Intellectual Property Appellate Board
Worldwide Brands Inc. vs Smt. Dayavanti Jamndas Hinduja And Anr. on 15 March, 2006
Equivalent citations: 2006(32)PTC697(IPAB)
JUDGMENT
S. Jagadeesan, Chairman
1. These appeals are directed against the orders of the Assistant Registrar of Trade Marks, Chennai dated 25.1.2005 and 27.1.2005 as per details given below:
____________________________________________________________ Sl. No Application Description of Date of Order No. the Mark ____________________________________________________________ 1 597843 Camel Collection with device 25.1.2005 2 597845 Camel Trophy Adventure Wear 25.1.2005 3 597842 Camel collection with the device (square) 25.1.2005 4 597840 Camel Collection with the device strip 25.1.2005 5 597837 Camel Collection with device (neck label) 27.1.2005 6 597848 Camel 27.1.2005 __________________________________________________________
2. Even though there is a slight modification in the various marks sought for registration, the learned senior counsel for the appellant Shri Habibullah Basha requested that all the appeals can be taken up together since the issue involved is common to all. Shri H.P. Singh learned Counsel for the first respondent also accepted the said proposal and as such all the appeals were taken up for joint disposal.
3. Smt. Dayavanti Jhamandas Hinduja, Smt. Janaki Madanlal Hinduja, Smt. Veena Rajendra Hinduja and Smt. Nalini Dinesh Hinduja, partners of the registered partnership firm trading as M/s The Central Wearhouse, the first respondent herein filed.
Application No 597843 for registration of the mark Camel Collection with device Application No. 597840 for registration of the mark Camel Collection with the device strip Application No. 597842 for registration of the mark Camel Collection with the device (square) Application No. 597845 for registration of the mark Camel Trophy Adventure Wear Application No. 597848 for registration of the mark Camel Application No. 597837 for registration of the mark Camel Collection with device (neck label) in respect of device of readymade garments including footwear and head gear.
The said applications were advertised before acceptance. The appellant herein M/s Worldwide Brands Inc filed their opposition Nos. 61206, 61204,61205,61207,61506 and 54717 respectively opposing the registration of the impugned mark of the first respondent on the ground that they carry on an established international business in clothing, suits, coats, vests, trousers, shirts, sweaters, belts, neckties, scarves, hats, caps, footwear and headgear. Further it is stated that they are having worldwide business under the trade marks Camel Collections and Camel Collection with device which are registered and/or applied for registration in other countries. In India they have applied for registration for the mark Camel Trophy and Device under application No. 692742 on 29.12.1995 in class 25 in respect of clothing, footwear and headgear. By virtue of their worldwide use, their mark has acquired a distinctive nature. The impugned mark is virtually identical and/or deceptively similar to that of the trade mark of the appellant and as such the registration of the impugned mark would be contrary to Sections 11(a) and 11(e) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the said Act). Further the first respondent's mark cannot be taken into consideration as the same is dishonest, copying the well-known worldwide trade mark of the appellant and the registration of the impugned mark would be contrary to Section 9 as well as 18(1) of the said Act. After following the procedure of filing evidence in support of the parties and reply therefor, applications were taken up for disposal, the Assistant Registrar of Trade Marks rejected the opposition of the appellant and accepted the applications of the first respondent for registration on the ground that the appellant has not let in evidence with regard to their use of the mark in India and also they did not produce any evidence to show that their mark is a well-known mark in India thereby it enjoys the transborder reputation. In the applications filed by the appellant for registration of the trade mark in India the claim is one of proposed user and the applications are of the year 1995 and 2000. The appellant did not produce any evidence in respect of their use of the mark in India and as such their opposition is devoid of any merits and consequently the trade mark of the first respondent were directed to be registered. As against the said orders of the Assistant Registrar, these appeals have been filed.
4. Shri Habibullah Basha, learned senior counsel on behalf of the appellant contended that the Assistant Registrar totally failed to consider the plea of the appellant that originally the camel brand was owned and used by M/s R.J. Reynold Tobacco in class 25. This claim was made in the oppositions filed by the appellant and also in the evidence let in thereafter. The learned senior counsel further contended that their camel brand cigarettes were very familiar in India and they were available in the duty free shops and also in other channels. As the brand was so familiar in respect of cigarettes, the adoption of the same by the first respondent is nothing but copying the well-known mark of the appellant. He also relied upon several documents to claim the transborder reputation by drawing our attention in respect of registration of the mark in various foreign countries and also the sale of the products in other countries where the appellants are having stores. He further contended that the adoption of the mark by the first respondent being in bad faith as the first respondent was a licensee under a licence agreement entered into with the registered user of the trade mark of the appellant. The invoices relied upon by the first respondent for the use of the impugned mark cannot be for their own benefit as the manufacture of the product was on behalf of either the licensee or the registered user of the appellant. Consequently it is not open to the first respondent to claim any independent right in respect of the use of the mark.
5. Learned Counsel for the first respondent on the contrary contended that the claim of trans-border reputation was not established by the appellant. Even assuming that such reputation has been made out, it was only in respect of cigarettes. First respondent's claim of the use of the trade mark is in respect of readymade garments. Appellant has totally failed to establish that they have earned a reputation in India by using their mark in respect of readymade garments or otherwise. They also failed to make out a case that their mark had attained distinctiveness in India. Apart from that the appellant also did not produce any evidence to prove their plea that their trade mark was advertised in India and thereby their mark is so familiar in India and has become a well-known mark in India and the same did not attain any transborder reputation and consequently the opposition fails. Since it is a well considered order and the same do not warrant any interference, the appeals are liable to be dismissed.
6. We have heard the contentions of both the counsel. First we will take up the claim of transborder reputation put forth by the appellant by taking into consideration the evidence referred to by the learned senior counsel for the appellant. In volume-1 of the typeset reliance was placed on pages 12, 13, 49, 51, 52, 53, 54, 168 and 169 which are the Worldwide Camel Brand and the registration of the same. There is no dispute by the first respondent that the appellant had registered the 'Camel' brand in various forms either as a word mark or with device mark in various countries. Hence, it is unnecessary for us to discuss anything in detail on this aspect. Pages 168 and 169 relates to advertisement which also admittedly in other countries and not in India.
7. Learned senior counsel for the appellant further relied upon the calendar of the year 1954 which is at page 403 of volume-2 of the typeset in support of his plea that the 'camel' brand cigarettes were familiar. We perused the same and the calendar is in Spanish language which we were able to find out from the note printed on the advertisement itself. Similarly the advertisements through calendar of the year 1957 and 1959 relied upon by the learned senior counsel for the appellant at pages 408 and 413 of volume-2 of the typeset also contained the note that it was printed in Spanish language. Reliance placed on advertisements at page 490 of volume-2 of the typeset relates to various articles, of which one advertisement is three post cards of R.J. Reynolds. These advertisements have no relevance for the simple reason that there is absolutely no evidence on record that those advertisements were made India in any of the magazines or in any other form. There is no evidence to show that the calendars were in circulation in India. The next document relied upon by the learned senior counsel for the appellant is a list of articles available in duty free shops in Indian airports. At page 599 the Camel filter CPB and Camel light in respect of cigarettes are mentioned. He also placed reliance on the declaration made by Mr. Richard J. Reynold, President of R.J. Reynold Tobacco Company and pleaded that R.J. Reynold Tobacco Company is the registered proprietor of the word mark 'Camel'. Here again there is no dispute with regard to the same and in the declaration President of the company has made it clear that the trade mark is used in respect of its cigarettes. Similarly exhibit "I" marked at page 631 of volume 2 of the typeset refers the Brands an international review by, interbrand; at page 633 reference is made to Camel brand which was launched by R.J. Reynolds in 1913 and was consistently associated with a particular type of user and it refers to cigarettes. The learned senior counsel also relied upon The World's Greatest Brands which starts at page 635 of volume 2 of the tupeset. At page 639 tobacco and accessories the camel brand stood at 2nd position. At page 637 it is at 38th position. On the basis of these documents the learned senior counsel contended that the camel brand of the appellant is worldwide brand and even though it is in respect of tobacco or cigarettes, in India such cigarettes with the same brand were made available in the duty free shops and thereby the public at large are fully aware about the said trade mark and consequently the same has attained the transborder reputation.
8. Learned senior counsel for the appellant also relied upon the following judgments in support of the plea of transborder reputation:
N.R. Dongre and Ors. v. Whirlpool Corporation Calvin Klein Inc v. International Apparel Syndicate 1996 (16) PTC 293 Alfred Dunhill Limited v. Kartar Singh Makkar and Ors. 1999 PTC (19) 294 Pizza Hut International LLC and Ors. v. Pizza Hut India Pvt. Ltd. 2003 (26) PTC 208 Hanuman Mal Choradia v. F.W. Woolworth Co.and Anr. 2004 (29) PTC 477
9. Learned Counsel for the first respondent vehemently contended that the documents relied upon by the appellant at page 61-128 in volume-1 cannot be relied upon as there are certain black outs in those documents. The evidence relied upon by the appellant reveals that first respondent is the prior user in India of the impugned mark and it relates to different goods. When admittedly the trade channel for the appellant's goods are totally different, there cannot be any confusion, even assuming that the appellant's mark is Worldwide brand. The plea of the appellant that the mark 'camel' is worldwide is also not made out and further except the vague statement that the camel brand cigarettes are available in the duty free shops, there is absolutely no evidence to establish that the said mark is so well-known in India or the same attained the transborder reputation. The judgments relied upon by the learned Counsel for the appellant of course throw some light on the transborder reputation. We make it clear that transborder reputation can be established only by letting evidence before Registrar of Trade Marks that the mark is so well known or familiar in India and most of the general public are fully aware about such mark connecting the appellant. The documents relied upon by the learned Counsel for the appellant with regard to advertisements as well as calendar might have been available in other countries. In the absence of any evidence to show that they were in circulation in India, the same cannot be relied upon for any transborder reputation. The only judgment relied upon by the learned Counsel for the appellant which has some relevance is N.R. Dongre v. Whirlpool. In the said case the Supreme Court has held that though there was no sale in India, the reputation of the plaintiff company was travelling transborder to India as well as through commercial publicity made in magazines which are available in/or brought to India. The following is the gist of the finding:
The "WHIRLPOOL" has acquired reputation and goodwill in this country and the same has become associated in the minds of the public. Even advertisement of trade mark without existence of goods in the mark is also to be considered as use of the trade mark. The magazines which contain the advertisement do have a circulation in the higher and upper middle income strata of India society. Therefore, the plaintiff acquired transborder reputation in respect of the trade mark "WHIRLPOOL" and has a right to protect the invasion thereof.
10. In the case on hand the appellant has totally failed to produce any evidence with regard to commercial publicity either in magazines or otherwise of the appellant's mark in India. Even if the appellant's contention is accepted it relates to cigarettes which was available only in the duty free shops. The public at large may not have any knowledge except those who visit the duty free shops in the airports to know about the trade mark of the appellant. Further, when it is admitted by the appellant himself that they have no sales or no store or distributor in India and in the absence of any publicity in India, we have to be more careful in considering the plea of transborder reputation. Since the appellant has failed to discharge the initial burden of proving their reputation as held by the Chancery Division in Arthur Fairest LD's case reported in 1951 RFC 197 @ p. 207 the opposition is liable to be disallowed which has been accordingly done by the Registrar.
11. In the case of Athletes Foot Marketing Associates v. Cobra Sports Ltd. 1980 RFC 343 Walton J, held as follows:
...It would appear to me that, as a matter of principle, no trader can complain of passing off against him in any territory and it will usually by defined by national boundaries, although it is well conceivable in the modern world that it will not in which he has no customers, nobody who is in trade relation with him. This will normally shortly be expressed by saying that he does not carry on any trade in that particular country (obviously, for present purposes, England and Wales) but the inwardness of it will be that he has no customers in that country, no people who buy his goods or make use of his services (as the case may be) there.
He expressed this view before going on to carry out a comprehensive review of the authorities at the end of which he concluded that they led to the conclusion that:
It does not matter that the plaintiffs are not at present actually carrying on business in this country provided that they have customers here. Equally, it is of no moment, if they have customers here, that they have a reputation in the general sense of the word in this country. It is also of no moment that reputation may have been brought about by advertising this can be of no moment unless (as it did in C and A case) it brings in customers, when of course, once again there is no need to rely upon it.
The members of the Court of Appeal in the Budweiser case (Anbeuier-Butch Inc v. Budejovicky Budvar Narayani Pudnik (1984 FSR 413) regarded the presence of Customers in this country as the key to the question whether the requisite goodwill had been established and Oliver L. J. in particular thought Walton J's finding helpful but pointed out that it:
...needs, in the light of authorities, to be approached with the caveat that "customers" must not be read restrictively as confined to persons who are in a direct contractual relationship with the plaintiff, but includes the persons who buy his goods in the market.
12. The learned senior counsel for the appellant next contended that registration of the first respondent's mark is contrary to Section 11(1)(a) of the Trade Marks Act, 1999, since the marks are similar and further it was contended that the respondent's use of the same mark is in bad faith and as such Section 33 of the said Act will not safeguard the vested right of the respondent. The provisions of Trade, Marks Act, 1999 were relied upon since the same came into force when the applications for registration were taken up for consideration.
13. The contention of the learned senior counsel for the appellant that the appellant had entered into a trade mark licence agreement with Dornbusch & Co permitting the licensee to manufacture shirts, sweat/T-shirts, knitwear. The respondent manufactured the readymade garments for the licensee of the appellant and as such the manufacture of the readymade garments by the respondent is on behalf of the licensee of the appellant. Consequently the respondent cannot claim any right in respect of the disputed mark. Hence, the claim made by the first respondent is in bad faith. The licence agreement was filed in MP 16-21 of 2005 as Arnnexure-B in the typeset filed along with the affidavit of Shri V. Seetharaman S/o Late Shri N.K. Venkatachalam dated 17.2.2006, Schedule-A of the licence agreement mentions licensed articles as that of shirts, sweat/T-shirts, knitwear. The trade mark is 'CAMEL, Camel Design and Camel Collection (word) in the respective form. Territory is mentioned as Benelux, Switzerland, Denmark and Israel. As per the licence agreement, the licensor granted the licensee permission to use the trade mark set forth in Schedule-A of the licensed articles and in connection with the manufacture, advertisement, permission, sale and distribution thereof in the territory described therein. In the territory mentioned therein, the respondent's place is not mentioned. Even assuming that the licensee of the appellant placed orders with the respondent in respect of readymade garments and obtained the same, there is nothing on record to show that the respondent was informed, about the mark to be affixed on the garments. It is the normal practice in the trade that any foreign trader who gets the readymade garments from the manufacturer in India they get the garments alone and the label containing the trade mark will be affixed in their place. In the absence of any evidence to show that the licensee of the appellant requested the respondent herein to manufacture the garments with the trade mark 'CAMEL', we find it very difficult to accept the plea put forth by the appellant. Though a number of judgments were relied upon, we do not find any need to refer to them as the principles laid down are the same. On the same ground the plea put forth under Section 18 of the said Act also fails.
14. The learned Counsel for the first respondent raised the additional plea that the appeal was filed by the advocate Shri Seetharaman and he has signed the appeal memo and as such the appeal is not maintainable. We are not inclined to go into the technical plea as we agree with the findings of the Assistant Registrar of Trade Marks, Chennai on merits.
15. Accordingly the appeals fail and are dismissed. However there will be no order as to costs. The MP Nos. 16 to 21 of 2006 were filed for additional evidence and since that has been taken into consideration while disposing of the appeal, the MP Nos. 16 to 21 stand ordered. As the main appeals have been disposed of, the M.P. Nos. 40-45 of 2005 for stay of the order of the Assistant Registrar of Trade Marks does not survive and are dismissed.