Habitat Uk Limited (Formerly) vs Habitat India Private Limited And ...
2002 Latest Caselaw 1346 Bom

JUDGMENT

F.I. Rebello, J.

1. The petitioner has impugned the order dated 3rd September, 1992 passed by the respondent No. 2. By the said order the respondent No. 2 dismissed the 12 opposition Nos. BOM, 7898, 7754, 7699, 7471, 7992, 7995, 7472, 7474, 7500, 7475, 7470 and 8098 filed by the petitioner and allowed the application Nos. 463274, 463275, 463280, 451912, 459932, 459931, 459928, 451908, 451901, 451910, 451911 and 459925 filed in various classes by the respondent No. 1. The respondent No. 1's marks in all the applications consisted of the word HABITAT written in a stylized manner with the word INDIA written in small sized letters perpendicular to the word HABITAT. The said mark was proposed to be used on the date of the application.

2. The case of the petitioner is that they are proprietor of the mark HABITAT used in relation to a wide range of products e.g. Furniture, furnishings, shelving, storage units, lighting, lamps, carpets, rugs, linoleum, wall paper, curtains, blinds, bathroom fittings, kitchen utensils, crockery, books, food, jugs, etc. which products are sold in several countries all over the world. The said mark is registered in several countries viz. United Kingdom, Argentina, Australia, Austria, Benelux, Czechoslovakia, Denmark, Finland, France, Germany, Greece, Hungary, Hong Kong, Iceland. Irish Republic, Japan, Kuwait, Liechtenstein, Lebanon, Malaya, Malta, Monaco, Morocco, Norway, Portugal, Saudi Arabia, San Marino. Switzerland, Singapore and Sweden. The petitioner also operates under trading style "HABITAT" in the United Kingdom and has various outlets by the name where it sells it goods. The petitioner also operates a world wide international mail order house.

3. It is the case of the petitioner that over the last more than 30 years they have developed a substantial international business and its sates figures in respect of goods sold under the mark HABITAT in various countries including INDIA during 1981-82 to 1988-89 are to the extent of 13 lakh pound sterling. Considering the extensive sales the petitioner contends that it has achieved reputation worldwide and its mark HABITAT has come to be exclusively associated and identified with the Petitioner world over.

In India the petitioner has over the years entered into agreements with various manufacturers under which Indian manufacturers, manufacture goods for the petitioner as per the petitioner's specifications. Such goods bear the petitioner's trade mark and are dispatched from India to the petitioners. In 1989-90 alone the petitioners goods worth 7,87,425 pound sterling were manufactured in India and exported. By virtue thereof, the mark Habitat has achieved valuable reputation in India and the mark has come to be associated solely with the petitioner. This association of the mark with the petitioner in India, is corroborated and supported by the petitioners international proprietorship and reputation. The petitioner's products have been featured in newspapers and magazines having a wide circulation in India e.g. The Times, The New York Times. The Washington Post, Good Housekeeping, Homes & Gardens, etc. The petitioners mark has also achieved familiarity, recognition and reputation amongst Indians by virtue of supply of catalogues on request, direct mail orders and the public travelling abroad.

4. Between April, 1986 and November 1986 the Respondent No. 1 filed 12 applications for registration of the mark HABITAT in India under application Nos. 463274, 463275, 463280, 451912, 459932, 459931, 459928, 451908, 451901, 451910, 451-911 and 459925 in classes 1, 4, 22, 25, 33, 32, 23, 20, 2, 19, 27 and 10 respectively. In each of these the mark was proposed to be used.

Respondent No. 2 advertised the said marks in the Trade Marks Journals either after acceptance or before acceptance. Petitioner opposed all the applications and filed its notices of opposition between 29th June, 1989 and 7th September, 1990 inter alia under Sections 9, 11(a), 11(e) and 18(1) of the Trade & Merchandise Marks Act, 1958.

Respondent No. 1 filed counter-statements in each of the cases denying the averments made by the petitioners in the notices of opposition and contended that they were a leading company engaged in construction work and intended to diversify in a wide range of marketing activities under the said trade mark. They also contended that they adopted the mark bona fidely and honestly after inspecting the records of the Trade Marks and carrying out enquiries in the trade. They also contended that the word HABITAT formed a part of their corporate name. It was further contended that the international reputation of the petitioners mark was not sufficient to prove confusion arising in India as the mark of the petitioner was not used in India.

The petitioners in support filed an affidavit of Angela Mary Tower alongwith their evidence in support of the opposition. Petitioner also filed a supplementary affidavit of the same deponent on 4th February, 1991.

Respondent No. 1 did not file any evidence in support of their application but vide their letter of 19th June, 1991 denied the contents of the affidavits filed by the petitioner and submitted that they would rely upon the statements made in their counter-statements.

5. Respondent No. 2 after hearing the arguments advanced vide his order dated 3rd September, 1992 dismissed all the oppositions filed by the petitioner and allowed all the applications filed by the respondent No. 1. The respondent No. 2 while passing the order recorded amongst others the following findings:-A mark cannot be non-distinctive or not capable of distinguishing the applicants goods under Section 9 of the Act just because it is similar to the opponents mark: As the mark is a well known dictionary word and has no direct reference to the character or quality of goods sought to be registered by the applicant, the applicants mark falls within the category of Section 9(1)(d) of the Act; Section 9 cannot be sustained as the rival marks though phonetically similar there is a structural difference between the two rival marks. It is be presumed that the petitioner is a departmental store dealing in goods of different manufacturers and that they are only marketing the products through their retail outlets. The petitioners have failed to establish use and reputation in India. The petitioners objection under Section 1(a) is not sustained. As the petitioners have not registered the mark in India they cannot claim proprietorship to the mark in India. The respondent No. 1 is the proprietor of the mark and the petitioners objection under Section 18(1) is not sustained. It is not necessary to exercise discretion under Section 18(4) since the opponents mark was not known to a substantial number of persons; As a consequence opposition Nos. BOM/7898, 7754, 7699, 7471, 7992, 7995, 7472, 7474, 7500, 7475, 7470 and 8098 filed by the petitioner were dismissed and application Nos. 463274, 463275, 463280, 451912, 459932, 459931, 459928, 451908, 451901, 451910, 451911 and 459925 were accepted and allowed to proceed for registration.

6. Considering the arguments advanced at the bar we may now deal with the submissions made. The respondent No. 1's adoption of the mark is dishonest and was adopted with knowledge of the petitioner's mark HABITAT and the international reputation attached to it. This is evident from the fact that Mr. S.W. Sangameneheri was a town planner for many years with the local authorities in Glasgow and London and having lived in London for several years was aware of the reputation of the petitioners. Exhibit "F" to the compilation of documents relied on by the petitioner is an article in Times of India stating that Shri Sangameneheri was in Glasgow and London. That fact is not disputed by the 1st respondent nor the fact that Sangameneheri is the person in control of the 1st respondent. The choice of the mark by the respondent No. 1 was not by chance but was clearly to exploit the goodwill of the petitioners in the said mark. This fact was not denied by the respondent No. 1 who had not filed any affidavit dealing with the case set out by the petitioners in paragraph 21 of the affidavit giving evidence in support of opposition. Therefore, the respondent No. 1 cannot be the proprietor of the mark. A person who adopts a mark with knowledge that someone else is already using and has adopted that mark cannot claim to be the proprietor thereof. The material on record clearly shows that "Habitat" has been adopted by the petitioners long prior to the 1st respondent and that the 1st respondents adoption is with notice thereof. The 1st respondent cannot, therefore, claim to be the proprietor thereof. Therefore, the objection under Section 18(1) ought to be sustained and the 2nd respondent was clearly in error in rejecting the opposition on this ground.

7. The respondent No. 2 was also in error in holding that the petitioner was not the proprietor of the mark in India on the ground that the mark was not registered in India. In law, registration is not the only mode of acquiring proprietorship of a mark. Proprietorship can be claimed even by user of the mark and the petitioner can be the proprietor even without registration (See Consolidated Food v. Brandon) and also (See Narayanan on Trade Marks 4th Edition, paragraph 5.03). The question to be decided was whether the respondent had honestly conceived and adopted by mark. Once it was seen that he was aware of the petitioners mark, it could not be said that he had honestly adopted the mark, therefore, the respondent No. 1 could not be the proprietor (Narayanan on Trade Marks 4th Edition para. 5.05). On the question of proprietorship, the knowledge of the 1st respondent in relevant, not the knowledge of other persons. It is irrelevant whether Indians were aware of the petitioners mark on the question of claiming proprietorship. The question really being whether the respondent No. 1 was aware of the petitioners mark or not. The material on record clearly indicates the 1st respondent's knowledge of the petitioners mark the 2nd respondent has misdirected himself on this question and his finding is, therefore, vitiated.

8. The 2nd respondent should have considered the petitioner reputation in the mark. The mark had been registered in over 30 countries and used there. The international reputation has extended to India. (See N.R. Dongre and Ors. v. Whirlpool Corporation and Anr.). The petitioners had adduced evidence regarding use and reputation in India in the form of agreements with manufacturers in India and export of the goods from India. There was mail order sales to India. The petitioners catalogues and advertisements in Magazines, etc., had a circulation in India. Indians going abroad were also aware of the petitioners mark. Therefore, use by the respondent No. 1 of an identical mark would cause confusion and deception (See Narayanan on Trade Marks 4th Edition paragraph 2.10), use on Catalogues also amounts to use of the mark. The respondent No. 2 erred in holding that the petitioners had not established reputation in India. The Registrar overlooked the material adduced in the Affidavit in support of the opposition more particularly the bills and invoices at Exhibit D thereto. Catalogues and the agreements with the manufacturers. The petitioners therefore, had also shown that they had used the mark in India. The different stylized writing was not relevant and was not sufficient to avoid confusion since the marks were phonetically identical. Even assuming that the petitioners mark was a service mark, the petitioners could still maintain their objections under Sections 9, 11 and 18, does not support the respondent case, as the rival goods in that case were totally different. The respondent therefore, was clearly in error in holding that the petitioners registration in U.K. was for goods different from those of the Respondent No. 1. The respondent No. 1 did not file any evidence in support of its application and did not discharge the burden cast upon it to prove that its use of the mark would not cause confusion. The 1st respondent has not given any valid, bona fide reasons for adopting the same mark "Habitat". The Registrar's approach in holding that the petitioner had not filed any affidavit of any dealer to show that the mark would cause confusion was totally incorrect as the burden was on the respondent No. 1 who was the applicant (See ). Under Section 1(a), if the use of a mark is likely to deceive or cause confusion, that mark is disentitled to registration. The material on record shows that the petitioners have used their mark in India and any use of the same mark "Habitat" by the 1st respondent will result in confusion and deception. The 1st respondent's conduct also shows that its adoption of the mark is not bona fide. It has sought to register the mark in very many classes, without any use thereof. All applications show that it is only proposed to be used. It is not possible to accept that there was, on the date of the application, any bona fide intention/to use the mark in respect of the goads covered by all those classes. The petitioner's objection under Section 11(a) therefore, ought to have been sustained.

9. The Registrar on the facts and material before him clearly erred in not exercising discretion under Section 18(4) against the 1st respondent on the material available. The Registrar was in error in holding that the petitioners mark was not well known in India and was not known to a substantial number of persons. All the factors discussed earlier clearly warranted a refusal by the 1st respondent's application for registration. The 2nd respondent was, therefore, clearly in error in not exercising his discretion against Respondent No. 1.

10. For all the aforesaid reasons the impugned order is set aside and the 12 objections applications filed by the petitioners are allowed and the application filed by respondent No. 1 for registration are rejected.

In the circumstances of the case there shall be no order as to costs.

Parties/Authorities to act on an ordinary copy of this order duly authenticated by the Associated/Personal Secretary of this Court.