Intellectual Property Appellate Board
Prestige Housewares India Limited vs Registrar Of Trade Marks And Anr. on 1 October, 2004
Equivalent citations: 2005(30)PTC212(IPAB)
JUDGMENT
Raghbir Singh, Vice-Chairman
1. CM (M) No. 125/95 filed in the High Court of Delhi has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TA/106/2003.
2. Second respondent herein, M/s. Gupta Light House filed application No. 443514 for registration of the trade mark 'PRE/STAGE' in respect of pressure cookers included in class 21. The mark was advertised in the Trade Marks Journal No. 970 dated 1.11.1989 at page 981. A notice of opposition was filed by the appellant herein M/s. Prestige Housewares India Limited on 29.12.1989 on the grounds that it is the registered proprietor of the trade mark 'PRESTIGE' under No. 141602 dated 14.12.1949 in class 21 in respect of non-electric cooking and kitchen utensils none being of precious metal or coated therewith. The mark was originally registered in the name of Prestige Group UK Plc., England and subsequently by a deed of assignment dated 4.10.1985 was assigned to the appellant. TT Private Limited, Bangalore are the sole and exclusive licensee to manufacture and sell 'PRESTIGE' pressure cookers and kitchen utensils all over India and for export as well. Appellant submitted that the impugned mark 'PRE/STAGE' is almost identical with the trade mark of the appellant. Second respondent has copied the appellant's trade mark in its entirety. It causes confusion and public may assume that it is from the house of famous 'PRESTIGE' cookers. The appellant opposed registration of the mark under Sections 9, 11 (a), 11(e), 12(1), 12(3) and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). Second respondent filed his counter statement on 15.7.1992 denying all the material averments and particularly on the grounds that a notice of opposition is bad because of non-joinder or mis-joinder of parties and they have no locus-standi to institute opposition proceedings against him. They are the prior adopter and user of the trade mark 'PRE/STAGE' AND 'PRESTIGE'. They are using the mark from 1.4.1972 regularly and continuously. They are the honest adaptors and continuous users of the mark. The notice of opposition is false and incorrect. The assignment deed dated 4.10.1985 is void document in law. and cannot be relied upon. M/s TT Private Limited is not authorised sole and exclusive licensee to manufacture and sell; 'PRESTIGE' pressure cookers and kitchen utensils all over India.
3. Appellant filed it's evidence by way of an affidavit alongwith enclosures on 10.10.1993. The enclosures included newspaper cuttings, photostat copies of certain agreements, bills issued by M/s TT Private Limited and copies of petitions pending in the Delhi High Court. The affidavit filed by the second respondent on 14.6.1994 was accompanied by copies of certificate of registration held by him for trade mark 'PRE/STAGE' under No. 283753 B dated 27.10.1972 in respect of gas lanterns, stove, blow lamps and parts thereof and a copy of certificate of registration for trade mark 'PRESTIGE' under No. 335436 B dated 7.4.1978 in respect of hurricane lanterns, stoves, blow lamps and parts thereof. Photostat copies of certain bills were also submitted alongwith the affidavit. This affidavit was accompanied by certain other affidavits filed by Shri Narain Malhotra, Shri Rajender Seth and Shri Shyam Lal Rastogi. Appellant filed their evidence in reply on 23.9.1994. Learned Deputy Registrar held the hearing at New Delhi on 16.4.1993, 11.11.1994, 9.12.1994 and on 20.12.1994. Learned counsel for the appellant submitted before the Deputy Registrar that the appellant is the registered proprietor of the trade mark 'PRESTIGE' under No. 141602 dated 14.12.1949 in class 29 in respect of non-electric cooking and kitchen utensils none being of precious metal or coated therewith. This mark was originally registered in the name of Prestige Group UK plc., England and by virtue of deed of assignment dated 4.10.1985 the present appellant became subsequent proprietors of the trade mark. The word 'PRESTIGE' forms an important feature of appellant's corporate name and trading style and is being used in distinctive special script. It has been advertised in various magazines having wide circulation and has also been advertised in television and radio and thus the mark has acquired immense goodwill and reputation throughout the world including India. M/s TT Private Limited are authorised sole and exclusive licensee to manufacture PRESTIGE pressure cookers and kitchen utensils all over India and for export as well. Learned Deputy Registrar examined the application under various sections of the Act. He agreed with the learned counsel of the appellant that the impugned mark is phonetically, visually and structurally and in matter of idea represented therein similar to that of the mark of the appellant. Deputy Registrar concluded that no doubt the second respondent's adoption and use amounts to commercial dishonesty. Learned counsel for the second respondent submitted before the Deputy Registrar that the respondent is registered proprietor of the trade mark 'PRE/STAGE and PRESTIGE' under No. 335436 B dated 7.4.1978 in respect of hurricane lanterns, stoves, blow lamps and parts thereof included in class 11 and No. 283753 B dated 27.10.1972 in respect of gas lanterns, stove, blow lamps and parts thereof respectively. Thus, the common law right accrue to them to defend their proprietorship of those marks.
4. Learned Deputy Registrar examined the matter under various sections of the Act. In matter of his examination under Section 12(1) of the Act he came to the conclusion that the rival marks appear to be deceptively similar and he further concluded that the marks also relate to the same goods and as such both the conditions laid down under Section 12(1) of the Act are met. Having disentitled the mark under Section 12(1) of the Act, he immediately moved to Section 12(3) read with Section 33 of the Act and concluded that the provisions of Section 12(3) override the generality of sections 12(1) and 11(a) of the Act and the respondent is entitled to get their mark registered under sections 33, 12(3) and 54(2) of the Act. Thus, he (overruled the objection under sections 12(1) and 18(4) of the Act. In matter of his examination under section 11 (a), he observed that the respondent has adduced evidence of user from 1.4.1977 whereas they had claimed user of their mark since 1972. He observed that the appellant has been able to show user only since 1985. Hence, he overruled the objection under Section 11 (a) of the Act. Simultaneously with his analysis of Section 11 (a) he cleared the proposal from the angle of Section 11(e) as well. In matter of Section 9 he put reliance upon the mark 'PRE/STAGE' and 'PRESTIGE' registered by the second respondent for other goods, namely, hurricane lanterns, stoves, blow lamps and parts thereof included in class 11 and gas lanterns, stove, blow lamps and parts thereof respectively. Thus, he overruled the objection under Section 9 of the Act on this ground. He also overruled objections under Section 18(1) of the Act. He ultimately cleared the application under Sections 54(2) of the Act as being overriding over Sections 12(1) and 11 (a) of the Act. In effect, the Deputy Registrar has allowed the registration to the impugned mark under Section 12(3) read with Sections 33 and 54(2) of the Act.
5. Appellant in his appeal filed on 10.3.1995 submitted that having recognised that the mark does not meet the requirements of Section 12(1) of the Act, the Deputy Registrar in allowing the registration under Section 12(3) of the Act has done so totally in violation of the provisions of the law. Requirements for registration under Section 12(3) of the Act are that there should be an honest and concurrent use of the trade. The conduct of the respondent had not been honest, particularly in view of the order of interim injunction granted by High Court of Delhi in Suit No. 405 of 1991. Section 12(3) cannot override the provisions of Section 11(a). Once the mark has been found to be deceptively similar to another trade mark which is likely to cause confusion or deception, the same cannot be registered in view of prohibition under Section 11(a) of the Act. The Deputy Registrar committed grave error in granting registration under Section 33 of the Act despite the application being hit by Section 12(1) of the Act. Section 33 confers right on the respondent who is using the impugned mark prior to date of registration or use of appellant's mark. In the present case the appellant is registered proprietor of the trade mark 'PRESTIGE' under No. 141602 dated 14.12.1949 which is 23 years prior to alleged adoption of trade mark 'PRE/STAGE' by the second respondent. The Deputy Registrar has put reliance upon Section 54(2) in granting registration to the second respondent. Appellant submitted that Section 54(2) deals with series trade mark registrations and envisages that use of whole of a registered trade mark shall be deemed to be use of any trade mark being a part thereof. The Deputy Registrar was wrong in his conclusion under Section 11 (a) in as much as also having held that the marks are deceptively similar and are in relation to same or similar goods, he should have upheld the objection under Section 11 (a) of the Act. The Bills of sale produced by second respondent are fabricated and fraudulent. The Deputy Registrar was wrong in rejecting the objections under Section 11(e) of the Act. He was also wrong in rejecting the appellant's objection under Section 9 of the Act.
6. The appeal was taken up for hearing on 11.8.2004 at New Delhi. Learned counsel Shri Hemant Singh appeared for the appellant and learned counsel Shri R.N. Prabhakar appeared for the second respondent.
7. Learned counsel for the appellant submitted that the appellant is the subsequent proprietor of the trade mark 'PRESTIGE', originally registered in the name of Prestige Group UK Plc., England. Subsequently by a deed of assignment dated 4.10.1985 it was assigned to the appellant. M/s TT Private Limited, 'Bangalore are sole and exclusive licensee to manufacture and sell. 'PRESTIGE' pressure cookers and kitchen utensils all over India and for export as well. The trade mark 'PRESTIGE' was registered under No. 141602 dated 14.12.1949 for non-electric cooking and kitchen utensils none being of precious metal or coated therewith in class 21. The original proprietors of the mark and the appellant being the subsequent proprietor are in continuous use of the mark. M/s TT Private Limited are the registered licensees and in that capacity are using the mark for the various products being manufactured by them. In view of this, there is no question of any mis-joinder or non-joinder by the parties. He drew our attention to the order dated 13.10.1998 passed by the Delhi High Court in FAO No. 26 of 1996 and CM(M) No. 303/98 wherein the Hon'ble High Court had passed certain interim orders pending the disposal of present appeal.
8. Respondent besides making oral submissions, submitted a synopsis of the arguments in writing. He drew our attention to the legal proceedings certificate issued by the Trade Marks Registry placed at Annexure 'E' of his written submissions wherein the trade mark 'PRESTIGE' word per se registered under No. 141602 in class 21 in respect of non-electric cooking and kitchen utensils, none being of precious metal or coated therewith stands registered in the name of Platers and Stampers Limited, Colne Road, Burnley, Lancashire, England as on 14.12.1949. Later on it was changed to the name of Prestige Group Limited, Prestige House, 14-18 Holborn, London, E.C.I, on 12.1.57. It was further registered in the name of Prestige Housewares (India) Limited, No. 78, Old Madras Road, Dooravaninagar, Bangalore-560 016 on 16.10.1989 as a subsequent proprietor as from 4.10.85 by virtue of assignment deed dated 4.10.85. Learned counsel for the respondent vehemently put that the proprietor of the trade mark are indulging in trafficking by further licensing it to TT Private Limited. He drew our attention to the observations of the Deputy Registrar on pages 4 and 6 of the impugned order dated 23.12.1994. Learned counsel for the respondent also drew our attention to the copies of Trade Marks Journal placed at Annexure G and H of his written submissions wherein advertisements about the proposed trade mark No. 377157B and 491297B in the name of TT Private Limited as proposed to be used have been published. In conclusion, he submitted that the Deputy Registrar in view of the above is correct in his decision. The various entries in the legal proceedings certificate issued by the Trade Marks Registry in itself indicate that the appellant are in consistent use of the trade mark since 1949. The proprietors of the trade mark, namely, Prestige. Housewares India Limited have stepped into the shoes of their predecessors Prestige Group Limited, London who had succeeded Platers and Stampers, England. Thus, the user of the mark relates back to 1949. The mark 'proposed to be used' advertised in the Trade Marks Journal as mentioned above relate to class 11 and have nothing to do with the trade mark No. 141602 of 14.12.1949 in class 21.
9. There is no dispute about the fact that the appellant became subsequent proprietor thereof the registration of the mark PRESTIGE' taken by M/s Prestige Group UK England on 14.12.1949, through a deed of assignment dated 4.10.1985. M/s TT Private Limited was authorised as licencee to manufacture various goods covered under registration and in pursuance of that M/s TT Private Limited had been manufacturing various utensils including pressure cookers and marketing the same in India and abroad. Second respondent puts his claim of user since 1972 and has adduced certain invoices. However, the Deputy Registrar came to the conclusion that he has been able to adduce evidence by way of invoice and has accepted his user from that year. We feel that the Deputy Registrar has gravely erred in the matter in granting registration under Section 12(3) read with Section 33 of the Act. Section 33 envisages prior use by the unregistered trade mark proprietor over the registered trade mark proprietor. Since the registration of the trade mark of the appellant is from 1949 and the user as recognised by the Deputy Registrar is from 1972, there is no question of availing the benefit of Section 33 of the Act. The Deputy Registrar has gravely erred both conceptually and in matter of application of provisions of the Act by holding that Section 12(3) is in the nature of overriding provisions of Section 12(1). Rather the concept of law is to the contrary. Section 12(3) is in the nature of an exception to the general rule. General rule is contained in Sections 12(1) and Section 11 (a) of the Act. The benefit of Section 12(3) is to be given to the applicant where the applicant having failed under Sections 12(1) and 11(a) of the Act proves to the satisfaction of the Registrar that he is the honest concurrent user of the mark. The concept was included in trade mark jurisprudence way back in 1875 in the English Statute with a view to mitigate the hardship of the concurrent users in relation to the same trade mark. But the paramount and overriding consideration is that the user should be a honest user. He should have been using the mark in a bona fide manner. Second respondent does not appear to be falling is such a category. The use of the mark 'PRESTIGE' for pressure cookers by the appellant and his predecessors is reflected in the sales turnover and the amount spent on advertisements is very much visible and it dates back to 1949. Existence of registration on the Trade Marks Register is a prima facie evidence of the user of the mark. The burden for proving that it is not being used is upon one who alleges so and the remedies are open for him to file necessary applications of rectification under Section 46 and / or Section 56 of the Act. In view of this opposition in law and the facts of the matter in the present case as reflected through his own conclusions under Section 12(1) of the Act, the Deputy Registrar had no alternative but to hold under Section 11 (a) also that the impugned mark 'PRE/STAGE is confusing and deceptively similar to the mark on the Register 'PRESTIGE'. There is no scope for grant of the benefit of honest concurrent use in this case. Thus, the impugned mark fails scrutiny of Sections 11 (a) and 12(1) of the Act'.
10. In view of the above the appeal is allowed with no order as to costs.