Bombay High Court
National Food Products vs Madras Food Products And Anr. on 27 September, 1991
Equivalent citations: 1993(1)BOMCR105
JUDGMENT B.V. Chavan, J.
1. By this application filed under sections 107, 108 read with section 56 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as "the Act'), the petitioner seeks relief against the respondents for cancellation of his trade mark and consequential rectification of the trade mark register maintained by the respondents No. 2-the Registrar of trade marks.
2. The petitioner amongst other things, produces a bakery product viz., bread. The package of the bread manufactured by the petitioner which bears the trade mark "Picnic bread" in a certain colour scheme is registered as a registered trade mark on 19-1-1983 under Trade Mark No. 394668. On 7-10-1984 petitioner filed Civil Suit No. 2 of 1984 under section 205 of the Act against the respondent inter alia asking for an injunction restraining the respondent No. 1 from selling their bakery product in a package which was deceptively similar to that of the petitioner. On 18-10-1984, the respondent No. 1 filed his reply in the said suit. At a later stage, in the said suit, on 3-8-1985, respondent No. 1 vide Ex. 32 produced his trade mark bearing No. 423318 dated 31-10-1984. In view of the production of the said trade mark in the suit, the petitioner initially filed the miscellaneous application under sections 107 and 108 claiming relief of rectification, but at a later stage by a pursis dated 18-12-1990, the petitioner informed the Court that this should be also treated as an application under section 56 of the Act for cancellation of the trade mark of the respondent No. 1.
3. Although Counsel has appeared on behalf of the respondent No. 1 after filing of the pursis for treating the application as one under section 56 of the Act, no reply as such has been filed to the original application filed on behalf of the petitioner.
4. Now, the primary question that has to be considered is, whether it is proved that the trade mark which is registered by the respondent subsequent to the registration of the petitioner's trade mark is one which contravenes the provision of section 12(1) of the Act which prohibits the registration of a trade mark in respect of any goods or description of goods identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods. Therefore, what is required to be decided is, whether the trade mark registered by the respondent is identical with or deceptively similar to a trade mark which is registered by the petitioner.
5. However, before going to the said basic question, it is necessary to deal with certain objections raised on behalf of the respondent No. 1. In the first instance, it was urged that the respondent No. 1 has been manufacturing bread right from the year 1980, but there was nothing to show that any loss was caused to the petitioner on account of such activity of the respondent No. 1. It was contended that respondent No. 1's trade mark was registered in the year 1984 and at that time, no objection was raised on behalf of the petitioner and in such circumstances, it will have to be held that the Registrar was satisfied that in his opinion there was honest and concurrent use on the part of the respondent No. 1 and consequently he allowed the use of the trade mark by using his discretionary power under sub-section (3) of section 12 which is an exception to sub-section (1) of section 12. As against this, it was pointed out on behalf of the petitioner that it is not obligatory to file an objection on every application for registration and no inference of acquiescence or a case of honest and concurrent use can be inferred in the absence of any pleading to that effect. It was pointed out that respondent No. 1 got the trade mark registered during the pendency of the suit of the petitioner viz., Civil Suit No. 2 of 1984, and therefore, there was no question of any acquiescence on the part of the petitioner, nor it can be said in the absence of any material to that effect that the Registrar had used his discretion under sub-section (3) of section 12 after holding that the user of the respondent No. 1 was honest and concurrent. In my view, the argument advanced on behalf of the petitioner deserves to be accepted. No case is made out, in fact there is no pleading that the Registrar while granting registration to the respondent No. 1 had used his discretion under sub-section (3) of section 12, looking to the conduct of the petitioner in filing the suit and as soon as the respondent No. 1 got his trade mark registered, in filing the present petition, it can hardly be said that this is a case of acquiescence. The question whether loss is occasioned to the petitioner or not, is not material so far as the present proceeding is concerned. Therefore, merely because, the petitioner did not appear before the Registrar to file an objection while considering the application of the respondent No. 1, no inference can be drawn against the petitioner of that account.
6. It was next contended on behalf of the respondent No. 1 that section 2(h) of the Act defines "High Court" meaning the High Court having jurisdiction under section 3. It was pointed out that section 3 lays down that the High Court having jurisdiction under this Act shall be the High Court within the limits of whose appellate jurisdiction the office of the trade mark registry referred to in each of the following case is situate. It was urged that in the present case, the High Court concerned being the High Court of Bombay, the office of the Registrar concerned being situate at Bombay, it is the High Court at Bombay that has jurisdiction to entertain the present application and this Court has no jurisdiction. Reliance was placed on Habeeb Ahmad v. Registrar of Trade Marks, and M/s. Satyanarayana v. M/s. Ramchanderd. In my view, there is no substances in this contention. Section 2(h) read with section 3 makes it amply clear that the concerned High Court is the High Court within the limits of whose appellate jurisdiction the office of the trade mark registry is situate. No doubt, the office of the trade mark registry in the present case is at Bombay, but the appellate jurisdiction of the Bombay High Court extends to the whole of the State of Maharashtra and the Bench at Nagpur is part and parcel of the High Court at Bombay. Consequently, since the petitioner who has complained about the contravention of his registered trade mark is carrying on business within the jurisdiction of the Nagpur Bench, this Bench is entitled to take cognizance of the application under section 56, it being a part and parcel of the High Court of Bombay and which is assigned statutory jurisdiction in respect of certain districts of the erstwhile Vidarbha Region of the then State of Madhya Pradesh. The decisions relied upon do not apply to the facts of the present case.
7. It was contended that in the present case, since the trade mark of the respondent was registered in the year 1984 and inasmuch as section 31 of the Act provides registration to be prima facie evidence of validity, the registration of the respondent No. 1 should be treated as valid. In any case, it was urged that admittedly since the respondent No. 1 was manufacturing the bread since the year 1980, he was protected by section 33 of the Act. It was pointed out on behalf of the petitioner that although the respondent No. 1, as it appears from the registration certificate, has been shown to be manufacturing the bread since the year 1980, he has not acquired any vested right under section 33 of the Act, because Certificate of Registration of the petitioner shows that the petitioner's user is from the year 1979 earlier than the respondent No. 1. This is a complete answer to the contention raised on a strength of section 33. Section 33 only applies where the user is proved to be earlier than the user which is alleged to be infringed. On the face of it, since the certificate of registration shows that petitioner's user has been since 1979, section 33 cannot come to the assistance of the respondent as regards section 31, no doubt registration is prima facie evidence under section 31 of the Act, but it is subject to the determination of the complaint of infringement on the part of the petitioner on the facts and circumstances of each case.
8. Therefore, coming to the primary question whether the trade mark of the respondent No. 1 which uses the words "Prince" in a definite colour combination infringes the petitioner's trade mark "Picnic" bread also in a definite colour combination background, will have to be determined for the purpose of deciding whether an action under section 56 is called for. The tests which have been laid down by the Supreme Court are broadly these;
The Court has to broadly decide both from the ocular comparison as well as phonetic comparison whether the resemblance between the infringed or infringing product is such as can be said to be deceptively similar so as to attract the provisions of section 56. Reference was made at the Bar,
(i) , Rustom & Homby Ltd. v. Zamindara Engineering Company;
(ii) , Parle Products v. J.P. & Company, Mysore;
(iii) , Lakhpat Rai v. Dhanpat Rai;
(iv) , Amritdhara Pharmacy v. Satya Deo and
(v) , K. Krishna Chettiar v. Ambal & Company, for the purpose of showing as to how the Court should decide whether there has been an infringement of the trade mark under the provisions of the relevant Trade Marks Act. It was also pointed out on behalf of the respondent No. 1 by relying on M/s. Johann A. Wulfing v. C.I. & P. Laboratories Ltd. and (supra) also referred on behalf of the petitioner, that it is not merely the visual resemblance, but the phonetic resemblance which is a deciding factor. It was contended that in the present case, the words "Picnic" and "Prince" have little phonetic resemblance.
9. Now, it is not necessary to deal with each and every decision cited on behalf of the Counsel on both the sides. But it will be enough to point out the broad test laid down by the Supreme Court in (cited supra) ;
"It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case, we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same, the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other."
It is, therefore, this test that will have to be applied to the facts of the present case.
10. Now, if we look at the two wrappers which are produced in the present case, which are the registered trade marks respectively of the petitioner and the respondent No. 1, the general impression on a look at these wrappers at once, is that, both look alike and an unwary person, is likely to be mislead by one for the other. Although phonetically there may not be much resemblance between the words "Picnic" and "Prince", yet the arrangement of these two words in the respective wrappers is made in such a manner and with identical colour scheme that unless one carefully reads these two words, ordinarily by a mere general impression, one is bound to mistake one for the other. The produce is the same, size is the same. There is a little difference in the price, but it is not material, and therefore, having regard to the test laid down by the Supreme Court extracted above, I have no hesitation in coming to the conclusion that the registered trade mark of the respondent No. 1 is deceptively similar to that of the petitioner and consequently it being in contravention of sub-section (1) of section 12, action under section 56 of the Act is called for.
11. An attempt was made to show that the Supreme Court in (cited supra) has held that :
"The resemblance between the two marks must be considered with reference to the ear as well as the eye and ocular comparison is not always the decisive test. Therefore, even if there be no visual resemblance between the two marks, that does not matter when there is a close affinity of sound between the words which are distinction features of the two marks".
From these observation, it is not possible to hold that the ratio is that it is always the phonetic resemblance that is decisive and visual resemblance is not relevant. What is held is that, between the two visual and phonetic, visual is not always decisive and even if there is no visual resemblance if there is close phonetic resemblance it is relevant. In the present case, although the phonetic resemblance is very little between the words "Prince" and "Picnic", yet visual resemblance is to such a large extent that ignoring the absence of phonetic resemblance one can, on the basis of visual resemblance alone can come to the conclusion that there is deceptive similarity in the trade mark got registered by the respondent No. 1 with that of the trade mark of the petitioner.
12. Reference was also made to Gopal Hossiery v. Deputy Registrar of Trade Marks, ; Baulraj v. Nadar & Sons and National Match Works v. S.T. Karuppanna, on behalf of the respondent for the purpose of showing that in case of honest concurrent user it is not open to the Proprietor of the Registered Trade Mark holder to challenge particularly when he has stood by the infringement for a pretty long time. If regard be had to the individual facts of each of the cases, it is clear that the lowest period considered in (supra) was 7 years and the Court held that rectification of registration after a lapse of 7 years cannot be allowed. That cannot be said to be the position in the present case. Here on the facts established, petitioner started his activity in 1979. Respondent No. 1 started his activity in the year 1980. Petitioner filed suit in October 1984 for injunction. Thereafter, respondent No. 1 got his trade mark registered on 31-10-1984 which led to the present petition. It cannot be said from these facts that there has been any laches or acquiescence on the part of the petitioner so that he can be prevented from challenging the registration of the respondent No. 1.
13. Lastly, it was contended on behalf of the respondent No. 1 that the respondent No. 1's activity was restricted only to a small place of Bhusawal and having regard to the facts that usually a product like bread purchased by womenfolk is asked for by the particular brand name, there was no possibility of any confusion and in any case it was submitted that instead of cancellation, corrective directions should be given by the Court.
14. I find that looking to the broad design, the words and the colour scheme, it is difficult to take corrective action by giving any suggestions as such unless the whole registered mark is dropped by the respondent No. 1. As stated earlier, the resemblance between the two is such that it satisfies the requirement of the deceptive similarity as required by law and the only consequence that appears on the facts of the present case which could logically follow is, to direct the cancellation of the trade mark under section 56 of the Act.
15. In the result, the petition is allowed. Respondent No. 1-Registrar of trade marks is directed to cancel the trade mark of the respondent No. 1 from the register of trade marks and rectify the register accordingly. Respondent No. 1 to pay costs of the petitioner and bear his own.