Trademark Tribunal
P.M. Diesels Ltd. vs Daimler Chrysler Ag on 23 March, 2005
Equivalent citations: 2005(31)PTC275(REG)
ORDER
Dharam Singh, ARTM
1. On 16.2.1993 M/s. P.M. Diesels Ltd., Aji Industrial Estate, Rajkot, Gujarat (hereinafter referred to as applicant) applied for registration of trade mark 'BANZO' in respect of Diesel oil Engines and parts thereof (not for land vehicles) electric motors, Mono Blocks, submersible pumps, Centrifugal pumps and parts thereof falling in class 7 under application No. 591019 under the provisions of Trade & Merchandise Marks Act, 1958. The user of the mark was claimed since 1.4.1988. Eventually, the impugned application was advertised as accepted in the trade marks journal No. 1215(S) dated 21.1.2000 at page 64.
2. On 28.2.2000, M/s. Daimler Chrysler AG, Germany (hereinafter referred to as opponent) filed a notice of his intention on form TM-5 to object the registration of the impugned application on the grounds raised under Sections 9, 11(a), 11(e), 12(1) and 18(1) of the Trade & Merchandise Marks Act, 1958 inter alia claiming the world wide use, reputation and registration of his trade marks BENZ, MERCEDES BENZ, DAIMLER BENZ and THREE POINTES STAR DEVICE under different numbers in relation to goods falling in class 6, 7, 8 & 12 for past several decades and stating:
3. That the opponents had established their business as manufacturers and merchants of vehicles, apparatus for locomotion by land, air or water etc. They own and use the marks BENZ, MERCEDES, THREE POINTED STAR DEVICE, which are also registered and/or applied for registration throughout the world, including India, and
4. That their operation in India dates back to 1926 and members of the trades and public recognize BENZ as distinctive of the products and business of their company alone.
5. That the trade mark BENZ in class 7 in respect of diesel oil engines and parts thereof (not for land vehicles) electric motors, mono blocks, submersible pumps, centrifugal pumps and parts thereof are deceptively similar to their trade mark. The applicant had adopted the trade mark BANZO solely with the intention of coming as close as possible to the opponents mark BENZ, and the use of the said mark by the applicants is calculated to deceive and cause confusion and lead to dilution of the distinctiveness of the opponents trade mark BENZ.
6. That the applicants are not entitled to registration of the trade mark BANZO as they are not honest and concurrent users within the meaning of Section 12(3) of the Act.
7. On 21.3.2001, the above named applicant filed counter statement denying all material objections & averments except what specifically admitted by him inter alia claiming honest adoption and user of the impugned mark since 1.4.1988 other special circumstances in his favour and stating:
That the mark BANZO of the applicants, it was urged, is sufficiently distinct and dissimilar, visually as well as structurally from the opponent's mark BENZ.
That they, alongwith their predecessor in title, conceived and adopted the trade mark BANZO in 1988 and since then they have been using the said mark in respect of their products, openly and continuously.
That there is no registration of the alleged trade mark BENZ in respect of applicants goods e.g. diesel oil engines parts thereof etc. That the goods of the applicant and those of the opponents are quite different and distinct, falling in different set of classes.
That the applicants have been using their mark since 1988 and since then there has been no instance of any deception or confusion, In fact, there is no likelihood of any confusion or deception being caused in the course of trade between the trade mark BANZO and BENZ and the registration of the applicant's trade mark would not be contrary to the provisions of Sections 12(1) of the Act.
8. On 24.9.2002, the opponent filed evidence by way of statutory declaration of Derek Moore in his capacity of a patent attorney of the opponent co. alongwith exhibit 'A' contained several enclosures including 2 invoices dated 27.6.1996 (New Delhi) and 7.11.1996 (Maskan) in support of opposition.
9. On 29.10.2002, the applicant filed an affidavit of Nitin Patel, one of the Directors of the applicants' company alongwith Annexure-'A' containing a set of invoices from page 1 to 17 and Annexure 'B' containing a set of advertisement of the mark run from 18 to 29 pages as evidence in support of application inter alia stating & affirming annual sales of the goods under the trade mark BANZO from 1988-89 to 2001-02. The opponent did not file any evidence in reply as called for vide this office letter No. TLA/GEN - 610 dated 1.5.2003.
10. Eventually, the matter was set down for hearing and the first time hearing was posted in the matter on 6.1.2004. After adjournment of hearing thrice on the request of the parties herein, the matter came up before the undersigned for final hearing on 23.7.2004, when Mr. Saurav Mukherjee, Advocate of Remfry & Sagar appeared for the opponent, and Shri R.K. Agarwal, Advocate of Agarwal Associates appeared for the applicant. After hearing the arguments advanced by advocates of both sides, the matter was concluded on the same day. I reserved my order and decision thereon.
11. The objections raised in the notice of opposition come within the ambit of Sections 9(1)(a), 9(2)(a), 11(1), 11(3) and 18(1) of the Trade Marks Act, 1999 (hereinafter referred to as Act). I shall examine all the objections one by one, but for the sake of convenience, I shall take up the objection raised under Section 11(1) of the Act first.
12. While raising the objection under Section 11(1) of the Act, the opponent has alleged that the trade mark sought to be registered by the applicant is deceptively similar to his trade marks BENZ, MERCEDES BENZ, DAIMLER BENZ and the goods are also identical and/or of the same description of which the opponents' trade mark are duly registered, therefore, the impugned trade mark be refused on relative ground under Section 11(1) of the Act.
13. Section 11(1) of the Act provides that Subject to the provisions of Section 12 of the Act a trade mark shall not be registered if its identity with an earlier trade mark and similarity of goods or services covered by the trade mark or its similarity to an earlier trade mark and similarity of goods or services covered by the trade mark, because it is likely to cause confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. In the present case, the question to be determined is whether:
(1) The impugned trade mark BANZO is identical with or deceptively similar to the opponent's trade mark BENZ and others, and (2) The goods covered under the trade mark sought to be registered is identical or similar to the set of goods under the opponent's trade mark.
14. It has often been emphasized that each case depends upon its own particular facts and circumstances. Decided cases are therefore, of little assistance in determining the question of deceptive similarity in a particular case. They are useful only insofar as they lay down any general principles. .
15. Section 2(1)(h) of the Act defines expression 'Deceptively similar' as follows:
"A mark shall be deemed to be deceptively similar to another trade mark if it nearly resembles that other mark as to be likely to deceive or cause confusion".
16. At the outset, I must state that the question of deceptive similarity of the marks must be decided with reference to the trade marks as wholes and it is not right to take a part of a mark and compare it with a part of the other trade mark.
17. It has been repeatedly emphasized in the decided cases that the question whether the marks are likely to deceive or cause confusion is a question of first impression, although such prima facie view needs not necessarily be conclusive always; the ultimate conclusion will depend upon the various factors including the nature of goods covered, their purpose, the class of customers, trade channels etc.
18. The similarity between the impugned mark and the applicants' mark has to be judged not only by considering the mark as registered but also the mark as actually used by the registered proprietors. Christiansen's Tm. (1886) RPC 54 at 63 (CA).
19. In Pianotist cases, Justice Parkar has established a well settled principle of comparison of the trade marks as follows:
"You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be like to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade mark is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that one man will be injured and other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case".
20. In the present case, so far as the opponents' trade marks BENZ, MERCEDES, DAIMLER BENZ, THREE POINTES STAR DEVICE are concerned, these are prima facie different from the applicants' trade mark is BANZO phonetically, visually and structurally, therefore, the question of deception and likelihood of confusion from the use of the impugned trade mark BANZO does not arise. However, the comparison of goods under the opponents' above trade marks with the set of goods under the impugned application even to invoke the objection under Section 9(2)(a) is not necessary.
21. Now, let me decide whether the impugned trade mark BANZO sought to be registered in respect of the goods set out thereunder clashes with the opponent's mark BENZ duly registered in relation to his goods with regard to deception and likelihood of confusion.
22. The opponents' trade mark Benz consists of 4 alphbetic characters, whereas the applicant's mark BANZO contains 5 alaphabets. Secondly, an of addition of letter 'O' at the end and presentation of letter 'A' as the second alphabet in the applicant's trade mark make the impugned mark BANZO different from the opponent's mark phonetically, visually and structurally. Further, the applicant's mark BANZO is not a dictionary word, it does not carry a meaning and it being a coined word is an inherently distinctive trademark, whereas the mark BENZ being a dictionary word carries the significance as a surname of the German Engineer and motor manufacturer, who in 1885 built the first vehicle to be driven by an internal combustion engine; and thus the applicant's trade mark BANZO as such is different from the opponents' trade marks in idea also. As per evidence filed by the applicant the impugned trade mark BANZO is not only used in English but also in Devanagri as and other regional languages including Punjabi, Bangla, Urdu, Assamee, Gujarati etc. simultaneously. Further, the competing trade marks are different in writing style.
23. As far as the goods under the trade mark BENZ is concerned, it is 'Machine and machine tools, motors (except for land vehicles) machine coupling, beltings (except for land vehicles) large size of agriculture implements and incubators' in case of the opponents' trade mark whereas the applicants' trade mark is sought to be registered in respect of 'diesel oil engines and parts thereof, electric motors, monoblock pumps, submersible pumps, centrifugal pumps and parts thereof. Between the two sets of goods under the rival marks, a few articles including 'motors' are similar, but at the same time as per evidence filed by opponent in support of opposition no goods including those which appears to be the same or similar have been sold by the opponent under the trademark BENZ. The opponent has not filed a single document to show the use of the mark BENZ alone in relation to any goods falling even in class 12. What the evidence filed by the opponent shows is that the opponent company is carrying on the business in automobiles, mostly in motor cars under the trade mark MERCEDES BENZ, DAIMLER BENZ with three points star device, which is not relevant in the present case. Further, the opponents have not registered the trade mark BENZ in relation to Diesel Oil Engines and parts thereof in respect of which the applicant has mostly used the impugned trademark during the course of trade. I do agree with the arguments advanced of Shri R.K. Agrawal, Advocate for the applicant that the registration of the mark BENZ in class 7 is not important, what important to see is whether the mark is being used on the goods in respect of which it is registered and that the opponent has been using the mark BENZ on any goods falling in class 7. Further, in Pianotist case held "No evidence has been given as to confusion, or that the circumstances are bought by the spoken name as opposed to the written one. The Comptroller, having exercised his discretion, the case now turns only on Section 72. The Registrar having passed the mark in his discretion, the Court does not generally go behind the exercise of his discretion. The applicants are bound to show that the Trade Mark if honestly used is reasonably calculated to deceive."
24. Although, the impugned trade mark is held different from the opponent's trade marks MERCEDES, DAIMLER BENZ, THREE POINTS STAR DEVICE and BENZ alone, however, the class of customers plays an important role in deciding the deceptive similarity between the marks. In comparison of trade marks, it is a well settles proposition that likelihood of confusion or deception had to be considered only among the class of customers of the goods in question and not among the general public at large. The goods of the applicant are generally used by farmers in the agriculture sector for irrigation, while the goods of the opponents are used by affluent and rich class of the society including business man and executive for communication of journey and as such the nature and the purpose of goods under the rival marks are different and the consumers of the applicants' goods and that of the opponent's goods are different and do not conflicts with each other. Further, the customers of the opponent's goods generally being from high society includes literates, executives, prudent and technical persons, who in my opinion will never commit the mistake to purchase the applicant's products assuming the trade connection of that with the opponent's manufacture and the opponents customer, who is going to purchase a car which costs Rs. 20,00,000 to 2 Crores will use his best intelligence and exercise utmost degree of care at the time of purchase; he will not simply believe what the counter boy says about the product. Probably, he will go through each and every possible details of purchase including brand, model, manufacture, cost, mileage etc. The opponent's goods i.e. Car, Jeep, Truck, Bus can also be booked on telephone, website by a customer and the delivery generally is effected by ship whereas in case of applicant's goods, a farmer will go to the show room/outlet and purchase a diesel oil engine which costs Rs. 5,000 to 15,000 pays for it in cash or by cheque and takes the delivery at counter and brings it home in a tractor trolley. Further, the trade channels, outlets, show rooms of the goods of the parties herein are totally different. Therefore, there is no possibility of likelihood of confusion among the customers purchasing the opponent's goods.
25. In the matter of an application by the Pianotist Company Ltd. (1906 RPC 774) an application was made for registration as a trade mark of word 'Neola' for a piano player being musical instrument included in class 9. The registered proprietor of a trade mark 'Pianola' registered for all goods in class 9 opposed the registration. The controller decided against the opponent and ordered the registration to proceed. The opponent appealed. The appeal was referred to the court.
Held: "having regard to the kind of customers for such goods and difference in the articles actually sold under the names, there was not likely to be any confusion. The appeal was dismissed with cost".
It is also held "one cannot leave out any part of the applicants' trade mark in -comparing the marks (Re Farrow's Trade Mark 7 R.P.C 260). Regard must be had to the class of goods and the class of customers. In dealing with some goods sound is of importance, but in a case of this kind it is of little importance".
It is further held "Now, my opinion is that having regard to the nature of the customer, the article in question, and the price at which it is likely to be sold, and all the surrounding circumstances, no man of ordinary intelligence is likely to be deceived. If he wants a 'Pianola' he will as for a 'Pianola', and I cannot imagine that anybody hearing the word 'Pianola', if pronounced in the ordinary way in the shop, and knowing the instruments as all shopmen do would be likely to be led to pass off upon that customer a 'Neola' instead of 'Pianola'.
Further, before applying for registration of the impugned trade mark, the applicant filed a request on form TM-54 for preliminary search in class 7 and obtained nil report. Secondly, the Registrar has straightway accepted the application for registration on the fact that there was no conflict mark shown on record and thirdly the applicants are the registered proprietor of the trade mark BANZO under No. 591019 for the same goods falling in class 7 which the opponent has never opposed. This creates other surrounding circumstances in favour of the applicants to grant registration under Section 12 of the Act.
26. In Osram Gesellschaft Mit beschrankter Haftung v. Shyam Sunder and Ors., 2002 (25) PTC 198 (Del)(DB), it was held 'admittedly, respondent has been using the trade mark 'OSHAM' in respect of the goods in class 9 for electric iron as well as his goods under class 7 for mixer, juicer, grinder and washing machine etc. Respondent has also been trading in its goods for which he applied in class 11 since August, 1980. To us it appears that there had been honest concurrent use. The respondent has been able to carve out special circumstance as stipulated under Sub-section (3) of Section 12 of the Act which permits even same and deceptively similar trade mark to another by the Registrar of course subject to such condition as may deem just and proper to the Registrar".
27. In an application by Smith Hayden & Co., Ltd., (1946 RPD 97) for registration of trade mark 'Ovax', it was held there was no possibility of confusion and deception with the opponent's mark 'Hovis' amongst traders and the public.
28. In the case of Singer Manufacturing Co. v. The Registrar of Trade Marks and Ors., It was held that the mark 'Sagar' was not deceptively similar to the mark 'Singer'
29. In the matter of Crook's Trade Mark, it was held that the Mark 'Swankie' in respect of the detergents and opponent's mark SWAN for soap had not the slightest connection nor was there any serious danger of confusion arising.
30. In a Civil Appeal No. 3272 of 2001 (arising out of SLP(C) No. 15994 of 1998) in Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., the Hon'ble Supreme Court held "Broadly stated in an action for passing off on the basis of unregistered trade mark, generally for deciding the question of deceptive similarity the following factors are be considered:
(a) The nature of the mark i.e. whether the marks are word marks or labels marks or composite marks i.e. both word and label.
(b) The degree of resemblances between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, or their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods, and
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case".
31. I do not agree with the arguments advanced by the Ld. Advocate for the opponent that the trade mark BANZO in class 7 in respect of diesel oil engines and parts thereof, electric motors, monoblock pumps, submersible pumps, centrifugal pumps and parts thereof are deceptively similar to their trade mark BENZ, MERCEDES BENZ, DAIMLER BENZ, THREE POINTED STAR DEVICE and the adoption and use of the trade mark by the applicant is calculated to deceive or cause confusion and leads to dilute the distinctiveness of the opponent's trade mark and the case law in Bajaj Auto Ltd. v. J.K. Industries Ltd., (1992 PTC 18) relied and referred to by the advocate is not applicable in the present case because the facts and circumstances in this case are different. The objection raised on relative ground under Section 11(1) is devoid of merits, hence stands rejected.
32. Coming to the next objection raised under Section 9(2)(a) of the Act, I would like to state that in the preceding paragraphs the opponent's trade marks BENZ, MERCEDES BENZ, DAIMLER BENZ AND THREE POINTED STAR DEVICE are held distinct and different from the impugned trade mark BANZO, therefore, the issue of claiming the reputation and goodwill by the opponent in the present case is irrelevant. However, the opponents have not filed even a single document to shows that the opponents have used their trade marks BENZ in respect of the goods in relation to which it is duly registered in class 7. The opponent has also not stated annual sales of goods in his affidavit and in the absence of the same, there is no evidentiary value of evidence with regard to use under Section 129 of the Act, 1999 and as such, no reputation and goodwill of the mark can be assessed, whereas the applicants have adduced a cogent evidence stating advertisement and promotional expenses and annual sales of their goods under the mark runs into crores of rupees and established the use of the impugned trade mark claimed since the year 1988, because ultimately the onus is on the applicants to prove that the mark in question is not deceptively similar to the opponent's mark and he is entitled to registration under special circumstances.
33. In the matter of Rado Watch Co. Ltd. v. Warrior Metal Works, Ludhiana, (1992-PTC-108) the trade mark RADO was allowed for registration as the opponents failed to adduce sales figures of their goods in India as against which the applicants had successfully produced evidence of use and reputation in respect of their goods. Since the opponents have failed to establish that the impugned trade mark is deceptively or confusingly similar to their registered trade mark 'BENZ', the objection raised under Section 9(2)(a) for refusal of the impugned application on obsolete ground is not maintainable, hence stands rejected.
34. While coming to next objection under Section 11(3) of the Act, I would like to say that since the user of the mark in the present case is established from the year 1988 onwards and the applicant's trade mark BANZO in duly registered under No. 591019 under the statutory of the Trade Marks Act, 1999 the mark in question is entitled to the protection in the court of law. Therefore, the objection raised under Section 11(3) of the Act is not maintainable, hence stands rejected.
35. Now, I shall examine the objection raised under Section 9(1)(a) of the Act. While raising this objection, the opponent's has alleged that the impugned trade mark is not distinctive but he has not assigned the reason as to why the mark is not distinctive. Anyhow, the trade mark BANZO is a coined word, it is not a dictionary word and does not carry a meaning, it is not personal name and/or surname. The test of acquiring distinctiveness is that the mark when applied to the goods should indicate to the purchasers that they are the goods of particular a person and of nobody else. The distinctiveness must carry with it feature that the goods distinguished are the goods manufactured by particular person or coming from particular trade source and by no others. A word or words to be really distinctive of a persons' goods must generally speaking be incapable of application to the goods of anyone else. (Imperial Tobacco v. Registrar of Trade Marks and see Chivers v. Chivers 17 RPC 420 and 430 and Shredded Wheat 53 RPC 125 at 145. Being a coined word the impugned trade mark BANZO is inherently distinctive under the provisions of the Act and by virtue of continuous use by the applicant and its predecessor in title and under the test of acquiring distinctiveness it connotes the goods of the applicant and none of else.
36. So far as the opponent on other hand is concerned, he has failed to make out a case in his favour and there can be no merit in the ground taken under Section 9(1)(a) of the Act, hence stands rejected.
37. Next, I shall deal with the opponent's last objection under Section 18(1) of the Act. Since the opponents trade marks are held dissimilar and different from the impugned trade mark and he has failed to establish the use of the mark BENZ in respect of the goods thereunder in class 7, he cannot claim to be the proprietor of the mark in question. However, the impugned trade mark BANZO applied for is a coined word, which is inherently distinctive within the provisions of the Act. Further the applicant and his predecessor in title has been continuously using the same on his goods since the year 1988 without any interruption during the course of trade. No legal notice calling upon the applicant to desist from using the impugned trade mark on his goods was served by the opponent. He has not filed any legal proceedings against the applicant in the court of law. Further, the applicant is the registered proprietor of the mark BANZO in class 7. He is termed as the proprietor of the trade mark because in a trade mark, the statutory rights can be acquired by way of honest adoption of the mark, use, registration and by transfer of the proprietary rights. Since he qualifies all three conditions, the applicant is the owner of the mark. I do not find any reason for holding the opponent to be the proprietor of the impugned trade mark, hence, the objection raised under Section 18(1) is rejected.
38. Finally, I am called upon to exercise the discretion vested with me under Section 18(4) of the Act. Since opponent's all objections have been categorically examined and rejected, I find no reason to use the said discretion adversely to the applicant. I am confident that the present opposition proceedings are frivolous, fictious, absurd and without merit and have been filed by the opponent out of trade jealous.
39. It is hereby ordered that opposition bearing No. AMD-55107 is dismissed and application No. 551019 in class 7 shall proceed to registration.
40. It is hereby further ordered that the opponent shall forthwith pay a sum of Rs. 100 (Rupees One Hundred only) to the applicant as costs of these proceedings.
41. Signed and sealed at Ahmedabad this 23rd day of March, 2005.