Bhim Sain And Anr. vs Janta Naswar Factory
1997 Latest Caselaw 332 Del

JUDGMENT

S.N. Kapoor, J.

(1) This appeal under Section 109 of the Trade and Merchandise Act, 1958 (hereinafter called "the Act" for short) is directed against an order of the Assistant Registrar dated 27th October, 1975 rejecting application of the appellant for registration of their Trade Mark.

(2) On 9th May, 1972 the appellant firm M/s. Bhim Sain Yash Pal comprising of two partners Bhim Sain and Shiv Prakash applied vide application No. 280087 for registration of trade mark "AATH Photo MARK" snuff in Class 34 claiming user since 1972. After preliminary scrutiny and on the ground of conflict with the application of the opponents No. 2547598 this mark was accepted subject to disclaimer of digit "8" and the words "AATH Photo MARK". It was advertised in Trade Mark Journal No. 597 dated 16th July, 1973. 2.2. On 19th September, 1973, the respondent entered into opposition on three grounds that: ( i ) they are proprietors for the trade mark label containing, inter alia eight photographs, the expressions "JANTA Mail SNUFF", numeral "8" and "AATH Photo MARK", (ii) they have been using and earned goodwill around it since 1963; and (iii) its registration would be in violation of Sections 11(a) and 18(1) of the Act. 2.3. By the impugned order, opposition was upheld and application of the appellant firm was rejected.

(3) Feeling aggrieved by the aforesaid order, the appellants have preferred this appeal inter alia on the ground that there was neither any resemblance between the trade mark labels of the two parties, nor there was any similarity. The product of the respondent was being sold under trade name "JANTA Mail SNUFF" The respondent/opponents applied later on for registration of the "AATH Photo MARK under No. 2900965, vide Exhibit 'L'. In the respondent's label, the device of a bust and the words Janta Mail Naswar on one panel; on the other penal a scroll and the words Janta Mail Naswar in Hindi script; in the third panel there were photos appearing of a Muslim with beard, Kullah, turban and buttoned up coat; and in the fourth panel the words Janta Mail Naswar in Gurmukhi and Gujrati. Its user was admitted by Shri Meghraj Phophaliya, who clarified in his affidavit dated 10th February, 1975 that the sale never exceeded over Rs. 2,000 .00 per annum. Subsequent affidavit dated 17th July, 1974 could not be relied upon. The respondent failed to produce any convincing evidence to establish the user and reputation of the mark.

(4) The object of trade mark registration is to prevent (sic.) of that person. As the registration of a trade mark confers valuable right to inform the customer about the registered proprietor thereof, a person cannot be permitted to impinge upon the reputation of another by producing sub-standard goods and passing off his own goods as goods of another having distinct reputation in the market.

(5) In so far as objection relating to Section 18(1) of the Act, is concerned, the appellants have to prove that they are proprietors of the trade mark sought to be registered. Moreover, Sub-section (4) of Section 18 has made discretion of the Registrar to refuse or to accept the application for registration of the trade mark "subject to the provisions of this Act". Section 8 provides that registration has to be in respect of particular goods; Section 9 lays down requisites for registration in parts A and B of the register; Section 10 provides limitation as to colour and Section 11 provides for prohibition of registration of certain marks and of registration of identical or deceptively similar trade marks respectively. Section 13 provides for prohibition of registration of names of Chemicals; Section 14 relates to use of names of representation of living persons or persons recently died; Section 15 provides about registration of parts of trade marks and of trade marks as series; Section 16 provides for registration of trade marks as associated trade marks and Section 17 relates to registration of trade marks subject to disclaimer. The present case could relate to prohibition of articles of identical or deceptively similar trade marks, as provided in Section 12. But Section 12(i) of the Act would not apply since it applies only to registered trade marks. The trade mark of the respondent is not registered. Both the parties are not proprietor of a common trade mark, to fall in the purview of saving clause "Save as provided in Sub-section (3)."

(6) Before proceeding, first the question of proprietorship of the disputed parts of the trade mark may be seen. In order to determine as to who is proprietor for the purpose of registration of a trade mark in respect of particular class of goods under Section 18(i) prolonged user, larger area, larger sale proceeds, distinctiveness of the goods or trade mark, are relevant points for consideration. 6.2. Respondent, as has been stated earlier, claims to be the proprietor of the label containing inter alia eight photographs, the expressions "JANTA Mail SNUFF", numeral "8" and the expression "AATH Photo Mark". It is claimed by the respondent that he has been using the same since 1963 and thereby valuable goodwill has accrued aground his trademark. It is contended from the appellant's side that the sale figures given by the respondent in the subsequent affidavit of the opponent dated 17th July, 1974 could not be accepted in view of earlier affidavit. 6.3. From a reading of the impugned order, it is apparent that the learned Assistant Registrar has not been led only by what is mentioned in the affidavit, he has also seen the circumstances which led to the conclusion. Apart from the affidavit of Megh Raj Phophaliya dated 17th July, 1974 in order to conclude that the annual sale figures from 1964 to 1973 ran into lakhs of rupees, the learned Assistant Registrar also noticed the publicity expenses to popularise the mark which was quite considerable and the expenses were further supported by documents filed in this connection. It is notable that Shri Meghraj Phophaliya in his affidavit dated 12th February, 1975 stated that the opponents' predecessor-in-title Bharat Trade Agencies had been using the mark Ex. "L' before 1963. In the year 1963, Bharat Trade Agencies were dissolved and the opponents became the sole proprietor thereof. In the year 1964, he started a sole proprietorship concern under the name and style of Janta Naswar Factory and started using the mark Ex. 'M' ever since. The mark Ex. 'M' had been used since 1964 and had become well-known in the market by virtue of publicity campaign carried on for propagating it. The sale figures in the earlier affidavit pertained to the use of mark Ex.'M' since the year 1964. In the face of this evidence, the finding of the learned Assistant Registrar cannot be assailed. Moreover, from the other affidavit also at least user of the trade mark since 1964 is established. 6.4. In so far as expression "JANTA Mail SNUFF" is concerned, it is "inherently distinctive or is capable of distinguishing", the products of respondent. A question arises, "whether in numeral "8", and Aath Photo Mark and the mark seven photos around main photo in the middle, could it be said that the respondent has acquired any proprietary rights ?" Considering individually numeral "8" the obvious response is that the respondents could not monopolise the numeral "8". But this kind of splitting approach, like hair-splitting arguments must fail for in its prolonged and extensive user in the scheme of the trade mark, numeral "8" alongwith eight photographs is inherently capable of distinguishing the goods of the respondent from that of others and it has been so adopted. Now coming to the expression "AATH Photo Mark", it is a composite word. When it is split up in three words and all these three are seen in isolation, these three words "AATH" "PHOTO" and "Mark" may be publicity juris and none can claim proprietary rights in them. But combination of all the three words has acquired distinctiveness with regard to respondent's Naswar or Snuff. Same is true about the combination of eight photos. Consequently, in the scheme of trade mark of the respondent, due to prolonged and extensive user respondent has acquired proprietary rights in the trade mark. It would be of interest to note that in Kalyani Brewries Ltd. v. Khoday Prewing and Distiling Industries, 18 Iplr 132 (Cat. 1993), the expression "Kalyani Black Label" was registered subject to the condition that the registered proprietor would have no right to the exclusive use of the word "label". The defendant used the expression "Khoday Black Label". The contention of the Kalyani Breweries Ltd., the plaintiff that it has the exclusive right to use the words "Black" and "label" in conjunction for beer and the respondent's user amounted to infringement of its registered trade mark, was upheld, applying the triple identity rule of identity of marks, goods and market. Applying the same triple identity rule of identity of marks, goods and market, objection of the respondent has to be upheld, though it is not a registered trade hiark. 6.5. As has been seen, the appellant claim user since 1st April, 1972, just five weeks before making the application in the face of prolonged user by the respondent since 1964. Moreover, the applicants/appellants do not say that they had invented expression "AATH Photo Mark" alongwith either photos and the numeral "8". It is obvious that the intention is just to copy the trade mark of the respondent to cause deceptive similarity and consequential confusion. 6.6. Another contention raised is that there was no evidence on record about the giving up of the mark Ex. "L'. It may be mentioned that it is immaterial if the opponent/respondent has been using the two trade marks and one trade mark has become popular, then another trader cannot use the popular trade mark by saying that the opponent/respondent has and could use the other trade mark. It is immaterial so long it is not proved that the mark in question had been abandoned. And, appellants have failed to prove the abandonment of the trade mark in question. 6.7. Next contention raised is that the appellant had applied for registration on 9th May, 1972 and the respondents/opponents applied for registration later than that of the appellants. Consequently, the respondent could not claim any preferential right over the mark. It may be mentioned that the opponents/ respondents had established that they had been using their trade mark since 1964. As against this, it is not the case of the appellant that they were using this trade mark before the respondent started using the same. Consequently, there is no force in the aforesaid contention raised by the appellant. 6.8. For the foregoing reasons, it is apparent that the respondent by his prolonged user of the trade mark, including expression "AATH Photo Mark", numeral "8", and eight photos in the context of the scheme of the trade mark in larger market area for over 7 years, as compared to 5 weeks user of the appellants at the time of application-has acquired rights of high commercial value to constitute reputation as well as vested exclusive use of these parts of the trade mark in the scheme of his trade mark. Consequently, the appellant, not being the owner of the trade mark, cannot claim registration under Section 18(i) of the Act of any trade mark using expression "AATH Photo Mark", numeral "8" and eight photos, as are being used in the mark of the respondent

(7) Now, before entering into the question of resemblance leading to deception and causing confusion and its effect, it would be desirable to refer to Section 11 of the Act which reads as under : "11. Prohibition of registration of certain marks-A mark (a) the use of which would be likely to deceive or cause confusion; or (b) the use of which would be contrary to any law for the time being in force; or (c) which comprises or contains scandalous or obscene matter; or (d) which comprises of contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or (e) which would otherwise be disentitled to protection in a Court ; shall not be registered as a trade mark"

(8) What are the tests for determining that a particular label or trade mark is likely to cause deception and confusion in the presence of another label/trade mark in the market? As to "deception" it is perhaps appropriately described in the present context and should mean "knowingly and willingly making a fake statement or representation, express of implied, pertaining to a present or past existing fact". (See Blacks Law Dictionary, 6th edition p. 406). The term "deceptively similar" should therefore mean a phonetic or visual or otherwise made false representation made willingly and knowingly so as to make such a similar presentation of one's own products that his products should be sold in the market as products of another well established trader. In this respect, it must be kept in mind that "a mark shall be deemed to deceptively similar to another mark, if it so nearly resembles that other mark as to be likely to deceive or cause confusion" in terms of Section 2(i)(d) of the Act. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark or goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection (See Amritdhara Pharmacy v. Satya Deo Gupta, ). There is distinction between causing deception and causing confusion in English Law (See Parker Knoll Ltd. v. Knoll International, 1962 Rpc 265). But Section 2(i)(d) of the Act, by its deeming provision has obliterated that distinction.

(9) In my humble view, following principles have been laid down in various authorities to judge whether there is deceptive resemblance between the two labels or whether registration of the trade mark would cause confusion : (i) The question whether the two marks are likely to cause confusion or not is a question of first impression and it is for the Court to decide that question. (See Corn Products Refining Co. v. Shangrila Food Products Ltd., ). (ii) In deciding a question of similariTY between the two marks, the marks have to be considered as a whole, and not by splitting numerals, expressions, designs and colour scheme used in the trade marks. (See Corn Products Refining Co. v. Shangrila Food Products Ltd.) (supra). F. HoffimannLa Roche b Co. Ltd. v. Geoffery Manners & Co. Private Ltd., ). The trade mark is the whole thing - the whole word leas to be considered, (See Amritdhara Pharmacy v. Satya Deo Gupta, (supra). It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion. (See HoffimannLa Roche & Co. Ltd. v. Geoffery Manners & Co. Private Ltd., (supra). (iii) The test of commonness of the idea between the two marks could be applied in deciding the question of similarity between them. In deciding the question of similarity or dissimilarity, one must consider the nature and kind of customers who are likely to buy those goods and approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man, the overall structural or phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them (Corn Products Refining Co. v. Shangrila Food Products Ltd. (supra). (iv) The absolute identity of two competing marks or their close resemblance is only one of the tests and a comparison has to be made out a glance and not with strenuous effort to find the similarity. (v) Trade connection between different goods is another such test. Ex- hypothesi this test applies only when the goods are different. But there is no reason why the test of trade connection between different goods should not apply where the competing marks closely resemble each other, just as much as it applies where the competing marks are identical. (See Corn Products Refining Co. v. Shangrila food Products Ltd. (supra). (vi) A composite word having acquired worldwide reputation on account of expensive multi-media advertisement, coupled with some prior user of the trade mark in India, could not be used or sought to be registered in the name of another person though dealing in different goods. (See N.R. Dongre & Ors. v. Whirlpool Corporation & Am., ). (vii) All the above tests are totally independent tests. (See Corn Products Refining Co. v. Shangrila Food Products Ltd. (supra). (viii) In absence of criteria for determining what is likely to deceive or cause confusion within meaning of Section 8, Section 10 (or Section 11), every case must depend on its own particular facts and the value of authorities lies not so much in the actual decision as in the test applied for determining what is likely to deceive or cause confusion. What degree of resemblance is necessary to deceive or cause confusion must in the nature of things be incapable of definition a priority. (See Amritdhara Pharmacy v. Satya Deo Gupta (supra). (ix) In case of commonly used words in trade, descriptive of the nature or colour or laudatory of the quality of the goods or words of generic terms like "micro" and "son", cannot be permitted to be monopolised, excepting when two or more such words are used as a composite word in circumstances mentioned hereinafter and "not being a geographical name or a surname or a personal name or any common abbreviation thereof or the name of set, caste or tribe in India. But invented words and composite words stand on different footing. An invented word means a word coined by using the first letter and the letters of different commonly used and known words having no meaning or no obvious meaning until one has been assigned to it. A composite word is coined by using several commonly used and known words or parts thereof. When the invented or composite words are to be compared for determining whether they are likely to deceive or cause confusion, they must be judged by their look and visual impression and by their sound without splitting words. (See F. HoffimannLa Roche & Co. Ltd. v. Geoffery Manners & Co. Pvt. (supra) or letters and considering their etymological or ideological meaning of the invented or composite words what we have to consider here is the overall similarity of the invented or composite words having regard to all the surrounding circumstances that the goods are bearing the two names were or were not of the same kind and same description. The admission of mark is not to be refused because unusually stupid people, fools or idiots might be deceived or confused. (See Amritdhara Pharmacyv. Satya Deo Gupta, (supra). (x) Where there is no chance of deception or confusion, a trade mark may be registered; where there appears to be doubt as to whether deception or confusion is likely or not, the application should be refused and application has to be refused where a trade mark is likely to deceive or cause confusion by its resemblance to another already on the register, if it is required to do so in the course of its legitimate use in the market where the two marks arc assumed to be used by the traders in that market.

(10) Now, the facts of the case may be seen in the light of above guidelines. In this case both the parties are trading in "Snuff" (Naswar). Striking and essential features in both the marks are comprised of the bust portrait with the turban in the centre and seven similar portraits placed in satellite position around the main bust portrait and expression "AATH Photo Mark" with numeral "8". This similar singular feature dominates both the rival mark/labels. One of the contentions raised in the appeal is that there was a scroll and words "JANTA Mail NASWAR" in Hindi script. In the third panel, there were photos appearing to be bust of a person looking like a Muslim gentleman with beard, Kullah and turban and a buttoned up coat. The fourth panel has the words "JANTA Mail NASWAR" in Gurmukhi and Gujrati scripts. If the aboveboard features are common and Janta Mail Naswar is written in Hindi, Gurmukhi and Gujrati scripts, one may not find a single literate person who may be able to read each of these four scripts. The illiterate purchasers of Naswar would go only by the mark of seven photos around the main photo on the label. It may again be difficult to ascertain whether it is a bust of a Muslim or a Sikh. Learned Assistant Registrar, therefore, appears to be right in holding that these labels which are to be used in the line of same trade of Naswar or snuff, coupled with this kind of dominantly identical features so nearly resembling with each other that they are bound to cause confusion for they create an identical commercial impression. Purchasers of Naswar who are generally illiterate and poor would neither have the time, nor the microscope nor capacity to have a close examination of the labels on the "Naswar" offered for sale by the two parties. Now, coming to another facet. Despite the writings in Hindi, Gurmukhi and Gujrati on the label, the two labels would remain Aath Photo Mark or Eight Photo Mark, there is exactly same phonetic resemblance in the expression that its registration is certainly likely to lead to deceptive resemblance and cause confusion.

(11) The appellants have not even consented or agreed to disclaim any right to the exclusive use of the mark 'AATH Photo Mark' and the numeral '8'. And in view of the foregoing, it is not possible to register without disclaimer in terms of Section 17 read with Section 18(i) of the Act.

(12) In view of very close resemblance leading to confusion between the two marks, prolonged prior use and reputation of the opponents mark coupled with the recent adoption by the applicants of the trade mark an irresistible inference is that applicants must have copied the opponent's mark. These reasons were rightly found sufficient to reject the claim of the appellants of their assumed title and ownership of the trade mark which was sought to be registered. Consequently, the appellants could not be regarded as the proprietors of the mark under Section 18(i) of the Act to permit its registration.

(13) For the foregoing reasons, I find no force in this appeal and dismiss the same, with no orders as to costs.

(14) A copy of this order be sent to the Court concerned through Assistant Registrar of Trade Marks, Delhi.