S. Usha, Technical Member
1. This is an appeal arising out of the order dated 13/08/2002 dismissing the rectification No. 1063 and allowing the application No. 456147 to remain
on the register by the Assistant Registrar of Trade Marks. This appeal filed before the High court of Bombay in Miscellaneous Petition No. 1 of 2003
and then transferred to this Board as per the provision of Section 100 of the Trade Marks act, 1999 has been renumbered as TA/RECT/58/2003.
2. The appellants herein filed an application for removal of the Trade Mark registered under application No. 456147 in class 30 under the Trade and
Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The appellants are carrying on the business of manufacturing of breads, biscuits,
non-medicated confectionery in class 30 for several years. The appellants had adopted a trade mark consisting of a device of a Bunny since the year
1970. The appellants had also obtained registration of the device of Bunny under application No. 291606 and also No. 322428, both in class 30. The
appellants have also obtained registration of the artistic work of the device of Bunny under the Copyright Act. By virtue of their adoption and
extensive use, the appellants are the proprietors of the impugned trade mark. In the year 1995, the appellants came to know of the respondent's
registration under No. 456147 in class 30. The appellants had filed an application for removal of the mark on the grounds that the registration was in
contravention of the provision of Section 46 of the Act; that the trade mark is not distinctive in respect of the goods of the applicant under Section 9 of
the Act; that it offends the provision of Section 11 of the Act; that the adoption was not honest and bonafide; that the respondent had committed fraud
in obtaining the registration and that the respondents are not using the trade mark and offends the provisions of Section 46(1)(a) & 46(1)(b) of the
Act. Therefore, the registration of the mark is remaining on the register without sufficient cause in contravention of Section 9, 11(a), 12(1) and 18 of
the Act.
3. The first respondent herein filed their counter statement denying the various allegations made in the notice of opposition. The first respondent had
stated that they had honestly conceived and adopted the mark ""Madhus"" with a device of human caricature in the year 1980. The mark of the
respondent No. 1 had acquired distinctiveness under Section 9 of the Act by long use and are thus lawful proprietor of the trade mark under Section
18 of the Act.
4. After completion of the formal procedures, the matter was heard and decided by the Assistant Registrar. The Assistant Registrar had dismissed the
application for rectification on the following observations:
(a) The respondents have been using the mark since 1980 continuously and there is no single instance of confusion or deception and the trade mark is
well distinctive on the date of registration and on the date of commencement of the rectification proceedings. The appellants have failed to prove the
same.
(b) The respondents have obtained registration without committing any fraud. The appellants have failed to prove that the respondents have played
fraud.
(c) The impugned trade mark has not been registered in contravention of Section 11 of the Act.
(d) The respondents' application for registration of the trade mark was filed on 30.06.1986, whereas the application for rectification has been filed on
29.06.1995 after a period of 9 years where the appellants have failed to file the opposition when the trade mark was advertised in the Trade Marks
Journal. There has been no confusion as the trade mark has been used by the respondent continuously since the year 1980.
On the above observation, the Assistant Registrar dismissed the application for rectification.
5. Aggrieved by the said order, the appellant filed the instant appeal before the Hon'ble High Court of Bombay and the same has been transferred to
this Board.
6. The appellants filed the appeal on various grounds. The first respondent had filed their counter denying the various grounds.
7. The matter came up for hearing in the Circuit Bench at Mumbai on 02.04.2008. We have heard Shri Salil Shah, Ld. Counsel for the appellant and
Shri Vivek Walarakar, Ld. Counsel for the first respondent.
8. The Learned Counsel for the appellant submitted that they had been using the trade mark consisting of the label mark with the device of a Bunny
since 1970. The device of Bunny was their house mark. The said label was registered as early as 22.10.1973 in class 30. The trade mark with the
artistic work has been registered under the Copyright Act and brought to our notice, the list of copyright registration filed at page 73 of the typed set of
document. The appellant further submitted that the marks are deceptively similar if not identical. He also submitted that the device mark of Bunny was
registered in various classes. The appellant also submitted that their trade mark is a well known mark and the appellant is prior user of the mark that
that of the first respondent.
9. The appellant also submitted that the first respondent has mentioned the trade mark as ""Madhus"" with the device of human caricature in one place
and ""Madhus"" with the device of caricature which was totally a different description. The appellant further stated that the device of bunny is being
used by the firm from the year 1970 continuously and extensively. The appellant submitted that by this continuous use, sales and high quality standard
maintained by them, the public associate the goods bearing the trade mark along with the device of Bunny with the appellant only and with none else.
The sales turnover runs to several lakhs of rupees and the list was annexed as Document ""A"" along with the evidence in support of rectification. The
appellant further submitted that the impugned trade mark is confusingly similar to that of the bunny device of the appellant company. The appellant
also pointed out that in the affidavit of evidence filed by the first respondent before the Assistant Registrar of Trade Marks, he had mentioned only as
device of caricature and not human caricature.
10. The appellant became aware of the registration of the impugned mark only during the opposition proceedings in BOM-9540 and had immediately
taken steps for rectification. The appellant submitted that the first respondent's allegation that though the appellant has registered under various classes
has not used was baseless and meaningless.
11. The appellant drew our attention to the order of the Assistant Registrar of Trade Marks dated 25.08.1999 in BOM 9540 against the application
No. 492237 in class 30 and submitted that the trade mark was described as device of caricature of an animal. The appellant drew our attention to the
impugned order and submitted that the Assistant Registrar has passed an order stating that the registration is not in contravention of Section 11 of the
Act, and no finding to that effect except for a statement that the mark has been in use for a long time and there has been no confusion or deception
proved. The Registrar has also not given any reason for not allowing the rectification on the grounds of Section 12 of the Act. The findings of the
registrar, ""The application was filed on 30.06.1986 and the rectification was filed on 26.06.1995 after completion of 9 years"" was pointed out by the
appellant and submitted that the finding was meaningless.
12. The appellant submitted few judgments in support of his contention
(a) 2004 (29) PTC 508 (IAB), Societe Des Products v. V.M. Confectionery Limited and Ors. - though the marks are slightly dissimilar, illiterate class
of people may not be able to make the distinction as the goods are confectionery and hence there will be a likelihood of confusion and deception- here
in this case the goods are confectionery and also the device is so similar where the class of purchasers are same - both the literates and illiterates and
mostly children.
(b) Parle Products (P) Ltd. v. J.P. & Co., Mysore - In order to decide as to the similarity of the marks, the overall similarity must be looked into as
was well settled principle of the Supreme Court and which is being followed by all the courts. The same principle is to be applied here in this case.
(c) National Chemicals and Co. and Ors. v. Reckitt and Colman of India Limited - The similarity of the marks have to be decided by the overall
similarity and should not be placed side by side and compared.
(d) 2007 (35) PTC 905 (IPAB), Ciba Ltd. v. M. Ramalingam and S. Subramaniam trading in the name of South Indian Manufacturing Co. and Anr.
was relied on to support his contention as to delay in filling the application for rectification was not applicable.
13. The appellant further submitted that the first respondent's adoption of the trade mark was not honest and fraud played by the first respondent. The
appellant prayed that the appeal be allowed and the mark be removed from the register of trade marks.
14. The learned Counsel for the first respondent submitted that the impugned trade mark was applied for registration on 30.06.1986 and the same was
advertised in the Trade Mark Journal on 16.07.1991 and the mark was registered on 31.03.1992 the application for rectification was made on
20.06.1995 after a delay of 3 years from the date of registration. The first respondent further submitted that the registration of the trade mark was not
opposed by the appellant when the trade mark was advertised in the Trade Mark Journal as per the provisions of Section 21 of the Act.
15. The Counsel for the first respondent further submitted that as per the provision of Section 32 of the Act, the registration of the impugned trade
mark had been prima facie valid and that it cannot be removed from the register. The first respondent also submitted that the onus to prove that the
mark if allowed to continue on register would cause confusion was not proved by the appellant. He also submitted that the mark was in use since the
year 1980 and there was no reports of confusion. The appellant has been carrying on the business under the said trade mark since the year 1980
continuously and without any interruption and on this ground also the mark has got to remain on the register.
16. We have heard both the counsel. We have perused the documents filed by both the parties.
17. The trade mark qualifies for registration if it is adopted to distinguish or is capable of being distinguished by use or if it is a well known mark. We
find, on perusal of the impugned trade mark application, that the application has been made on 30.06.1986 claiming use since 15.04.1980. The first
respondent had filed sales bills to prove the same. The first bill is dated 01.10.1989. In order to prove distinctiveness the mark should have been in use
prior to the date of application i.e. 30.08.1986, but here we find though in the application they have claimed user since 1980, not a single document
produced to show their user at least since 1986, the date of application. The mark is registered as of the date of application, and the date relevant for
proving whether the mark is capable of distinguishing is the date of application for registration. The mark is said to have inherent distinctive characters
by use or acquired distinctive character by special circumstances. Here we also observe that the applicant's mark was already registered as early as
1973 even before the first respondent had applied for registration in the year 1986. We, therefore, are of the view that the objection under Section 9 of
the Act does lie.
18. The other issue is under Section 11 of the Act which prohibits registration of a trade mark. A trade mark shall not be registered if the use of which
would cause confusion or if it would be contrary to law in force or if it contains any scandalous matter or if it contains any matter which will hurt the
religious susceptibilities of any class or if it disentitled to protection in a court. Hence the mark is a label mark where the rival marks are with a device
of Bunny (applicant's) and with a device of caricature of an animal (first respondent's). Both the devices are similar at a glance. The principle is that
both the marks should not be placed side by side for comparison. According to Kerlys law of Trade Marks and Trade Names (9th Edition Paragraph
838):
Two marks when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A
person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be
impressed with the second mark into a belief that he was dealing with goods which have the same mark as that with which he was acquainted. It
would be too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to
remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general
impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variation in detail might well be supposed by
customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own.
19. The well laid principle is that we have to approach it from the point of a man of average intelligence. Here in the instant case when looked to at
the trade mark along with the device for a man of average intelligence the overall structural similarity in the two marks is likely to cause confusion
among the public. Moreover, it is well known fact that whether the marks are likely to give rise to confusion or not is the fact of first impression and it
is for the court to decide. The rival marks are so close and that apart the goods being confectioneries are purchased by the illiterate and literate people
and often by children. When that is so, the courts are expected to be little more cautious in deciding the aspect of similarity. In deciding the question of
similarity between the marks we have to keep in mind a man of average intelligence of imperfect recollection. When the marks, as a whole, are so
closely similar one cannot have any doubt that the impugned mark which has been subsequently adopted and used by the first respondent if allowed to
continue on register would cause confusion or deception and hence the objection under Section 11 is allowed.
20. Both the goods are almost of the same nature. The trade channel is also the same. Hence the prohibition under Section 12(1) of the Act is also
attracted.
21. We have perused the rival marks along with the device. On perusal we find that the marks are too similar to one another. Here we observe that
the first respondent has applied for registration along with device in one form and had been using it in different form - the device is of an animal
caricature where in one label the ears are long like that of a rabbit and in another the left hand is raised to top. We, therefore, are of the opinion that
the first respondent's adoption is not honest and we are also of the view that the registration has not been obtained with bonafide intentions to use but
malafidely and by fraud.
22. We disagree with the finding of the Assistant Registrar:- ""The application was filed on 30.06.1986 and rectification was filed on 29.06.1995 after
completion of 9 years of registration.
23. The other issue for consideration is that there has been a delay in filling the application for rectification which was barred by limitation. The
Division Bench of the High Court of Delhi in Fedders Lloyd Corporation Ltd. and Anr. v. Fedders Corporation in 2005 (3) PTC 353 (DB) has held
that Article 137 of the Limitation Act 1953 will not govern the application for rectification. As far as this Tribunal is concerned, it is not bound by the
procedure laid down in the Civil Procedure Code, though governed by principles of natural justice. This Tribunal has held in Prestige Housewares
India Ltd. and Ors. v. Gupta Light House and Anr. reported in 2007 (35) PTC 876 (IPAB) that the provisions of the Limitation Act 1963 will not
govern the application filed before the Appellate Board under the provisions of Section 46 and 56 of the Act. In the same manner the application of
the provision of the Limitation Act is not attracted. The plea of limitation is, therefore, rejected.
In view of the above, we allow the appeal setting aside the order of the Registrar dated 13.08.2002. The Registrar is directed to remove the mark
registered under No. 456147. However, there shall be no order as to costs.
