S. Usha, Technical Member
1 . This appeal has arisen out of the order dated 16.07.2001 dismissing the opposition No DEL-T-770/52397 and allowing the application No. 565868
for registration to proceed under the provisions of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act).
2 . The brief facts of the case are that the first respondent filed an application for registration of the trade mark 'KIRLOSKAR' word per se in class 9
in respect of electric wires and cables on 20.01.1992 under No. 565868, claiming user since 01.04.1975. The said application was advertised before
acceptance in the Trade Marks Journal No. 1170 dated 01.03.1998 at page 2304.
3 . On 21.04.1998, the appellant herein had opposed the above application for registration on the following grounds:
(a) The appellants are the proprietors of the trade mark 'KIRLOSKAR'.
(b) The appellants are the registered proprietors of the trade mark in various classes.
(c) The goods bearing appellant's registration under No. 259611 and . 259612 are in use in India since 1949. The trade mark has acquired reputation in
India and abroad by its wide publicity.
(d) The rival marks are identical. The goods are cognate and allied and thus the registration would be contrary to the provisions of Section 12(1) of the
Act.
(e) By extensive use of the appellant's trade mark the public associate the said trade mark with that of the appellant and any use by the respondent
would definitely lead to confusion and deception. Thus the registration would be contrary to the provisions of Section 11(a) of the Act.
(f) The first respondent's trade mark is contrary to the provisions of Section
11 (e) of the Act as they are passing off their goods as that of the appellants.
(g) The registration would be contrary to the provisions of section 9 of the Act as they are neither distinctive nor capable of being distinguished.
(h) The first respondent is not the proprietor of the trade mark as the trade mark forms part of the appellant's firm name.
4 . On 15.06.1999 the first respondent filed their counter statement on Form TM 6 denying the various material allegations made in the notice of
opposition. The first respondent had stated that they had honestly and bonafidely adopted the trade mark in the year 1975 and have been using the
same without any interruption. By such continuous use the first respondent's goods bearing the impugned trade mark has acquired reputation among
the public. The first respondent further stated that the goods are different -appellant has never used the said mark in respect of electric wires and
cables. The first respondent, therefore, prayed that the opposition be dismissed and the application proceed to registration.
5. The learned Assistant Registrar of Trade Marks heard the matter on completion of the formal procedures and passed the impugned order:
(a) The objection under section 9 of the Act was rejected on the ground that the appellant had not substantiated as to how and why the impugned
trade mark was not distinctive or was capable of being distinguished. The impugned mark had been in use for more than seventeen years since 1975
and had, therefore, acquired distinctiveness.
(b) The objection under Section 12(1) of the Act was rejected on the finding that out of the two conditions - first condition was satisfied and the
second condition was not satisfied. The first condition was that the marks were identical or deceptively similar. The second condition was that the
goods were totally different.
(c ) The objection under Section 11(a) & (e) was rejected on the ground that no action was taken by the appellant and that the first respondent had
proved use since 1975 as to honest, bonafide and concurrent use. As the goods are different the test of confusion, looking from the view of average
person also does not arise. The appellants have not proved their user except for mere statements.
(d) The application has been allowed to proceed to registration on the ground that the first respondent was the genuine proprietor of the trade mark as
there was no likelihood of confusion or deception and also for the reason that no steps were taken by the appellant against the first respondent.
6 . Aggrieved by the said order, the appellant/opponent had filed the instant appeal before the Hon'ble High Court of Delhi and the appeal was
numbered as CM(M) No. 19/02. The appeal filed before the High Court of Delhi was transferred to this Appellate Board pursuant to Section 100 of
the Trade Marks Act, 1999 and renumbered by the Appellate Board as TA/185/2003/TM/DEL
7 . The appellant herein had filed the above appeal praying that the records of the lower court be called for and that the opposition No. DEL-T-
770/52397 be allowed and the application for registration under No. 565868 in class 9 be rejected.
8. The memorandum of grounds of appeal are:
(1) The Registrar erred in holding that the mark was accepted by the Registry on the strength of the evidence of distinctiveness and that the mark was
registrable in view of the provisions of the Act.
(2) The Registrar erred in holding that the first respondent was the proprietor and failed to appreciate that the first respondent had copied the
appellant's trade mark.
(3) The Registrar erred in holding that the goods were different whereas the rival goods were cognate and allied.
(4) The marks being identical and goods are of the same description, registration was a bar under Section 12(1) of the Act was not considered by the
Registrar.
(5) The Registrar went wrong in holding that no action was taken against the first respondent by the appellant.
(6) The Registrar failed to consider the nature and kind of customers..
(7) The Registrar erred in holding that the first respondents was entitled to the benefit of honest concurrent use when the adoption itself was
dishonest.
(8) The Registrar ought to have considered the cases cited by the appellant.
(9) The impugned order passed by the Registrar is contrary to law, equity and good conscience.
9 . The first respondent herein filed their counter statement before the High Court denying the various allegations made in the memo of grounds of
appeal. The first respondent stated that they had been using the trade mark 'KIRLOSKAR' for the past 27 years. There are number of other
manufacturers who were using the said trade mark and the appellant cannot claim exclusive proprietary right. The appellants have not come to court
with clean hands and have concealed and suppressed the material facts. The present appeal is not maintainable and is an abuse of process of law.
The impugned order passed was strictly in accordance with law. The first respondent further stated that the grounds of appeal were absolutely wrong
and denied the same.
10 . We have heard the matter in the Circuit Bench at New Delhi on 15.12.2008. Learned Counsel Ms. Sheetal Vohra appeared for the appellant and
learned Counsel Shri Ashok Mittal appeared for the first respondent.
1 1 . Learned Counsel for the appellant contended that the impugned order was contrary to law and facts of the case. The counsel brought to our
notice the Trade Marks Journal No. 1170 dated 01.03.1999 and submitted that the first respondent had started using the trade mark only since 1975
whereas the appellant adopted and started using the same since 1949. Learned Counsel for the first respondent had no explanation for the adoption of
the trade mark. The goods of the appellant and the first respondent were allied and cognate.
12 . Learned Counsel for the appellant further submitted that the impugned trade mark 'KIRLOSKAR' was registered in their name in various
classes. The trade mark was widely known in India. Learned Counsel submitted and brought to our notice that the same had been pleaded in the
notice of opposition. The appellant further submitted that in the preliminary part of the impugned order, the Registrar had stated that the opponents
filed their evidence under Rule 53 by way of an affidavit dated 25th November, 1999 duly deposed by M.S. Datey, Chief Executive of opponents
company together with some annexures as mentioned therein, but in the later part of the order had stated that no documents were filed by the
opponent and as such the statement made by the Registrar in his order is a self contradictory statement. Learned Counsel for the appellant also
pointed out that the Registrar had recorded the arguments and had erroneously stated that the appellants had been using the trade mark continuously
and extensively in India and abroad.
13. Learned Counsel for the appellant further submitted that the burden to prove the likelihood of no confusion was on the applicant (first respondent)
but the Registrar had wrongly held that the burden was on the opponent (appellant). Learned Counsel for the appellant further submitted that the
Registrar has given two different periods of the use by the first respondent. The use of the trade mark has to be considered up to the date of
application and any subsequent use will not make the mark distinctive. Learned Counsel for the appellant further submitted that the appellants had
their registration of the trade mark 'KIRLOSKAR' under various classes as early as 1952 itself and the last registration was of the year 1970 whereas
the first respondent's adoption and use was only from the year 1975. The counsel pointed out that the appellants had also mentioned the various goods
which were dealt by them in their notice of opposition and they had stated that the rival goods were allied and cognate. The goods were also of the
same description.
14. The adoption of the impugned trade mark by the first respondent is dishonest as the first respondent was neither the proprietor of the trade mark
nor the trade mark forms part of their trading style. The counsel further brought to our notice the pleadings in the counter statement on Form TM 6
and submitted that the first respondent had pleaded that they had been using the said trade mark in respect of electrical wires and cables since several
years, without prior knowledge of use by others which itself is false. If they had really made a search they would have had the knowledge of the
appellant's mark and would have also filed copy of the search report.
15. The first respondent had submitted that the goods were different and the rival goods were not connected, for which the appellant submitted that
they are dealing not only with electric goods but also with numerous other goods. The appellant submitted that by extensive use of the goods their
trade mark had acquired a wide reputation among the public. The appellant further submitted that electric wires and cables were part and parcel of
electrical apparatus and instruments which cannot work without electric cables and wires. As the marks were identical, goods similar and the trade
channels being the same there existed triple identity.
16 The appellant brought to our notice at page 59 of the typed set of documents containing the certified statement of sales and advertisement
expenses by the company secretary to prove their sales and also pointed out that their use would clearly show that their use was from 1971 prior to
that of the first respondent's use, since 1975. The appellant further submitted that the first respondent had totally copied their mark and even the
writing style was adopted from the appellant. The appellant drew our notice to worldwide sales filed at page 113 of the typed set. The counsel for the
appellant submitted that the first respondent had not denied the sales figures given by the appellant.
17. The counsel for the appellant contended that the first respondent had claimed user since 1.4.1975 in their application for registration but have given
sales figures since 1974-75 which is totally baseless. The appellant finally reiterated that the first respondent has not given any reason for adoption of
an identical trade mark and for this reason of dishonest adoption, the trade mark registration ought not to have been allowed. The counsel for appellant
cited the following judgments in support their case:
(1) MANU/IC/0052/2004 Bhagwant Lal Chaman Lal v. Shulton Inc. and Anr.
(2) 1993 PTC 273 Eagle Potteries Pvt. Ltd. v. Eagle Flasks Industries Pvt. Ltd.
( 3) 1997 PTC (17) 469 Kirloskar Diesel Recon (P) Ltd. v. Kirloskar Proprietary Ltd. and Ors.
( 4 ) 2008 (36) PTC 223 (Delhi) Larsen & toubro Limited v. Lachmi Narain Traders and Ors.
(5) MANU/IC/0054/2008 Philips Electronics NV and Anr. v. Kunj Aluminium Pvt. Ltd. and Anr.
(6) 1996 PTC 16 Aktiebolaget SKF v. Rajesh Engineering Corporation
(7) MANU/IC/0003/2008 Sushil Jindal Trading as Sushil Electricals v. Jindal Electricals and Anr.
(8) 2002 (25) PTC 438 (Delhi) Caterpillar Inc. v. Mehtab Ahmed and Ors.
(9) MANU/DE/0275/2004 George V. Records, SARL v. Kiran Jogani and Anr.
(10) 1999 PTC (19) 414 Reliance Industries Ltd. v. Anand Traders and Ors.
(11) PTC (Suppl) (1) 475 (SC) National Sewing Thread Co. Ltd. v. James Chadwick & Bros Ltd.
(12) 2002 (25) PTC 308 (Del) (DB)Madhubhan Holiday Inn v. Holiday Inn Inc.
18. The learned Counsel for the first respondent mainly contended that the goods were totally different and had no trade connection whatsoever. The
first respondent had been using the impugned trade mark since 1975 without any interruption and continuously by which fact the appellants were
aware of the first respondent's mark and had not taken any steps to stop their trade. The appellants have not used the trade mark for cables and
wires. The appellants have also failed to prove confusion and deception.
19 . The first respondent denied the appellant's contention that the Registrar had given contradictory statement as to the years of use. Learned
Counsel for the first respondent pointed out that in the statement of sales figures no trade mark was mentioned and that cannot be taken into
consideration.
20. The counsel for respondent referred to the following judgments in support of his case:
(1) MANU/IC/0003/2006 Worldwide Brands Inc. v. Smt. Dayavanti Jamndas Hinduja and Anr.
( 2) 2006 (33) PTC 252 Dhanalakshmi Cottage Industries v. Gopala Krishna Company and Anr. and
(3) MANU/IC/0075/2004 Hindustan Lever Limited, Bombay v. Registrar of Trade Marks and Anr.
21. Learned Counsel for the appellant in reply to the first respondent's arguments submitted that the first respondent's adoption is neither honest nor
concurrent. The sales figures given by the appellant was certified by the company secretary was therefore valid. In fact, the first respondent had not
proved their use by cogent evidence. The appellant disputed all the judgments cited by the first respondent.
22. We have heard both the counsel and have carefully considered the same. We have also gone through the pleadings and documents filed by both
the parties.
23 . The first issue to be dealt with would be whether the impugned trade mark qualifies for registration under section 9 of the Act. To qualify for
registration under section 9 of the Act, the marks which are adopted to inherently distinguish or the marks which are not adopted to inherently
distinguish, but which, while they convey just some quality or source are capable of distinguishing the goods after reasonable use, the marks which
have acquired factual distinctiveness or factual capability to distinguish and the marks which consists of ordinary and commonly used descriptive terms
which are likely to be used by the traders in the course of their business without any improper motive qualify for registration.
24. The onus is on the applicant to be discharged and show that in respect of all the goods the mark has become distinctive in fact for which the
application is made. When the mark has become distinctive a short period of use will not prohibit it to be registered. Evidence as to distinctiveness
must be supported by affidavit.
25. Even if the trade mark has acquired distinctiveness, the issue to be determined
for registration is not between the applicant and the opponent but also the strangers and public. As Lord Bowen said in Paine & Co's trade mark
(1909) 29 RPC 837 at page 861 - ""The purity of Register of Trade Marks is of much importance to trade in general, quite apart from the merits or
demerits of particular litigants, and it is the duty of the tribunal to see that no word not adopted to distinguish shall be put on the Register in the interest
of other traders, wholesale and retail and of the public. If this were not so, the large and wealthy firms in the system of log-rolling... divide amongst
themselves all the ordinary words of description and laudation in English language."" An applicant has, therefore, no absolute right to the registration of
his trade mark.
26. In the case on hand, when the burden is on the applicant i.e., the respondent to prove distinctiveness the registrar has given a finding that the
opponent / appellant has not substantiated by reason why and how the applicant's mark is not distinctive, such a finding is against the principles of law
and, therefore, rejected.
27. The other issue is under Section 12(1) of the Act. The first contention that the marks were identical was accepted but for the second contention
that the goods were totally different and therefore the condition under Section 12(1) of the Act was not satisfied.
28. When the marks are identical, the only question is whether there is conflict as to goods. The mark may be refused registration when it is identical
or deceptively similar to a trade mark already registered in respect of the same goods or description of goods.
29. In considering an objection under Section 12(1), the reply to the objection lies in the observation of the Court that "" the primary duty is towards the
public and the maintenance of the purity of the Register. When a case is sought to be made out that a particular trade mark is likely to deceive or
cause confusion, the contest is not so much between the parties to the litigation as it is a contest between the party defending his right to a particular
trade mark and the public and the duty of the court must always be to protect the public irrespective of what hardship or inconvenience it may cause
to a particular party whose trade mark is likely to deceive or cause confusion. The object of maintaining a trade mark register is that the public should
know whose goods they are buying and with whom particular goods are associated. It is, therefore, essential that the register should not contain trade
marks which are identical or which so closely resemble each other that an unwary purchaser is likely to be deceived""- Ciba Ltd. v. M. Ramalingam 59
Bom L.R. 548.
30. In the case on hand, the marks are identical, the only issue as to confusion or deception among the rival marks is in considering the goods. The
goods are allied and cognate was the main contention of the appellant whereas the first respondent contended that the goods are totally different. The
appellant's contention was also that they were registered proprietors of the trade mark under various classes and their last registration was of the year
1970 whereas the first respondent's use was only in the year 1975 which was subsequent to that of the appellant. The said fact was not denied by the
first respondent and only contended that the appellant's registration will not prove user. It is also seen that the first respondent had applied for electric
wires and cables and the said product is used by the appellants in their products and it is clear that the rival goods are allied and cognate. The objection
under Section 12(1) of the Act of the appellant is therefore upheld and the order is rejected.
31. The issue as to the possibility of confusion and deception was rejected on the finding that no action was taken by the appellant even though it was
used by the first respondent since the year 1975. on perusal of the evidence filed by the first respondents, the bills do not have the company's name
whereas some other company's name is given and the bills are also from the year 1981 only and no reason has been given for having not filed the bills
for the year 1987-1980. It is well settled law that mere statement of sales figures will not prove user whereas it should either be supported by dealers
affidavit or Chartered Accountant's certificate or some advertisement to prove that their mark was widely known among the public. The use of the
mark by the first respondent has not been proved by the cogent evidence and the objection that the appellant has not taken any action against the first
respondent will not lie. In an opposition proceedings, the issue to prove no confusion or deception will be on the applicant for registration. The first
respondent has failed to prove the same. The order of the registrar under Section 11 (a) and (e) of the Act are, therefore, rejected.
32. The order under Section 18(1) of the Act is also rejected as the first respondent, having regard to the facts of the appeal, cannot be said to be the
proprietor of the mark. The first respondent has failed to prove his case in totality.
33. Having rejected all the findings and having answered in favour of the appellants, we set aside the order of the Registrar dated 16.07.2001. We,
therefore, allow the appeal and reject the application for registration. However, there shall be no order as to costs.
