Delhi High Court
Punjab Tractors Ltd. vs Pramod Kumar Garg. on 14 January, 2000
Equivalent citations: 2000VAD(DELHI)284, 2000(2)ARBLR227(DELHI), 85(2000)DLT567
ORDER Dr. M.K. Sharma, J.
1. By this judgment/order I shall dispose of the appeal filed by the petitioner under Section 109(2) of the Trade & Merchandise Marks Act as against the order dated 30.12.1997 passed by the Assistant Registrar of Trade Marks. By the aforesaid order the Assistant Registrar of Trade Marks dismissed the opposition filed by the petitioner herein and accepted the application of the respondent for registration.
2. On 22.6.1979, Shri Pramod Kumar Garg trading as M/s. Prakash Agricultural Industries (India), Agra, U.P. filed an application before the Trade Mark Registry seeking for registration of the trade mark 'SWARAJ' (word per se) in respect of Diesel Oil Engines (not for land vehicles), hand water pumps and parts thereof included in clause 7 for sale in the States of Uttar Pradesh, Madhya Pradesh, Rajasthan, Bihar and Haryana. In the said application the respondent claimed the user of the mark applied for since 1.6.1975. The said application was ordered to be advertised as accepted and was accordingly advertised in trade mark journal dated 16.3.1984. Subsequent thereto the petitioner herein gave notice of its intention to oppose the registration of the mark advertised on the ground of its being violative of Sections 11,12 and 18 of the Trade and Merchandise Marks Act. The aforesaid notice of opposition was contested by the respondent by filing counter statement. The parties thereafter filed their evidence and the matter was set down for hearing and by the order dated 16.9.1993 the said opposition was dismissed and the application for registration was accepted.
3. Being aggrieved by the aforesaid order the petitioner preferred an appeal against the aforesaid order dated 16.9.1993 in this Court which was registered as C.M. (M) 49/1994. This Court by order dated 27.1.1997 remanded the case back for fresh consideration after affording sufficient opportunity to the parties to lead further evidence in support of their respective cases. Pursuant thereto fresh evidence was filed by the parties and the matter was heard afresh and by the impugned order passed on 30.12.1997 the opposition was again dismissed and the application of the respondent was directed to proceed for registration, as against which the present petition has been preferred.
4. In the impugned order it was held by the Assistant Registrar that the functions and uses of both the sets of goods are quite different and that the goods namely - Diesel Oil Engines and Hand water supply pumps and parts thereof are the goods of totally different description from that of the goods of the opponents namely - Tractors and parts thereof, harvester combines and fork lifts and therefore, the prohibition under Section 12(1) of the Act was not attracted. It was also held that since the goods of the applicants and that of the opponents are quite different there is no likelihood of any deception or confusion in the minds of the purchasers. The Assistant Registrar proceeded to hold that even if the same mark is used by another person on different goods which have no trade connection either by way of its trade usages or by way of its connection during the course of trade channels the use is not likely to create any confusion or deception unless some strong evidence of some case of confusion and deception is placed on record and proved. As no such evidence was placed on record in the present case, it was held that objection under Section 11(a) as raised by the opponents was without any merit. It was also found by the Assistant Registrar that use of the mark by the respondents was much earlier to the date of the application and therefore, the contention of the petitioner that the respondents had no claim to the proprietorship of the mark as on the date of the application was rejected.
5. Learned counsel appearing for the petitioner submitted that the Assistant Registrar was not justified in holding that the goods manufactured by the respondent namely - Diesel Oil Engines are not of same description as that of the Tractors, Harvester Combines and Forklifts etc. manufactured by the petitioner. It was submitted by him that the goods manufactured by the respondent relate to the same field namely - agriculture and are purchased by the same set of customers namely- agriculturists and that the two sets of goods are of character complimentary to each other namely for an agriculturist and that both Tractors and Diesel Oil Engines are useful in carrying out agricultural operations and therefore, the two sets of goods are of the same description within the meaning of Section 12(1) of the Act and that there was every likelihood of confusion and deception if the said trade mark and the word 'SWARAJ' is used by the respondent. He also submitted that the concept of goods of same description has to be viewed from the point of view of customers who could get confused as the goods are used in the same field and sold from the same outlet and thus, could create an impression in their minds that both the goods are from the same source, and therefore, when the facts of the present case are examined from the aforesaid angle it is proved and established that the customers who are generally agriculturists are likely to be confused by the trade marks which are identical.
6. It was also submitted that the affidavits and evidence produced by the respondent for the period from 1975-1980 is of doubtful nature and therefore, no reliance should have been placed by the Assistant Registrar on such evidence and thereby arrived at an erroneous finding. It was also submitted that as the Assistant Registrar found that the petitioner had reputation and goodwill in respect of the trade mark 'SWARAJ' it was to the knowledge of the respondent that the petitioner has been using the said trade mark 'SWARAJ' for his its tractors and that even the Newspaper reports clearly justify the performance and popularity enjoyed by the name 'SWARAJ' and therefore, the impugned order is bad in law.
7. Learned counsel appearing for the respondent however, submitted that the nature and composition of the goods in respect whereof the respondent was seeking registration is entirely different and distinct from the nature and composition of the goods in respect whereof the petitioner has made a claim of having used the trade mark 'SWARAJ'. He further submitted that the nature and composition, use and function of the respective goods of the parties being different, there is no likelihood of any confusion and/or deception. It is also submitted that 'SWARAJ' is a word of common parlance and the petitioner could not claim monopoly on the word like SWARAJ in respect of all sorts of goods falling in different classes of the Schedule. He also submitted that the petitioner failed to prove any goodwill and/or reputation of the trade mark 'SWARAJ' as on 1.6.1975 even in respect of Tractors and therefore, there could not have been any dishonesty on the part of the respondent to adopt and use the trade mark 'SWARAJ' independently in respect of entirely different set of goods.
8. In the light of the aforesaid submissions of the learned counsel appearing for the parties the question that arises for my consideration is whether the goods manufactured by the petitioner and the goods manufactured by the respondent are goods of similar nature and description and whether the use of the trade mark 'SWARAJ' by the respondent is likely to deceive or cause confusion in the minds of the persons who are users of the goods of the description manufactured by the respondent. The next question which also arises for my consideration is whether the respondent can claim concurrent use and registration claiming to be the proprietor of the trade mark 'SWARAJ'.
9. It is the definite case of the respondent/applicant that the goods of the respondent namely - Diesel Oil Engines (not for land vehicles) and the Hand Water Pump sets are goods of different description than that of the Tractors, Harvester Combines, forklifts and parts thereof which are manufactured by the petitioner and therefore, the provisions of Section 12(1) of the Trade & Merchandise Marks Act are not attracted in the facts and circumstances of the present case. It is also their case that since the goods are of different nature and character there could be no case of likelihood of confusion or deception in view of the dissimilarity of the goods.
10. It is an admitted position that the trade mark of the petitioner 'SWARAJ' was accepted for registration on 12.12.1977 and the word 'SWARAJ' was registered in the name of the petitioner for Tractors, Harvester Combines and Diesel Forklifts and that the said registration is valid and subsisting. According to the petitioner they adopted the trade mark and the word 'SWARAJ' in respect of Tractors in 1972 and have been continuously using the said trade mark and word 'SWARAJ' in respect of Tractors and that they adopted the same trade mark in respect of Harvester Combines in the year 1979 and in respect of Diesel Forklifts since 1982/85. The case of the respondent is that between October, 1974 to June, 1975 no evidence has been placed on record by the petitioners claiming user of such trade mark 'SWARAJ' and therefore, adoption of the said trade mark by the respondent was without knowledge of the trade mark of the opponent as on 1.6.1975. It is stated that during the aforesaid period from October 1974 to June 1975 admittedly the petitioner sold only seven tractors and that too in Punjab, whereas the respondent is based at Agra and therefore, could not have any knowledge about the user of the aforesaid trade mark in respect of the tractors, for area of operation between the two parties is quite distinct and separate. The stand taken by the respondent is that although they have filed the application for registration on 22.6.1979 they have been using the said trade mark 'SWARAJ' for their goods from 1.6.1975.
11. The two marks with which we are involved in the present case are identical, therefore, the aspect that is to be considered is whether the said goods are of a kind which are normally sold to same kind of customers and are sold in a specialised market. If the answer is in affirmative, in that case there could be a case of possible deception or confusion in the minds of the customers. The Trade and Merchandise Marks Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case has to be judged on its own particular facts. What is to be considered is whether the trade mark by its resemblance to another trade mark already on the register is likely to deceive in the normal course of its legitimate use in the trade. In coming to the aforesaid conclusion it is to be kept in mind that the object of Section 12(1) of the Trade and Merchandise Marks Act is to prevent registration of a trade mark which is likely to deceive or cause confusion by virtue of a registration already granted to another trader. The broad question therefore, is whether the goods are such that by virtue of some similarity, affinity or other circumstance the purchasing public will consider them as coming from the same source if marketed under similar trade marks. The approach has to be from a business and commercial point of view and the test of sameness and description should be a business an practical test. Various decisions pronounced by the courts have laid down factors to be taken into consideration for deciding whether the goods are of the same description or not. In judging the same the nature and composition of the goods, their respective usages and functions and the trade channels through which they are bought and sold are to be taken notice of. It may not be necessary that all the three aforesaid criterion are required to be fulfillled.
12. In Corn Products Refining Co. Vs. Shangrila Food Products Ltd., , it was held by the Supreme Court that the question whether the two marks are likely to give rise to contusion or not is a question of first impression, and it is for the court to decide that question. It was further held that in deciding the question of similarity between the two marks the approach is to be made from the point of view of a man of average intelligence and of imperfect recollection. It was held that to such a man the overall structural phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause confusion between them. It was also held that if a kind of trade connection between different goods could be established then conclusion could be derived therefrom that there was likelihood of confusion or deception. It would be appropriate at this stage to quote paragraph 20 of the aid Judgment which reads as follows:
"....The absolute identity of the two competing marks or their close resemblance is only one of the tests for determining the question of likelihood of deception or confusion. Trade connection between different goods is another such test. Ex hypothesis, this latter test applies only when the goods are different. These tests are independent tests. There is no reason why the test of trade connection between different goods should not apply where the competing marks closely resemble each other just as much as it applies, as held in the "Black Magic" and "Panda" cases, where the competing marks were identical. whether by applying these tests in a particular case the conclusion that there is likelihood of deception or confusion should be arrived at would depend on all the facts of the case."
The aforesaid principle laid down by the Supreme Court is the settled position of law and in order to decide the question that arises for consideration is to apply the test laid down by the Supreme Court in the aforesaid decision.
13. In the light of the aforesaid, I would proceed now to scrutinise whether the goods in question could be said to be of the same description so as to be likely to deceive or cause confusion by virtue of a registration already granted to the petitioner. The goods of the respondents are Diesel Oil Engines (not for land vehicles) and the Hand Pump Sets and parts thereof whereas the goods manufactured by the petitioner are Tractors, Harvester Combines and Forklifts. A tractor also has an engine fitted to it and is operated with diesel oil. It has four stroke engine whereas the Harvester Combines are the attachment to the Tractors and Forklifts in its nature and composition are the lifts for lifting the solid material vertically. The goods of the respondent, on the other hand, in its nature and composition a unit for conversion of the Chemical energy of a diesel oil to mechanical energy whereas the water supply pumps in its nature and composition are metallic units consisting of a pipe and a piston.
14. The goods may not be the same in the technical sense but they definitely have similarity in the sense that both the tractors as also the diesel oil engine have engines to operate the machines and both have a unit for conversion of the Chemical energy to mechanical energy. The respective uses and functions of the aforesaid two goods namely tractors and diesel oil engines are done primarily by the agriculturist who form one class and as such the consumer and purchasing public for both the goods is primarily the same. The trade channels through which they are bought and sold could also be the same, for evidence has been led in the present case to indicate that there are business firms which deal with both the goods. Thus there is broad similarity, affinity and other circumstances like the purchasing public who may consider that the two categories of goods have been coming from the said trade source, for they are being marketed under the same trade name. When the whole dispute is judged from the commercial and business point of view there could be a confusion and deception in the minds of the purchasing public that the said goods having the same trade mark have come from the same trade source. The petitioner, therefore, has been able to prove and establish that the mark of the respondent being the same as that of the registered mark of the petitioner, is likely to cause confusion or deception in the mind of the consumer public that the goods are being sold under the said trade name by the same trading house. A trade connection between the two different goods is established and therefore, there was likelihood of confusion and deception. Thus, in the present case not only the absolute identity of the two competing marks is established but the trade connection between the different goods is also established and in my considered opinion the test for determining the question of likelihood of deception or confusion is also established in the present case. If there is any likelihood of deception or confusion and the goods are found to be similar to the one which are already in the register the bar of Section 12 immediately comes into operation and the prohibition would apply to such an application seeking for registration. The Assistant Registrar, therefore, committed error in law and facts in holding that prohibition of Section 12 does not apply to the facts and circumstances of the present case.
15. Besides, it has also come in evidence that the petitioner is in the trade with the trade name 'SWARAJ' for their Tractors from 1972 and at least in 1975 they had an extensive sale. Registration was also obtained in the year 1977 by which time the petitioner had an extensive market all over the country as would be indicated from the sale figures placed on record by the petitioner. An application for registration of the mark 'SWARAJ' for the diesel oil engines was submitted by the respondent on 22.6.1979 alleging user of it from 1.6.1975. Therefore, when the respondent started coming into the business the petitioner was already an established and well-known manufacturer of tractors with the trade name 'SWARAJ'. On going through the records of the case I am also of the considered opinion that on the date when the application was made by the respondent for registration of the trade mark 'SWARAJ' for their diesel oil engines they were aware that the same trade mark namely 'SWARAJ' was in the market for tractors manufactured and marketed by the petitioner. That would be clear when it is noticed that in their application seeking for registration they have specifically mentioned that they are seeking for registration of the word 'SWARAJ' for diesel oil engines (not for motor land vehicles). This would indicate that they were conscious of the fact that the same trade mark is in the market for tractors manufactured by the petitioner and therefore, they have excluded their goods by specifically mentioning that diesel oil engines which are not for motor land vehicles. Therefore, the user cannot be said to be honest and concurrent as was held by the Assistant Registrar of Trade Marks.
16. In that view of the matter the order passed by the Assistant Registrar is found to be illegal and contrary to the provisions of Section 12(1) of the Trade & Merchandise Marks Act. The impugned order therefore, stands set aside and quashed. Consequently, the application filed by the respondent before the Trade Mark Registry stands dismissed. There shall however, be no order as to costs.