S. Jagadeesan, J
1. This appeal arises out of the impugned order of the Deputy Registrar of Trade Marks dated 6.12.94 disallowed opposition No. Del-7978 of the
appellant and directing the registration of the trade mark, of the Respondent No. 3 in application No. 487475 in class 23 of the Trade and Merchandise
Marks Act, 1958 (hereinafter referred to as the Act.
2. The third respondent M/s. Aggarwal Wool Store filed application No. 487475 on 16.3.88 requesting for registration of the trade mark 'NIRMA' in
respect of knitting yarn included in class 23. The said application was advertised in the Trade Marks Journal No. 1040 dated 1.10.1992 at page 732.
The appellant herein M/s. Nirma Chemical Works filed the notice of opposition on 28.12.92 opposing the registration of the trade mark of the 3rd
respondent on the ground that the mark applied for does not qualify the requisite conditions contemplated under Section 9 of the Act and that the word
'NIRMA' is originally invented and adopted by the appellant 20 years back and the same is their house mark in respect of their goods and the
registration of the impugned trade mark will be contrary to the provisions of Sections 9, 11(a), 11(b), 12(1), 18(1) and 12(3) of the Act and as such the
application is liable to be rejected under Section 18(4) of the Act.
3. Third respondent filed their counter statement on 7.9.93 refuting the averments made by the appellant stating that the third respondent's goods
'knitting yarn' is quite distinct and of different character and nature from the appellant's goods. Hence, there is no likelihood of deception or confusion
between the two marks on the basis of different description of goods. Further the third respondent is entitled for the benefit of Section 12(3) of the
Act. The appellants filed evidence of user on 22.4.94 by way of affidavit dated 15.4.94 in the name of one Mr. Ambubhai Patel enclosing few un-
attested photocopies of bills and advertisement cuttings. On 31.5.94 third respondent filed evidence by way of affidavit dated 11.5.94 in the name of
Shri Vinod Kumar. The appellant also filed evidence of rebuttal and after the completion of the formalities the matter was heard by the Deputy
Registrar of Trade Marks. In the impugned order the Deputy Registrar held that the word 'NIRMA' is a dictionary word and hence the appellant
cannot claim monopoly of such word. He also found that the appellant's goods fall under class 3 whereas third respondent's goods fall in class 23 and
as such the goods of both the parties are different and hence neither Section 9 nor Section 12(1) is attracted. He also found that the goods of the
appellant as well as the respondents are distinctive in nature and as such Section 11 is also not attracted. Equally he held that the impugned trade mark
'NIRMA' being a dictionary word, any number of public is at liberty to adopt and use that mark within the relevant provision of the trade mark law and
consequently Section 18(1) of the said Act has no role to play. Further, he held that the third respondent is entitled for the registration of the impugned
mark under Section 12(3) since they have adopted the said trade mark bona fidely taking advantage of the name being a dictionary word.
Consequently the Deputy Registrar under the impugned order rejected the opposition of the appellant and allowed the registration of the impugned
trade mark of the third respondent. Aggrieved by the said order the appellant filed CM(M) No. 606/94 on the file of High Court of Delhi. After the
Constitution of this Board the same was transferred pursuant to Section 100 of the Trade Marks Act, 1999.
4. Learned counsel for the appellant contended that appellants have registered their trade mark 'NIRMA' in respect of their business activities for
manufacturing and/or marketing chemicals, washing and cleaning preparations, detergents, soaps and cosmetics and liquid blue, safety matches. For
more than two decades they are carrying on the trade under the trade name 'NIRMA' and by virtue of the same they have built up a goodwill and
reputation in the market for their goods. When that is so the respondent cannot be permitted to use the same mark for their goods though their goods
are different in nature. He also drew our attention to the various judgments of different High Courts as well as the Apex Court, where the Courts
have taken a view that if the owner of the registered trade mark already on record had built up a good reputation and also a goodwill in respect of
their business, the same trade mark cannot be allowed to be used by any other, even in respect of different goods.
5. Learned counsel for the third respondent however contended that the impugned trade mark being a dictionary word the same can be used by any
one and goods of both the parties are different, there is no possibility of any confusion. We have carefully considered the contentions of both the
counsel. Our work has become much easier in view of the number of judgments relied upon by the learned counsel for the appellant:-
In AIR 1960 SC 142, Corn Products Refining Co. v. Shangrila Food Products Lt,d .the learned Judges of the Supreme Court held that the mark
applied for registration 'Gluvila' for biscuits cannot be permitted to be registered on the objection raised by the registered trade mark proprietor of
'Glucovita' for glucose. It was held that the commodities are so connected as to make a contusion or deception likely in view of the similarity of the
two trade marks.
In AIR 1969 Bombay 24, Sunder Paramanand Lalwani and Ors. v. Caltex (India) Ltd, .the Bombay High Court held that the name 'Caltex' cannot be
permitted to be registered in connection with the applicant's watches on the ground that a large number of persons if they saw or heard about the
mark 'Caltex' in connection with the applicant's watches, would be left to think that watches were in some way connected with the opponents who
were dealing in petrol and various oil products with the mark 'Caltex'.
In a case reported in AIR 1983 Punjab and Haryana 418, Banga Watch Company, Chandigarh v. N.V. Philips Eindhoven, Holland and An.r the
learned Judge of the Punjab & Haryana High Court held that the trade mark 'PHILIPS' was used extensively with respect to radios. Use of the
identical mark 'Philips' with respect to timepieces, wall clocks which are available across the same counter will lead to passing-off. It is immaterial that
the goods belong to different classes as they are available across the same counter.
In AIR 1985 Allahabad 242, Bata India Limited v. Pyare Lal & Co., Meerut City and Or. sthe Allahabad High Court held that as the trade mark
'Bata' was used extensively with respect to footwear, the use of the mark 'Batafoam' with respect to mattresses would amount to passing off. .
In AIR 1988 Bombay 1967, Bajaj Electricals Limited v. Metals & Allied Products the Bombay High Court held that the trade mark 'Bajaj' was used
extensively with respect to electrical goods. Despite the fact that 'Bajaj' is a personal name, the use of identical mark with respect to utensils will lead
to passing-off, as these goods are sold across the same counter.
In 1988 PTC 1, Kamal Trading Co. v. Gillette U.K. Ltd., England the Bombay High Court held that use of the trade mark 7 'O' clock with respect to
tooth brushes will lead to passing of, as the use of 7 'O' clock with respect to blades is already well known in the mark.
In AIR 1994 Delhi 239, Daimler Benz Aktiegesellschaft v. Hybo Hindustan the High Court of Delhi held that the trade mark 'BENZ' was extensively
used with respect to automobiles. The use of an identical mark 'Benz' with respect to undergarments will lead to confusion in the market, although the
manufacturers of Mercedes Benz cars were neither manufacturing nor selling garments or underwear apparels. The said judgment of the learned
single Judge was confirmed by the Division Bench of the same High Court and also confirmed by the Supreme Court.
In 1998 IPLR 326, Caterpiller Inc., US v. Jorange and Anr .the Division Bench of the Madras High Court held that the use of 'Caterpillar' name for
ready made garments in India would amount to passing-off since the name 'Caterpillar' is registered in respect of heavy vehicles which name had
earned the reputation and goodwill world-wide.
The Delhi High Court in the case of Honda Motors Company Limited v. Charanjit Singh and Ors., 2003 (26) PTC 1 (De lh)ad held that the plaintiff's
mark Honda has acquired a global goodwill and reputation and the said name is associated with the plaintiff established in the field of automobiles and
power equipments and as such the same trade mark has acquired goodwill and reputation, the use of the said trade mark by the defendant was for
their product pressure cooker, does mislead the public to believe that the defendant's business and goods are that of the plaintiff and such user by the
defendants is also diluted and deface the goodwill and reputation of the plaintiff.
6. The above principles laid down by various courts makes it clear that 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 No. DEL 7978 of
the appellant is allowed and the application No. 487475 of the third respondent is rejected. No cost.
