S. Usha, J
1. Appeal arising out of the order dated 18.11.2005 passed by the Joint Registrar of Trade Marks dismissing the opposition No. CAL 119704 and
allowing the application No. 838525 in class 7 to proceed to registration. The respondent herein filed an application for registration of the trade mark
KAMAX in class 7 under No. 838525 with the device of a screw inscribed square in respect of machines, apparatus and machine tools for treating,
processing or controlling the fashioned parts and forming parts especially hydraulic presses' included in class-7. The mark was proposed to be used.
The mark was advertised in the Trade Marks Journal No. 1 (Supplementary) dated 14.6.2003 at page 1370.
2. The appellants herein opposed the application for registration. The opponent stated that they are the registered proprietors of the trade mark MEX
registered under No. 211055 and 351897 both in class 9 in respect of electrical switchgears and switches and ignition switches, electric capacitors,
plugs, sockets, transformers, distribution boards and electrical circuit breakers respectively. The appellants have been using the same since 1960. They
are also the registered proprietors of the trade mark MEX registered under No. 495452 in class 7 in respect of starting devises for electric motors (not
for land vehicles) and parts thereof.
3. The impugned trade mark KAMAX is phonetically and visually similar to the opponents registered trade mark MEX and the goods are also of the
same description. The respondents use will result in deception and confusion. The impugned trade mark is not distinctive and does not qualify for
registration under Section 9 of the Act. The respondents are not the proprietors of the trade mark and the registration therefore would be in
contravention of the provisions of Section 18 of the Act. The registration would be in contravention of provisions of Sections 9, 11, 12 and 18 of the
Act.
4. The respondents filed their counter statement stating that there was no similarity between the marks. The goods are different. They honestly
adopted the trade mark KAMAX from their corporate name and that they have obtained registration of the trade mark KAMAX in more than 30
countries. The trade mark KAMAX has acquired worldwide reputation and is identified exclusively.
5. On completion of the pleadings, the Joint Registrar of Trade Marks heard and passed the impugned order. The allegation under Section 9 of the Act
is not sustainable as the respondents impugned trade mark is prima facie distinctive and qualifies for registration. The goods are different on the face
of it. There is no common field of activity in the course of trade between the two items and class of customers is distinct and trade channels are
different. As regards deceptive similarity, while comparing the two marks, it is well settled proposition that the first syllable of a word is in general the
most important for the purpose of distinction. Only if the impugned trade mark bears an overall similarity to the registered trade mark, it will lead to
confusion and deception. It is not correct to take a part of the mark and compare with the part of the other mark.
6. The rival marks i.e., MEX & KAMAX are totally different. The impugned trade mark KAMAX is a label mark in a square with a device of a
screw which is totally different. The goods, the marks and the trade channels are different. Based on these circumstances, the objection under Section
12 is not sustainable.
7. The other objections under Section 11 of the Act are that the use of the impugned trade mark would lead to confusion and deception among the
public. The appellants' objection was based on the contention that their trade mark had acquired reputation among the public all over the world and
that this registration would lead to confusion. The marks were held to be not similar, the issue of confusion and deception does not arise. When there
is no evidence of confusion, the objection under Section 11(3) does not arise.
8. The appellants have not filed any evidence to prove that the respondents' adoption is dishonest. It is not established that the respondents copied the
appellants' trade mark. The appellants' objection that the respondents are not entitled to claim proprietorship is rejected.
9. Finally, the appellants have failed to make out a case for sustaining the application on any ground. The application was therefore ordered to proceed
to registration and the opposition was dismissed.
10. Being aggrieved by the said order, the appellants filed the instant appeal. The appellants stated that they are engaged in the business of
manufacturing of electrical goods including electric switchgears and electric switches and parts thereof for the last many years. They had been using
the trade mark continuously and extensively since the year 1960 in respect of electric switchgears. They are the registered proprietors of the trade
mark MEX in class 9 under Nos. 211055, 230466 and 351897. They are the registered proprietors of the trade mark MEX in class 7 in respect of
electric motor under No. 495452.
11. The appellants are the registered proprietors of the trade mark Climax in respect of electro receiving apparatus including transitional radio
apparatus, electric cables etc., under No. 234906 in class 9 and in respect of electric lamps, bulbs, electric heating appliances etc., under No. 234904
in class 11.
12. They are the registered proprietors of the trade mark MEX (in Hindi) in class 11 for electric fans, electric heating appliances etc., under No.
463732.
13. By virtue of continuous and extensive use since the year 1960, the appellants' trade mark has acquired an exclusive goodwill and reputation among
the trade and public. The appellants have spent a large amount on publicity and advertisement of the trade mark MEX to popularize the same.
14. The sales turnover for the year 1960-61 was Rs. 83, 036.94 which increased to Rs. 10,11,60,820/- in the year 2004-2005. The expenses towards
popularizing the trade mark in the year 1960-61 was Rs. 8190.90, which increased to Rs. 38,90,706/- in the year 2004-2005.
15. The goods manufactured and sold under the trade mark MEX have been tested by various Government Departments.
16. The appellants had been vigilant in protecting their trade mark and had initiated action against interference and had taken necessary steps to
oppose the registration of various similar trade marks. The appellants had been successful in this action.
17. The appellants therefore filed this appeal against the impugned order.
18. We heard Mr. Shailen Bhatia the learned counsel for the appellants. The respondents have neither entered appearance nor have they filed the
counter statement. The respondents were not present and therefore, they were set ex parte.
19. The learned counsel for the appellants submitted that the trade mark was applied for registration on 27.1.1999 as a proposed to be used mark. The
mark was a label mark with a device of a screw. There was no disclaimer. The respondents could have used the mark only since 1999. The
appellants had conceived and adopted their mark in the year 1960.
20. The counter statement in Form TM6 has been filed before the Registrar in the opposition proceedings without the verification clause, which is not
in accordance with the Rule 49(2) of the Rules. This was raised by the appellants in their written submissions which were not considered by the
Registrar.
21. The respondents have not given any reason for the adoption of the impugned trade mark.
22. The learned counsel relied on the following judgments;
(1) 2007(35) Patents & Trade Mark Cases 28 (Delhi) (IZUK CHEMICAL WORKS Vs. BABU RAM DHARAM PRAKASH)-Where essential
feature or essential particulars of a mark are copied, the subsequent user will not succeed.
(2) AIR 1963 SC 449 (Amritdhara Pharmacy vs. Satya DEO GUPTA)-Class of customers & Rules of comparison are to be looked into to decide the
degree of resemblance.
(3) AIR 1970 SC 146 (K.R. Chinna Krishna Chettiar vs. Sri Ambal & Co., and Another)-No evidence of actual confusion due to the fact that the
trade mark is not in use.
(4) AIR 1974 Madras 7 (K.R. Chinnikrishna Chetty vs. K. Venkatesa Mudaliar & Another)-In order to decide the issue of deceptive similarity, the
broad and essential features of the two marks are to be considered.
(5) 2007 (35) PTC 714 (Bombay) (Encore Electronics Limited vs. Anchor Electronics & Electricals Private Limited) -The defendant had no bona fide
or logical explanation for the adoption of the mark. Therefore grant of an interim order was not an error.
(6) 2004 (29) PTC 493 (IPAB) (I.K. Sons vs. Prakash Brassware Industries & Another)-Adoption of a deceptively similar trade mark by a
subsequent individual would definitely cause confusion even though the goods may be different.
(7) AIR 2001 SC 1952 (Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.)-The factors to be considered for deciding the issue of deceptive
similarity are the nature of the mark, the degree of resemblance, the nature of the goods, the class of purchasers the mode of purchasing and other
surrounding circumstances.
(8) AIR 1969 Bombay 24 (Sunder Parmanand Lalwani & Others vs. Caltex (India) Ltd.)-Onus of proving that the mark is not calculated to deceive or
cause confusion is on the applicant for registration.
(9) AIR 1983 P & H 418 (M/S. Banga Watch Co., Chandigarh vs. M/s. N.V. Phillips Eindhoven, Holland & Another)-When there is no reason or
explanation for the adoption of the trade mark by the applicant, the adoption would only be to earn profit upon the goodwill of the other earlier user.
(10) AIR 1985 Allahabad 242 (Bata India Limited vs. M/s. Pyare Lal & Co., Meerut City & Others)-The use of the name Bata was well known for
shoes since the year 1940, the use by any other person for some other goods was clearly to cause not only deception in the minds of the public but
also would cause injury to the plaintiffs business.
(11) 1981 PTC 1 (Shri Dalip Chand Aggarwal & Others Trading as New ERA Electric Works, Delhi vs. M/s. Escorts Limited, New Delhi)-The onus
is on the applicant to establish honest concurrent user.
23. We have heard the learned counsel for the appellants and have gone through the pleadings and documents.
24. The rival marks are KAMAX (label mark) & MEX. The application for registration of the impugned trade mark KAMAX is filed in 1999
proposing to use the trade mark. In the counter statement filed in the opposition proceedings, the respondent has admitted that they had adopted and
used the trade mark KAMAX since the year 1999, whereas the appellants had been using the trade mark MEX since the year 1960. The appellants
have filed sufficient proof to satisfy their claim of use since 1960.
25. The impugned Trade Mark KAMAX was only proposed to be used and therefore not distinctive nor capable of being distinguished. It is well
settled principle of law that the onus is always on the applicant to prove his case of deception or confusion. The respondent herein is the applicant for
registration, has not satisfied that the registration if granted will not cause any confusion on deception.
26. The Registrar was not correct in holding that there is no evidence of confusion or deception. The burden is on the applicant/respondent. But in this
case, the respondents have not used the trade mark and that apart when the burden is on the respondent, it is for the respondent to satisfy. Thereafter,
the burden shifts to the appellants.
27. The other finding that the appellants have not filed any evidence to prove that the adoption is dishonest is not correct. When there is no explanation
for the adoption then it is that the applicant/respondent has adopted the trade mark only to earn profit at the reputation of the appellants. When the
trade mark MEX was used by the appellants since 1960 for the goods falling in class 7 & 9, the use of the trade mark KAMAX a deceptively similar
trade mark subsequently by the respondent will lead to confusion and deception. As observed by this Board in 2004(29) PTC 493 (IPAB) (supra)
In the changed circumstances, it is for us to consider whether the first respondent had built up a reputation and goodwill on their trademark and
whether the use of the same by the appellants would cause confusion in the trade. The first respondent is using the trade mark from 1963 and
registered proprietor since 1964. The appellants adopted the same trade mark nearly after 21 years. The appellants do not claim any ignorance of the
said trademark of the first respondent. Hence it may be a case of deliberate adoption of the impugned trademark by the appellants in order to take
advantage of the reputation and goodwill built up by the first respondent all the 21 years. When the trademark of the first respondent has the
reputation and goodwill, definitely, the adoption of the same by the appellants does cause confusion in the minds of the public as the public may think
that the first respondent is the manufacturer of electrical apparels that are being manufactured by the appellants.
This squarely applies to this case on hand. In view of the above reasons, we think it proper to set aside the impugned order, refusing the opposition for
registration. Accordingly, the appeal is allowed; there is no order as to costs.
