V. Ravi, Technical Member
1. The appellant in these proceeding is aggrieved by the order of the Deputy Registrar of Trade Mark, Chennai refusing application No. 1360436 in
Class 21 under opposition No. 257181. The trade mark in question is CYCLE BRAND in respect of 'brooms'.
2. The grounds of appeal and the facts of the case are indicated below:-
a. the appellants are engaged in the business of manufacture and sale of brooms & other articles for cleaning purposes since 2005.
b. they adopted CYCLE BRAND with a particular artistic work, design and get up for their products as a trade mark.
c. the appellant applied to the Registry for registration of the said mark on 30.05. 2005. It was ordered to be 'Advertised Before Acceptance' under
proviso to Section 20(1) and consequently published in TM Journal 1355 (Regular) dated 01.11.2006.
d. this application was opposed by the respondent herein. After completion of respective evidence, the Deputy Registrar of Trade Mark allowed the
opposition 257181 & refused the appellant's application no. 1360436 in Class 21 by her order dated 26.02.2009.
e. the appellants state that the order of the learned Dy. Registrar is erroneous, bad in law and not sustainable on the facts of the case. The order is
self-contradictory and selectively tailor made in favour of the respondent.
f. the respondent herein have been carrying on business only in 'agarbathis' under CYCLE BRAND and have not extended their activities beyond the
said goods. The appellant state that the competing goods are not cognate with each other and they are engaged in different field of activities.
g. the respondents have also filed no evidence or documents of use of their registered trade mark CYCLE BRAND for more than five years in
respect of goods falling in Class 21.
h. the appellants submit that the trade mark CYCLE BRAND is used by a large number of persons for various goods and services and therefore, the
respondent cannot claim monopoly right on the picture 'CYCLE BRAND'.
i. the appellant further state that the respondents have never used CYCLE BRAND for manufacture of brooms and the appellants are the prior user
of the trade mark CYCLE BRAND with respect to brooms.
j. the appellant further state on an overall look at the two marks, its get up, design, the artistic work and other added matters show that the appellant
have honestly adopted and are using the trade mark CYCLE BRAND for brooms and are protected under Section 12 of the Act.
k. in view of the foregoing, it is the case of the appellant that their trade mark CYCLE BRAND has become distinctive by virtue of continuous use
since 2005 in relation to their goods 'brooms'.
l. the appellant therefore pray that the order passed by the learned Deputy. Registrar be quashed and set aside and the appellants application under no.
1360436 in Class 21 be allowed to proceed to registration.
2. The case of the answering respondent is summarized below:
a. They have been carrying on business in the manufacture and sales of agarbathis for the last several decades under the trade mark CYCLE
BRAND. Their trade mark has achieved immense popularity both within and outside the country. They are in fact the registered proprietor of
CYCLE BRAND in many classes including class 21 in respect of which the appellants are seeking registration. The respondent have been using
CYCLE BRAND since 1954 and claim that it is a well-known trade within the meaning section 2(1)(zg) read with Section 11(8) and 11(10) of the
act.
b. the respondent state that even though the competing goods are different, consuming public would assume a wrong trade connection about the trade
source and origin of the goods. They are holding valid registration in many class and it is a famous mark. In the light of this, the appellants are not
entitled to claim concurrent registration of CYCLE BRAND under Section 12 as their original adoption is dishonest and tainted.
3. The matter was listed for hearing before us initially on 01.06.2012 when we were informed that the appellants have also filed a rectification
application under No. ORA/8/2012/TM/CH seeking removal from the register of the respondents registered trade mark No. 565826 in Class 21
bearing the trade mark CYCLE BRAND. In view of this position, it was decided to adjourn the matter and take up both the appeal and the
rectification petition together which came up before us on 03.10.2012. We have heard the arguments of the learned counsels and gone through the
pleadings and records.
4. The competing trade marks before us are depicted below:
5. The rival goods of both the parties falling in Class 21 is as shown below:
6. The issue before us is whether the order of the Deputy Registrar is sustainable in law? On a perusal of the said order, it is seen that she came to
the conclusion that the appellant's mark was deceptively similar to the respondent's trade mark and the use of the appellants mark in the market will
lead to confusion and deception in the mind of the purchasing public and so the appellant's application was hit by Section 11 of the Act. She also ruled
that as the appellant's mark was only 'proposed to be used' on the date of filing, it has not attained any distinctiveness and therefore failed to qualify
under Section 9(1) of the Act. Concerning Section 18(1) dealing with the issue of proprietorship of the mark, the Deputy Registrar came to the
conclusion in view of the evidence of prior use of the respondents trade mark 'CYCLE BRAND' and because the appellant's mark was only
'proposed to be used' on the date of filing, the appellant's could not be regarded as the true proprietor of CYCLE BRAND. Finally, the Deputy
Registrar also exercised her discretion under Section 18(4) on the ground that the appellant have failed to discharge the essential onus vested on them
to prove honest adoption and use of CYCLE BRAND in respect of BROOMS.
7. The appellant's Learned Counsel argued that there are certain basic difference in the two labels and the appellant's label cannot be said to be
deceptively similar to that of the respondent. No purchaser will be deceived into buying one product for the other which in any rate are neither
complementary nor a substitute for each other. The respondent has not produced a single customer to depose that he was ever misled into purchasing
appellant's product believing the same to be that of the respondent. The appellant have honestly adopted CYCLE BRAND for broom which has
nothing to with respondent's goods.
8. The Counsel for respondent on the other hand argued that the appellant have deliberately copied their mark with minor cosmetic changes. The
respondent trade mark is a well known mark. They have been using CYCLE BRAND since 1954. They have in fact registered CYCLE BRAND in
all 45 Classes and because defensive registration is no longer available they claim protection as a well known trade mark. The respondents product
agarbathi (incense stick) is sold both in India and abroad. The appellant had prior knowledge of the respondents trade mark. The respondent have
been ever vigilant in taking action against many pirates. The Deputy Registrar had rightly refused the appellant's trade mark. In rejoinder, the appellant
argued that Cycle brand is commonly used mark by many traders for their products. The goods are sold into different market and most importantly the
respondent have not been using their registered mark CYCLE BRAND in Class 21 over the last 21 years. In fact, the respondent are not even
manufacturing brooms till date. How can there be confusion in these circumstances?
9. The following authorities were relied on by the respondent.:
(i) ""S.K. Patel Vs. Deputy Registrar of Trade Marks and Others"" - - 2004(29) PTC 634 (IPAB)
Held: Where a registered trade mark has got the reputation and goodwill, such trade marks cannot be permitted to be used by another person as the
same would cause confusion in the mind of the general public that the goods being manufactured with the identical trade mark has some connection
with the registered proprietor of that trade mark. This confusion cannot be totally ruled out. Hence, the order of the Registrar of Trade Marks cannot
be sustained. Accordingly the appeal is allowed. The opposition of the appellant is allowed and the application of the third respondent is rejected.
(i) ""Caterpillar Inc Vs. Mehtab Ahmed & Others "" -- 2002(25) PTC 438 (Del)
Doctrine of dilution - Object - There is presumption that the relevant customers start associating the mark with a new and different sources -Not a fair
practice. Another kind of dilution is by way of sullying or impairing distinctive quality of a trade mark of a senior user -Know as dilution by
tamishment. 2002 (24)PTC 121 (SC)
(iii) ""Alfred Dunhill Limited Vs. Kartar Singh Makkar & Others"" - 1999 PTC (19) 294
Held: A trader needs protection of his right of prior user of a trade mark/trade name as the benefit of the name, fame, reputation and image and
goodwill earned by him cannot be taken advantage by another trader by passing off his goods as those of the prior user of the trademark or trade
name.
(iv) ""Daimler Benzz Aktiegesellschaft & Another Vs. Hybo Hindustan"" -
Held: that the word ""BENZ"" as a name of a car would be known to every family that have ever used a car; the name ""Benz"" has a unique place in the
world. The trade mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else's reputation with
reference to the goods, especially so when the reputation extends world wide. Keeping in view the facts, it is right that the defendant be restrained
from using the word ""Benz"" with reference to any underwear which is manufactured by them and accordingly the injunction is issued restraining the
defendant to cease and desist from carrying on trade in any undergarments in the name of ""Benz"" and ""Three pointed human being in a ring"".
(v) ""Mahendra & Mahendra Paper Mills Ltd Vs. Mahindra & Mahindra Ltd."" _______ 2002 (24)PTC 121 (SC)
People have come to associate the name 'Mahindra' with a certain standard of goods and services -Any attempt by another person to use the name in
business and trade circles is likely to and in probability will create an impression of a connection with the plaintiffs' group of companies _______ likely
to effect the plaintiff prejudicially in its business -Prima facie case established which results in irreparable prejudice - Orders passed by the High Court
do not call for interference -Appeal dismissed.
10. In the light of the above, let us examine the merit of the appeal. The Deputy Registrar had ruled that the competing marks are deceptively similar
and the use of the appellant's mark will lead to confusion and deception in the market and accordingly hit by Section 11(1). In our view, this is a
completely erroneous conclusion. We believe that the average consumer can differentiate the competing products based on look, colour, get up, visual
dissimilarity, size, target market etc. The competing marks are unlikely to appear in the same store let alone sold side by side. The respondents
products are sold mostly through retail outlet and many times through catalogues and internet. There is no disputing that CYCLE BRAND for
agarbathis (incense stick) is an established brand over many decades. But it is not an invented or unique device. The competing products relate to
entirely different markets. The nature of rival goods are poles part. The intended purpose is totally different. The method of use is also different.
Neither are the two goods in competition. The physical nature of the rival goods are also totally different. Incense stick is used for religious
ceremonies, worship etc. Brooms are everyday items used by the masses. Even the marks are not similar. One is an ordinary cycle and the other is a
ladies cycle below which is prominently displayed 'GRASS BROOM' with device of broom. Conceptual similarity cannot be invoked as that would
confer exaggerated monopoly of an ordinary device like CYCLE for all products. The Deputy Registrar gravely erred in her decision in holding that
rival marks are deceptively similar. She has not considered all the surrounding circumstances in which the competing marks are used for the
respective goods used in a normal way. Here the appellants are unlikely to get any illicit benefit merely because the respondent's mark is famous.
There is not even a reasonable probability of confusion in the totality of these circumstance. Hence, Section 11 cannot be a hurdle in the registration of
the appellants mark.
11. The other ground on which the appellant's trade mark was refused was under Section 9 on 'absolute grounds of refusal'. The reasoning behind her
decision was the appellant's mark was only 'proposed to be used' on the filing date and thus not distinctive of the appellant's goods. This is clearly
perverse reasoning. The 'absolute ground of refusal' under Section 9 is fundamentally different both conceptually and in its intent and scope from the
repealed Section 9 of TMM Act, 1958. Under the old Act an applicant had to satisfy any one of the essential particulars mentioned therein. Now the
law has changed. The test to be satisfied now is to apply the prescription specified under Section 9(1)(a) or (b) or (c) to the trade mark applied for by
an applicant. It is only a low threshold test and if the mark passes it, then it can be further considered under other Sections of the Act for registration.
In the instant case, the appellant's mark is 'CYCLE BRAND' for brooms. To cross the minimal threshold test, the simple question to be answered is it
'capable of distinguish' the goods of the applicant from others (absent use)? CYCLE BRAND is an arbitrary device that has nothing to do with
brooms. It thus automatically passes the threshold test and Section 9 can't be a bar to consider the appellant's mark further under other sections of the
Act. The proviso to Section 9 can be looked into only if the mark fails the test of 9(1)(a), (b) or (c). Here, the appellant's mark sails through the
'absolute ground of refusal' hurdle straightaway. Her reasoning that it is only just a 'proposed to be used mark' and because of the presence another
mark in the same Class 21 and therefore it is not distinctive is an erroneous conclusion. Therefore, refusal under Section 9 is totally unjustified.
12. The same error of reasoning is noted in her order of refusal under Section 18(1) to the claim of proprietorship of the mark. No one else is using
CYCLE BRAND for brooms. Just because the respondent are holding a registration in Class 21 without any proved user of the mark in respect of
goods in that Class, it is no ground to bar another applicant for same mark for unrelated goods. In our view, the conclusion cannot be sustained. In the
result, OA/19/2009-TM-CH is allowed and the order of the Deputy Registrar refusing application No. 1360436 is Class 21 is quashed and set aside.
The said application for CYCLE BRAND in Class 21 shall proceed to registration. There is no order as to costs.
