Dharamsi Morarji Chemical ... vs The Rajasthan Navsagar ...
2001 Latest Caselaw 736 Bom

JUDGMENT

F.I. Rebello, J.

1. The first Respondent is a partnership firm of which Respondent Nos. 2 to 5 are the Partners. By Application No. 468100 they applied for registration of The mark "Steamer Brand". The same was advertised in Class I in the Trade Mark Journal No. 958 of 1.5.1989. The Petitioner herein a company incorporated under the Companies Act, 1956 are manufacturers and do business in vast variety of chemical products used in Industries. They have factories at Ambernath in Maharashtra State. Kumhari in Madhya Pradesh as also in Amreli in Gujarat. They filed their notice of opposition dated 21.6-1989 raising various grounds. The Respondents filed their counter statement by 28.12.1989. In support of the opposition, the Petitioners filed three affidavits of (1) Dinesh Gatulal Mehta, Secretary of the Petitioner Company dated 15.3.1990, (2) Manohar Shridhar Ranade dated 15.3.1990, and (3) Minanath Narsinha Ranade dated 16.4.1990. Similarly on behalf of the Respondents one of their Partners Rasiklal filed his affidavit dated 29.11.1990. This was replied to by Mr. Dinesh Mehta, Secretary of the Petitioners. The parties were heard on 19.9.1991 by the Deputy Registrar of Trade Marks. The 6th respondent, the Registrar of Trade Marks has dealt with various objections raised by the Petitioners herein. By order dated 26.11.1991, communicated to the Petitioners by letter dated 28.11.1991, dismissed the opposition with costs and ordered the Application No. 468100 in Class I of the 1st to 5th Respondents to proceed to registration subject to amending the goods so as to read as 'Navsagar for sale in the districts of Dhule and Jalgaon in the State of Maharashtra and district of Surat in State of Gujarat.

2. Before proceeding to consider the challenges to the order, a few additional facts may be set out. It is the case of the Petitioners that since 1922 they have continuously and exclusively used in India various chemical products used in Industry under the Trade Marks known as "Ship Brand", "Jahaj Chhap" and "Vahan Chhap".

The Trade marks included device of a ship and the words "Ship Brand" (in English script). "Jahaj Chhap" (in Devnagari script) "Vahan Chhap" (in Gujarati script). On 2.4.1964 the Petitioners had filed application for registration of the mark "Ship Brand" word per se claiming users from 1922 for goods being Chemicals products used in Industries, Sciences, Agriculture, Horticulture forestry, manures (natural and artificial). On the same day, under different Application Number, the Petitioners also applied for registration of the mark "Jahaj Chhap" in Devnagari script as also the mark "Vahan Chhap" in Gujarati script for the same type of goods as set out earlier. On 4.3.1965, the Petitioners filed an application for registration of the mark "Jahaj Chhap" (in Devnagari script) claiming users since 1922 of goods being chemical products used in Industries, science and Chemicals Products included in Class I for use in Agriculture, Horticulture and Forestry but excluding Chemical substances for preventing incrustation in steam boilers, manures (artificial and natural). Similar application on the same day was moved for the mark "Ship Brand" devise of the ship (Roman Script) for the same description of goods as set out earlier. Similar application for the mark "Vahan Chhap" (Gujarathi Script) was also applied. On 17.8.1978, the Petitioners filed application for registration of the marks "Jahaj Chhap", "Vahan Chhap" and "Ship Brand" with the device of ship for the goods being Chemical products used in Industries, Science, Agricultural, Horticulture and Forestry (None being insecticides, funquicides and preparations for killing weeds) manures (natural and artificial).

3. On 20.9.1979 the Respondent Nos. 2,3 and 4 who in the present petition are described as Karta of their respective H.U.F. then trading in the name and style of Rajasthan Navsagar Chemical had applied for the Registration of the trade mark "Ship Brand" with the device of ship having two flags, and funnels and smoke emerging therefrom for the goods being Amonium Chloride Bars (Navsagar). The user claimed was from 1972. The application was advertised in the trade mark Journal on 16.9.1981. The Petitioners filed their opposition. The parties filed statements and counter statements and evidence. The matter came up for hearing on 25.3.1987 when the application was withdrawn unconditionally.

Present application by Respondent Nos. 2 to 5 as partners of Respondent No. 1 was filed on 24.2.1987 for registration of the trade mark "Steamer Brand" (word per say) for the goods being "Amonium Chloride Bars (Navsagar) claiming user since 1984. This was advertised. The petitioners herein filed their opposition. The ground of opposition by the Petitioner was that they had reputation of over 55 years all over India of the Trade marks referred to earlier with factories as set out earlier. The principal objections were under Sections 11(a) and 11(e), 12(1) and 18(1).

4. The order of the Assistant Registrar may now be considered. The first objection considered was under Section 18(1) of the Act. The Objection as noted was that

the Petitioners were prior in adoption to the use of the device of Ship and word "Ship Brand", "Jahaj Chhap" in Devnagari script and "Vahan Chhap" in GujaraY script, and they had acquired reputation amongst substantial number of persons. The subsequent adoption of the similar mark by the Respondent was not bona fide and was tainted with dishonestly. The earlier application by Respondent Nos. 2 to 4 for registration of the device Ship with smoking funnels between the word "Ship" and "Brand" and disclaimed the brand was noted. The 6th Respondent held that the contention was not sustainable as a person may acquire a right of property in trade mark by use of the mark in relation to particular goods, by registration under the Act or by assignment of transmission of right from one person to another person. The finding given was that two marks are not similar and the trade mark "Steamer Brand" is distinctive mark and proprietary rights can be acquired by the user thereof. Dealing with the earlier application it was noted that the applicants before the 6th Respondent were individual persons and those who had applied for registration of the mark were by the Respondents as (H.U.F.) and hence, earlier proceedings cannot be held against the Respondents. For the reasons aforesaid withdrawal of the earlier application was found to be of no consequence. A specific finding was given that the applicants are the proprietors of the mark "Steamer Brand" by virtue of their user since 1984 and accordingly rejected the opposition on that count.

The 6th Respondent then considered the objection under Section 12(1) of the Act and noted that two conditions must be satisfied for sustaining the objection under Section 12(1). They were paraphrased as under:

(a) the mark applied for must be identical or deceptively similar to the trade mark already registered in the name of different proprietor, and (b) the goods for which the registration is sought are the same or of the same description as those for which the applicants mark is registered.

The 6th Respondent then gave a finding that to his mind the applicant's mark describes verbally the opponent's mark. The two mark though are not identical but are deceptively similar and as such the fact part of enquiry is satisfied. In so far as second test is concerned, the 6th Respondent held that the Respondent's goods are not chemicals pure and simple unlike the opponents goods but is obtained after mixing of Ammonium Chloride and Sodium Chloride and then putting the mixture through the process of pulverization. The 6th Respondent then held that the applicants goods are a compound and are called Navsagar by the applicants. Then posed to himself a question after finding the goods are not same but whether the description is same. After considering various tests as to when the goods can be said to be of the same description held that the goods for which the applicant is seeking registration and the goods for which the Opponents mark is registered are not the goods of

the same description. In conclusion therefore, 6th respondent held that the second test is not satisfied.

The opposition under Section 12(1) was rejected.

The 6th Respondent then considered the objection under Section 11(a) of the Act as to whether the mark is likely to deceive or cause confusion. The 6th Respondent held that initially onus is on the opponents to establish by clear and cogent evidence that the mark has acquired reputation. The evidence led by the Petitioners herein was also noted and the fact that the Petitioners were not manufacturing or supplying Amonium Chloride and Sodium Chloride which were main contents of the Respondent's goods. Further finding recorded that the two sets of goods were neither same nor of the same description, the class of customers and trading channels for both set of goods are totally different. Further finding recorded is that the Petitioners reputation does not extend beyond the goods of which they are actually using the trade marks and that the acquisition of exclusive right over trade mark in connection with the particular article cannot entitle the owner of the right to prohibit the use of the mark by others in connection with the goods of totally different character. For those reasons, and some others, objection under Section 11(a) was rejected.

The 6th Respondent, then considered whether the respondent is entitled to registration under Section 12(3) of the Act. A clear finding is given that the Respondents have adopted the trade mark bona fidely and have been using it since 1984. The sales figures were considered which were found to be Rs. 23,200/- in the year 1984 which grew substantially in the year 1990 to Rs. 81,400/-. The challenge by the Petitioner to the evidence produced by the Respondents by the Petitioners that the sales recorded are either in cash or by way of credit was rejected and accordingly allowed the registration.

5. At the hearing of the petition, on behalf of the Petitioners, their learned counsel has attacked the findings under Sections 12(1), 11(a), 11(e), 18 and 12(3) of the Act. It is contended that correct tests which ought to have been applied have not been applied and thereby the 6th respondent has misdirected himself in law. In so far as objection under Section 12(1) is concerned, it is contended that the 6th respondent in holding that the goods are not of the same description totally misdirected himself in law. The purported admissions made by counsel on behalf of the Petitioner is not borne by the material on record. At any rate it is contended that there can be no es-toppal of law. In so far as objection under Section 11(1) is concerned, it is contended that the Respondent No. 6 has given a finding that while answering the opposite under Section 12(1) that the mark was deceptively similar to the Petitioner's mark "Ship" and further as no explanation had come from the Respondent as to how they coined the said word and other tests required, the objection under that section also ought to have been upheld. The material on record, it is contended, would show that the Respondents had failed to discharge the burden of honest adoption and concurrent user and consequently exercise of discretion under Section 12(3) is contrary to law. For the very same reasons, the objection under Section 18 also ought to have been upheld. Various Authorities have been relied upon by the parties will be dealt with latter on.

Opposing the petition on behalf of the Respondents, their learned counsel contends that under Section 12(3) it is within the discretion of the 6th respondent to register or not to grant registration. In the instant case, after applying the tests which had to be applied, the 6th respondent has exercised his discretion. This Court therefore, should not interfere with the exercise of discretion which was based on material before the 6th Respondent. In so far as objection under Section 12(1) is concerned, it is contended that it is the case of the Petitioners themselves that they are neither manufacturing not marketing the goods of the description which are being marketed by the Respondents and that considering the cost factors they do not propose to market the same. In these circumstances and on the findings given that the goods are not of same description by the 6th Respondent, this Court should not interfere with the rejection of the opposition under Section 12(1). In so far as Section 11(a) is concerned, it is contended that the two marks are word marks which are distinct and different. One is "Ship" and the other is "Steamer". Even in the local languages the words are not same and there is no likelihood of confusion. At any rate, it is contended as held by the 6th Respondent, the Petitioners have not led any evidence to show actual confusion considering that the goods are not sold by the same or similar traders, one is sold in bulk and other by retailers. The Respondent further contended that they have proprietary right in the word "Steamer" which they had honestly adopted and have been in use since 1984 while the Petitioner's mark is ship and considering that the rejection of the objection under Section 18 must also be upheld. Considering the above, the exercise of discretion under Section 12(3) cannot be faulted. Reliance is placed on authorities which also will be dealt with in the course of the discussion.

6. The first contention which I propose to consider and deal with is the objection under Section 12(1) of the Act. Section 12(1) contemplates subject to the discussion under Sub-section (3) that no trademark shall be registered in respect of any goods or description of goods which is identically or deceptively similar to the trade mark which is already registered in the name of the different proprietor in respect of the same goods or description of goods. The 6th respondent, posed to himself the twin conditions which must be satisfied which are as under :

 (a)      mark applied for must be identically or deceptively similar to the trade mark already registered in the name of the different proprietor ; 
 

 (b)      the goods for which registration is sought are the same or the same description, as those for which applicant's mark is registered.
  
 

I need not to deal with the first test as the 6th Respondent has recorded a finding that the marks are deceptively similar after addressing himself to the tests of comparison including of appeal to the eye or appeal to the ear. The second part which has been held in favour of the Respondents, must be tested for its correctness. The 6th Respondent first confused himself that the respondents goods are a compound and then holding that they are not of the same description by relying on Darwin Ltd.'s Application (1946 R.P.C. 1). There the finding given was that steel and products of steel are different process and in general steel in bulk and steel tool are distributed through different agencies and steel in bulk is not likely to be purchased otherwise then by a wholesaler or by manufacture of steel articles. Amonium Chloride and Sodium Chloride are two different compounds by themselves. By pulverization, the two are mixed together. They do not cease to lose their chemical identity as compounds as by pulverization they are also mixed. Such combination is known as a mixture different from a compound which comes into being by a reaction between chemicals by use of a reagent. Water is a solvent. Even if the two compounds are dissolved in water, they do not cease to be the compounds which they were, though they would be in a liquid form rather than the solid form. That test, therefore, which has been applied to hold that they are different compounds and not falling in the description of goods which are registered in favour of the Respondents, therefore, discloses an error of law. The Petitioners have registration of mark in their favour from 2.4.1964 in respect of the goods being chemical products used in Industry and Science and chemical products included in Class I for use in agriculture, Horticulture and forestry but excluding chemical substances for preventing incrustation in steam boilers, manures (artificial and natural). In the year 1978 that has also been extended for goods being chemical products used in industry, science, agriculture, Horticulture, Forestry (Not being insecticides, fungicides and preparations for killing weed), manures (natural and artificial). The list of the various chemicals wherein petitioners have been using their mark was also produced before the 6th Respondent. I will refer to some of them as one of the contentions raised was that the Respondents goods are not been used for the same purpose. Useful reference before that may be made to find out uses of the products which the Respondent claims that they are marketing. In Mercks Chemical Dictionary, the use to which 'Amonium Chloride' is but is shown as "Flux for washing sheet iron with zinc, tinning; in dry and leclanche batteries, dying, freezing mixtures, electroplating, to clean, soldering irons, safety explosives, lustering cotton, tanning, in washing powers; manuf. dyes; in cement for iron pipes; for snow treatment (slows melting on ski slopes)." Amonium Suplhate which is chemical produced by the Petitioner its used are described amongst others for flameproofing, textile and paper products, in the manuf. of weed killing compositions, in electroplating solns ; for the generation of nitrous oxide gas. Similarly Sodium Fluoride, which

the Petitioners are manufacturing is used among others in electro plating; in fluxes, in heat treating salt compositions, in the fluoridation of drinking water for disinfecting fermentation apparatus in breweries and distilleries. Hydrolic Acid manufactured by the Petitioner is used amongst others for pickling and cleaning of metal products. Ammonium Chloride, Sodium Chloride are chemicals as much as Ammonium Sulfamate, Hydrochloric Acid or Sodium Fluride or Sodium Suplhide. They are all compounds. They fall in the same class of chemicals.

It is now well settled that the expression "same goods" is not synonymous with goods of the same description. The word "same" does not mean identical but denotes a rather close similarity. The same description does not mean that you either search or look for a description which applies to both goods, but rather indicates a similarity in various respects, there being no single conclusive test.

Romer, J. in the case of Jellinek's Application, (1946) 63 R.P.C. 59 whether the specified goods are of the same description, can be tested by applying the tests laid down by Romer, J. in the case of Jellinek's Application (1946) 63 R.P.C. 59.

 (a)      the nature of the respective goods ; 
 

 (b)      the uses of the respective goods; and  
 

 (c)      the trade channels through which the respective goods are bought
and sold.  
 

In "Floradix" (1974) R.P.C. 583, it is observed that it is not necessary that all the three criteria should be fulfilled. These tests have been applied and followed by this court in Eagle Potteries Pvt. Ltd. v. Eagle Flasks, . The learned counsel on behalf of the Respondents had sought to place reliance on the Judgment in the case of Vishnudas Trading v. Wazir Sultan Tobacco Co. Ltd. Hyderabad, . My attention was invited to various paragraphs and contentions in the said judgment. However, it would toe clear that what the Apex Court was considering there was not objection to registration to goods but rectification. Similarly in Hindustan Pencils Pvt. Ltd. v. Premchand Gupta, trading as Universal Trading Company, 1985 PTC 33 was again a case of rectification. The objection raised on behalf of the Respondents was that the Petitioners cannot claim a monopoly in the class of goods whether they are manufacturing the same or not. That is not the case in so far as present petition is concerned where the registration in favour of the Petitioners continues and there is no application for rectification. If the tests are applied, the Petitioners had registration in their favour in respect of Class I in chemicals. Similarly as pointed out earlier, that the goods are capable of being used for some or similar purpose may not exactly to be the same. The Trade channels may be different. It is not as if the material before the 6th Respondent was that the goods of the Petitioner were only being sold in whole sale. Even if the goods are sold in whole sale, they can also be sold through retailers.

Therefore, substantially the Petitioners had discharged the onus which was cast on them. In the light of that, the finding in so far as second requirement is concerned as rendered by the 6th respondent, is liable to be set aside. Once that is so held, the opposition under Section 12(1) must be sustained.

7. The next question that I need to address myself to is whether mark if allowed to be registered is likely to deceive or cause confusion. Before I proceed to answer that let me refer to the object of the Section as set out by Division Bench of this Court in Ciba Ltd. v. M. Ramalingam, 1957 BLR 548. The Division Bench of this Court presided over by the then learned Justice Chhagla, J. observed as under :

"Now, in considering both Section 46 and Section 10, it has got to be remembered that the primary duty of the Court 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 to 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 may be likely to be deceived by thinking that he is buying the goods of a particular person or a particular firm or a particular industry." While answering one of the tests to be satisfied under Section 12(1), the 6th Respondent had recorded a finding as under :

"If we look at the two marks the Opponents are the Regd. Proprietors of the mark whose main and prominent features is the device of Ship and applicants mark is the word "STEAMER BRAND". The trade mark attracts not only to the eye but also to the ear. The device of ship and Steamer belong to the same generic category of navigational machines propelled vehicles. Ship is only a reformed form of a Steamer. To my mind the applicants mark describes verbally the opponents mark. As such the two marks are not identical but are deceptively similar and as such the first part of enquiry is satisfied."

After having considered all these tests, 6th respondent himself while considering Section 12(1) recorded a finding that the marks are deceptively similar. It is thus surprising as to how while answering the test under Section 11(a) the 6th Respondent has held otherwise. Section 11(a) is a bar imposed on the 6th respondent to register the mark which is likely to deceive. I do not think it is possible to say that though the

marks may be deceptively similar but they are not likely to deceive. That by itself would have been sufficient to upheld the objection under Section 11(1)(a). The correct test that has to be applied under Section 11(a) is as under:

"Having regard to the reputation acquired by the opponents mark is the Tribunal satisfied that the mark applied for, if used in a normal and fair manner is connection with any goods covered by the registration proposed, will not be likely to cause deception and confusion among a substantial number of persons."

The Petitioner have established their reputation. They have registration in their favour in Class I chemicals. They are proprietors of the mark of ship and work mark. The Respondents were aware of the same. Under Section 11(a) apart from confusion in respect of the goods, another aspect is in respect of the original which the customer identify the goods as coming from the same source or origin. Considering that to my mind, it would not be necessary to either refer to the judgments cited in Sony Kabushiki Kaisha v. Shamrao Maskar, and the unreported judgment of this Court dated 4.8.1992 in Ratnakar Canning Industries v. Ratna Sea Foods and Anr. On behalf of the Petitioners, learned counsel has relied on the Judgment of this Court in J.C. ENO Ltd. v. Vishnu Chemical Company, AIR 1941 Bom. 3 to point out that the court must also bear in mind as to how the word would be used in the regional language even if registered in English language. It is no doubt true that the respondents have sought to point out that in Gujarathi words "Steamer" is different word than the word "Ship". That to my mind, would be immaterial. What the important aspect is to be considered is the generic word ship of which steamer is but a species. It would be natural for a person to be confused or deceived by the word "Ship" or "Steamer" considering the words in the regional language. Reliance was also placed on the Judgment of the High Court of Justice Tomlin in the matter of an Application by William Henry Hexley to register the trade mark in 41 RFC 423. Considering that the finding by the 6th Respondent, in so far as Section 11 is concerned is also liable to be set aside and the Petitioner's objection under Section 11(a) is liable to be upheld.

8. In view of my finding in so far as under Sections 12(1) and 11(a) is concerned. I do not propose to consider or discuss the findings in so far as Section 11(e) and under Section 18 is concerned.

9. The only remaining question would be whether the 6th Respondent, could have still permitted the registration considering the power conferred on him under Section 12(3). What Section 12(3) contemplates is the case of honest and concurrent use or of other special circumstances. Does the material on record support the finding and the exercise of discretion by the 6th respondent in favour of the Respondents. In the first instance as already noted, Respondent Nos. 2 to 4 had earlier

applied for registration of the word mark "Ship Brand". They were aware of the objection raised by the Petitioners herein. They had with them the evidence led on behalf of the Petitioners which they applied for registration of the trade mark "Ship Brand" it was for the same goods namely "Amonium Chloride Bars (Navsagar). The applicants were present Respondent Nos. 2 to 4 in the individual capacity but as partners of the Respondent. They had claimed user since 1972. On opposition by the Petitioner they had withdrawn the application without any liberty. The next application is by Respondent No. 1 of which Respondent Nos. 2, 3 and 4 herein are Partners but in their capacity as HUF. The goods are the same as in the first application. The 6th Respondent by a lengthy discussion had tried to show how the HUF is distinct from an individual. The goods of the present applicants and earlier applicants is the same. The individuals are partners of the Applicants in both the applications. Only in one they were as individuals and the present application they are shown as H.U.F. They had earlier sought to register the mark "Ship Brand" which they gave up. Just a month after they had filed the application for registration of the mark "Stamer Brand". The goods were identical. The first applicant claimed that they were in the business and claiming user since 1972. The present applicants are claiming user since 1984. In considering the test of honest and concurrent user, there were relevant facts. The applicant have not explained how they adopted the mark "Steamer Brand" and in what manner, it is distinct from "Ship Brand. The goods are same. Parties are the same except for Respondent No. 5. They were aware of the opposition by the Petitioners. The Petitioners led material to show as to they adopted the word "Ship". Inspite of this material before him, the 6th respondent has proceeded to give a finding that the mark was adopted bona fide. On what basis or on what material is unknown. The material on which the 6th Respondent came to the conclusion that it was the case of honest and concurrent user is also not discernible. Once Respondents were aware that the Petitioners were claiming the mark in respect of the description of goods and had filed opposition to the using of the mark "Ship" that by itself in my opinion would have been sufficient to hold against the Respondents. In Hiralal Parbhudas v. Ganesh Trading Co., , the Division Bench of this Court observed as under :

"Where a case is not founded on truth such as the present, to such a person the benefit of Section 12(3) is not available"

To my mind the ratio decendi of that case considering what has been set out earlier would squarely apply to this case. In Shamlal v. Parley Products, AIR 1967 Mad 116, a learned Single Judge of the Madras High Court held that the onus lies on the applicant of proving the simultaneous, normal and fair use of the competing marks and that it will not lead to confusion or deception among the members of the public. In my opinion after the Petitioner had prima facie discharged their burden, the burden shifted on the respondents who have failed to discharge that burden. In Kashiram Surinder Kumar v. Thakurdas Deomal Rohire, another Division Bench of this Court considering Section 12(3) has observed that what is required to be established under Section 12(3) is the concurrent use of the mark by the applicant was honest and the question of opponents belief as to the reputation of the respondents' mark was irrelevant for consideration. In this case, on facts the Respondent claimed under from 1984. They were aware of the Petitioner's opposition which was filed in 1981. The Petitioner had opposed the earlier application both under Section 11(e) and Section 12(1). In such a case to hold that there was honest concurrent user, itself will be dishonest.

Considering the tests and law as laid down by this Court, in my opinion, the Registrar, the 6th Respondent misdirected himself in exercising discretion in favour of the Respondent No. 1. The Respondent No. 6 was bound by the law declared by this Court. Respondent No. 6 has failed to apply the tests which this Court has laid down. In these circumstances, the order dated 26th November, 1991 is liable to be quashed and set aside.

10. In the light of that, petition is made absolute in terms of Prayer Clauses (a), (b) and (c).

In the event, Respondents have registered the mark, then certificate should be handed back to the 6th Respondent which was under Application No. 468100 for deregistration.

Learned counsel for the Respondent Nos. 1 to 5 seeks stay of the operation of the order considering the peculiar facts this order not to be given effect to for the period of twelve weeks.

Parties to act on an ordinary copy of this order duly authenticated by the Associate of this Court.