S. Jagadeesan, J
1. The appellant has filed this appeal challenging the order of the Deputy Registrar of Trade Marks, New Delhi, dated 3.7.1995.
2. The second respondent herein M/s Lever Brushware (India), filed an application No. 487361 on 14.3.1988 for registration of the trade mark
'LEVER' in respect of brushes other than paint and tooth brushes included in class 21 of the Fourth Scheduled of the Trade and Merchandise Marks
Act, 1958 (hereinafter referred to as the 'Act'). The said mark was advertised in the Trade Marks Journal No. 1048, dated 1.2.1993 at page 1127.
The appellant herein M/s. Hindustan Lever Limited, filed the notice of opposition on 16.3.1993 on the ground that they are the registered proprietors of
the trade mark 'LEVER' which is also a memorable part of their corporate name. The said mark has attained goodwill and reputation in the market.
The impugned mark is identical with and/or deceptively similar to their mark and, therefore, the impugned mark is not registerable under the provisions
of Sections 9, 11(a), 12(1) and 18(1) of the said Act. The second respondent filed the counter-statement refuting the material averments of the
appellant in their notice of opposition. In the said counter-affidavit, the second respondent had stated that they are the proprietors of the trade mark
'LEVER' since 1.4.1967 and the same mark has attained goodwill and reputation in the market. Further, the goods of the second respondent are
different from those of the appellant. The extensive user of the mark since 1967 plays a key role for the second respondent to get the registration
under Section 12(3) of the Act. The appellant filed their evidence of user by way of an affidavit dated 28.9.1994 in the name of one Shri Mahendra
Kumar Sharma accompanied by the certificate of Registration and five pages of advertisement. The second respondent filed the evidence under reply
in rebuttal to that of the appellant. After the completion of the formalities, the Deputy Registrar listed the matter for hearing on 26.6.1995. The second
respondent was represented by their counsel. The appellant did not appear either in person or through counsel or through an authorized agent. The
Deputy Registrar heard the learned Counsel for the second respondent and disposed of the matter under the impugned order by disallowing the
opposition No. DEL 8067 of the appellant and accepting the application No. 487361 of the second respondent for registration in class 21 of the Act.
The Deputy Registrar of Trade Marks found that the appellant miserably failed to claim the user of their mark in the proceedings on TM 5 and also
failed to claim the reputation of their mark in their evidence filed under Rule 53(1). The documentary evidence produced by the appellant is absolutely
silent with regard to the user. The appellant failed to discharge the preliminary onus and the second respondent has succeeded by producing
corroborative documents and proving their case. In view of the said finding, the Deputy Registrar held that there is no necessity to consider the
objections under Sections 9, 11(a), 12(1) and 18(1) of the Act, since the appellants have no case. Aggrieved by the same, the appellant preferred and
appeal on the file of the Delhi High Court at Delhi in CM(M) No. 473/1995 which stood transferred to this Board by virtue of Section 100 of the
Trade Marks Act, 1999, and numbered as TA/217-2004/TM/DEL.
3. We have heard the arguments of Shri Praveen Anand for the appellant and Shri M.K. Miglani for the second respondent.
4. The learned Counsel for the appellant contended that the word 'LEVER' has no connection with the brushes, the goods of the second respondent. It
is purely an arbitrary one so far as the brushes are concerned. Hence, the second respondent has copied the trade name of the appellant in respect of
their goods which results that there is no bonafide on the part of the second respondent in adopting the said mark. The Deputy Registrar has totally
failed to consider the question of honest user on the part of the second respondent. He further contended that the finding of the Deputy Registrar that
the appellant did not claim the user either in the proceedings on TM5 or in the evidence filed under Rule 53(1) is absolutely baseless. The appellant, in
their notice of opposition clearly mentioned about the use of the mark and also the reputation of the same. Similarly, in the evidence copies of the
advertisement were filed. The Deputy Registrar had totally overlooked the same. His further contention is that the word 'LEVER' forms part of the
corporate name of the appellant. The corporate name would also form a mark as per the definition of the word mark under the said Act. The trade
name as such, is a trade mark by itself. The appellant has earned international goodwill and reputation known by the mark 'LEVER' which is a part of
the corporate name. The appellant's company is originally known as 'Lever Brothers Limited', which was subsequently changed to 'Hindustan Lever
Limited' and the word 'Lever' forms a prominent part of the corporate name. The telegraphic code of the appellant company is 'Hind Lever' and
'Lever India. The appellant company, a leading manufacturer of soaps, detergents, washing preparations and dentifrices, toilet preparations and
articles of foods, chemicals, fertilizers, agricultural products, garments, carpets, footwear, personal products, and the like, and their products are well
known for their quality and the public identify and associate the same exclusively with the appellant as they are a subsidiary of Unilever PLC, a
company incorporated under the laws of United Kingdom. The appellant recently commenced the manufacture of tooth brushes and as such, the
goods of the appellant as well as the second respondent are the same. Consequently, the impugned order is liable to be set aside.
5. On the contrary, Shri M.K. Miglani, the learned Counsel for the second respondent, contended that none of the reasoning of the Deputy Registrar
was challenged by the appellant in the grounds of appeal. Neither in the opposition nor in the affidavit filed in support of the opposition, the appellant
claimed the user. The evidence produced by the appellant also do not establish the user of the mark 'lever' or 'lever' F-4' by them. In the absence of
any evidence or claim with regard to the use of the appellant's Registered mark, the Deputy Registrar had rightly concluded that the appellant did not
establish the use of its mark. On the contrary, the second respondent produced the documents by way of sales statistics and advertisements as well as
the bills to establish its claim of use of the impugned mark in respect of brushes. In the absence of any evidence on the part of the appellant with
regard to its use as well as the reputation, the Deputy Registrar has rightly rejected the claim of the appellant. When the reasoning of the Deputy
Registrar was not challenged in the memorandum of grounds filed by the appellant, it has to be construed that the appellant is not aggrieved by the
reasoning of the Deputy Registrar under the impugned order and as such, no interference is called for.
6. We have carefully considered the above contentions of both the counsel.
7. The issues arising for consideration are:
(i) Whether the registration of the impugned mark offends Sections 9, 11(a) and 12(1) of the Act;
(ii) Whether the goods of the appellant as well as the second respondent are the same or of the same description.
8. The primary opposition of the appellant for the registration of the impugned mark was that the appellants are the registered proprietors of the two
marks 'LEVER' with registration No. 87126 registered on 9.10.1943 in respect of the goods relating to bleaching preparations and other substances for
laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices. The other
mark is 'LEVER F.4' with registration No. 272772 registered on 15.6.1971, in respect of soaps, detergents (not for use in industrial or manufacturing
processes), cleaning, polishing, scouring and abrasive preparations. The appellants had also filed application No. 486596 for registration of their trade
mark 'LEVER 2000' in class 21 in respect of tooth brushes. As such, the trade mark 'LEVER' is the appellant's mark since 1943. The appellant had
attained a goodwill and reputation in respect of the said trade mark. Hence, the registration of the impugned mark which is identical with the trade
mark of the appellant would cause confusion and deception.
9. The learned counsel for the appellant has referred to a Judgment of the Supreme Court in the case of National Sewing Thread Co. Ltd.,
Chidambaram v. James Chadwick and Bros. AIR 1953 SC 357, for the proposition that the burden of proof is with the person who seeks to register
the trade mark to establish that registration of a trade mark is not likely to cause confusion. He also relied upon a judgment in the case of M/s. J.R.
Parkington and Coy. Ltd. v. M/s. Frederick Robinson Ltd., LXIII RPC 171 and a Judgment in the case oMf /s. Hindustan Pencils Pvt. Ltd. v. India
Stationery Products Co., AIR 1990 Delhi 19 in support of his proposition that to have the benefit under Section 12(3) of the Act, the person must be a
bona fide user, i.e., the adoption of the trade mark must be honest and there should not be any commercial dishonesty. The learned counsel has also
referred to a judgment of the Bombay High Court in the case o Pizza Hut International LLC and Ors. v. Pizza Hut India Pvt. Ltd., 2003 PTC 20 a8nd
another judgment of the same High Court in the case of M/s. Kirloskar Diesel Recon. (P) Ltd. and Ors. v. M/s. Kirloskar Proprietary Ltd. and Ors.,
1997 PTC 469, for the proposition that where the Corporate name of the firm includes the trade mark 'LEVER' also, such trade marks cannot be
permitted to be registered by others. The impugned mark 'LEVER' is no doubt identically similar and hence cannot be registered. He has further
referred to the judgments in the case of M/s. Hindustan Lever Ltd. v. Vikram Chandra, 2002 PTC 547 (WIPO), in the case oCf aterpillar Inc. v.
Mehtab Ahmed and Ors., 2002 PTC 438 ,in the case of Alfred Dunhill Limited v. Kartar Singh Makkar and Ors., 1999 PTC 294, and contended that
the trade mark of the appellant is internationally known as 'LEVER' and the same is in widespread use by which the trade mark has become a well
known mark. Moreover, the appellant being the prior user, they are entitled for protection of their mark.
10. There cannot be any dispute with regard to the propositions put forth by the learned Counsel for the appellant. These propositions and the legal
issues raised by the learned Counsel for the appellant will have to be considered in relation to the facts and the evidences available in this case.
Though, the burden of proof lies on the applicant to establish that the registration of their mark would not cause any confusion, still, the initial burden is
on the opponent to establish that their trade mark is prior in use and has attained a goodwill and reputation in the trade. Only on the discharge of the
initial burden by the opponent, the burden of proof shifts on the applicant. We are fortified in our view with the following passage of the judgment of
the King's Bench Division in the case of Stevenson Jordan and Harrison Ltd. v. MacDonald and Evans, 1951 (68) RFC 190 at page 207:
Before the objection under Section 11 can be sustained it is necessary for an opponent to establish a reputation in trade in connection with a trading
style, device or mark of some character, before the Tribunal or Court will proceed to consider whether, having regard to that reputation, the possibility
of confusion upon reasonable user of the mark applied for will arise.
Hence, we have to consider whether the appellant had discharged the initial burden of proof.
11. The learned Counsel for the respondent contended that in the opposition, the appellant had not pleaded the use of the trade mark 'LEVER' and
even the evidence produced by the appellant does not disclose the use of the trade mark 'LEVER'. Hence, the said trade mark of the appellant could
not have attained the goodwill and reputation as the same was not in use. In the absence of any evidence with regard to the use of the appellant's
mark, there will be no confusion or deception.
12. The learned Counsel for the appellant drew our attention to paragraph No. 7 of the affidavit filed by one Shri Mahendra Kumar Sharma, the Vice
President of the appellant company to establish the plea of use. We have perused the opposition filed by the appellant as well as the evidence filed in
support of the opposition. In the opposition,, the appellant has stated in paragraph 3 that the word 'LEVER' is the memorable part of their corporate
name. In paragraph 4 of the opposition, it is stated that the goods that are being manufactured and marketed are mentioned and added that their
products are well known for their quality and the public identify and associate the word 'LEVER' with the appellant alone. In paragraph 6 of the
opposition, the appellant has stated that having regard to the undoubted reputation of their trade mark 'LEVER' and its use by the second respondent in
relation to the goods specified in their application, besides, being prejudicial to their interest would inevitably lead to confusion.
13. Coming to the evidence in support of the opposition, the affidavit of Shri Mahendra Kumar Sharma, in paragraph 7, it is stated that the appellant
company is one of the leading manufacturers of soaps, detergents, washing preparations and dentifrices, toilet preparations and articles of food,
chemicals, fertilizers, agricultural products, garments, carpets, footwear, personal products and the like and is a recognized export house and their
products are well known for their quality and the public identify and associate the same exclusively with the appellant as they are a subsidiary of
Unilever PLC, a company incorporated under the Laws of U.K. It is further stated that the appellant is a leading manufacturer of consumer goods for
over four decades and the public and consumers identify and associate the word/mark 'LEVER' with the appellant company alone. The appellant
being formerly known as 'Lever Brothers Limited"", subsequently changed to 'Hindustan Lever Limited' and the word 'LEVER' forms a prominent part
of the Corporate name and the Telegraphic Code of the appellant company is 'Hind lever' and 'Lever India'. In paragraph 14 of the same affidavit, it is
stated that the appellant company has recently sold tooth brushes under the brand name 'Closeup Confident' and the tooth paste under the mark
'Signal'. In paragraph 15, it is stated that it is immaterial whether the goods sold by the second respondent is identical or deceptively similar to their
goods and what is important is the name 'Hindustan Lever', 'Unilever' or 'Lever Brothers', of which the word 'Lever' forms as dominant and
conspicuous mark, the adoption of which either as a trade name or as a trade mark is likely to mislead the public into bleak that there is some
connection or association with the second respondent and the appellant company.
14. In fact, we have perused the entire opposition filed by the appellant as well as the affidavit filed in support of the opposition. The appellant did not
mention about the use of the trade mark. They have simply stated that the word 'LEVER' is associated with their goods and the appellant is associated
with the mark and as such, the goods are being identified only with the appellant. When the appellant wants to oppose the registration of the second
respondent's mark by virtue of their prior user as well as the registered proprietor of the trade mark, it is for the appellant to establish that the
registered trade mark is in regular use and by virtue of such regular use, the same had attained a goodwill and reputation and as such the registration
of the impugned mark would cause confusion.
15. There is no dispute with regard to the registration of the trade mark 'LEVER' and 'LEVER' F.4 by the appellant. Hence, we are only concerned
with its use and the goodwill and reputation attained by the appellant by the use of the said marks. The requirement of establishing the use of the trade
mark by the appellant is essential because only if the trade mark of the appellant is in use, they might have attained reputation in the trade. The use of
the mark is a sine quo non for attainment of reputation and goodwill. As already stated, the entire plea of the appellant rests with the statement that
the appellant company was originally known as 'LEVER Brothers Limited, thereafter it changed to 'Hindustan Lever Limited' and the 'trade mark' is
associated with the trade name. The word 'LEVER' being part of the corporate name, the learned Counsel for the appellant contended that a part of
corporate name, when it is being the trade mark, the same is deemed to have been in regular use. Apart from this, it is also contended that when the
trade mark being a part of the corporate name, the goods produced or manufactured by such companies will be identified with the corporate name and
as such, the trade mark which forms a part of the corporate name is put to use are being in use. Only to support this, he has referred to the judgment
of the Bombay High Court in Pizza Hut and Kirloskar cases referred to above. So far as these judgments are concerned, we are of the view that they
are in no way of any assistance to the appellant. In both the cases, the question involved is regarding the corporate name. The respondent in those
cases copied the appellant's corporate names. Here, we are not concerned with the corporate names of the parties.
16. We have carefully considered the above contention. In the absence of any evidence of the user of the trade mark, it is for us to consider how far
the trade mark which forms a part of the corporate name can be considered to be in use by merely being a part of the corporate name. The appellant
has registered the trade mark 'LEVER' and 'LEVER F.4'. The trade mark may form a part of the corporate name. Here, the corporate name is not in
dispute. The dispute is only with regard to the use of the trade mark. In that case, it is for the appellant to establish independently the use of the trade
mark in respect of the goods for which the same has been registered. Then only, the appellant's claim with regard to the prior user as well as
attainment of goodwill and reputation can be considered. As already pointed out, the appellant never pleaded that the trade mark 'LEVER' as such
was used in respect of any of the goods for which it was registered. It is not their case that their goods are being sold with the said trade mark. Even
though there is no plea, we thought that we can peruse the evidence produced by the appellant is respect of the use of the mark and if there is any
evidence, the benefit can be extended. The appellant has produced only five advertisements at pages 54 to 58 which forms part of the typed set. At
page 54, the advertisement is in respect of tooth Brushes with the mark 'Closeup Confident'. In page 55, it relates to the tooth paste with the name
'Signal'. At pages 56 and 57 also with regard to the advertisement of tooth paste 'Signal' and 'Signal' tooth brush. Page 58 also relates to the
advertisement of the 'Signal' tooth paste. In all the advertisements, it is mentioned as 'product of Hindustan Lever Limited. When the purchaser goes
and asks for the tooth paste or the tooth brush, definitely, he would mention the name 'Closeup' or Signal'. The customer would not mention the
corporate name of the appellant for the goods. The mentioning of the corporate name is also of no use especially when the firm engages in production
of multi various goods.
17. Even though the appellant has stated that they are dealing with soaps, detergents, cleaning, preparations, chemicals, foods, fertilizers, agricultural
products, garments, carpets, footwear, etc., no advertisement is forthcoming in respect of those goods. The appellant has totally failed to produce
evidence as to under what name their different goods are being marketed . Hence, we are of the view that the Deputy Registrar has rightly found that
the appellant has not established the use of the trade mark 'LEVER' or 'LEVER F.4' and they mainly relied upon their corporate name which contains
their registered name of the trade mark also. We concur with the finding of the Deputy Registrar that the appellant has totally failed to establish the
use of their registered mark.
18. Coming to the evidence of the second respondent with regard to the use of the mark, the second respondent has produced some of the
advertisements without any date. Apart from the advertisements, the second respondent has produced the sales figures for the period from 1967 to
1994 in the affidavit of one Shri Narendra Kumar. The second respondent has also produced the Invoices which are at pages 82 to 99 in the typed set
filed in the appeal, which establish the sale of brushes by the second respondent. The Invoices at pages 83 and 84 contain the name 'LEVER'. One of
the advertisements at page 81 also contain the words 'LEVER BRLISHES'. There are other pieces of documents produced by the second respondent
for purchase of materials and the printing of cartons, etc., which mention the name 'LEVER BRUSHES'. The evidence produced by the second
respondent establishes the fact that the second respondent is using the trade mark 'LEVER' for the brushes since 1966 for which the registration is
being sought for. They are also the Central Sales Tax assessees since the year 1967, which is clear from the documents available at pages 104 to 107
of the typed set.
19. Since we have found that the appellant has failed to establish the use of their registered trade mark 'LEVER' independent of their corporate name,
the appellant has failed to establish the goodwill and reputation. In the absence of those two elements, naturally, the element of confusion and
deception will not arise for consideration. Hence, the registration of the impugned mark will not affect either Section 9 or 11 of the said Act.
20. Now, regarding the second issue, whether the goods of the appellant and the second respondent are the same or of the same description, it is an
admitted fact that the appellant has registered the mark 'LEVER' in respect of the goods relating to bleaching preparation and other substances for
laundry use, for cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices. The
other mark 'LEVER F.4' was registered in respect of soaps, detergents (not for use in industrial or manufacturing processes), cleaning, polishing,
scouring and abrasive preparations. The second respondent sought for registration of the mark 'LEVER' by application No. 487361, dated 14.3.1988
for the manufacture of brushes (other than paint and tooth brushes) included in class 21 of the said Act. Of course, the appellant has also filed
application No. 486496 B for registration of the trade mark 'LEVER 2000' on 29.2.1988 for manufacture of tooth brushes. The appellant has
mentioned in the application that the mark is proposed to be used. If the mark 'LEVER' was already in use by the appellant in respect of the goods for
which it was registered, then, the appellant would not have mentioned in the latest application that the mark is one proposed to be used. The second
respondent in its application has claimed the user since April, 1967. The goods for which the appellant had obtained registration are not the same
goods or the goods of the same description as that of the second respondent. The appellant is manufacturing the tooth brushes which falls under class
21 and the second respondent's goods also fall under class 21 that as such, the appellant's claim that the second respondent's goods are of the same
description. The learned Counsel for the second respondent has referred to judgment of the Supreme Court in the case of Vishnudas trading as
Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd., 1996 PTC 512, familiarly known as the 'CHARMINAR' case, and contended that one cannot
claim monopoly of a mark in respect of the goods of general nature falling under any of the classes of Schedule Four of the Rules framed under the
Trade and Merchandise Marks Act, 1958. Always the registration can be restricted to a particular category of the general class and as such, the
appellant's goods tooth brush cannot be said to be the same or of the same description of the second respondent's goods, especially, when the second
respondent had restricted the registration in respect of brushes other than paint and tooth brushes. Hence, the tooth brushes form a specific category
or a specie from out of the general genus Brushes' for which the appellant can have the registration and the appellant cannot object for the second
respondent to have the impugned mark in respect of their goods which are all kinds of brushes except the tooth brush. We are in total agreement with
the submission made by the learned Counsel for the second respondent. The tooth brush being a separate category, the second respondent has
excluded the same in respect of the impugned mark, the appellant's goods cannot be said to be the same or of the same description. On this ground
also the appeal fails.
21. For the reasons stated above, the appeal fails and accordingly the same is dismissed. No order as to costs.
