Bombay High Court
Ampm Designs Thr. Partner Akash Mehta vs Intellectual Property Appellate Board ... on 29 October, 2021
Author: N. J. Jamadar
Bench: N. J. Jamadar
WPST4339-21.DOC
Santosh
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
CIVIL APPELLATE JURISDICTION
WRIT PETITION (ST) NO. 4339 OF 2021
AMPM Designs
A partnership firm registered under the
Partnership Act, 1932 and having its
address at 204, Sky Vista, Viman Nagar,
Pune - 411 014
through its Partners Akash Mehta and
Poonam Mehta, both residing at 204,
Sky Vista, Viman Nagar, Pune - 411 014
through their authorised signatory
Rajeev Surana, residing at 1/18,
Samrat Ashok CHS, Malabar Hill,
Mumbai - 400 006. ...Petitioner
Versus
1. Intellectual Property Appellate Board
(Mumbai Bench)
having address at Guna Complex,
Annex-I, 2nd Floor, 443, Anna Salai,
Teynampeth, Chennai - 600 018 at its
Mumbai Bench.
2. Registrar, Trade Marks Registry
having address at Boudhik Sampada
Bhavan, Antop Hill, S. M. Road,
Mumbai - 400 037
3. AMPM Fashions Pvt. Ltd.
A Company incorporated under the
Companies Act, 1956, and bearing
CIN:U18101DL2005 PTC143155
Having its address at A-18, T/F, Friends
Colony East, South Delhi - 110 065.
...Respondents
Mr. Hiren Kamod, a/w Mr. Shon Gadgil, i/b Mr. Rahul Soman,
for the Petitioner.
Mr. Mayur Khandeparkar, a/w Kunal Kanungo, Himanshu
Deora, Rahul Punjabi and Ms. Tanushree Sogani, i/b S.
Venkateshwar, for Respondent no.3.
None for Respondent nos.1 and 2.
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WPST4339-21.DOC
CORAM: N. J. JAMADAR, J.
RESERVED ON: 15th JUNE, 2021
PRONOUNCED ON: 29th OCTOBER, 2021
JUDGMENT:-
1. This writ petition under Article 227 of the Constitution of India calls in question the legality, propriety and correctness of an order dated 30th December, 2020, passed by the Intellectual Property Appellate Board, under Section 57 of the Trade Marks Act, 1999 ("the Trade Marks Act"), on rectification application preferred by respondent no.3 (AMPM Fashions) whereby the Appellate Board ordered to remove the mark 'AMPM Designs' registered vide Registration No.4165852 in the name of the petitioner and take an entry to that effect in the record of Register of Trade Marks.
2. The background facts leading to this petition can be stated in brief as under:
(a) The petitioner (AMPM Designs) is a partnership firm, registered in the year 2017. Respondent no.3 (AMPM Fashions) is a private limited company incorporated under the Companies Act, 1956.
(b) The petitioner claims that AMPM Designs has been initially carrying on business as a proprietorship firm since the year 2014, as interior designers. Over time, the brand name AMPM Designs attained distinctiveness and immense goodwill 2/42 WPST4339-21.DOC amongst its costumers and interior design industry. AMPM Designs came to be registered as a partnership firm in the year 2017. During the period 2017 to 2020, the petitioner invested substantial money to build the petitioner's brand (AMPM Designs), which resulted in huge increase in its revenue.
(c) On 3rd March, 2017, respondent no.3 filed an application for registration of its mark under Class-99, being Application No.3500631, in multiple classes, including Class-42, in which the mark of the petitioner had subsequently been registered. On 3rd May, 2010, the petitioner filed an application for registration of Trade Mark (AMPM Designs) as a word and also as a logo. Respondent no.3's above referred Application No.3500631 was cited in the examination report of the petitioner's application. Thus, on 26th July, 2019, the petitioner filed a reply to the examination report stating that the marks of the petitioner and respondent no.3 are dissimilar. The Registrar, Trade Marks Registration - respondent no.2, issued certificate of registration of the Trade Mark (AMPM Designs) on 3rd May, 2019, vide Registration No.4165852.
(d) In the meanwhile, respondent no.2 instituted Civil Suit (Comm) No.272 of 2020, before the Delhi High Court against the partners of the petitioner firm seeking, inter alia, an order of permanent injunction restraining the defendants 3/42 WPST4339-21.DOC therein from providing any services with the use of the mark (AMPM Designs) and allied reliefs. During the course of hearing of the interim application taken out by respondent no.3 in the said suit, it transpired that respondent no.3 had surreptitiously taken out a rectification application without properly serving the notice thereof on the petitioners. It further transpired that on 6th August, 2020, an order of stay of the operation of the petitioner's trade mark was obtained behind the back of the petitioner.
(e) Being aggrieved, the petitioner preferred Writ Petition (L) No.4329 of 2020. A Division Bench of this Court, by an order dated 13th October, 2020, set aside the said order as it was bereft of reasons and directed Appellate Board to decide the rectification application expeditiously.
(f) The petitioner filed a counter statement on 19 th October, 2020 and pointed out various infirmities in the claim of respondent no.3. In addition to the oral submissions, the petitioner also tendered written submissions.
(g) By the impugned order, the Appellate Board was persuaded to allow the application holding, inter alia, that in order to maintain purity of the Register of Trade Marks, AMPM Designs, registered in the name of the petitioner vide Registration No.4165852, in Class-42, was required to be 4/42 WPST4339-21.DOC removed from the register. The board was of the view that respondent no.3 has prior adopted and used the mark, the mark of respondent no.3 and petitioner were similar and the goods and services offered by the petitioner and respondent no.3 were allied and/or cognate to each other and thus the Registrar was in error in accepting the petitioner's application for registration in Class-42.
3. Being aggrieved by and dissatisfied with the impugned order, the petitioners have invoked the writ jurisdiction of this Court.
4. The principal grounds of challenge are that the impugned order suffers from manifest arbitrariness and a blatant disregard for the governing precedents, which were specifically cited before the Board. In particular, the judgments of the Supreme Court in the cases of Nandhini Deluxe vs. Karnataka Cooperative Milk Producers Federation Limited1 and Vishnudas Trading as Vishnudas Kishendas vs. Vajir Sultan Tobacco Co. Ltd., Hyderabad and another2, were specifically relied upon. Yet the Appellate Board chose not to refer, much less consult, the said authoritative pronouncements. This constitutes a breach of cardinal principle of judicial disposition. The petitioner 1 (2018) 9 Supreme Court Cases 183.
2 (1997) 4 Supreme Court Cases 201.
5/42
WPST4339-21.DOC further assert that the Appellate Board fell in error in not properly accounting for the voluminous evidence to demonstrate that the petitioner has been carrying on the business under the mark AMPM Designs since the year 2014. The Appellate Board committed grave error in ignoring the fundamental distinction between the spheres of the business activity of the petitioner and respondent no.3. The petitioner has been carrying on the business of providing interior design services. In contrast, respondent no.3 primarily deals in the business of sale of fashion apparels. The reliance by the Appellate Board on the judgment of the Delhi High Court in the case of M/s. Shree Rajmoti Industries vs. M/s. Shri Vishwaprabha Food Products Private Limited3, to support the erroneous finding that the goods and services provided by the petitioner and respondent no.3 were allied and/or cognate, was wholly misplaced. On a plain perusal, the marks of the petitioner and respondent no.3 were completely visually different and distinguishable and, therefore, there was no scope for confusion in the minds of the people. Lastly, the Appellate Board committed an error in law in drawing an adverse inference against the petitioner for making a statement in response to the examination report that the marks of the petitioner and respondent no.3 were dissimilar and in 3 Civil Suit (Commercial) No.397/2018 and IA No.10672/2014. 6/42
WPST4339-21.DOC further claiming that those marks were similar in opposing respondent no.3's application.
5. An affidavit-in-reply is filed on behalf of respondent no.3; followed by a rejoinder thereto by the petitioner.
6. I have heard Mr. Kamod, the learned Counsel for the petitioner and Mr. Khandeparkar, the learned Counsel for respondent no.3, at length. With the assistance of the learned Counsels for the parties, I have carefully perused the pleadings before this court and the statutory authorities and the material on record.
7. Before I advert to note the submissions canvassed across the bar, it may be expedient to note few uncontroverted facts which would facilitate proper appreciation of the rival submissions.
(a) There is not much controversy over the fact that the petitioner is dealing in the business of interior designing and lightening solutions. From the averments in the application for rectification, and the number of trademarks registered in the name of respondent no.3, it becomes evident that respondent no.3 ventured into the business of fashion designing under the brand name 'AMPM'. The particulars of the registration of the various trademarks, as borne out by the classes in which the trademarks have been registered, primarily indicate that 7/42 WPST4339-21.DOC respondent no.3 is dealing in the business of clothing, fashion apparels, leather goods and accessories.
(b) Indisputably on 3rd March, 2019, respondent no.3 applied for registration of trademark vide application bearing No.3500631 under Class-99 i.e. multi class. On 3 rd May, 2019, the petitioner filed application for registration of the trade mark ("AMPM DESIGNS") as word and as logo with the user detail, "proposed to be used". In the petitioner's application for the registration, Application No.3500631 filed by respondent no.3 dated 3rd May, 2017, was cited in the examination report. On 26th July, 2019, the petitioner filed a response to the examination report and claimed that the marks of the petitioner and respondent no.3 were dissimilar. On 14 th October, 2019, the petitioner's request was published in trademarks journal. It went unopposed. Respondent no.2 issued the certificate of registration of the trademark, "AMPM DESIGNS" on 3rd May, 2020.
(c) On 14th July, 2021, Respondent no.3 filed application under Section 57 of the Trade Marks Act seeking rectification, removal and cancellation from the register of trade marks.
Indisputably on 8th August, 2020, the petitioner filed a notice of opposition to the registration of mark of respondent no.3, sought vide Application No.3500631, under Clause-42. 8/42
WPST4339-21.DOC Simultaneously, the petitioner filed an application for correction of alleged clerical error in trade mark Application No.4165852 seeking rectification in the column of, "User detail" from "proposed to be used" to 10th January, 2014.
8. It may be apposite, at this juncture itself, to indicate the representation of competing marks of the petitioner (which is ordered to be removed) and that of respondent no.3 (applied vide Application No.3500631, under Clause-99, and opposed to by the petitioner.) Petitioner's Mark : AMPM DESIGNS Respondent no.3's Mark : am:pm ANKUR MODI PRIYANKA MODI
9. For the sake of clarity and convenience it would be contextually relevant to note the other marks, which respondent no.3 claimed to have got registered, alongwith class under which they are registered.
Sr. Trademark Registrati Class Date of User Detail TMJ
No. on no. application No.
1. am:pm 1817859 25 14/5/2009 01/01/2002 181
2. am:pm 2357180 25 2/7/2012 01/12/2005 1841
ANKUR MODI PRIYANKA MODI
3. am:pm 2357181 23 2/7/2012 01/12/2005 1841
ANKUR MODI PRIYANKA MODI
4. am:pm 2357182 24 2/7/2012 01/12/2005 1841
ANKUR MODI PRIYANKA MODI
5. am:pm 2357183 26 2/7/2012 01/12/2005 1841
ANKUR MODI PRIYANKA MODI
6. TWELVE 3249579 25 03/5/2016 Proposed to 1961
AM:PM
be used
7. TWELVE 3318987 18 26/7/2016 Proposed to 1784
AM:PM
be used
9/42
WPST4339-21.DOC
8. AMPM 3887494 18 13/7/2018 01/04/2016 1865
ANKUR MODI PRIYANKA MODI
9. AMPM 3887495 25 13/7/2018 01/04/2016 1865
ANKUR MODI PRIYANKA MODI
10. At the outset, it may be advantageous to clarify that only the legality, propriety and correctness of the order of rectification crops up for consideration in this petition. The Court is not required to delve into the issues relating to infringement of trademark and/or defensive registration as those issues do not present themselves for consideration. The core question is whether the order for removal of the aforesaid trademark of the petitioner is legally sustainable.
11. Mr. Kamod, the learned Counsel for the petitioner, would urge that the aforesaid question is required to be answered in an empathetic affirmative. First and foremost, the nature of the mark, "AMPM", according to Mr. Kamod, indicates that it is of generic nature and numerous trademarks have been registered comprising of the letters "AMPM". The Appellate Board, according to Mr. Kamod, committed a manifest error in not appreciating the fundamental difference between the businesses in which the petitioner and respondent no.3 dealed in. In the backdrop of the nature of the mark, there was no likelihood of confusion regarding the person, who offered the goods/services, 10/42 WPST4339-21.DOC especially in the context of the completely diverse nature of the businesses the petitioner and respondent no.3 dealed in. Mr. Kamod further urged that the Appellate Board lost sight of the very object of the Trade Marks Act, which is, "to enlarge the field of registrability". The registration of trade mark, in any event, according to Mr. Kamod, cannot entail consequence of monopoly over articles in respect of which the person, in whose name a prior trademark is registered, does not deal in, even remotely.
12. Elaborating the aforesaid submissions, Mr. Kamod mounted a strong criticism against the manner in which the Appellate Board determined the application for rectification. It was urged with a degree of vehemence that the petitioner had specifically raised the aforesaid ground and relied upon the judgments of the Supreme Court in the cases of Vazir Sultan (supra) and Nandhini Deluxe (supra), wherein the aforesaid principles were expounded. The Appellate Board committed a grave error in simply ignoring the binding precedents. On this singular count, according to Mr. Kamod, the impugned order deserves to be quashed.
13. Mr. Kamod further urged that the Appellate Board was in error in not keeping in view the tests expounded in the case of Balkrishna Hatcheries vs. Nandos International Ltd & anr.4 to 4 2007 SCC Online Bom 449.
11/42
WPST4339-21.DOC determine the aspect of similarity of the marks. Mr. Kamod would urge that the Appellate Board could not have taken refuge in the alleged inconsistency in the stand of the petitioner about the similarity of the marks as it is well recognized principle of law that there can be no estoppel against the statute. Nor the Appellate Board could have drawn support from the fact that in the application against the column user detail, "proposed to be used", was mentioned inadvertently, in the face of voluminous material on record to demonstrate that the petitioner has been dealing in the business since the year 2014. Since the impugned order suffers from a clear non-application of mind, consideration of irrelevant material and complete disregard to the principles which govern the determination of dispute as regards trademarks, the order deserves to be interfered with, urged Mr. Kamod.
14. Per contra, Mr. Khandeparkar, the learned Counsel for respondent no.3 would urge that none of the grounds sought to be urged on behalf of the petitioner deserve countenance. Laying emphasis on the application of the petitioner for registration, especially the user detail (proposed to be used), Mr. Khandeparkar submitted that the petitioner cannot be heard to say that the petitioner had all along been carrying on the business since the year 2014. The application seeking 12/42 WPST4339-21.DOC rectification of the alleged error came to be filed only after respondent no.3 filed rectification application and initiated proceedings to restrain the petitioner from committing infringement of respondent no.3's trademark.
15. Mr. Khandeparkar further submitted that the Appellate Board was justified in recording a finding that the stand of the petitioner regarding the similarity of the trademark was plainly inconsistent. Comparing and contrasting the response of the petitioner to the objection raised by the Registry, as manifested in the letter dated 25th July, 2019, wherein the petitioner affirmed that there were multitude of differences in the two trademarks, and the notice of opposition dated 7 th August, 2020, wherein the petitioner claimed that the trademark of respondent no.3 was deceptively similar to the petitioner's mark and constituted a colourable imitation and closely resembled the petitioner's mark, Mr. Khandeparkar strenuously submitted that the petitioner was rightly not allowed to aprobate and reprobate.
16. Mr. Khandeparkar would submit that the claim that the businesses in which the petitioner and respondent no.3 have been dealing in are of distinct nature, even if taken at par, does not advance the cause of the submission on behalf of the petitioner. Foray into interior designing from fashion designing 13/42 WPST4339-21.DOC is a natural progression, in the industry. The mere fact that respondent no.3 had not been dealing in the business of interior designing, is not sufficient to allow the petitioner to use the trademark with impunity especially when respondent no.3's mark has attained the status of 'well-known trade mark'. Neither the defence of generic nature of the mark is sustainable. Nor the fact that the businesses in which the petitioner and respondent no.3 have been dealing in are different, even if assumed to be so, is of decisive significance, urged Mr. Khandeparkar.
17. Lastly, Mr. Khandeparkar submitted that the impugned order does not suffer from such illegality or material irregularity which would warrant interference in exercise of extraordinary writ jurisdiction. In a given set of facts, if two views are possible, the Writ Court would not be justified in interfering with the order passed by the Statutory Authority for the reason that the other view is more commendable.
18. To bolster up the last submission, Mr. Khandeparkar placed a strong reliance on a judgment of the Supreme Court in the case of Khalil Ahmed Bashir Ahmed vs. Tufelhussein Samasbhai Sarangpurwala.5 In the said case, the Supreme Court expounded the contours of writ jurisdiciton, as under:
5 (1988) 1 SCC 155.14/42
WPST4339-21.DOC "13. The intention here is manifest. In any event this is a possible view that could be taken. This Court in Venkatlal G. Pittie v. M/s. Bright Bros. (Pvt) Ltd. [(1987) 3 SCC 558] and M/s. Beopar Sahayak (P) Ltd. v. Vishwa Nath [(1987) 3 SCC 693] held that where it cannot be said that there was no error apparent on the face of the record, the error if any has to be discovered by long process of reasoning, and the High Court should not exercise jurisdiction under Article 227 of the Constitution. See in this connection the observations of this Court in Satyanarayan Laxminarayan Hegde v. Mallikarjun Bhavanappa Tirumale [(AIR 1960 SC
137)]. Where two views are possible and the trial court has taken one view which is a possible and plausible view merely because another view is attractive, the High Court should not interfere and would be in error in interfering with the finding of the trial court or interfering under Article 227 of the Constitution over such decision."
19. There can be no duality of opinion as regards the scope of interference in exercise of extraordinary jurisdiction. A mere erroneous finding of fact is not susceptible to interference in exercise of the writ jurisdiction. An erroneous view on law that vitiates the decision, however, furnishes a surer foundation for exercise of the writ jurisdiction. The question which crops up for consideration is whether, the impugned order suffers from such infirmity as would warrant interference in exercise of writ jurisdiction.
20. To being with, the claim of the petitioner that the mark AMPM has no distinctiveness. It is a generic mark essentially being the acronym of respondent no.3's principal directors Ankur Modi and Priyanka Modi, [like the names of the partners of the petitioner, Mr. Ankur Mehta and Poonam Mehta]. Thus, respondent no.3 could not have claimed any distinctiveness. 15/42
WPST4339-21.DOC
21. Per contra, Mr. Khandeparkar, the learned Counsel for respondent no.3, would urge that the petitioner cannot be heard to say that the mark is a generic word as the petitioner itself had sought the registration of the said mark. In order to lend support to this submission Mr. Khandeparkar placed a strong reliance on the judgment of the Delhi High Court in the case of H&M Hennes & Mauritz AB and ors vs. HM Megabrands Pvt. Ltd. and ors.6 In the said case the Delhi High Court, in the backdrop of the controversy over the use of the mark H&M by the defendants therein, observed as under:
"24. 'H&M' or 'HM' however are not generic or public juris to the trade or business for which they are being used by the plaintiffs and the defendants. The said alphabets are alien to the trade/business of clothing/garments/ accessories and were applied thereto by the plaintiffs, admittedly much prior to the defendants, merely on account of being first alphabets of the originators of business of the plaintiffs As distinct therefrom, LIV 52 & LIV-T were at interim stage found being used for medical preparations for treatment of Liver and were thus held to be generic and/or public juris. That is not so here. A word, even if generic, if applied to a business with which the word is unrelated, is indeed to be protected. Merely because it is alphabets or acronym, is immaterial. ..."
22. Mr. Khandeparkar invited the attention of the Court to another judgment of the Delhi High Court in the case of Automatic Electric Limited vs. R. K. Dhawan and ors.,7 wherein the Delhi High Court enunciated that a party who had also claimed proprietary right and monopoly over a trade mark is not 6 2018 (74) PTC 229 (Del).
7 77 (1999) DLT292.
16/42
WPST4339-21.DOC free to turn around and claim that the mark is a generic expression. The observations in paragraph 16, which make the position clear, read as under:
"16. The defendants got their trade mark "DIMMER DOT"
registered in Australia. The fact that the defendant itself has sought to claim trade proprietary right and monopoly in "DIMMER DOT", it does not lie in their mouth to say that the word "DIMMER" is a generic expression. User of the word "DIMMER" by others cannot be a defense available to the defendants, if it could be shown that the same is being used in violation of the statutory right of the plaintiff. ...."
23. In the backdrop of the aforesaid position in law, the mere fact that the mark (AMPM) is a acronym of the names of the principal directors of respondent no.3 does not dis-entitle respondent no.3 from claiming protection of its proprietary right over the said mark. Mr. Khandeparkar is fully justified in canvassing a submission that the petitioner itself having got the mark registered, cannot urge that there is no distinctiveness in the said mark. Thus, the submission on behalf of the petitioner that the said mark being a generic expression, respondent no.3 cannot claim distinctiveness is unworthy of countenance.
24. Mr. Kamod, the learned Counsel for the petitioner, urged that the mark of the petitioner cannot be said to be similar with respondent no.3's mark as it is suffixed by the word 'DESIGNS'. The addition of the said word, according to Mr. Kamod, will rule out confusion in the minds of the persons as regards the 17/42 WPST4339-21.DOC proprietorship of the goods and services offered under the petitioner's mark.
25. Mr. Khandeparkar joined the issue by canvassing a submission that it is a well neigh settled principle of law that the marks are not to be compared by placing them side by side and word for word. The exercise of ascertainment of similarity rests upon consideration of the broad and essential features of the two marks. The proper test is whether there is likelihood of confusion or deception arising from similarity of marks, irrespective of addition or deletion of a letter or word, urged Mr. Khandeparkar.
26. The aforesaid submission of Mr. Khandeparkar appears well merited. It is settled by a long line of decisions that to arrive at a finding as to whether one mark is deceptively similar to another, the broad and essential features of the two marks are to be considered. A profitable reference, in this context, can be made to the judgment of the Supreme Court in the case of Ruston & Hornby Ltd. vs. The Zamindara Engineering Co. 8 In the said case, the appellant - plaintiff, Ruston & Hornsby (India) Ltd. carried on the business of manufacturing and selling diesel internal combustion engines and their parts. The respondent - defendant was manufacturing and selling diesel internal 8 AIR 1970 SC 1649.
18/42
WPST4339-21.DOC combustion engines under the trade mark "RUSTAM INDIA". Repelling the contention that the addition of the word 'INDIA' to RUSTAM, ["which deceptively resembled with the word 'RUSTON' of the plaintiff], had the element to indicate that the product of the defendant was manufactured in India, the Supreme Court held that if the respondent's trade mark is deceptively similar to the appellant, the fact that the word "INDIA" is added to the respondent's trade mark is of no significance and the appellant is entitled to succeed in its action for infringement of its trade mark.
27. Mr. Kandeparkar was justified in placing reliance on another judgment of the Delhi High Court in the case of The Himalaya Drug Company vs. S.B.L. Limited,9 wherein the Delhi High Court adverted to the doctrine of the prominent and essential feature of the trade mark for the purposes of adjudication of the dispute relating to infringement of the trade mark. The observations in paragraphs 18 and 19 are material and hence extracted below:
"18. The courts have propounded the doctrine of prominent and essential feature of the trade mark for the purposes of adjudication of the disputes relating to infringement of trade mark. While deciding the question of infringement, the court has to see the prominent or the dominant feature of the trade mark. Even the learned single judge agrees to this proposition when the learned judge quotes McCarthy on Trade Marks that all composite marks are to be compared 9 2013 (530 PTC 1 (Del).19/42
WPST4339-21.DOC as whole. However, it is dependent on case to case to basis as a matter of jury question as to what can be the possible broad and essential feature of the trade mark in question.
19. It is settled law that where the defendant's mark contains the essential feature of the plaintiff's mark combined with other matter, the correct approach for the court is to identify an essential feature depending particularly ―on the court's own judgment and burden ofon the court's own judgment and burden of the evidence that is placed before the Court‖. . 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 differences, rather overall similarity has to be judged. While judging the question as to whether the defendant has infringed the trade mark or not, the court has to consider the overall impression of the mark in the minds of general public and not by merely comparing the dissimilarities in the two marks."
(emphasis supplied)
28. On the touchstone of the aforesaid principles, the claim of the petitioner that the addition of the word "DESIGNS" renders the mark of the petitioner and respondent no.3 distinct and dissimilar is not worthy of acceptance. When the test of propensity to cause confusion in the minds of the prospective customers, on the basis of the broad, prominent and essential features of the trade mark is applied, the addition of the word "DESIGNS" does not dispel the likelihood of confusion. The marks of the petitioner and respondent no.3, therefore, cannot be said to be dissimilar to such extent as not to cause confusion or deception.
29. At this juncture, the inconsistency in the stand of the petitioner as regards the similarity of the marks comes to the fore. The learned Counsel for the petitioner submitted that the 20/42 WPST4339-21.DOC fact that the petitioner had claimed in response to the examination report that there were multitude of the differences in the marks of the petitioner and respondent no.3 and in the notice of opposition to the application of respondent no.3 to register the said mark in Class-42, the petitioner asserted that the mark of respondent no.3 was deceptively similar to the mark of the petitioner is required to be appreciated in the backdrop of the context and stage of the proceedings. In any event, the claim of the petitioner that the mark of respondent no.3 is deceptively similar to that of the petitioner, could not have been construed against the petitioner as there can be no estoppel against law. The question as to whether the marks are deceptively similar warrants determination on the basis of the well recognized test. The Appellate Board thus could not have decided the issue on the basis of the said inconsistent stand of the petitioner.
30. To bolster up these submissions, Mr. Kamod, the learned Counsel for the petitioner, placed reliance on the judgments in the cases of Kapil Wadwa and ors. vs. Samsung Electronics Co. Ltd and ors.,10 H&M Hennes & Mauritz AB (supra) and Insecticides (India) Limited vs. Parijat Industries.11 10 2013(53) PTC 112 (Del).
11 2018(75) PTC 238 (Del).
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31. In the case H&M Hennes & Mauritz AB (supra), when issue of admission at a prior stage was raised, the Delhi High Court held that merely because the plaintiff at the stage of seeking registration took a stand that the mark has to be considered in entirety, cannot stop the plaintiff firm from exercising its statutory and natural rights. There is no estoppel against the statute. In the case of Insecticides (I) Ltd. (supra), it was inter alia observed that neither the principle of admission nor the principle of estoppel deprives the parties from seeking a relief, if it were found to be entitled thereto.
32. There can be no qualm over the position in law that an erroneous admission on a principle of law by a party would have no relevance in determining the rights and liabilities, for cannot an estoppel against a statute. In this case, the stand of the petitioner as regards the similarity of the mark differed at different stages of the proceedings. In response to the examination report, the petitioner claimed that the marks were dissimilar. Whereas in the notice of opposition, to the application of respondent no.3 for registration of the latter's mark under Class-42, the petitioner claimed that respondent no.3's mark was deceptively similar to that of the petitioner. Evidently, after the petitioner's mark was registered, the petitioner took the stand that the proposed mark of respondent 22/42 WPST4339-21.DOC no.3 is deceptively similar to that of the registered mark of the petitioner. In any event, this aspect does not bear upon the core controversy except reflecting upon the litigative conduct of the petitioner.
33. In the case at hand, the Court is confronted with the question as to whether, even on the premise that the marks are similar, the Appellate Board was justified in ordering the removal of the petitioner's mark when the petitioner and respondent no.3 have been dealing in different businesses and respondent no.3's earlier marks were registered in distinct classes. Is respondent no.3 entitled to protect the proprietary right to the trade mark even when the petitioner is dealing in a different business is the moot question?
34. Mr. Kamod, the learned Counsel for the petitioner, strenuously submitted that the Appellate Board was in error in recording that the goods and services of fashion designing (in which respondent no.3 primarily dealt in) and interior desiging (that of the petitioner) pertain to creative art work and, therefore, can be termed as cognate/allied goods/services. Mr. Kamod would urge that this erroneous finding was recorded as the Appellate Board did not consult the binding precedents of the Supreme Court in the case of Vazir Sultan (supra) and 23/42 WPST4339-21.DOC Nandhini Deluxe (supra), though they were specifically brought to the notice of the Appellate Board.
35. Before adverting to consider the pronouncements in the aforesaid cases, it may be expedient to note the relevant provisions of Trade Marks Act, especially as regards the grounds on which the Registrar is entitled to refuse to register the mark.
36. Relevant parts of Sections 9 and 11 of the Trade Marks Act read as under:
"9. Absolute grounds for refusal of registration.--(1) The trade marks--
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade,shall not be registered:
Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.
(2) A mark shall not be registered as a trade mark if--
(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950(12 of 1950).24/42
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11. 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,there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark, (2) A trade mark which--
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.
.......
(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including--
(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent that they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark, in particular the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.
(7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account--
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(i) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the goods or services;
(iii) the business circles dealing with the goods or services, to which that trade mark applies. ....."
37. Sub-section (2) of Section 11 provides that a trade mark which is identical with or similar to an earlier trade mark and is sought to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, such mark shall not be registered if or to the extent the earlier trade mark is a well- known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.
38. Clause (zg) of Section 2 of the Trade Marks Act defines a "well known trade mark" as under:
"2(zg) "well known trade mark", in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services."
39. In the light of aforesaid statutory prescription, reference to the judgment of the Supreme Court in the case of Vishnudas 26/42 WPST4339-21.DOC Trading (supra) would be profitable. In the said case, the respondent Vazir Sultan was manufacturing cigarette under the brand name 'Charminar'. The appellant Vishudas Trading was manufacturing the "quiwam" and "zarda" under the same trade mark 'Charminar'. When the appellant applied for the registration of the trade mark Charminar for "quiwam" and "zarda", the respondent raised objection. The appellant's prayer for registration was turned down. Thereupon the appellant made an application for rectification of the registration made in favour of respondent company so that the said registration is limited only in respect of the articles being manufactured and marketed by the respondent company namely, cigarette.
40. In the backdrop of the aforesaid fact-situation, the Supreme Court enunciated the legal position in the following words:
"47. ..... In our view, if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers to get registration of separate and distinct goods which may also be grouped under the broad classification. If registration has been given generally in respect of all the articles coming under the broad classification and if it is established that the trader or manufacturer who got such registration had not intended to use any other article except the articles being used by such trader or manufacturer, the registration of such trader is 27/42 WPST4339-21.DOC liable to be rectified by limiting the ambit of registration and confining such registration to the specific article or articles which really concern the trader or manufacturer enjoying the registration made in his favour. In our view, if rectification in such circumstances is not allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficing in trade mark. Looking to the scheme of registration of trade mark as envisaged Trade Marks Act and the Rules framed thereunder, it appears to us that registration of a trade mark cannot be held to be absolute, perpetual and invariable under all circumstances. Section 12 of the Trade Marks Act prohibits registration of identical or deceptively similar trade marks in respect of goods and description of goods which is identical or deceptively similar to the trade mark already registered. For prohibiting registration under 12(1), goods in respect of which subsequent registration is sought for, must be (i) in respect of goods or description of goods being same or similar and covered by earlier registration and (ii) trade mark claimed for such goods must be same or deceptively similar to the trade mark already registered. It may be noted that under sub-section (3) of Section 12 of Trade Marks Act. in an appropriate case of honest concurrent use and/or of other special circumstances, same and deceptively similar trade marks may be permitted to another by the Registrar, subject to such conditions as may deem just and proper to the Registrar. It is also to be noted that the expression "goods"
and "description of goods" appearing in Section 12(1) of Trade Marks Act indicate that registration may be made in respect of one or more goods or of all goods conforming a general description. The Trade Marks Act has noted distinction between description of goods forming a genus and separate and distinctly identifiable goods under the genus in various other Sections e.g. goods of same description in Section 46, Sections 12 and 34 and class of goods in Section 18, Rules 12 and 26 read with Fourth Schedule to the Rules framed under the Act.
48. The "class" mentioned in the 4th Schedule may subsume or comprise a number of goods or articles which are separately identifiable and vendible and which are not goods of the same description as commonly understood in trade or in common parlance. Manufactured tobacco is a class mentioned in Class 34 of 4th Schedule of the Rules but within the said class, there are number of distinctly identifiable goods which are marketed separately and also used differently. In our view, it is not only permissible but it will be only just and proper to register one or more articles under a class or genus if in reality registration only in respect of such articles are intended, by specifically mentioning the names of such articles and by indicating the class under which such article or articles are to be 28/42 WPST4339-21.DOC comprised. It is, therefore, permissible to register only cigarette or some other specific products made of manufactured tobacco as mentioned in Class 34 of 4th Schedule of the Rules. In our view, the contention of Mr. Vaidyanatha that in view of change in the language of Section 8 of Trade Marks Act as compared to Section 5 of Trade Marks Act 1940, registration of trade mark is to be made only in respect of class or genus and not in respect of articles of different under the genus is based on incorrect appreciation of Section 8 of the Trade Marks Act and 4th Schedule of the Rules.
49. Since such registration initially had not been done, the rectification of the registration by limiting or confining the registration of trade mark of the Respondent Company to particular goods, namely, cigarettes, in the facts and circumstances of the case, cannot be held as illegal or unjustified."
41. The aforesaid pronouncement was followed by the Supreme Court in the case of Nandhini Deluxe (supra). In the latter case, the respondent Karnataka Cooperative Milk Producers Federation Limited was producing and selling milk and milk products under the trade mark of "NANDINI". The mark of the respondent was registered under Class-29 and Class-30. The appellant "NANDHINI Deluxe" was in the business of running restaurants and it adopted the mark "NANDHINI" for its restaurants and applied for registration of the said mark. The food stuffs sold by the appellant in the restaurants also fell under Class-29 and Class-30 as well as the other classes.
42. The Supreme Court, after adverting to its previous pronouncements, which enunciated that the real question to 29/42 WPST4339-21.DOC decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark and in what respect he would connect the trade mark with the goods which he would be purchasing, in the facts of the said case, held that the not only visual appearance of the two marks was different, they even related to different products. Further the manner in which they were treated by the appellant and respondent respectively rendered it difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant as that of the respondent.
43. Evidently the aforesaid pronouncements, which govern the controversy sought to be raised in the case at hand were not adverted to by the Appellate Board. It is imperative to note that in both these cases, the goods/services in respect of which registration of competing trade marks was sought, broadly pertained to the same class.
44. In the case of Vazir Sultan (surpa) there were tobacco products. In the case of Nandhini Deluxe (supra) the marks were registered under Class-29 and Class-30 i.e. food stuffs etc. In the case of Vazir Sultan (supra), the Supreme Court expounded that if a trader or manufacturer actually trades in or 30/42 WPST4339-21.DOC manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers to get registration for separate and distinct goods which may also be grouped under the broad classification.
45. Mr. Kamod, the learned Counsel for the petitioner, was justified in criticising the approach of the Appellate Board in non-consideration of the aforesaid authoritative pronouncements of the Supreme Court, though cited. It is one thing, where the adjudicatory body refers to the decisions of the superior Courts and holds that the propositions expounded therein do not govern the case at hand. It is a completely different thing, where the authority does not at all refer to the precedents cited, especially when the controversy raised in the lis before such authority is dealt with by the superior Courts. The situation gets exacerbated when the pronouncement is by the Supreme Court, the decisions of which are binding on all Courts and authorities.
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46. Mr. Khandeparkar, the learned Counsel for respondent no.3, attempted to salvage the position by canvassing a submission that the omission to refer to the judgments of the superior Courts by itself may not render the decision of the Appellate Board infirm, when the Appellate Board had kept in view the principles expounded in those judgments and correctly applied them to the facts of the case. Therefore, according to Mr. Khandeparkar, the petitioner cannot draw much mileage from the omission to refer to the aforesaid judgments.
47. I find it rather difficult to accede to this submission. As indicated above, the judgment in the cases of Vazir Sultan (supra) and Nandhini Deluxe (supra) squarely dealt with the order passed in rectification application and specifically addressed the controversy of adoption of the trade mark for the goods/services in which the prior trade mark user does not deal in. In the backdrop of the controversy at hand, in my considered view, the Appellate Board committed a gross error in not referring and adhering to the ratio laid down in the aforesaid judgments.
48. Mr. Khandeparkar would urge that the aforesaid pronouncement in the case of Nandhini Deluxe (supra) would not govern the facts of the case as the marks "NANDINI" and "NANDHINI" were not similar. Nor was it a case of concurrent 32/42 WPST4339-21.DOC user. This submission of Mr. Khandeparkar is well-grounded in facts. Indeed, the Supreme Court in the case of Nandhini Deluxe (supra) observed that the visual appearance of the two marks was different. However, that is not the only import of the judgment in the case of Nandhini Deluxe (supra). The fact that the marks related to different products also weighed with the Supreme Court.
49. The aforesaid position becomes abundantly clear from the following observations of the Supreme Court in paragraphs 31, 32 and 33.
"31. One other significant factor which is lost sight of by the IPAB as well as the High Court is that the appellant is operating a restaurant under the trademark 'NANDHINI' and it had applied the trademark in respect of goods like coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry, spices, bill books, visiting cards, meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces, etc. which are used in the products/services of restaurant business. The aforesaid items do not belong to Class 29 or 30. Likewise, stationery items used by the appellant in the aid of its restaurant services are relatable to Class 16. In these circumstances, there was hardly any question of confusion or deception.
32. Having arrived at the aforesaid conclusion, the reasoning of the High Court that the goods belonging to the appellant and the respondent (though the nature of goods is different) belong to same class and, therefore, it would be impermissible for the appellant to have the registration of the trade mark concerned in its favour, would be meaningless. That apart, there is no such principle of law. On the contrary, this Court in Vishnudas Trading as Vishnudas Kushandas has decided otherwise as can be seen from the reading of para 47 of the said judgment.
(extracted above)
33. We may mention that the aforesaid principle of law while interpreting the provisions of Trade and Merchandise Act, 1958 is equally applicable as it is unaffected by the 33/42 WPST4339-21.DOC Trade Marks Act, 1999 inasmuch as the main object underlying the said principle is that the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trade mark in respect of certain goods falling under the same class. In this behalf, we may usefully refer to Section 11 of the Act which prohibits the registration of the mark in respect of the similar goods or different goods but the provisions of this Section do not cover the same class of goods."
50. The Supreme Court has thus enunciated in clear and explicit terms that there is no principle of law that once the trade mark is registered in respect of the goods/services falling in one class, it would be impermissible to have the registration of the trade mark where there is a prior user of the trade mark though the nature of the goods/services is different, On the contrary, the principle is otherwise. The main object underlying the said principle is that the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not user of the said trade mark in respect of the certain goods falling under the same class.
51. Mr. Khandeparkar, the learned Counsel for respondent no.3, however urged that registration of a trade mark under a particular class in the Schedule-IV appended to the Trade Mark Rules is not decisive. The test of, 'field of activity' is no more valid. To bolster up this submission, Mr. Khandeparkar banked upon a Division Bench judgment of the Delhi High Court in the 34/42 WPST4339-21.DOC case of Larsen and Toubro Limited vs. Lachmi Narain Trades and ors.12
52. In the said case, the respondent - defendant had started using, "LNT" and "ELENTE" as brand names for electrical goods including electric distribution systems like miniature circuit breakers etc. A learned Single Judge of the Delhi High Court, while confirming the order of ad-interim injunction allowed the defendant to use the following description on its goods.
"LNT/ELENTE-Lachmi Narain Trades"
53. In an appeal against the aforesaid order the Division Bench held that the user of the mark "LNT"/"ELENTE - Lachmi Narain Trades" could not become permissible simply because the defendants were using the offending logo/trade mark with some other expression like Lachmi Narain Trades. Repelling the submission that some of the products marketed by the defendants under the mark/logo "LNT"/"ELENTE" were not even manufactured or marketed by the plaintiff appellant therein and thus there was no justification to pass restraint order, the Division Bench held that the test of, "field of activity" was no more valid. The question really is one of real likelihood of confusion or deception amongst the consumer and resultant damage to the plaintiff.
12 2008(36) PTC 236 (Del).
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54. To draw support to the said proposition, the Division Bench referred to the judgments in the cases of Sunder Parmanand Lalwani and ors vs. Caltex (India) Ltd., 13 Bata India Ltd. vs. Pyre Lal and Co. Meerut City and ors. 14 Daimler Benz Aktiegesellschft and anr. vs. Hybo Hindustan,15 Kiriloskar Diesel Recon (P) Ltd. vs. Kirloskar Proprietary Ltd.16 and Mahendra and Mahendra Paper Mills Ltd. vs. Mahindra Mahindra Ltd. 17 Thus, it was concluded that there was no difficulty in holding that the dissimilarity in some of the products in which the parties trade does not make any material difference.
55. Reliance was also placed on another judgment of the Delhi High Court in the case of FDC Limited vs. Docsuggest Healthcare Services Pvt. Ltd. and ors,18 wherein the learned Single Judge considered the submission on behalf of the defendants therein that the goods and services falling in different classes cannot be said to be allied or cognate. In the facts of the said case, it was ruled that classification of the goods is not the criteria for deciding the questions of similarity. 13 AIR 1969 Bom 24.
14 AIR 1985AII242.
15 AIR 1994 Delhi 239.
16 AIR 1996 Bom. 149.
17 AIR 2002 SC 117.
18 2017 (69) PTC 218 (Del).
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WPST4339-21.DOC The observations in paragraph 48 are material and hence extracted below:
"48. In the present case, the plaintiff is using the registered mark 'Zifi' for goods falling under Class 05 of the Schedule of the Act i.e. pertaining to pharmaceutical preparations. On the other hand, the defendants are using the mark 'Ziffi' for booking of appointments for doctors, diagnostics, spas and salons, and have applied for registration under Class 35 and 42 of the Schedule of the Act. It is the submission of the defendant that goods and services falling under different classes cannot be allied and cognate. I do not find merit in this submission. The classification of goods and services under Section 7 of the Act is not the criterion for deciding the question of similarity in goods/services. Reliance may be placed on K. C. Kailasam/Ramu Vedaraman's Law on Trade Marks & Geographical Indications 1st Edition, 2003, wherein, the learned author on Page 180 has stated as under -
"Classification of goods given in the rules not the criterion Whether or not two sets of goods or services are of the same description is not be decided on the basis of the classification of goods and services given in the 4th schedule to the Trade Marks Rules, 2002. The description of goods may be narrower or wider than any of the classes according to the circumstances of the case. As was observed by LINDLEY J., in the Australian Wine Importers Trade Mark case [(1889) 6 RPC 311]. "If you come to look at that classification, you will find goods of the same description, in one sense, in different classes; and you will find goods of different description in the same class"."
56. It is imperative to note that the pronouncement in the aforesaid cases were made where the party alleging infringement of the trade mark was an established prayer in its sphere of business. "LNT" has acquired the secondary meaning. Likewise, "Kirloskar" and "Mahindra & Mahindra Limited" are almost the household words. In that context, it was held that the test of field of activity was not the sole criteria. Where a clear intent to 37/42 WPST4339-21.DOC ride on the goodwill and market presence of established players like Caltex, Bata, Benz, Kirloskar, L&T and Mahendra and Mahendra (as was the cse in the judgments referred to above) is evincible, the nature of the business becomes inconsequential. It is the trademark which becomes decisive and not the nature or filed of activity. It is pertinent to note that, in the case at hand, the Appellate Board had not spelled out the particular reasons for which the Registrar ought to be refused the registration with reference to the provisions contained in Section 11 of the Trade Marks Act. Nor the Appellate Board came to the conclusion that respondent no.3's mark was a well-known trade mark and required protection de hors the businesses it dealed into. On the contrary, the Appellate Board relied upon the judgment of the Delhi High Court in the case of M/s. Shree Rajmoti Industries (supra) wherein the following observations:
"the nature of the products being as they are i.e. edible oil and water on the one hand and rice on the other, they are articles of human consumption and thus constitute similar or cognate/allied goods."
57. Drawing the analogy, the Appellate Board held that the goods/services, fashion designing and interior designing, both pertaining to creative art work, are considered to be cognate/allied goods/services. Whether this approach of the Appellate Board is justifiable?
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58. Undoubtedly, the pertinent question is of real likelihood of confusion or deception among the consumers of the goods/services. Classification cannot be the be all and end all of the determination in the matter of conflicting claims to the trade marks. The classes are not themselves the criteria for determining the question of similarity on the touchstone of likelihood of confusion or deception. At the same time, the underlying object of the Trade Marks Act as expounded in the case of Vazir Sultan (supra) and Nandhini Deluxe (supra) that the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trade mark in respect of certain goods falling under the same class, cannot be lost sight of. If a proprietor of a trade mark is permitted to claim protection of a mark even in respect of the goods/services in which it does not deal in, even remotely, it would run counter to the object of the Trade Marks Act, unless it could be established that there is real likelihood of confusion among the consumers as regards the manufacturer of the goods/services.
59. In the case at hand, as indicated above, respondent no.3 primarily dealed in the business of fashion products, namely apparel, clothing, leather goods and accessories. Respondent no.3 claimed to have been in the said business since the year 39/42 WPST4339-21.DOC 2002. Application for registration of trade mark under multi- class was made in the year 2017. From the perusal of the pleadings, it becomes evident that there is no categorical statement that respondent no.3 ventured into "interior designing" since a particular date. What was urged was that it was a natural progression for fashion designers to venture into interior designing. Implicit in this submission is the recognition that the concepts of interior designing and fashion designing, are not identical much less interchangeable. The range of activities which fall within the ambit of interior designing appear to be materially distinct from fashion products/services.
60. The analogy drawn by the Appellate Board on the basis of the judgment in the case of M/s Rajmoti Industris (supra) where the articles were meant for human consumption and thus constituted similar or cognate/allied goods, does not seem to be well drawn. Fashion designing and interior designing are distinct concepts and there is no real likelihood of the persons who are the consumers of the goods/services of respondent no.3 being mislead to believe that the interior designing services, (offered by the petitioner) emanated from respondent no.3. In my view, had the Appellate Board consulted the judgments of Vazir Sultan (supra) and Nandhini Deluxe (supra), which deal with rectification application, it would not have taken 40/42 WPST4339-21.DOC the view that the goods/services offered by the petitioner and respondent no.3 were similar or cognate/allied and there was potentiality of confusion or deception amongst the prospective customers.
61. The endeavour on the part of respondent no.3 to draw mileage from the fact that in the registration application the petitioner had indicated the user as, "proposed to be used" and, thus, there was an attempt to ride over the goodwill and reputation of respondent no.3, does not carry the matter any further. It would be suffice to note that the petitioner has placed material on record to demonstrate that it had been dealing in the business of interior designing since prior to seeking registration of the trade mark. Even otherwise, this does not detract materially from the claim of the petitioner, once it is found that the businesses are materially distinct and there is no real likelihood of confusion or deception.
62. The upshot of the aforesaid consideration is that the impugned order suffers from the vice of non-consideration of the binding judgments of the Supreme Court and consequent erroneous application of law. Resultantly, the impugned order deserves to be interfered with. However, by way of abundant caution it is clarified that the consideration is confined to justifiability of removal of the petitioner's trade mark from the 41/42 WPST4339-21.DOC Register of Trade Marks and this Court may not be understood to have expressed any opinion on the rival claims of the parties, which are being or may be agitated before the Courts and Authorities, in other proceedings.
63. For the foregoing reasons, the petition deserves to be allowed. Hence, the following order:
:Order:
(i) The petition stands allowed.
(ii) The impugned order passed by the Intellectual Property Appellate Board (Mumbai Bench) directing the removal of the Trade Mark, registered vide Registration No.4165852, from the Register of Trade Marks, stands quashed and set aside.
(iii) In the circumstances, there shall be no order as to costs.
Rule made absolute in the aforesaid terms.
[N. J. JAMADAR, J.] SANTOSH SUBHASH KULKARNI Digitally signed by SANTOSH SUBHASH KULKARNI Date: 2021.10.29 19:18:14 +0530 42/42