Newman vs Jacques Jaunet S.A. And Anr.
2002 Latest Caselaw 377 Bom

JUDGMENT

J.A. Patil, J.

1. This is an appeal under Section 109 of the Trade and Merchandise Act, 1958 (for short, the Act) challenging the order dated 24.11.1994 passed by the Deputy Registrar of Trade Marks allowing application No. 437595 filed by the Respondent No. 1 for registration of their trade mark "NEWMAN" in class 18 and rejecting opposition No. BOM - 8039 filed by the petitioner. Hence this appeal.

2. The petitioner is a partnership firm duly registered under the Indian Partnership Act carrying on business inter alia of manufacturing and marketing readymade garments and other allied goods made from leather and imitation of leather. Respondent No. 1 is a Societe Anonyme registered under the law of France who sought registration in India for their trade mark "NEW MAN" in respect of leather goods such as purses, trunks, suit cases, travelling bags, port folios etc. in class 18. The petitioners had made several applications for registration of the Trade Mark "NEW-MAN" in Clauses 16, 17, 18, 22, 23, 24, 25 and 26. Their application No. 393243 was for registration in class 25 in respect of readymade garments. The petitioners claimed the user of the said trade mark from 14.4.1979. They (petitioners) also contended that they have sold aforementioned goods under their trade mark "NEWMAN" throughout India and carried out extensive sales and incurred huge expenditure on advertisement, owing to which they earned immense goodwill and reputation. During the pendency of the above mentioned applications filed by the petitioner, respondent No. 1 filed an application on 13.5.1985 in class 18 for registration of a composite label trade mark consisting of the word "NEW" and "MAN" written in two lines in a special logo script in a reverse manner and metalic form in respect of the specification of goods such as purses, trunks, suit cases etc. of leather. The application filed by the respondent No. 1 was advertised in the trade marks journal No. 982 dated 1.5.1990. Thereafter, on 2.7.1990, the petitioners filed their opposition which was based on mainly two grounds. First was that the petitioners were famous and old manufacturers and sellers of readymade garments and allied articles made of leather and that their application No. 393243 dated 9.3.1983 was pending for registration in class 25. The second ground was that by virtue of continuous and extensive use sine 14.4.1979 in India, the petitioners garments and allied goods affixed with trade mark "NEW MAN" were associated with and identified with them. It was also contended by the petitioners that the impugned mark for which the respondent No. 1 had sought registration was not registrable as the same was open to objections under Sections 9, 11 and 18(1) of the Act. It appears that respondent No. 1 fifed a counter statement wherein it was contended that they were proprietors of the trade mark "NEW MAN" and that the said trade mark was registered throughout the world prior its adoption and use as claimed by the petitioners. It was also contended that the said mark was distinctive of the goods manufactured and sold by respondent No. 1. During the pendency of the said application, the petitioners filed an interlocutory application on 4.6.1993 incorporating an additional grounds under Section 12(1) of the Act which was to the effect that during the pendency of the application filed by the respondent No. 1 their (petitioners) trade mark "NEWMAN" was registered under No. 402533.

3. The Deputy Registrar allowed both the parties to lead evidence in the form of an affidavits and documents. Thereafter, he heard the learned advocates of both the parties and passed the impugned order on 24.11.1994. The Deputy Registrar rejected the petitioners objection under Section 9 by observing that though phonetically both the marks are similar, still visually and structurally the mark applied for by respondent No. 1 is capable of being distinguished. He further rejected the petitioners objection under Section 11(a) by pointing out that there has been a settlement between the parties in Suit No. 2784 of 1987 filed by the respondent No. 1 in the Delhi High Court whereby the petitioners agreed and undertook not to use the trade mark "NEW MAN" under separate logo script which is deceptively similar to the trade mark of respondent No. 1. He also pointed out that the petitioners thereafter got amended their trade mark as "NEWMAN" which consists of plain capital letters. The Deputy Registrar held that in view of the changed circumstances, the use of amended trade mark of the petitioner cannot be a ground for cause of confusion or deception. The Deputy Registrar further rejected the petitioners objection under Section 12(1) by observing that visually and structurally the two marks are different though there is a little phonetic similarity. He further pointed out that both the marks are for goods of different description. While rejecting the petitioners objection under Section 18(1), the Deputy Registrar observed that the petitioners having admitted the title of respondent No. 1 to the trade mark "NEW MAN", they are estopped from denying the title of the respondent No. 1. He further held that respondent No. 1 are the proprietors of the trade marks "NEW and "MAN" because of prior adoption and registration in number in foreign country. In this view of the matter, the Deputy Registrar, declined to exercise his discretion in favour of the petitioners and finally allowed the application of respondent No. 1 and dismissed the opposition filed by the petitioners.

4. I have heard Shri Rahul Chitnis for the petitioners and Shri Salil Shah for respondent No. 1. Shri Chitnis submitted before me that the trade mark "NEWMAN" being his surname could not have been registered. He further submitted that the proposed trade mark of respondent No. 1 is deceptively similar to that of the petitioner's and therefore, confusion is likely to take place. Shri Chitnis contended that respondent No. 1 had not used the trade mark "NEW MAN" in India any time before and therefore, the Deputy Registrar was not right in holding that the respondent No. 1 are the proprietors of the said trade mark. Shri Chitnis further submitted that the consent decree passed in the passing off action in Delhi High Court has little bearing on this petition since considerations in passing off action are different from those in an application for registration of trade mark. Shri Shah, learned advocate for the respondent No. 1 laid emphasis on the fact that the trade marks "NEWMAN" of both the parties though phonetically similar, are visually and structurally quite different and both the trade marks are for registration in different classes. Shri Shah referred to the decision dated 28.2.2002 passed by a learned Single Judge of this Court (Deshmukh, J.) in Misc. Petition No. 26 of 1994 filed by the petitioner and submitted that the said judgment is binding between the parties and the issue is concluded. Shri Shah also highlighted the conduct of the petitioner by characterising it as dishonest and submitted that the petitioner cannot claim the user for the trade mark "NEW MAN" from 1979 as they got the trade mark amended in 1992.

5. The application made by Respondent No. 1 was for registration of the trade mark "NEW MAN" for the goods in Class 18. It is true that prior to that the petitioners had filed an application for registration in Class 25 in respect of the readymade garments and that application was pending. The petitioners had therefore, filed their opposition raising objections to the registration of the trade mark applied for by respondent No. 1. The trade marks of both the parties consists of the same vowels and words namely "NEWMAN". In the petitioners trade mark, the letters "N", "W", "M" and "N" are in capital letters and that the letters "W" and "M" appear in slanting position. The letters of vowels V and 'a' appearing in the said word are not written in capital letters though in size they are equal with other letters in the said word. It is necessary to note that subsequent to the settlement in passing off action filed by the respondent No. 1, the petitioner agreed to amend their trade mark and in fact got it amended on 17.12.1992. The amended trade mark consists of the word "NEWMAN" in plain capital letters. The trade mark applied for by respondent No. 1 consists of the word "NEWMAN", but it is split in two parts. First part consists of the word "New" which appears on the top and the second part "MAN" appears below it. The words "NEW" and "MAN" are written in a characteristic form in two separate lines in upside down position in a triangle. They are written in such a form and style that in reverse position, the word "NEW" appears as "MAN" and vice versa. There can be no dispute of the fact that there is a phonetic similarity between the two trade marks since they would be pronounced as "NEWMAN" irrespective of the manner in which they appear to have been written.

6. Section 9(1) of the Act enumerates certain essential particulars which are requisites for registration of trade mark in part (A) of the register. One of such essential particulars is distinctive mark. For registration of the trade mark in part-B of the register, Sub-section (4) states that the mark proposed to be registered should be distinctive or capable of distinguishing goods with which the proprietor of a trade mark is or may be connected in the course of trade from the goods in the case of which no such connection subsists. Sub-section (5) states that in determining whether a trade mark is distinctive or is capable of distinguishing as aforesaid, tribunal may have regard to the extent to which a trade mark is inherently distinctive or is inherently capable of distinguishing and by reason of the use of the trade mark or of any other circumstances, trade mark is in fact so adapted to distinguish or is in fact capable of distinguishing as aforesaid. It may be noted that respondent No. 1 have been granted registration of their trade mark in Part-B of the register though they appear to have applied for its registration in Part-A of the register.

7. Shri Chitnis referred to the copies of certain pages from different telephone directories to point out that the word "NEWMAN" is a common surname and therefore, under Clause (d) of Sub-section (1) of Section 9 of the Act, it cannot be registered. I do not find any merit in this argument for the simple reason that the trade mark applied for and got amended by the petitioners also consists of the same word "NEW MAN". Therefore, after having obtained registration of the mark "NEW-MAN", it is not proper nor open to the petitioners to oppose the registration of the said trade mark for respondent No. 1 on the ground that it consists of a surname. In my opinion, the Deputy Registrar was right in pointing out that though phonetically both the trade marks are similar still visually and structurally they are different and that the trade mark applied for by respondent No. 1 is capable of being distinguished. The Deputy Registrar was therefore, quite right in rejecting the petitioner's objection under Section 9 of the Act.

8. Section 11 of the Act states certain grounds on which registration of certain marks is prohibited. One of such grounds as stated in Sub-clause (a) is the use of a mark which would be likely to deceive or cause confusion. Section 12(1) of the Act prohibits registration of identical or deceptively similar trade marks in a case where a trade mark is already registered in the name of different proprietors in respect of the same goods or description of goods. The Deputy Registrar rejected the petitioner's opposition on both these grounds. It is not in dispute that the respondent No. 1 had filed a passing off action (Suit No. 2784 of 1987) against the present petitioner in the High Court of Delhi and that in that suit there was a settlement between the parties on 4.8.1988. By the said consent terms, it was acknowledged that the respondent No. 1 have been using the trade mark "NEWMAN" represented in special logo script characterised by the reverse reading and that the said trade mark is represented on two lines with the word "NEW" appearing above the word "MAN" below in metalic triangle coloured in yellow. What is important to be noted is that under the said consent terms, the petitioners agreed and undertook "not to use the trade mark name "NEW MAN" under the special logo script of the plaintiff or any other logo script which is deceptively similar thereto or is characterised of reverse reading." However, the defendant shall be entitled to use the word "NEW MAN" in a different script. The petitioners were given time upto 31.10.1988 to effect the aforesaid changes in their trade mark and dispose of all the packing material, stationary articles etc. carrying impugned features. As stated earlier, the petitioners thereafter applied for an amendment in their trade mark and the amended trade mark got registered by the petitioner consists of the word "NEWMAN" written in plain capital letters. Shri Chitnis however relied upon the decisions in National Sewing Thread Co. Ltd. v. James Chadwick and Bros., and Ciba Ltd. v. M. Ramlingam, to contend that the decision of a Court in passing off action cannot be considered as relevant on the question which the registrar has to decide under the provisions of the Act. However, this decision does not help the petitioner for the simple reason that the passing off action taken by respondent No. 1 ended in settlement whereby the petitioners virtually conceded the trade mark "NEW MAN" written in logo script in favour of the respondent No. 1 and agreed to get their trade mark applied for, amended and accordingly got the same amended. This conduct on the part of the petitioner is indicative of the fact that they acknowledged the proprietory right of the respondent No. 1 to the trade mark "NEW MAN". After having so settled with the respondent No. 1 it was really not open to the petitioner to have pressed their opposition for the trade mark applied for by Respondent No. 1. In fact, in the fitness of the things, the petitioner should have withdrawn their opposition. However, for the reasons best known to them, the petitioners continued to press their opposition to the registration of the trade mark of respondent No. 1 in class 18. It does not lie in the mouth of the petitioners that the trade mark applied for by respondent No. 1 is likely to deceive or cause confusion. Had it been so, then there is no explanation as to why the petitioners settled the dispute with the respondent No. 1 in the above mentioned suit, acknowledging the right of respondent No. 1 to use the said trade mark. The Deputy Registrar was therefore, quite right in rejecting the petitioner's objection under Section 11 of the Act. As regards, objection under Section 12(1), he has rightly pointed out that the petitioner's trade mark "NEWMAN" is for readymade garments in class 18 whereas the trade mark "NEW MAN" applied for by respondent No. 1 is for certain leather goods in class 18. Therefore, there is no substance in the objection raised under Section 12(1).

9. As regards the exercise of descretion under Section 18(1), the Deputy Registrar has observed that the opposition filed by the petitioner is meritless and in all fairness and on the principles of business honesty it was expected that the petitioners should not have pursued the proceedings after having arrived at settlement with respondent No. 1 in Delhi High Court. I do not see any good reason to disagree with the view taken by the Deputy Registrar.

10. Shri Shah, learned advocate for respondent drew my attention to the decision dated 28th February, 2002 given by Deshmukh, J. in Misc. Petition No. 26 of 1994 filed by the same petitioner against the same respondent. In that case, respondent No. 1 had applied for the trade mark "NEW MAN" written in the same fashion in respect of cloaks, jackets, gowns, suits, blouses, shirts, trousers, coats etc. in class 25. In that case also the petitioner's opposition was disallowed by the Assistant Registrar of Trade Mark and the trade mark applied for by Respondent No. 1 was granted. The petitioner filed similar appeal in the form of Misc. Petition No. 26 of 1994 which was dismissed by Deshmukh, J., inter alia observing that in terms of the compromise between the parties, the petitioner had no locus to object the application for registration filed by the respondent No. 1. I think that the said observation holds good in this petition also.

11. In the result, I find that there is no merit in this petition and the same is therefore dismissed with costs which are quantified at Rs. 5000/-.