S. Usha, J
1. Appeal arising out of the order dated 30.04.2008 passed by the Deputy Registrar of Trade marks allowing the opposition No. MAS-205017 and
refusing registration of application No. 1074858 in class 3 under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
2. The brief facts of the case are-The Appellant herein filed an application for registration of the label mark consisting of the words 'ROYAL GOLD'
and 'SUPREME' with the device of cup and saucer under No. 1074858 in class 30 on 11.01.2002. The mark was claimed to be used since
01.04.1997. The said mark was advertised before acceptance on 07.02.2005 in the Trade Marks Journal No. 1328 (S.I) at page No. 2408.
3. The application for registration was opposed by the first Respondent and a notice of opposition was filed on the grounds that they are carrying on
the business of manufacturing, marketing and selling tea under various registered brands and also are registered proprietors of the trade mark
consisting of the word 'GIRNAR ROYAL' in a label form registered under No. 516228 for the goods tea. The first Respondent objected to the
registration of the impugned trade mark on the ground that the registration would be in contravention to the provisions of Sections 9(2) (a), 11(1)(b),
11(3), 12, 18(1) and 18(4) of the Act.
4. The Appellants herein filed their counter-statement denying all the averments made in the notice of opposition and further stating that the trade
mark 'ROYAL GOLD' was being used by the Appellants since 01.04.1997 and hence the objection as to registration by the Respondent was not
maintainable.
5. On completion of the formal procedures the matter was set down for hearing and the impugned order was passed. The reason and finding of the
Deputy Registrar was that the applicant's adoption was not honest as they had admitted the opponent's use of the impugned trade mark. Aggrieved by
the said order, the Appellants have filed the instant appeal. The Appellants have preferred the appeal on the following grounds:
(a) That the impugned order is contrary to law and is not sustainable;
(b) that the impugned order has been passed on misrepresentation made by the first Respondent that the Appellants are the subsequent proprietors;
(c) that the second Respondent had erroneously split the trade marks and arrived at a wrong conclusion;
(d) that the second Respondent had erroneously held that on account of extensive use and publicity the trade mark has come to be associated with the
Respondents;
(e) that the second Respondent failed to take note of the fact that the trade mark 'ROYAL' applied for registration by the first Respondent was under
opposition and not registered;
(f) that the second Respondent failed to record that the Appellants are the proprietors of the trade mark thus erred in law and acted in contravention
of the mandatory provisions of Section 18 of the Act;
(g) that the second Respondent erroneously held that the Appellants are not entitled for the benefit of honest and concurrent user under Section 12 of
the Act;
(h) that the learned Registrar erred in holding that each case has its own peculiar facts whereas the cases cited by the present Appellant deserved
deeper consideration than the mere casual comment;
(i) that the learned registrar erred in law and on facts while comparing the marks;
(j) that the second Respondent failed to follow the law and the comparison of the marks has been done against the established customs and practice of
comparison of the marks as a whole;
(k) that the learned registrar has wrongly inferred that the word 'ROYAL' is written boldly whereas 'ROYAL GOLD' is itself written prominently ;
(l) that the second Respondent erred in considering that the first Respondent has all India business whereas they themselves have filed documents to
the effect that they sell only in Maharashtra, Gujarat, Delhi and Srinagar
(m) that the learned registrar by virtue of the fact that the word 'ROYAL' is not disclaimed in the rival party's mark appears to come to a hurried and
illogical conclusion that the rival marks are similar;
(n) that the impugned order is not maintainable as the second Respondent has erroneously held that the marks of the first Respondent are described as
'ROYAL' whereas the invoices and advertisements of the first Respondent are to the effect that their trade mark is 'GIRNAR ROYAL';
(o) that the second Respondent erroneously held that the use and reputation of the first Respondent's trade mark has been admitted by the Appellants
leading to the undue inference as to the adoption of the Appellant's trade mark;
(p) that the impugned order has been passed without application of mind in haste and hurry which is in contravention of provisions of law;
(q) that the second Respondent has failed to record any reasons for holding that the rival marks are similar except by applying the fallacious principle
that the essential feature is 'ROYAL' while the trade marks are composite labels;
(r) that the learned Registrar failed to record the fact that the sales of the Appellant are confined to the State of Karnataka in the south where the first
Respondent does not transact business;
(s) that the second Respondent has erroneously held that the intention of the Appellant is such as to disentitle them to the proprietorship of the mark
whereas there has been no evidence which could have led the Registrar to that conclusion except on an illogical and irrational surmise;
(t) that the registrar failed to appreciate the fact that the first Respondent relies on two different trade marks and their use and reputation
independently, whereas the Registrar has held both marks are used uniformly from 1998;
(u) that the learned registrar failed to appreciate the case and failed to adjudicate upon the proceedings and got miscarried and misdirected himself;
(v) the impugned order is even otherwise unwarranted in the circumstances of the case, bad in law and as such not sustainable.
6. The first Respondent filed their counter-statement to the grounds of appeal. They stated that they had been carrying on business of manufacturing,
marketing and exporting tea under various registered and unregistered trade marks. The predecessor in title of the first Respondent had applied for
and obtained registration of the trade mark label of which the word mark 'ROYAL' forms an essential feature bearing No. 516228 in class 30 on
05.09.1989 claiming user from 18.01.1988. In the year 1993 the predecessor in title entered into a licence agreement with the first Respondent. Thus
the first Respondent became successor in title and are thus proprietors of the trade mark.
7. The purity of the Register is of utmost importance to the trade in general and the duty of the Registrar should always be to protect the public
irrespective of what hardship or inconvenience it may cause to a particular party.
8. On completion of the pleadings, we have heard Shri S. Balachandran learned Counsel for the Appellant and Shri Darius Dalal learned Counsel for
the first Respondent.
9. Learned Counsel for the Appellant submitted that the impugned trade mark was a composite label mark. The application was made on 21.01.2002
claiming user since 01.04.1997 in respect of tea in class 30. The Appellant drew our attention to page 31 of the typed set of documents (Vol.I) and
submitted that the first Respondent's mark was 'GIRNAR ROYAL' where 'ROYAL' was written in small letters whereas 'GIRNAR' was
prominently written.
10. The Appellant further submitted that a search was made and the Registrar did not mention about the conflicting mark on the Register. The
Appellant do not admit the use of the mark 'ROYAL' by the first Respondent. The counsel further pointed out that even in the licence agreement at
page 108 of the typed set of documents (vol. I) the series of trade marks registered mentioned are only GIRNAR and not ROYAL.
11. The counsel further brought to our notice the suit filed against a third party before the Hon'ble High Court of Bombay, for the mark 'GIRNAR'
only and not 'ROYAL' The counsel relied on the provisions of Section 17(1) of the Act. The counsel also submitted that even though the first
Respondent claims to be using the impugned trade mark prior to that of the Appellant, they had not initiated any legal action against the Appellant. The
counsel while concluding relied on some judgments in support of his case.
12. Learned Counsel for the first Respondent submitted that the dispute was with regard to the word 'ROYAL' only. The Appellants are not clear as
to the date of user as in one place they have given April, 1997 as user and in another October, 1997. In fact the first Respondent conceived and
adopted the trade mark as early as 18.01.1988. The mark 'GIRNAR' was a house mark. The sales invoices are for the mark 'GIRNAR ROYAL
CUP'.
13. The counsel further submitted that during the opposition proceedings, the first Respondent's business was restricted to some areas but later on
expanded to whole of India.
14. The counsel denied the Appellant's contention that opposition was suppressed. The judgments relied on by the Appellant were not relevant to the
case on hand. The counsel in reply to the Appellant's contention that no legal action was initiated submitted that the first Respondent did not come
across the Appellant's goods in the market and hence did not take action. Finally, the counsel stated that the Appellants have not stated their
constitution clearly.
15. In reply to first Respondent's arguments, the Appellant submitted that dates which is said to have been mentioned wrongly is not material to the
case on hand. As regards the constitution of the firm, it is being raised for the first time and not dealt earlier.
16. We have heard both the counsel and have gone through the pleadings and documents. On the whole, on perusal of the rival labels, it is seen that
the marks are SUPREME ROYAL GOLD TEA and GIRNAR ROYAL CUP Tea. The settled principle of law as laid down by the Supreme Court
is that the labels should be seen as a whole, should not be placed side by side for comparison and foremost test will be with regard to the class of the
purchasers. It is worthwhile to quote the observations of the Apex Court in AIR 1965 SC 980 ROYAL' where 'ROYAL' was written in small letters
whereas 'GIRNAR' was prominently written. - Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories-at page 755:
............. But this apart, as the question arises in an action for infringement, the onus would be on the Plaintiff to establish that the trade mark used by
the Defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be
ascertained by a comparison of the two marks - the degree of resemblance which is necessary to exist to cause deception not being capable of
definition by laying down objective standards. The person who would be deceived are, of course, the purchasers of the goods and it is the likelihood of
their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the Plaintiff's
mark. The purpose of comparison is for determining whether the essential features of the Plaintiff's trade mark are to be found in that used by the
Defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on
the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is
whether the mark used by the Defendant as a whole is deceptively similar to that of the registered mark of the Plaintiff.
17. As observed in the above judgment, the resemblance may be phonetic, visual or in the basic idea. Here we are of the view that the overall
resemblance is very much the same, while considering the goods of such nature like tea which is being purchase by all class of people. In such
circumstances, we are of the view that there is every possibility of confusion
18. The other aspect would be with regard to the provision of passing off. On an overall comparison, if it is said that there is every possibility of
confusion then the mark for registration is prohibited registration under the provisions of Section 11 of the Act. In the instant case, the mark (label)
when compared is deceptively similar. The unwary purchaser may be made to think that the goods of the Respondents emanate from the Appellants.
The Appellants may gain out of the reputation earned by the Respondents.
19. The next issue as to the adoption is dishonesty. The Appellant has not given any reason for the adoption of impugned trade mark. The mark
therefore does not qualify for registration under Section 12 of the Act.
20. The Appellants have not denied the use of the trade mark by the first Respondent since the year 1988 whereas the Appellant's use is only since
the year 1997 when that be the case, the right of the prior user and adopter is to be considered and registration of a similar mark where the adoption is
at later date has to be prohibited. The impugned trade mark does not qualify for registration as per the provisions of the Act.
21. In view of the above, we do not find any infirmity in the order of the Registrar and the appeal is dismissed with no order as to costs.
