impugned mark on the register of trademarks cannot be upheld.
26. The impugned mark, therefore, is liable to be removed from the register of trademarks under Section 57(2) read with Section 11(1)(b) of the Trade Marks Act.
27. The petition accordingly succeeds and is allowed.
28. The Registrar is directed to remove, forthwith, from the register of trademarks, the impugned mark NEBROS registered in favour of Respondent 1 under certificate of registration no. 2787567 dated 6th August 2014. The register of Trade Marks shall be rectified accordingly.
29. Let a copy of this order be forwarded to the Registrar for necessary compliance.
C.HARI SHANKAR, J MAY 25, 2023 ar Signature Not Verified Signed By:KAMLA RAWAT Signing Date:29.05.2023 C.O. (COMM.IPD-TM) 14/2021 Page 12 of 12 14:55:49