Manmohan Singh, J
1. By this order, we propose to decide the present appeal filed by the appellant under section 91 of the Act against the order dated 03.10.2019.
2. The brief admitted facts are that the Appellant filed an application dated February 23, 2015 under No. 2908566 with the Trade Marks Registry for
registration of its trade mark in Classes 36 in respect of 'Mutual Funds, Investment advisory and asset and fund management
services', on a 'Proposed to be used' basis.
2.1. The Examination Report dated April 5, 2016 in respect of the Appellant's mark under No. 2908566 contained objections on relative grounds of
refusal under Section 11 of the Act on account of the following marks being cited in the Report:
2.2. The Appellant had, on October 21, 2016 filed its reply to the Examination Report issued by the Respondent, after seeking an extension of time of
one month by filing a request under Form TM 56 on September 23, 2016.
2.3. In its Reply to the Examination Report, the Appellant stated that the aforesaid cited marks under Nos. 1437329, 1604048, 1609297 and 2417329
when compared as a whole with the mark of the Appellant's mark are structurally and phonetically different.
2.4. On February 25, 2019, Counsel for Appellant filed additional documents to indicate that the registrations for the marks and
under Nos. 1604048 and 1609297, respectively had expired and the marks have since not been renewed.
2.5. A hearing was appointed in the matter on February 27, 2019, where the submissions made in the Reply dated October 21, 2016 to the
Examination Report were reiterated. During subsequent hearings on June 17, 2019 and October 3, 2019, Counsel for Appellant presented arguments in
favour of registration of the mark .
2.6. On October 3, 2019, the Appellant had also filed a User Affidavit and supporting documents indicating use of the mark since
the year 1989.
2.7. The Respondent, however, vide his Order dated October 3, 2019, refused registration of the Appellant's mark under
application No. 2908566, without giving detailed reasons for the same and ruling that the mark was objectionable under Sections
11(1)(a) and 11(1)(b).
2.8. The Statement of Grounds of Refusal of Registration, were received by the Appellant's Counsel on February 18, 2020, wherein the Respondent
based its reasoning on:
a) The material available on record as being insufficient in nature;
b) the Appellant's mark being identical/deceptively similar to the marks and under application Nos. 1437329 and 2417329,
respectively;
c) the mark not being entitled to the benefit of Section 12 on account of the application being on a proposed to be used basis, and
d) the case of Toyota Jidosha Kabushiki Kaisa v. Prius Auto Industries Ltd. to elaborate on international goodwill being insufficient against a
registered proprietor.
3. The Appellant claim to be a well-known investment advisory company that is a part of Sparx Group and based out of Japan. The history of the
Appellant can be traced back to the year 1989 when an investment advisory company with the name of 'Sparx Asset Management Co. Ltd.' was
registered in Tokyo, Japan and since then, the mark has been continuously and uninterruptedly used by the Appellant The Appellant had generated
sales revenue to the tune of 3633 million yen (approx 252 crores) for the financial year 2018-19.
4. Admittedly the Appellant's fanciful mark SPARX/ is registered in various jurisdictions around the world, with the earliest
international registration dating back to the year 2001 in Class 36 in Japan. The Appellant's use of the mark SPARX has been substantiated by
extensive documentation as has been filed before the Trade Marks Registry alongwith the Affidavit of use. In India, the mark SPARX/
is used in India in connection to investment services.
5. It is submitted on behalf of the appellant that rival marks are distinguishable - The respondent has incorrectly decided the subject mark being similar
to cited marks under Section 11 of Trade Marks Act, 1999:
The marks cited by the respondent do not come in the way of the application filed by the appellant. The comments are mentioned in relation to each
mark cited against the mark applied for. The following are the details given:-
6. It is clear from various judicial precedents in the country such as Amritdhara Pharmacy vs. Satyadeo Gupta, AIR 1962 SC 449 and Aravind
Laboratories vs. V. Annamalai Chettiar, (1981) 1 MLJ 75, the Respondent has not considered that the services covered under the rival marks are
dissimilar so as the trade channels and catering to different classes of consumers. In the case of Nandini Deluxe vs. Karnataka Cooperative Milk
Producers Federation, (2018) 9 SCC 183, the Hon'ble Apex Court has held that registration of apparently similar marks is permissible if the goods or
services under the respective marks are disparate, even though the goods/services fall within the same Class. Therefore, the objections raised under
section 11 are not applicable to the subject Appeal.
7. No doubt the application was made on a proposed to be used but appellant's mark has been in use since 1989 - in international market, it appears
the Respondent has erred in disregarding that the Appellant has significantly prior rights over the mark in respect of services
thereunder, on account of its adoption and use of the said mark, continuously and uninterruptedly, since the year 1989 internationally. The Respondent
has completely overlooked the fact that the Appellant has multiple registrations for the same in various jurisdictions including but not limited to
Australia, Canada, European Union, Indonesia, Israel, Japan, Malaysia, Singapore, Switzerland and U.S.A. and by virtue of registrations and use
thereof, the mark has acquired distinctiveness and come to be exclusively associated with the Appellant and its services
thereunder on account of extensive use for more than three decades now.
8. The Respondent has completely disregarded the Affidavit of Shuhei Abe, the President and Group CEO of the Appellant filed on October 3, 2019
indicating extensive use of the mark in relation to the services since 1989 and that the Appellant mark is essentially derived from
its corporate name/trading style - Sparx Group Co. Ltd. and forms its house mark. The Respondent has thus erred in stating that the material available
on record is insufficient as the application was made on a 'proposed to be used basis' and not applying the 'first in the (world) market' principle, which
has been upheld by several Courts in the country, including the Hon'ble High Court of Delhi and the Apex Court in the cases of N.R. Dongre & Ors.
v. Whirlpool Corporation & Anr. AIR 1995 Del 300] and Milment Oftho Industries v. Allergan Inc., (2004) 12 SCC 624 respectively. Additionally, the
Respondent has completely disregarded trans-border reputation that would arise from local vendors/merchants using the mark of the Appellant
qualifying as use as in the case of Cadbury UK Limited & Anr. v. Lotte India Corporation Ltd., 2014 (57) PTC 422. At any rate, several judicial
precedents have upheld goodwill vesting in trade names and trade marks derived therefrom, such as the case of Mind Gym Ltd. v. Mindgym Kids
Library Pvt. Ltd., MIPR 2014 (1) 307 and The Timken Company v. Timken Services Private Ltd., 2013 (55) PTC 568 (Del).
9. It is submitted by the counsel that the mark is a coined and fanciful term and hence, distinctive. No other entity has been
using the said term 'Sparx' in relation to its services in Class 36. Therefore, the question of 'Honest and Concurrent use' as elucidated under Section 12
does not arise as there is no identical mark on the register that is registered or used by any other entity in relation to Class 36.
10. The Respondent has wrongly relied on the case of Toyota Jidosha Kabushiki Kaisa v. Prius Auto Industries, AIR 2018 SC 167 (hereinafter
referred to as Toyota case) to adjudicate that a prior registered proprietor in India cannot be injuncted merely because the plaintiff has acquired
goodwill in several jurisdictions of the world. The case would not have any bearing on subject appeal as the marks in question in the Toyota case were
identical in nature - Prius, which is not the case in the subject appeal. There is no identical mark that exists on the register in relation to the subject
description and Class 36. While the Toyota case elaborates on the principle of Territoriality over Universality in instances of infringement, it does not
imply a total disregard of the 'first in world market' principle and significant goodwill and reputation The facts and circumstances of each case are
unique and in this case, acquiescence and lack of evidence of goodwill had played a key role in ruling in addition to actual confusion and not likelihood
of the same to cause confusion.
11. In the light of above, the appeal is allowed. The impugned Order passed by respondent is set-aside. We allow the mark
under No. 2908566 in Class 36 to proceed to registration.
12. No costs.
