Trademark Tribunal
Anthony Kavalakattu Trading As Lunar ... vs E.M.I. Records Limited on 29 June, 2001
Equivalent citations: 2002(24)PTC738(REG)
JUDGMENT
M.H. Mahendra, DRTM
1. On 28th December, 1987, S/Shri Issac Joseph, James P. Jacob, Marykutty Abraham, Jose M. Thomas, T.T. Kuncheria, Jose K. Nadakkal, Vincent K. Nadakkal, N.K. Kuriakose and Anthony Kavalakattu, partners trading as Lunar Rubbers, partnership firm at Mani Industrial Estate, Olamattam, Toduphuzha, Kerala (hereinafter referred to as 'the Applicants') filed an Application being Application NO. 483274 in class 25 for registration of a label containing the device of a dog and the words HIS MASTER'S CHOICE as its essential feature of the mark in respect of 'Hawai chappals being goods included in class 25'. The said trade mark was proposed to be used in respect of the said goods on the date of application. The Registrar of Trade Marks raised preliminary objection to the aforesaid application under Section 9 of the Act that the mark is not adapted to distinguish the goods of the Applicants, but after hearing in the matter and the Applicants on producing a certificate of incorporation issued by the Registrar of Companies, Cochin, Kerala and amending the name of the Applicants to read as 'Lunar Rubbers Private Limited, the application was ordered to be advertised as accepted for registration in Part A of the Register subject to disclaimer of the words DELUXE and CHOICE appearing on the label. The said application was eventually advertised as accepted for registration in Trade Marks Journal No. 1128 dated 1st February, 1996 at page 3043.
2. M/s. EMI Records Limited, a company incorporated in England at 135, Blyth Road, Hayes, Middlesex, England (hereinafter referred to as "the Opponents") filed a request on form TM-44 for extension of time for one month for filing notice of opposition and followed by a notice of opposition on 24th May, 1996 to the aforesaid application mainly on the following grounds :-
(i) That the Opponents are the proprietors of the trade mark containing the words "HIS MASTER'S VOICE' and the device of a dog under trade mark Nos. 11713, 11714 and 11716 in class 9, 9 and 11 respectively as per the particulars given in para 3(a), 3(b) and 3(c) of the notice of opposition ;
(ii) That the Opponents1 trade mark 'HIS MASTER'S VOICE' is used in India through their Registered user i.e. The Gramophone Company of India Ltd., Calcutta ;
(iii) By virtue of extensive registrations, vast publicity and extensive use and also high standard of quality of goods sold under the trade mark device of dog and the words 'HIS MASTER'S VOICE' the Opponents enjoy much valuable reputation and goodwill throughout the world including India and have also exclusively associated by the members of public and trade with the Opponents and their products only;
(iv) Having regard to the established user and reputation associated with the Opponents' trade marks, the use of the Applicants mark will result in deception and confusion and, therefore, the impugned mark is prohibited under provisions of Section 11(a) and 11(e) of the Act;
(v) That the impugned trade mark is neither adapted to distinguish nor capable of distinguishing the goods of the Applicants and, therefore, the registration of the impugned mark is contrary to Section 9 of the Act;
(vi) That the Applicants have dishonestly and with mala fide intention copied the Opponents' trade mark namely device of dog with the words HIS MASTER'S VOICE in its entirity and the adoption of the impugned mark is dishonest and they cannot claim to be proprietor of the trade mark within the meaning of Section 18(1) of the Act;
(vii) That the registration of the trade mark applied for by the Applicants will be contrary to Sections 9, 11 and 18 (1) of the Trade & Merchandise Marks Act, 1958 ; and
(viii) The Opponents therefore seek that the Registrar should exercise his discretion adversely to the Applicants and refuse the application mentioned above.
3. The Applicants filed their counter statement on 17th July, 1997 denying the allegations of the Opponents and stating that before adopting the trade mark HIS MASTER'S CHOICE, they caused a thorough search to be made in the Trade Marks Registry and in the market and satisfied themselves that it did not resemble any existing trade mark in relation to Hawai chappals and allied products by any other person and no other person has used a similar mark in respect of boots and shoes trade. The Applicants further deny the allegations of the Opponents and stating that the Opponents are admittedly engaged in the manufacture and sale of instruments and devices for recording, reproducing, transmission or reception of sounds whereas the Applicants are renowned manufacturer and merchants inter alia of rubber goods in general and that the said mark is sought for registration in respect of goods which are different character and application. Besides, the marks are different and the trade channels are different and the purpose for which the respective goods are used again are totally different and the idea conveyed by the marks are also different and thus it is incorrect to say that the use of the impugned mark for Hawai chappals will confuse in any way or cause confusion and deception among any class of people including traders and consumers or indicate any connection with the Opponents' goods, trade or business.
4. The evidence in support of opposition consists of an affidavit dated 20th March 1998 of Ian Hanson, Director of Opponents' company alongwith Exhibits A,B,C, D and E collectively as per details contained in the said affidavit. The evidence in support of application consists of an affidavit dated 17.9.1998 of Mr. Issac Joseph, Managing Director of the Applicants' company alongwith Exhibits A,B, C-1 to C-166, D, E-1 to E-2 collectively as per details contained in the said affidavit. The evidence in reply is again by way of an affidavit dated 26.4.1999 of the aforesaid Ian Hanson. The matter was set down for a hearing on 17th January, 2000 and in terms of Rule 59 the respective parties were required to notify on form TM-7 their intention to attend the hearing. The Opponents and Applicants both notified their intention to attend the hearing in terms of Rule 59 of the Trade & Merchandise Marks Rules, 1959. However, the hearing was adjourned to 6th March, 2000 on the request made by the Applicants due to Diabetic Neuropathy.
5. The matter thus came up before me on 6th March, 2000 when Mr. V. Seetharaman, Registered Trade Marks Attorney instructed by M/s. Remfry & Sagar, Attorneys at Law, New Delhi appeared for the Opponents and Mr. C.S. Rao, Advocate appeared on behalf of the Applicants.
6. Mr. V. Seetharaman, Registered Trade Marks Attorney for the Opponents submitted that the Opponents are the proprietors of the trade mark consisting of the words HIS MASTER'S VOICE and the device of the dog alongwith the words HIS MASTER'S VOICE as its essential features of the trade mark registered under Nos. 11713, 11714, 11716 in classes 9, 9 and 11 respectively as per details in para 3(a), 3(b) and 3(c) of the notice of opposition respectively and that the Opponents have been using the said trade mark since the year 1964 through its registered user, viz., The Gramophone Company of India Ltd., Calcutta. By virtue of vast publicity and long standing use and also high standard of goods sold under the trade mark device of dog and the words HIS MASTER'S VOICE, the Opponents enjoy much valuable reputation and goodwill throughout world including India and they also exclusively associated by the members of trade and public with the Opponents and their products only. Since the Opponents have filed satisfactory evidence in support of user of the mark and the same has been sufficiently established, their prior user and reputation of the Opponents's trade mark, the use of the Applicants' mark will lead to confusion and/or deception and will be prejudicial to the Opponents' business and, therefore, registration of the impugned mark is prohibited under the provisions of Section 11 (a) and 11(e) of the Act.
7. Mr. Seetharaman also stated that the impugned mark is neither adapted to distinguish nor capable of distinguishing the goods of the Applicants and the same fails to qualify for registration under Section 9 of the Act as the impugned mark is proposed to be used on the date of application.
8. Mr. Seetharaman further submitted that the Applicants have dishonestly with mala fide intention copied the Opponents' reputed trade mark namely device of dog and the words HIS MASTER'S VOICE in its entirity with a view to copy and to take advantage of the goodwill and reputation of the Opponents' mark and thereby pass off their goods as for Opponents' goods. Therefore, the Applicants cannot claim to be the proprietors within the meaning of Section 18(1) of the Act. He accordingly prayed that the Registrar should exercise his discretion adversely to the Applicants and the impugned application may be refused registration with costs to the Opponents in respect of these proceedings.
9. Mr. C.S. Rao, Advocate, the learned counsel for the Applicants refuted the submissions of Mr. Seetharaman and submitted that even before filing the impugned application for registration, the Applicants caused a thorough search under Rule 24(1) of the Trade & Merchandise Marks Rules, 1959 and the Registrar had given a 'nil' report to them. He also stated that the mark submitted for registration is a composite label containing device of a dog sitting on a box with the words 'HIS MASTER'S CHOICE' with a distinct get up and lay-out as represented in the application which is entirely different. The words HIS MASTER'S CHOICE are all usual expressions available to everybody to use in the trade and one cannot claim any exclusively monopoly rights over such expressions. The Opponents are admittedly engaged in the manufacture and sale of instruments and devices for recording, reproducing, transmission or reception of sounds whereas the Applicants are renowned manufacturers and merchants inter alia of rubber goods namely Hawai chappals in general and that the said mark is sought to be registered in respect of goods which are different in character and application.
10. Mr. Rao stated that although the device of a dog appears in both the labels, particularly postures of the dog are entirely different and besides in view of the way in which they are reproduced and the background in which they appear in the trade mark even an illiterate person will not confuse one mark for the other. Moreover, the words HIS MASTER'S VOICE and HIS MASTER'S CHOICE convey totally dif-
fercnt ideas. The rival marks are different and their trade channels are different and the purpose for which respective goods are used again the totally different and thus it is incorrect to say that the use of the impugned mark for Hawai chappals will in any way cause confusion and deception among any class of people including traders and consumers or indicate any connection with the Opponents goods, trade or business. He drew my attention to para 17-91 of Shri P, Narayanan's book on "Trade Marks and Passing Off and stated that in an opposition, when dealing with the question whether deception or confusion is likely to occur, evidence of user upto the date of hearing is admissible. The evidence in support of application discloses that the Applicants have been using the trade mark HIS MASTER'S CHOICE since 1989 and the sales turnover furnished by the Applicants are quite substantial and there has not been any single instance of actual confusion. Mr. Rao also challenged reputation and goodwill enjoyed by the Opponents in the trade marks and stated that Opponents have failed to substantiate and establish the same in these proceedings and thus the Opponents have failed to make out a case under Section 11(a) and 11(e) of the Act.
11. Mr. Rao further submitted that mark applied for registration is a composite label which consists of the device of dog and the words HIS MASTER'S CHOICE is inherently distinctive of the goods of the Applicants namely 'Hawai chappals' and it has no direct or indirect reference to the character or quality of the goods. It is unthinkable that any other trader will have bona fide right to use this trade mark in relation to Hawai chappals and therefore, the same is not contrary to Section 9 of the Act, as alleged.
12. Mr. Rao also vehemently denied that the Applicants have copied the concept of the Opponents' mark. In this context, he drew my attention to the page 16 of the booklet marked Exhibit 'C and pointed out that the concept or idea behind the Opponents' mark in their predecessor's own admission is the picture of a dog in the act of listening to the sounds issuing from the horn of the machine and underneath the said picture the words HIS MASTER'S VOICE but this is unimportant and may be omitted since the essential feature of their trade mark is the picture of a dog listening to the sound producing machine. These statements very clearly establish the fact that the essential feature of the Opponents mark is the picture of the dog listening to the sound producing machine (Gramophone) and the words HIS MASTER'S VOICE is unimportant.
13. On the other hand, the concept or idea behind the Applicants' mark is that the Applicants Hawai chappals is the Dog's Master's choice. The Applicants mark gives a visual reproduction relating to choosing a pair of chappals, whereas the Opponents' mark gives the idea of Master Musician's voice as recorded in the Opponents' gramophone sound recording and its reproduction by a gramophone equipped with a horn which a dog is listening to. Thus, no manufacturer today will adopt the concept of a dog listening to a gramophone music even in respect of sound producing instrument not to speak of Hawai chappals. He also reiterated that the Applicants have not copied anybody else's mark and there is no reason why Applicants cannot claim to be the proprietors of the said mark and since to the best of their knowledge and belief there was none using a trade mark in respect of Hawai chappals and therefore, there is nothing to displace claim of proprietorship within the meaning of Section 18(1) of the Act.
14. Mr. Rao finally contended that the notice of opposition filed by the Opponents has no substance and also is totally ill-conceived and that the Opponents have not made out any case for refusal of the application mentioned above. He accordingly prayed that the opposition be dismissed with costs and the impugned application may be directed to proceed to registration.
15. I have carefully considered the submissions made by the Opponents and the Applicants. It is seen that the notice of opposition is based on Sections 9, 11(a), 11(e), and 18(1) of the Act. Regarding the objection based on Section 9 of the Act, the Opponents' contention is that Applicants' trade mark HIS MASTER'S CHOICE is neither adapted to distinguish nor capable of distinguishing the goods of the Applicants. However, no reasons or fact has been adduced by way of evidence in support thereof by the Opponents. Perhaps, their objection under Section 9 is based on the alleged similarity of the Applicants' mark to the Opponents' registered trade marks as given in ground 3(a), 3(b) and 3(c) of the notice of opposition. If so, it may be noted that Section 9 of the Act is concerned only with the question of registration of a trade mark and its object is mainly to exclude from registration descriptive words or phrases and anything which other traders are likely to use in the ordinary or normal course of business and without improper motive or desire to use in relation to their goods for bona fide descriptive purpose. In considering whether the mark is distinctive or not, it is therefore obvious that Section 9 of the Act does not call for consideration of question whether the Applicants' mark is deceptively similar to another existing trade mark. For this purpose, there are separate provisions in the Act such as Sections 12(1) and 11, which deal with the question concerning similarity of marks with each other already existing trade marks.
16. The Applicants' mark consists of the device of a dog alongwith the words HIS MASTER'S CHOICE as its essential feature of the mark and the goods in respect of which is claimed to be used are Hawai chappals. According to the common or ordinary usage, the words HIS MASTER'S CHOICE inter alia means a choice made by his Master. In fact, a preliminary objection under Section 9 was raised by the Trade Marks Registry but subsequently after hearing the Applicants Attorney, it was held that the ordinary significance of the expressions did not have any bearing on the goods in the character or quality of the goods, that it was not an expression in ordi-
nary use, required by the traders or by the public to indicate 'Hawai chappals' and that it might have any reference or obvious meaning to it. It was, therefore, held that the mark was adapted to distinguish the goods of the Applicants. In the circumstances, the application was ordered to be advertised as accepted for registration in Part A of the Register and accepted for registration and advertised as such in the Trade Marks Journal. In the absence of anything shown by the Opponents as to precisely, the basis of their objection under Section 9 of the Act to the Applicant's trade mark, I am unable to sustain the Opponents' objection under Section 9 of the Act.
17. Now, turning to the objection based on Section 11(a) of the Act, it is to be noted that Section 11(a) of the Act provides that a mark the use of which would be likely to deceive or cause confusion shall not be registered as a trade mark. The Opponents' case under Section 11(a) is based on the alleged use and reputation of their trade mark. In this connection, it is useful to refer to the test laid down in the Bali's case (1969) 63 RFC 472 at page 496) which is "Having regard to the use of the Opponents' mark, is the Tribunal satisfied that the mark applied for, it" used in a normal and fair manner in connection with any goods covered by the registration proposed will not be reasonably likely to cause deception and confusion amongst substantial number of persons?" It follows, therefore, that before Section 11(a) can be applied it must be established that the Opponents' mark has been substantially used.
18. The affidavit of Mr. Ian Hanson discloses that the Opponents' company is engaged in the merchandise of variety of articles including instruments and devices for recording, reproducing or reception of sound gramophone records. In para 6 of his affidavit the deponent has furnished yearwise sales turnover of the abovementioned goods by the Opponents under the trade mark 'Dog picture and its words HIS MASTER'S VOICE. In para 7 of the affidavit the deponent has stated that Opponents have used the said trade mark since the year 1964 through its Registered User i.e. The Gramophone Company of India Ltd., Calcutta. From the evidence filed by the Opponents, it appears that the Opponents have been using their trade mark device of dog and the words HIS MASTER'S VOICE prior to the date of filing of the present application.
19. Having found that the Opponents have established the necessary user of their trade mark, the next question that needs to be established is whether the rival marks are similar and whether the respective goods are similar or have a nexus. Since the resemblance between the marks and the nature of goods covered by them are important factors in considering the question of probability of deception and confusion under Section 11(a) of the Act, On the question of similarity of rival marks, it is doubtless that the label filed for registration under Application No. 483274 is similar to the Opponents' registered trade marks mentioned above. The device of a dog and the words HIS MASTER'S VOICE which constitutes an essential feature of the Opponents' trade mark are also found in the Applicants' trade mark No. 483274. The expression with or without the device being the essential feature of rival marks it can be said that the rival trade marks in this case except the last word CHOICE are also similar.
20. Now, coming to the goods covered by the competing trade marks, the goods for which the Applicants seek registration of the trade mark are 'Hawai chappals' whereas the goods in respect of which the Opponents mark have been registered are namely apparatus, instruments and devices for recording, reproducing, transmission or reception of sound gramophone records.
21. In deciding the question of likelihood of confusion under Section 11(a) based on similarity of marks, of nature of goods is an important factor to be considered, for generally speaking, the more special in character these goods are and the more limited their market, the less likely will be the inference that there is a tangible danger of confusion or deception. (Ferrodo Ltd.'s Appln. (1945) 62 RFC 111 at page 121).
22. As indicated above, the goods in respect of which the Opponents' mark being used are mainly apparatus, instruments and devices for recording, reproducing, transmission, reception of sound gramophone records. In sum, all and most goods of the Opponents arc sophisticated, costly and specialised, everyone of which having its own special class of purchasers or consumers. On the other hand, the Applicants' trade mark is being used in respect of Hawai chappals which represent the commonest item of consumer goods. There is no trade connection whatever between rival goods, nor is there a common trade channel between them. The goods of the Opponents being such a nature their purchasers are greatly selective and cautious. As was observed by Hon'ble Vima Dalai, J. in Misc. Petition No. 58 of 1970 Bombay High Court, "they would be persons, who would know what they have come to buy or, at any rate, would be accompanied by persons who are mechanically knowledgable." Even in terms of price range, the two sets of goods are different. While the Applicants are selling hawai chappals within a price range of Rs. 30/- to Rs. 50/-, whereas the prices of instruments, apparatus, devices for reproducing transmission or reception of sound gramophone records etc., bear no comparison, for they are so costly. The Opponents' goods are not meant for casual purchase as hawai chappals and are in fact purchased with very great care. The two sets of goods thus have no relation whatsoever to each other.
23. It is to be noted that the words 'HIS MASTER'S CHOICE' are ordinary English words and one does not have to copy from the Opponents "HIS MASTER'S VOICE" which conveys a totally different idea applicable to totally different goods. The concept or idea behind the Opponents' mark in their predecessor's own admission is the device of a dog listening to the sound issuing from a sound producing machine (in this case a gramophone through its horn). The words HIS MASTER'S VOICE only confirms the same. On the other hand, the concept or idea behind the Applicant's mark is that the Applicants' Hawai chappals is the Dog's Master's choice. The Applicants mark gives a visual representations relating to choosing a pair of chappals, whereas the Opponents' mark gives the idea of Master Musician's voice as recorded in the Opponents' gramophone sound recordings and its reproduction by a gramophone equiped with a horn which a dog is listening to. Thus, the Opponents by reason of their registered trade marks referred to above for a definite class of goods can claim exclusive right only to the use of trade mark in relation to those goods in respect of which the trade marks are registered, and not in respect of all classes and kinds of goods.
24. As stated above, the essential feature of the rival marks is the device of a dog and the words HIS MASTER'S VOICE and HIS MASTER'S CHOICE respectively. In fact, the trade mark under Application No. 483274 containing the device of dog in a sitting posture whereas the Opponents' mark are comprising a device of a standing dog listening to a gramophone with the words HIS MASTER'S VOICE appears at the bottom. It is well known that animals are commonly used by traders in their trade mark for embellishing the essential feature thereof. In such cases, the owner of the mark cannot claim any exclusive monopoly in such animals so as to deprive the other traders of their legitimate rights to use such devices as embellishments of their marks, unless it is established that such device has come to be identified with the trader's goods or to use the trade mark parlance, come to denote the trade origin of the goods. In this case, no evidence has been produced to show that the words HIS MASTER'S VOICE is of an essential feature in the Opponents' trade mark has come to denote the trade origin of the Opponents goods or in other words the Opponents' goods are identified by such expression. On the other hand, as pointed out by the Applicants counsel in the various exhibits annexed to the affidavit dated 20th March, 1998 of Mr. Ian Hanson in support of opposition, only the device of a dog listening to the sound producing machine is shown prominently and besides the words HIS MASTER'S VOICE is no where to be seen on their products nowadays. Thus, the reputation of the Opponents' mark in the absence of the positive evidence otherwise can be inferred to extend only to the device of dog listening to the sound producing machine which constitutes the striking feature of the Opponents' trade mark in comparison to the insignificant words HIS MASTER'S VOICE.
25. Although the competing marks as a whole are similar as explained above, the goods covered by the rival marks are totally different. Needless to say, even where the marks are identical if the goods are totally different, it is very difficult to presume that the simultaneous use of the marks will result in confusion in the absence of any evidence leading to such presumption. This view is supported by the learned author Shri P. Narayanan in his book on 'Trade Marks and Passing off' Third edition at para 546 "when the goods are totally different, even if the marks are identical it is difficult to infer that confusion is likely to arise unless there is some positive evidence leading to such a conclusion. The position is not different but somewhat less difficult when the goods although not the same, have some kind of trade connection. If neither the marks nor the goods are identical, the question of likelihood of confusion or deception will depend upon both the degree of resemblance between the marks and the extent and nature of connection between the goods." In this case, the goods are totally different and there is no trade connection whatsoever between them. The field of activity of the Applicants and Opponents is widely different. In such circumstances, the likelihood of confusion becomes practically non-existent. The question whether the use of the mark on goods not closely similar in character to the plaintiffs goods would be likely to deceive or cause confusion is one of fact on which evidence of witnesses is necessary (See [1941] 58 RPC 25 at pages 29-30). There is no such evidence in this case adduced on behalf of the Opponents.
26. As stated earlier, the evidence in support of application consists of an affidavit dated 17th September, 1998 of Mr. Issac Joseph alongwith Exs. A, B, C, D, E1 and E2 collectively as per details contained in the said affidavit. In para 4 of the affidavit Mr. Joseph states that although the mark was proposed to be used on the date of application, the Applicants have used and his company has been using the trade mark since the year 1989. In para 4 thereof, he has given the sales figures of the goods upon the trade mark HIS MASTER'S CHOICE is used and he further adds that no instance of confusion or deception has been brought to their notice during the last 10 years of its use.
27. The counter-statement of the Applicants explains how they happened to adopt the words HIS MASTER'S CHOICE as their trade mark. Para 2 of the counter-statement reads as follows:
"In or about 1987 we originally designed and adopted after considerable research trade mark consisting of an artistic device of a dog in a sitting posture over a box of hawai chappals and the words HIS MASTER'S CHOICE above the device."
28. Then again the affidavit of Mr. Issac Joseph also discloses that they initially designed and adopted after considerable research the trade mark onsisting of a device of a dog in sitting posture over a box of Hawai chappals and the words HIS MASTER'S CHOICE are ordinary English words and one does not have to copy from the opponents' HIS MASTER'S VOICE which conveys a totally different idea applicable to totally different goods. The idea behind HIS MASTER'S CHOICE seems to be original when accompanied by a device of dog in relation to chappals and is the invention of the Applicants. In the circumstances, I am convinced that the Applicants have established their claim of honest adoption and use of the trade mark.
29. Coming back to the formula enunciated in Bali's case in the circumstances of the present case as explained above, I am satisfied that the mark applied for if used in a normal and fair manner in relation to the goods covered by the registration proposed will not be reasonably likely to cause confusion and deception amongst substantial number of persons. I do not think any tangible danger of confusion would arise if the Applicants' mark were put on the Register. The Opponents' objection based on Section 11(a) of the Act is, therefore, not sustained.
30. As regards the Opponents' objection under Section 11(e), there is no reason why the Applicants' mark should be held otherwise disentitled to protection in a court of law. In the absence of any positive evidence adduced by the Opponents to lead me to such a conclusion, I say that the Opponents have not established their objection under Section 11(e) of the Act as well.
31. Lastly, turning to Opponents' objection under Section 18, the Opponents contend that the Applicants have dishonestly and with mala fide intention copied their trade mark of animal device of a dog alongwith expressions HIS MASTER'S VOICE in its entirity and they cannot claim to be proprietor thereof within the meaning of Section 18(1) of the Act. In this connection, the following deposition of Mr. Issac Joseph in his affidavit dated 17.09.1998 is relevant :-
11. I vehemently deny applicants mark is a blatant or any other reproduction of the Opponent's mark as alleged. By no stretch of imagination it can be said that the applicant's mark is a reproduction of the opponent's mark. I reiterate that the description of the opponent's mark given in this para is patently wrong. I further deny that the applicants have lifted the concept of the opponent's trade mark. The concept or idea behind the opponent's mark in their predecessors own admission is the picture of a dog listening to the sounds issuing from a sound reproducing machine (in this case a gramophone through its horn). The words "His Masters Voice" only confirm this.
On the other hand the concept or idea behind the applicants mark is that the applicants hawai chappals is the Dog's Master's Choice. The applicant's mark gives a visual representation relating to choosing a pair of chappals, whereas the opponents mark gives the idea of master musicians voice as recorded in the opponents gramophone sound recordings and its reproduction by a gramophone equipped with a horn which a dog is listening to. In fact this concept is obsolete today because of revolutionary changes in sound recording & sound reproduction particularly relating to music. The "gramophone" with a horn is an antiquated instrument today and is only a vintage machine not available anywhere in the market nor used by anybody. No manufacturer toady will adopt the concept of a dog listening to gramophone music even in respect of sound reproducing instrument not to speak of hawai chappals.
It may be noted that the opponents themselves has not given any prominence to this mark on their cassettes or cassette players. They have relegated a highly distorted version of their device to a corner with the letters 'HMV' more prominently displayed beneath. The words "His Masters Voice" is nowhere to be seen in their present day version of their old mark on their products or advertisements. I further affirm that there is no dishonesty in the adoption of their mark by the applicants."
32. Just because the two marks happen to be similar, it need not necessarily follow that the Applicants' adoption and use of the trade mark HIS MASTER'S CHOICE was not bona fide. The competing trade marks are not invented but merely dictionary English words. As was held in Peddles Application, (1944) 61 RFC 31 at page 36, "the adoption and use by a trader of a mark may be honest despite his knowledge of a similar mark already on the Register. In Alex Pierie and Sons Ltd's Appln. (1933) 50 RFC at page 47 and Massachuseette Saw Works Application, 35 RPC 137, where the Applicants relied on concurrent user, it was held that the user of the respective applicants in each case was honest although such user was with full knowledge of the Opponents' mark for the same goods and that the registration ought to be allowed.
33. In the instant case, it is to be noted that the rival marks arc not identical though they have an overall similarity. In the absence of any evidence, it is difficult to draw any conclusion adverse to the Applicants on the question of their honesty of adoption of their mark. Again instance of confusion if any, have occurred or have been proved arc also factors which may be taken into account. In this case, no instance of confusion has been alleged or proved by the Opponents. The following observations of Lloyd Jacob, J. in AEB Appln. 1957 RPC 120 at 125 are relevant :-
"Expressing solely a provisional view, the purpose of the exception contained in the sub-section is intended, as I think, to provide for cases wherein experience may show that prima facie resemblances between marks or goods in respect of which they are used may turn out in practice to be less likely to cause confusion and deception than their examination divorced from the background of trade circumstances might appear to suggest. In its main application, it would permit experience to be prayed in aid as a more satisfactory test of confusion and deception than the imaginative excursion which characterises the discussion that takes the place of experience, in most of the applications."
34. In this case, the above observations have perhaps proved to be right. In his reply evidence, the deponent Ian Hanson Managing Director of the Opponents' company states in para 8 (g) and (h) which are as follows :-
(g) "The device of a dog and the words HIS MASTER'S VOICE are, in fact, essential features of my Company's trade mark. I say that my Company's goods are recognised by the device of a dog and the expression HIS MASTER'S VOICE. I say that essential features of my company's trade mark have been copied by the applicants and the only change is they have substituted the word CHOICE.
(h) I say that the applicants have no right to adopt the unique combination even if the goods are different. I say that the applicants have dishonestly copied the concept behind the impugned trade mark from my Company's said trade mark by taking all essential features from my Company's trade mark. It is absolutely absurd to say that no person with proper sense will believe that there is any connection between the applicants' business and the opponents' business. I say that a person who happens to come across the applicants' trade mark will immediately think of my Company's trade mark only. It is wrong to say that my Company cannot claim monopoly in respect of the words 'HIS MASTER'S VOICE'. I say that HIS MASTER'S VOICE even though English words I see no reason why the applicants should copy particularly the said words when there are many other words. I say that my Company having used the trade mark for many years in respect of their goods the use and registration of the impugned trade mark is likely to deceive and . cause confusion in the course of trade."
35. Therefore, in the instant case, it is not a question as to who gets into the market first but whose trade mark has become distinctive. The idea behind HIS MASTER'S CHOICE seems to be original when accompanied by the device of dog in relation to chappals and is the invention of Applicants and by having it extensively used in connection with their goods and without any apparent ulterior motive to trade upon the reputation of the Opponents, I do not see any reason why Applicants' claim to proprietorship to the trade mark HIS MASTER'S CHOICE in relation to such goods cannot be sustained. It is also to be noted that proprietor of a trade mark need not be exclusive. It can reside in more than one person as is contemplated in Section 12(3) of the Act. Having regard to the circumstances stated above and in the absence of any instance of confusion in the trade, I have no material before me to doubt the entitlement of the Applicants to claim proprietorship of the trade mark as the rival marks are totally different in respect of appearance, sound and idea conveyed. The objection of the Opponents under Section 18 of the Act therefore, fails in these proceedings.
36. In the result, the Opposition No. - 50759 is dismissed and it is hereby ordered that Application No. 483274 in Class 25 is allowed to proceed to registration. It is hereby further ordered that the Opponents shall forthwith pay a sum of Rs. 113/-
(Rupees one hundred and fifteen only) to the Applicants as costs of these proceed ings.
Signed and Sealed at Chennai this the 29th day of June, 2001.