Gujarat High Court
Ntn Corporation vs Assistant Registrar Of Trade Marks on 1 August, 2025
NEUTRAL CITATION
C/CIA/2/2024 JUDGMENT DATED: 01/08/2025
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IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/CIVIL APPEAL NO. 2 of 2024
With
CIVIL APPLICATION (FOR STAY) NO. 1 of 2023
In R/CIVIL APPEAL NO. 2 of 2024
FOR APPROVAL AND SIGNATURE:
HONOURABLE MRS. JUSTICE MAUNA M. BHATT
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Approved for Reporting Yes No
Yes
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NTN CORPORATION
Versus
ASSISTANT REGISTRAR OF TRADE MARKS & ANR.
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Appearance:
Mr. Hemal Shah, Ld. Senior Advocate with Ms.Ekta Sarine and
Mr.Aman Venugopal for the appellant.
Ms.Vyoma K. Jhaveri for respondent No.1.
Ms.Rushvi Shah, Ld.Advocate with Mr.Zahid Shaikh,
Ld.Advocate and Mr.J.Z.Shaikh, Ld.Advocate for the respondent
No.2.
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CORAM:HONOURABLE MRS. JUSTICE MAUNA M. BHATT
Date : 01/08/2025
ORAL JUDGMENT
Challenge Made:
1. This appeal under section 91 of Trade Marks Act, 1999 is Page 1 of 17 Uploaded by NAIR SMITA V.(HC00186) on Fri Aug 01 2025 Downloaded on : Sat Aug 02 01:29:20 IST 2025 NEUTRAL CITATION C/CIA/2/2024 JUDGMENT DATED: 01/08/2025 undefined filed challenging the order dated 28.03.2023, passed by Assistant Registrar of Trade Marks, whereby Opposition No.192674 filed by the appellant, has been rejected. The appellant has filed its Opposition against Application No.1272866 of respondent No.2-
original applicant, to register its Trade Mark 'NTW' in Class-7.
Brief Facts:
2. This appeal is filed by duly constituted power of attorney of the appellant, challenging order dated 28.03.2023 on the ground that Assistant Registrar of Trade Marks has erred in disallowing the appellant's opposition proceedings and allowing the trade mark of respondent-2 to proceed for registration. The rejection of opposition of appellant is contrary to the provisions of the Act and settled principles of law.
3. It is case of the appellant - original opponent that in or around January, 2005, the appellant came across Trade Marks Journal No.1327 wherein at Page-479, the appellants came to know that respondent No.2 (original applicant) had applied for registration of mark 'NTW' and accordingly it was advertised before acceptance, by the Trade Marks Registry. Having come to know about publication with intention to safeguard the valuable intellectual property rights arising from and vesting in the appellant's Trade Mark 'NTN', the appellant filed its Notice of Opposition on 19.05.2005. Respondent No.2 filed its counter submission on Page 2 of 17 Uploaded by NAIR SMITA V.(HC00186) on Fri Aug 01 2025 Downloaded on : Sat Aug 02 01:29:20 IST 2025 NEUTRAL CITATION C/CIA/2/2024 JUDGMENT DATED: 01/08/2025 undefined 01.08.2005. Further, affidavit under Rule 50 along with exhibits was filed by the appellant on 25.11.2005. One more affidavit under Rule 51 was filed by respondent No.2 on 20.02.2006 and in response to same, one affidavit-in-reply was filed by the appellant on 18.04.2006.
4. Upon completion of pleadings, both parties have filed their written submissions before Trade Marks Registry and thereafter hearing took place. Upon conclusion of hearing, respondent No.1 Assistant Registrar of Trade Marks, Ahmedabad passed an order dated 28.03.2023 disallowing the appellant's opposition proceedings No.192674 and allowing to proceed registration of trade mark Application No.1272866 in Class-7 of respondent No.2 - original applicant, which is subject matter of this Appeal.
5. Heard learned Advocate Mr.Hemal Shah assisted by learned advocate Ms.Ekta Sarine and Mr.Aman Venugopal for the appellant and learned advocate Ms.Rushvi Shah for respondent No.2 and learned advocate Ms.Vyoma Jhaveri for respondent No.1.
Submissions on behalf of the Appellant :
6. Learned advocate for the appellant submitted that the order dated 28.03.2023 is erroneous on the following grounds:Page 3 of 17 Uploaded by NAIR SMITA V.(HC00186) on Fri Aug 01 2025 Downloaded on : Sat Aug 02 01:29:20 IST 2025
NEUTRAL CITATION C/CIA/2/2024 JUDGMENT DATED: 01/08/2025 undefined (I) At the first instance from the appellant's registered Trade Mark 'NTN' and the sole distinctive element of respondent's mark 'NTW' bear striking similarities in their overall structure, phonetics, and visual appearance. These both marks are three letter acronyms, beginning with 'NT' and ending in a consonant, making them nearly indistinguishable, particularly when used for identical goods in the course of trade. Further, as the class of consumers, who usually purchase bearings are semi-literate or illiterate, might not be able to discern the subtle differences between the marks.
Therefore, non -application of section 11 of the Trade Mark Act is erroneous.
(II) There are several judicial precedents that have held that actual proof of confusion is not necessary. The Test is one of likelihood of confusion, which is evident for identification of the goods involved. In this case identity of the goods is similar and therefore, Section 11 of Trade Mark Act will be applicable.
(III) It is trite law that Trade Mark has to be viewed from the eyes of an ordinary consumer with average intelligence and imperfect recollection. The malafide adoption of the respondent of a virtually identical trademark, coupled with an identical trade dress for identical goods, is bound to cause confusion to the consumers and has been implemented with the sole intention of riding on the goodwill and reputation of the appellant. Therefore, the authority Page 4 of 17 Uploaded by NAIR SMITA V.(HC00186) on Fri Aug 01 2025 Downloaded on : Sat Aug 02 01:29:20 IST 2025 NEUTRAL CITATION C/CIA/2/2024 JUDGMENT DATED: 01/08/2025 undefined erred in not considering the objections of the appellant by this sole intention of riding on goodwill and reputation of the appellant.
(IV) Further, the appellant herein is prior adopter, registrant and prior user of the mark in India, which is evident from the documents at Page-283 and 318 onwards of the paperbook, whereas respondent No.2 herein is later adopter and become user in India in 1997. Uses in India is shown from Page-632 of the paper-book. Invoices showing the sale of products bearing the trademark 'NTN' in India since the year 1975, 1976, 1977, 1979, etc. have been filed by the appellant.
In response to the objections raised against the invoices of appellant by the respondents that they were issued by 'NTN' Bearing Hong Kong Ltd, NTN Bearing/Trading Hong Kong Ltd.; is subsidiary of the appellant and this is evident from its Annual Report (Page 293). Hence, objections raised by the respondent are entirely frivolous and are of no consequences.
(V) So far as registration of appellant's Trade Mark is concerned, the appellant has obtained a registration for the word mark 'NTN' bearing No.346610 dated 02.03.1979 claiming use since December 1, 1971. Further, the respondent's subject matter application for the 'NTW' label bearing No.1272866 is dated 16.03.2004, claiming use since 31.12.1993. Even if the user of claim is deemed correct, the Page 5 of 17 Uploaded by NAIR SMITA V.(HC00186) on Fri Aug 01 2025 Downloaded on : Sat Aug 02 01:29:20 IST 2025 NEUTRAL CITATION C/CIA/2/2024 JUDGMENT DATED: 01/08/2025 undefined same is subsequent to the adoption, registration and use of the mark 'NTN' in India by the appellant.
(VI) Further, so far as registration granted to the appellant for the mark 'NTN' bearing No.346610 from 01.12.1971 is not challenged by the respondent. Reason for adopting 'NTN' is acronym of founders Niwa, Tomoe, Nishizono = NTN. N of Mr. Niwa, T of Tomoe Trading Co. and N of Mr. Nishizono. There is no acronym suggested by the respondent. Therefore, it is a dishonest adoption of trade mark for identical goods by the respondent.
(VII) Since the appellant is prior adopter, registrant and user of mark, the appellant became well known. As submitted hereinabove, the respondent has obtained registration for mark 'NTW' bearing No.127866 dated 16.03.2004 claiming use since 31.12.1993, the same is subsequent to the appellant's mark, deserves to be rejected. Learned advocate submitted that in relation to appellant's use of mark in India, there were various documents, which were submitted before the authority.
(VIII) Apart from the mark, the appellant has Indian subsidiaries, namely 'NTN' Bearing India Pvt. Ltd. (Page 831) and 'NTN' NEI Manufacturing India Pvt. Ltd. (Page No.835). Further, the appellant also operates an India-specific website www.ntnbearing.in (Page No.831). The appellant has had a sale and distribution office in Page 6 of 17 Uploaded by NAIR SMITA V.(HC00186) on Fri Aug 01 2025 Downloaded on : Sat Aug 02 01:29:20 IST 2025 NEUTRAL CITATION C/CIA/2/2024 JUDGMENT DATED: 01/08/2025 undefined Nehru Place, New Delhi, since the year 2004 (Page 281). Further, the appellant has a widespread network of subsidiary offices in India at Chennai, New Delhi, Mumbai and Kolkata (Page 835). The appellant also owns and operates their own manufacturing units in India at Chennai and Haryana (Page No.835).
(IX) Further, as per section 2(1)(zg) of the Trade Marks Act, the appellant mark is trade mark as defined under the said Act. Section 11(6) of the Act clearly states that the mark has to be well-known in the relevant section of public. Over and above two conditions, the appellant mark is in prior use and prior registration of 'NTN' by the appellant. None of the documents have been questioned by the respondent and registry of Trade Marks. Therefore also, non- consideration of objections by the respondent authority is erroneous.
Further appellant is prior user and using the same mark since 1971.
(X) Further, the respondent has failed to establish the main ingredients for defence of honest and concurrent use under Section 12 of the Act. The respondent has failed in establishing honest adoption of the mark 'NTW' and the respondent has adopted a virtually identical mark for identical goods without providing any explanation with respect to the adoption. The adoption itself is dishonest. The appellant has been using the mark 'NTN' in India for at least two decades before adoption of 'NTW' mark by the Page 7 of 17 Uploaded by NAIR SMITA V.(HC00186) on Fri Aug 01 2025 Downloaded on : Sat Aug 02 01:29:20 IST 2025 NEUTRAL CITATION C/CIA/2/2024 JUDGMENT DATED: 01/08/2025 undefined respondent. Hence, there is no concurrent user, as the appellant is clearly the prior and registered user. A prerequisite for a defence under section 12 of the Act is that the rival marks are identical or similar and hence, the respondent cannot take shelter under section 12 of the Act. So far as order of the authority, it does not satisfy that concrete use and therefore, it is non-speaking order. Since the dissimilarity is not been accepted by the respondent, the respondent failed in establishing his registration of case of honest and concurrent registration.
(XI) Further, ground raised of delay is of no consequence as per section 91 of the Trade Marks Act, 1999 and an appeal against an order by the respondent No.1 has to be filed within 90 days from such order being communicated to the aggrieved party. In this case, time taken in obtaining certified copy of the order may be excluded from the computation of the limitation to file the appeal under section 12 of the Limitation Act, 1963. Accordingly, the certified copy in this case was applied on 26.06.2023 and obtained on 20.10.2023 and the appeal was filed on 28.11.2023, is well within time. Most important the mark applied by respondent No.1 for registration is similar mark and mark being visually and phonetically similar, the said application deserves rejection.
(XII) In support, learned advocate for the appellant relied upon following decisions :
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(i) Bayerische Motoren Werke AG V/s. Om Balajee Automobile (India) Private Limited passed by Delhi High Court in CS (COMM) 292/2017 (Para 15 & 23)
(ii) Ram Krishan & Sons Charitable Trust V/s. ILM Consulting Private Limited. passed by Delhi High Court in CS (COMM) 136/2016 and IA 13627/2013 (Para 7, 8 and 9)
(iii) VIT University V/s. Bagaria Education Trust and others passed by Madras High Court in Original Application Nos.576, 577 and 640 of 2012 in C.S.No.476 of 2012 (Paragraph-34)
(iv) Larsen and Toubro Ltd. (L&T) V/s. Lachmi Narain Trades and others passed by Delhi High Court in CS (OS) No.1305/2003 (Para-33, 35 and 36) Submissions on behalf of the respondents:
7. Learned Advocate Ms.Rushvi Shah for respondent no.2 submitted the following:-
(I) Opposing the appeal, learned advocate Ms.Shah submitted that the appeal challenging an order passed by Assistant Registrar of Trade Marks on 28.03.2023. The said order was communicated to learned advocate vide letter dated 11.04.2023 where the appeal is preferred on 28.11.2023. In these cases, time to file appeal within 90 days is expired on 11.07.2023 and the appeal is filed by gross delay of 7 months that too without application seeking condonation of delay and therefore, the present appeal deserves to be rejected on the ground of delay and latches.Page 9 of 17 Uploaded by NAIR SMITA V.(HC00186) on Fri Aug 01 2025 Downloaded on : Sat Aug 02 01:29:20 IST 2025
NEUTRAL CITATION C/CIA/2/2024 JUDGMENT DATED: 01/08/2025 undefined (II) On merits, the appellant has no case since the appellant has failed to prove his presence in India under mark 'NTN'. The appellant has relied on the trade mark application No.346610, which stand in name of third party i.e. NTN Bearing Hongkong Limited.
(III) Moreover, the appellant has also preferred trade mark application No.958505 Class-7 on 25.09.2000 with a user detail as proposed to be used and thereafter, another application 2204498 in class-99 on 13.09.2011 with a user detail as proposed to be used in India. Therefore, when the appellant itself proposed user of 'NTN', its contention that their presence in India from the year 1971/1973 is not correct. The appellant itself admit that the appellant is not using the mark 'NTN' in India any time prior to 2011.
(IV) Even the invoices relied upon by the appellant is of third party i.e. NTN Bearing Hongkong Limited. The appellant is having their office address at Japan and there is no iota of evidence to show that the appellant is having presence in India. In fact, respondent No.2 is using Trade Mark 'NTW' since 1993, honestly, concurrently, continuously and uninterruptedly in India.
(V) The appellant is not owner of mark 'NTN'. The reliance placed by the appellant upon the documents, which belong to third party and there is no single averment about any connection whatsoever with the third party, and the appellant is a separate Page 10 of 17 Uploaded by NAIR SMITA V.(HC00186) on Fri Aug 01 2025 Downloaded on : Sat Aug 02 01:29:20 IST 2025 NEUTRAL CITATION C/CIA/2/2024 JUDGMENT DATED: 01/08/2025 undefined entity and therefore, third party has filed trade mark application for mark 'NTN' being application no.346610 Class-7 and the invoices of year 1975 are not of any help to the appellant. Admittedly, they are of third-party, a separate entity.
(VI) Further, there is suppression of material facts as the appellant has suppressed that appellant had filled two applications of 958505 in class 7 one on 25.09.2000 and another application no.2204498 in class 99 on 13.09.2011. Both have status of proposed user. Therefore, it is a confirmed fact that the appellant is not having any mark prior to 2000 and 2011.
(VII) Respondent No.2 is using trade mark 'NTN' honestly, concurrently and uninterruptedly since 1993 and therefore, entitlement for registration under section 12 of the Trade Marks Act, 1999. User of trade mark 'NTW' is evident from the invoices from 632 to 730.
(VIII) With regard to similarity alleged, it is submitted that both are totally different and distinct. That pronunciation of word 'N' and word 'W' is totally different and distinct. Not a single iota had been established of any confusion. Despite the respondent is using the mark since 1993. Further, the appellant does not exist in India, merely supply of goods does not develop goodwill and reputation.
Page 11 of 17 Uploaded by NAIR SMITA V.(HC00186) on Fri Aug 01 2025 Downloaded on : Sat Aug 02 01:29:20 IST 2025 NEUTRAL CITATION C/CIA/2/2024 JUDGMENT DATED: 01/08/2025 undefined (IX) Further, reliance placed on the judgement of BMW is not
applicable to the facts of the present case because in this case, word 'NTN' and 'NTW' is totally different and distinct. There is no closure proximity in pronouncing and presence of respondent No.2 cannot be ignored. Moreover, comparison pleaded by the appellant is misleading because filing of new application in the year 2011 speaks no presence of appellant in India.
(X) Distinguishing the judgments relied by the appellant learned Advocate Ms. Shah submitted that in the case of BMW (supra), the injunction granted under section 2(14) of the Act as mark B and D are similar, which is not case in 'NTN' and 'NTW'.
Further, reliance placed in the decision of Ramkrishnan (supra) was ex-parte order and courts held that both marks are similar.
In the decision of VIT University and Trust (supra), the trade mark of both plaintiff and defendant are VIT whereas in this case, the trade mark of appellant is 'NTN' and respondent is 'NTW'. Therefore, in facts of this case, the decisions is not applicable.
In the case of L & T (supra), court held that they are phonetically similar. In this case, NTN and NTW is not phonetically similar. Therefore, the appeal deserves to be rejected.
(XI) In support of her submissions, learned advocate for the
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NEUTRAL CITATION
C/CIA/2/2024 JUDGMENT DATED: 01/08/2025
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respondent relied upon following decisions:
Limitation :
(i) V.Nagarajan V/s. SKS Ispat and Power Ltd. and others reported in (2022)2 SCC 244 (Para-16 & 22) Honest and Concurrent User :
(ii) London Rubber Co. Ltd. V/s. Durex Products reported in AIR 1963 SC 1882 (Para-24, 26, 27, 28, 31, 33).
(iii) Atul Kumar Manilal Shah V/s. Nasik Hing Supplying Co., Nasik and others reported in 2002(4)BomCR 467 (Para- 10, 18, 22 & 23)
(iv) Gopal Hossiery V/s. The Dy.Registrar of Trade Marks and others reported in MANU/WB/0015/1981 (Para-6, 7, 11 and 12)
(v) Nandhini Deluxe V/s. Karnataka Co-Operative Milk Producers Federation Ltd. reported in AIR 2018 SC 3516 (Para-30)
(vi) Goenka Institute of Eduction and Research V/s. Anjani Kumar Goenka and others reported in AIR 2009 Delhi 139 (Para-11, 12 & 13) Not presence in India :
(vii) Toyota Jidosha Kabushiki Kaisha V/s. Prius Auto Industries Ltd. and others reported in MANU/SCOR/51800/2017 (Para-32 & 33) Dissimilarity :
(viii) Piruz Khambatta thro POA Zubin Khambhatta V/s.
Deputy Registrar of Trademarks in Civil Appeal No.18 of 2023 (Para 19)
(ix) Cadila Healthcare Ltd. V/s. Swiss Pharma Pvt. Ltd. and others reported in 2002GLH(1)234 (Para 23, 34 and 35) Registration does not create new rights :
(x) Karam Multipack Private Ltd. V/s. Karamgreen Bags in Appeal from Order No.136 of 2023.Page 13 of 17 Uploaded by NAIR SMITA V.(HC00186) on Fri Aug 01 2025 Downloaded on : Sat Aug 02 01:29:20 IST 2025
NEUTRAL CITATION C/CIA/2/2024 JUDGMENT DATED: 01/08/2025 undefined Present mark in Registry does not prove user/non user :
(xi) Neon Laboratories Ltd. V/s. Medical Technologies Ltd.
and others reported in 2015(6) ABR828 (Para 5 & 8)
(xii) Corn Products Refining Co. V/s. Shangrila Food Products Limited reported in AIR 1960 SC 142 (Para-17) Conclusion:
8. Considered the submissions. It is noticed that the appellant aggrieved by the order dated 28.03.2023 has filed this appeal seeking to quash and set aside the said order. From the averments made in the appeal and arguments canvassed, it is case of the appellant that appellant's registered Trade Mark 'NTN' and the sole distinctive element of respondent's mark 'NTW' bear striking similarities in their overall structure, phonetics and visual appearance. These both marks are three letter acronyms, beginning with 'NT' and ending with consonant, making them nearly indistinguishable, particularly when used for identical goods in the course of trade. To support their appeal, it was contended that the goods are used and purchased by the class of semi-literate or illiterate people and there is likelihood of confusion and therefore, the respondents ought to have refused registration application considering the objections raised by the appellant. Reliance was placed on Section 11 of the Trade Mark Act to submit that there is huge similarity between two marks. It was also case of the appellant that they are using the mark 'NTN' since 1975 and being prior user, this aspect ought to have been considered by the respondent authority.Page 14 of 17 Uploaded by NAIR SMITA V.(HC00186) on Fri Aug 01 2025 Downloaded on : Sat Aug 02 01:29:20 IST 2025
NEUTRAL CITATION C/CIA/2/2024 JUDGMENT DATED: 01/08/2025 undefined
9. From the documents on record, it is noticed that respondent No.2- Contact Bearing Private Ltd. filed Trade Mark Application No.1272866 for the goods falling under Class 7 with a user date as 31.10.1993. The said application was published in journal on 03.01.2005. Upon publication, the appellant came to know and filed opposition proceedings on 02.06.2005. The pleadings got completed and the matter was heard by Assistant Registrar and after hearing both the parties, the opposition filed by the appellant was rejected and trade mark registration was permitted to be proceeded in favour of respondent No.2. Therefore, the appellant preferred appeal under section 91 of the Trade Marks Act before this court within 30 days from the date of rejection of application. Considering the time taken to obtained the certified copy of the order the contention raised of belated appeal is not acceptable and the same is rejected.
10. On merits of the Mark, it is noticed that though contended in this appeal as well as in the opposite application that the appellant is prior user of Trade Mark 'NTN' and they have their presence, in India since 1971 is not acceptable because the appellant to support its contention has relied upon invoices of 'NTN Bearing Hongkon Limited', which is third party. Here, the mark which was applied by the appellant and permitted to be proceeded with by Respondent Authority is for NTN Corporation Ltd. 'NTN' Bearing Hongkong Ltd being a separated entity, the contention of prior registrant and user is not accepted and hence rejected.
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11. Moreover, Trade Mark application of the appellant (NTN Corporation Ltd) being Application No.958505 in Class-7 is dated 25.09.2000 wherein it is stated in user detail as 'proposed to be used'. Similar is situation in another Application No.2204498 in Class-99 on 13.09.2011 with a user detail as 'proposed to be used'. Both these applications are attached with the reply of the respondent at Page Nos.787 to 790. Therefore, prior user in India as contended is also not acceptable to this court.
12. Moreover, contention raised that they are deceptively and phonetically similar has been considered by the authority under order dated 28.03.2023. The respondent authority considered by placing reliance on material available on record as under:
"The applicant's trade mark is NTW (LABEL) 'NTW' and the opponent's trade mark is 'NTN'. On verification of evidence it is established that the applicant is using the trade mark since the year 1993 and the applicant produced copies of bills in support of their claim of use. On the other side the opponent is registered proprietor of trade mark NTN and as per record they claimed the use of the said trade mark since the year 1971.
In view of the above, I am of the opinion that the applicant is using the impugned trade mark since the year 1993 and the applicant's trade mark is not deceptively similar to opponent's trade mark hence both the trademarks are deferent as whole to each other."
13. This court also of the opinion that there is distinction Page 16 of 17 Uploaded by NAIR SMITA V.(HC00186) on Fri Aug 01 2025 Downloaded on : Sat Aug 02 01:29:20 IST 2025 NEUTRAL CITATION C/CIA/2/2024 JUDGMENT DATED: 01/08/2025 undefined between 'NTN' and 'NTW'. Both cannot be stated to be deceptively similar to each other. In the decision relied upon in the case of BMW (supra), comparison was made between 'B' and 'D'. In this case, letter 'W' cannot be deceptively similar to letter 'N'. There are several decisions referred. However, the decisions relied upon by the appellant are to be considered in relation to facts of each case.
14. Therefore, in the opinion of this Court, 'NTN' and 'NTW' cannot be stated to be deceptively similar as held by the authority. Therefore, this court does not find any merit in the appeal and the same is rejected.
15. Consequentially, Civil Application(s) also stands disposed of.
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