Intellectual Property Appellate Board
Golden Rubber Industries (An Indian ... vs Tirumala Polymers on 16 November, 2007
Equivalent citations: MIPR2008(1)361
ORDER
Z.S. Negi, Vice-Chairman
1. This is an application filed by the applicant firm through Shri Kush Anand, a partner and principal officer of the applicant, who is duly authorised by the firm and its partners to file and prosecute the application under Sections 47, 57 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) for the removal of trade mark 'BLUE DIAMOND' from the register. During the pendency of the application the applicant and the respondent have filed miscellaneous
2. The applicant, a partnership firm is engaged in the business of manufacturing and marketing of all kinds of rubber rolls used in agricultural machines, particularly in rice mills. The applicant is the assignee of the trade mark 'DIAMOND' under No. 523971 in class 7 which was adopted and used by the assignor (the predecessor in title) since 1986 and originally registered in the name of the assignor i.e. Super Mix (India) Private Limited, New Delhi. The applicant has filed Form TM-23, dated 15.1.2002 for recordal of assignment with the Registrar of Trade Marks, Mumbai. It is stated that the applicant's trade mark is represented in a artistic manner having peculiar artistic design, lay out, pattern and colour combination and that due to long, continuous, uninterrupted and extensive use, the same has become distinctive and capable of distinguishing the applicant's trade mark and acquired enviable goodwill and reputation in the market and in the mind of purchasing public. The sale of the applicant's goods under the trade mark DIAMOND has continuously increased from the date of adoption and user of the said trade mark.
3. The applicant came to know that the respondent, a manufacturer and merchant of similar goods as that of the applicant, has started using the trade mark BLUE DIAMOND in respect to goods which are similar in nature and falls within the category and scope of allied and cognate goods. These goods are sold at the same counter to be similarly used and there is every likelihood of confusion in the trade and deception to the purchasing public. The applicant has filed a Suit No. 1458 of 2007 before the High Court of Delhi for infringement and passing off against the respondent. It is stated that the adoption and use of identical trade mark, to the applicant's prior registered trade mark, by the respondent is dishonest and mala fide and such adoption is not only to infringe the applicant's trade mark but also to trade upon the goodwill and reputation of the applicants mark. It is averred that use of similar or deceptively similar trade mark by the respondent is not only likely to be cause confusion but is actually causing confusion and deception as the purchasing public think that the goods sold under the respondent's trade mark are originating from the applicant. It is further averred that the respondent has not only caused considerable and irreparable damage and injury to the goodwill and reputation of the applicant by its illegal and nefarious activities of passing off its goods and infringing the applicant's trade mark but causing huge financial losses to the applicant. The impugned mark has been wrongly registered in gross violation of the all provisions of the Act and the mark is wrongly remaining on the register. Further, the impugned mark has been registered fraudulently by playing fraud upon the Registrar and by concealing information and material facts and the mark has never been used. There is no bona fide use of the mark up to a date of three months before the date of application and a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which there was no bona fide use thereof. The impugned registration is, therefore, liable to be cancelled, revoked on various other grounds also.
4. The respondent filed the counter-statement in April, 2006 denying the material averments made in the application and the applicant filed evidence by way of affidavit dated 22.5.2007. The respondent filed typed set of documents on 16.8.2007. The rectification application and miscellaneous petitions of both the applicant and respondent came up for hearing before us on 30.10. 2007 when Shri Vijay Pal Dalmia, Advocate appeared on behalf of the applicant and Shri Rajesh Ramanathan, Advocate appeared on behalf of the respondent. When the learned Counsel for the applicant began to make submission on the miscellaneous petition of the applicant, the learned Counsel for the respondent submitted that he has no objection if miscellaneous petitions of both the parties are allowed, to which leaned Counsel for the applicant also agreed. Accordingly, the miscellaneous petitions were allowed, delay condoned and documents taken on record. Learned Counsel for the applicant has submitted written submissions on behalf of the applicant.
5. Shri Dalmia, learned Counsel for the applicant contended that the trade mark BLUE DIAMOND of the respondent has been wrongly registered as the same is identical to the prior registered trade mark DIAMOND of the applicant as in both the marks the word DIAMOND is common, the goods for which marks are registered and trade channels and the purchasing public are same which lead to conclusion that the respondent's mark is causing confusion and deception and therefore wrongly remaining on the register. He submitted that the provisions of Sub-section (1) of Section 11 of the Act, though differently worded, can be said to be broadly corresponding to Section 12(1) of the repealed Trade and Merchandise Marks Act, 1958 and the said Section 11(1) of the Act is prohibitory in nature and enables the Registrar to refuse an application at the examination stage as in the present case the rival marks are identical and the applicant is prior user and got prior registration of the mark. The applicant's trade mark is recognised and hailed by one and all as source of superior and impeccable quality goods originating from the applicant exclusively and the customers which include bulk buyers and retailers consist of illiterate and semiliterate who would think that the goods are coming from the manufacturer of DIAMOND brand and, therefore, there is every likelihood of causing confusion and deception in the mind of purchasers by the use of respondent's trade mark. Placing reliance up on the decision of the Supreme Court in the Cadila Healthcare Ltd. v. Cadila Pharmaceutical Ltd. 2001 (21) PTC 541 (SC), Parle Products (P) Ltd. v. J.P. & Co. , Ruston & Hornsby Limited v. Zamindara Engineering Co. PTC (Suppl.) (1) 175 (SC) and order passed by this Appellate Board in M.P. Jewellers v. New M.P. Jewellers 2005 (30) PTC 517 (IPAB), learned Counsel submitted that taking into account all the factors as laid down by the Hon'ble Supreme Court in the Cadila case and considering the facts and circumstances of the present case, the trade mark BLUE DIAMOND of the respondent is deceptively similar to the trade mark DIAMOND of the applicant.
6. Shri Dalmia contended that the applicant has been using the trade mark DIAMOND since 1.10.1985 and the respondent is using the trade mark BLUE DIAMOND since 15.4.1991, which dates are sufficient to prove the user without any other evidence, and the goods in respect of which the registrations are obtained are same, therefore, the trade mark of the respondent being subsequent in user has been registered in violation of the provisions of the Act and the same is illegally remaining on the Register of Trade Marks. He submitted that the trade mark law is based on the principles of prior adoption and user and thus the respondent's trade mark which has been adopted subsequently and malafidely by the respondent is liable to be removed from the Register of Trade Marks.
7. It was contended that the respondent's mark has been illegally and wrongly registered which registration ought to have been refused by the Registrar under the provisions of Section 9(1)(a) of the Act. Placing reliance upon the decisions in Ruston & Hornsby Limited (supra) and M.P. Jewellers (supra), learned Counsel submitted that any addition of word in the mark is insignificant as it does not help in acquiring any distinctiveness or any other characteristics to become capable of distinguishing the respondent's goods from the goods of the applicant by merely prefixing the word Blue, which is being a name of the colour. The respondent's trade mark has been illegally and wrongly registered such a mark has caused confusion and deception in the market leading to infringement and violation of the trade mark and intellectual property rights of the applicant. He further contended that the mark has been fraudulently got registered by the respondent by playing fraud upon the Registrar of Trade Marks and by concealing information and material facts from the Registrar.
8. Shri Dalmia submitted that the impugned registered trademark has not been used bonafidely up to a date three months before the date of the application, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark was registered and during which there was no bonafide use thereof in relation to those goods by the proprietor thereof for the time being. The impugned trade mark is liable on account of non-user be removed from the register.
9. Leaned Counsel submitted that the adoption and user of the impugned mark by the respondent is dishonest and malafide, which adoption is not only to infringe the applicant's trade mark but also to trade upon the goodwill and reputation of the applicant by passing off its spurious quality of goods as those of the applicant's goods and thereby causing unlawful loss to the applicant and unlawful gains for the itself. He further submitted that, besides the fact that the respondent is passing off its spurious quality of goods to the customers, dealers and distributors as the goods of the applicant by creating an impression and confusion in mind of the public that the respondent's products are emanating from the applicant and it has some connection or links with the applicant. Learned Counsel urged that in view of his submissions, the rectification application of the applicant be allowed and orders passed in terms of the prayer made therein.
10. Shri Ramanathan, learned Counsel for the respondent, contended that the applicant is not the person aggrieved and as such has no locus standi to file the present application for removal of respondent's trade mark from the register as the applicant has not come with clean hands before this Appellate Board. He further contended that the alleged assignment of the trade mark to the applicant is non-est in law and is not valid as the deed of assignment is purported to have been executed in August, 2001 and notorised the same in October, 2001. This would constitute an ample proof that the document has been created for the purpose of supporting this application and is, therefore, not valid and cannot be accepted. Hence, the applicant who claims to be the successor in title cannot file this application for rectification of respondent's trade mark.
11. Learned Counsel submitted that the goods of both the applicant and respondent are entirely and absolutely different and even the trade marks of both are also entirely different. The applicant and its predecessor in title has obtained registration of trade mark for the goods 'rubber piping and tubing rubber rolls and blocks and blocks used in agricultural machines all being included in class 7 for sale in the states of Delhi, Haryana and Orissa' whereas the respondent's trade mark is registered for the goods 'Dehusking rubber rollers for Rice Mills' without territorial restrictions. The applicant and its predecessor in title having kept quiet for so long has now come up with this application with malafide intention to monopolising the industry and to jeopardise the honest practices of the respondent.
12. Shri Ramanathan submitted that the invoices filed by the applicant to establish its prior user of the trade mark are not relevant. He drew our attention to invoices at A-6 and A-7 of applicant's predecessor in title are pertaining to trade mark Super Diamond which has nothing to do with the trade mark DIAMOND and even the other remaining invoices are from the year 2001, i.e. pertaining to the period after filing application for registration. He further submitted that the copy of invoice at A-20 shows that the applicant has started describing its goods as 'PADDY DEHUSKING ROLL- PART OF RICE MILLING MACHINERY' from the year 2006 and such documents high lighting the violation of the rights granted by the registration of mark cannot be taken into account as evidence at all. Similarly, Excise invoices at A-41 to A-56 are in the name of Cable Corporation of Haryana without any explanation as to how these invoices have relevance to the present application.
13. The statutory requirement for any person filing a rectification application is that such person must be the person aggrieved. The expression 'person aggrieved' has received liberal construction from Courts. It would be worthwhile to have a look at a few legal propositions laid down by the Courts. In Wright, Crossley and Co. S.T.M., (1898 (15) R.P.C. 131), it was held as under:
I further accept the statement of the Court of Appeal, that a man in the same trade as the one who had wrongfully registered a Trade mark and who desires to deal in the article in question is prima facie an aggrieved person but only prima facie; and the circumstances of the case may show that an individual applicant is not a person aggrieved. I think, notwithstanding what was said in that case, and has been said in other cases dealing with Trade Marks, that an applicant, in order to show that he is a person aggrieved, must show that in some possible way he may be damaged or injured if the Trade Mark is allowed to stand and by possible I mean possible in a practical sense; and not merely in a fantastic view.
In Jadayappa Mudaliar v. Venkatachalam , the High Court of Madras has observed as under:
In order to show that he is a person aggrieved, the petitioner must establish in a practical sense that he may be damaged or injured if the Trade Mark is allowed to stand. He is not an aggrieved person or a person substantially interested in having the mark removed from the register. The petitioner has not proved what is his substantial interest in having the mark removed nor has he made out a case that he is substantially damaged by the respondent's registered mark remaining on the register. The petitioner has his own mark as stated by him in Ex.R.45 and he could now may be prejudiced by the respondent's mark remaining on the register. Hence I hold that the petitioner is not an aggrieved person as per the yard sticks adopted by the various rulings and passages referred to above and hence could not sustain this petition for rectification, and could not be granted the prayers asked for.
In Prestige Housewares (India) Ltd. and Anr. v. Prestige and Ors. 2000 PTC 513 (Mad), it was observed that whenever it is shown that the applicant is in the same trade as the person who has registered the trade mark, and wherever the trade mark, if remaining on the register would limit the legal rights of the applicant, so that by reason of the existence of the entry on the register he could not lawfully do that which, but for the existence of the mark upon the register, he could lawfully do, he has a locus standi to be heard as a person aggrieved.
Now, in the light of above proposition of law, let us see if the applicant is the person aggrieved within the meaning of Sections 47 and 57 of the Act. In the rectification application, the applicant has nowhere expressly or specifically pleaded or averred that the applicant is the person aggrieved having locus standi to file this application except at para 5 of the counter affidavit dated 3.9.2007 of Shri Kush Anand, filed to the evidence filed by the applicant, where he states thus: "It is wrong and denied that that the Petitioner is not the aggrieved party or that it does not have any locus standi to file the present rectification application." During the course of hearing also the learned Counsel for the applicant has not advanced any argument in this regard. Though averments have been made in the application to the effect that the respondent has caused considerable damage and injury to the goodwill and reputation and causing huge financial loss to the applicant but there is no material on record to prove the averments. On the contrary, it is averred at paras 12 of the application and the evidence by way of affidavit of Shri Kush Anand that the sale of products under the trade mark has continuously increased from the date of adoption and user of the trade mark DIAMOND. If that be so, then the allegation that the respondent has caused damage and injury to goodwill and reputation and also is causing huge financial loss to the applicant is baseless. In the case of Prestige Housewares (India) Ltd. & Ors. (supra), the High Court of Madras observed that a person who had not suffered or was not likely to suffer damage to his reputation or any other damage by reason of the registration sought to be removed is not considered a person aggrieved. Though the applicant has averred that use of similar or deceptively similar trade mark by the respondent is not only likely to be cause confusion but is actually causing confusion and deception as the purchasing public think that the goods sold under the respondent's trade mark are originating from the applicant but no particulars of instances of actual confusion taken place have been given. We are, therefore, unable to hold that the applicant is the person aggrieved.
14. The next issue before us is whether the impugned registration is hit by the provisions of Sections 9 and 11 of the Act. As regards registration of mark, the only submission made by the learned Counsel for the applicant is that the respondent's mark has been illegally and wrongly registered which registration ought to have been refused by the Registrar under the provisions of Section 9(1)(a) of the Act and that by addition of word Blue to the mark does not help in acquiring any distinctiveness or any other characteristics to become the mark capable of distinguishing the respondent's goods from the goods of the applicant. On the other hand the respondent at page 6 of the counter-statement has stated that the trade mark 'BLUE DIAMOND' was rightly registered by the Registrar after being satisfied about the distinctiveness. There is no doubt that the word DIAMOND is an ordinary dictionary word as such no one can claim monopoly over the use of the word. The registration of the impugned mark, and the present application, have been made under the Act, therefore, the provisions of Section 31 of the Act comes into play. Sub-section (2) of Section 31 provides that in all legal proceedings relating to a trade mark registered under the Act (including applications under Section 57) shall not be held to be invalid on the ground that it was not a registrable trade mark under Section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before the registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration. There is nothing on record to show that the applicant has adduced any evidence to prove that the respondent has not produced evidence before the Registrar to prove the distinctiveness of the mark at the time of registration thereof. The mark of applicant has not been adjudged a well-known mark in India, the provisions of Section 11(2) of the Act is not a bar for registration of the respondent's mark. There is also no evidence or particulars about the fraud played by the respondent on the Registrar to obtain registration of the impugned trade mark. If the original registration has been obtained by fraud, as for instance by wrong statements deliberately made in affidavits submitted to the Registrar, the mark can be removed from the register. Simply alleging fraud is not sufficient, for the absence of particulars, the application would be incompetent. No fraud has been established by the applicant as alleged.
15. For the purpose of determining whether on mark is similar or deceptively similar to another, the Courts have laid down guiding principles therefor. The Apex Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (supra), has laid down the following factors to be taken into consideration in deciding the question of deceptive similarity:
(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label marks.
(b) The degree of resembleness 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, on 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.
The Apex Court in the case of Parle Products (P) Ltd. (supra) has held as follows:
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. It is of no use to note on how many points there is similarity and in how many others there is absence of it.
The same Court in the case of Ruston & Hornsby Limited (supra) has held that the trade mark 'RUSTON' and 'RUSTAM INDIA' to be deceptively similar and further held that if the respondent's trade mark is deceptively similar to the appellant the fact that the word INDIA is added to the respondent's trade mark is of no consequence and the appellant is entitled to succeed in its action for infringement of its trade mark.
When compared, the two word marks appear to be deceptively similar-visually and structurally. But the marks in dispute appear to be label marks, which we could gather from para 6 of the application which read thus: 'That the Petitioner's trade mark is represented in an artistic manner having peculiar artistic design, lay out, pattern and colour combination.' and from the copy of registration certificate of the respondent's trade mark. A copy of Trade Marks Journal, containing the advertisement of application advertised before acceptance for registration, annexed to the written submission on behalf of the applicant does not show the device mark of the applicant. Since, the applicant has not thought it fit to file a copy of the registration certificate of its trade mark, we have, therefore, no opportunity to compare the applicant's label mark with the respondent's label mark. Apart from the comparison of the rival marks, we have to take into consideration the other facts and surrounding circumstances of the case. According to the averment made at para 5 of the counter filed the respondent in M.P. No. 68/2007, the applicant and its predecessor in title has obtained registration of trade mark for the goods 'rubber piping and tubing rubber rolls and blocks and blocks used in agricultural machines all being included in class 7 for sale in the states of Delhi, Haryana and Orissa', whereas the respondent's trade mark is registered for the goods 'Dehusking rubber rollers for Rice Mills' and the products of both parties are entirely and absolutely different. This averment has been disputed by the applicant. At para 3 under the para wise reply to M.P. No. 68/2007, the respondent by denying that it is restricted to the States of Delhi, Haryana and Orissa only has stated that the petitioner is using the mark Diamond all over India. The admission of the applicant that it is using the mark Diamond all over India shows that the applicant is using the trade mark in contravention of the conditions of registration. Further, at para 6 it is stated that it is wrong and denied that the trade mark DIAMOND is only registered for rubber piping and tubing rubber rolls and blocks. It goes on to states that it is submitted that the said goods i.e. 'Paddy Dehusking Rolls-Part of Rice Milling Machinery', rubber piping and tubing rubber rolls and blocks are one and the same and there is a mere difference of nomenclature in the said goods. The said statement of denial in relation to area restriction and description of goods is deliberate on the face of copy of Trade Marks Journal No. 1224 (Suppl.) dated 8.6.2000 at p.53 containing the advertisement published before acceptance. The applicant has not explained about the change of description of goods, if any, taken place subsequently. This denial is therefore not admissible. The applicant has not proved that the goods are same with different nomenclature. There is also no evidence to prove that goods of the applicant and the respondent are used both by the agriculturists and Rice-Millers interchangeably. In the circumstances discussed above, we are unable to persuade ourselves to hold that there is likelihood of public being deceived or confused by the use of the trade mark of the respondent. Where the applicant has not discharged the onus of proving that there is a likelihood of deception or confusion amongst the purchasers of the goods, the mark is not liable to be rectified as has been held by the High Court of Madras in the case of Manyam and Co. v. V.N.M.N. Balasubramania Nadar and Ors. .
16. Now we would come to the issue of bonafidely non-use of the trade mark by the respondent for five years three months and longer. The respondent has filed typed set of documents in evidence of use which comprise copies of correspondences between the customers from May, 1995 to July, 2003, orders placed by customers from August, 1997 to February, 2003, invoices from April, 1996 to March, 2005 and reports, advertisements and advertisement bills, etc. The applicant has stated that the documents numbered 136, 139 and 142 are mere client communication which does not mention any trade mark. It is noticed that they are bills for advertisements and the name of the magazine/paper in which they are published are mentioned like Ricemill Reporter Ennadu etc., and copies of Ennadu in Telugu language with Blue Diamond advertisements are at 138 and 140. Likewise the applicant has objected that the documents at pages 2, 5, 12 and 13 are untranslated and hence same are denied. It is noticed that except the document at page 2, in all other documents "blue Diamond' has been written in English language. The onus of non use of trade mark is on the applicant and if the applicant discharges that burden of proving then it is for the respondent to establish its user. The applicant has failed to discharge the burden of proving the there was no bona fide use of trade mark by the respondent for five years three months and more. We have perused the documents of the respondent and found that the respondent has been continuously using the trade mark, though in some invoices the name of the excisable goods are mentioned as 'DEHUSKING RICE RUBBER ROLLS', but instead of mentioning the trade mark only gunny bags have been mentioned. Since the name of the goods for which registration has been obtained is mentioned, we see no reason to discard this evidence of use.
17. The result is that the application fails as we found no merit therein and the same is dismissed. The M.P. Nos. 68 & 91/2007 are ordered in terms of para 4 above. The parties are left to bear their own costs.