M/S. Jain Electronics vs Cobra Cables P. Ltd. And Ors.
2010 Latest Caselaw 5440 Del

       IN THE HIGH COURT OF DELHI AT NEW DELHI

                         W.P.(C) No. 12694 of 2005

                                Reserved on : 26th November 2010
                                Decision on : 30th November 2010

       M/S JAIN ELECTRONICS                      ..... Petitioner
                     Through: Mr. A.K. Goel with
                      Mr. Praveen Kumar, Advocates.

              versus

       COBRA CABLES P. LTD. AND ORS.         ..... Respondents
                   Through: Mr. S.K. Bansal with
                   Mr. Akshay Srivastava, Advocates.


       CORAM: JUSTICE S. MURALIDHAR

       1. Whether reporters of the local news papers
          be allowed to see the judgment?                           No
       2. To be referred to the Reporter or not?                    No
       3. Whether the judgment should be reported in the Digest? No
                         JUDGMENT

30.11.2010

1. The Petitioner challenges an order dated 10th March 2005 passed by

the Intellectual Property Appellate Board („IPAB‟) dismissing the

Petitioner‟s appeal against an order dated 17th May 1995 passed by the

Deputy Registrar of Trade Marks rejecting the Petitioner‟s application

No. 481358 in Class 9 for registration of the trade mark „Cobra‟.

2. The Petitioner filed the aforementioned application in respect of

voltage stabilizer and parts and fittings thereof included in Class 9 of

the Trade and Merchandise Marks Act, 1958 („TM Act, 1958‟). The

Petitioner‟s application dated 19th November 1987 was advertised in the

trade marks journal dated 1st February 1992.

3. In response to the aforementioned application Cobra Cables Pvt.

Ltd., Respondent No.1, herein filed a notice of opposition on 16th

March 1992. The case of Respondent No. 1 was that they were engaged

in the business of manufacturing electrical apparatus and instruments,

electric cables and electric conductors under the trade mark „Cobra‟

which was part and parcel of their trading style. The mark „Cobra‟ had

been registered in their favour under registration No. 369325 and was

being renewed from time-to-time. The said trade mark „Cobra‟ was

originally owned by M/s. M.P. Electric Company and was transferred

on 5th December 1980 to M/s Cobra Cables (India) who in turn assigned

the mark to Respondent No. 1 by an instrument of assignment dated

15th January 1991. The objection of Respondent No.1 which was

accepted by the Deputy Registrar, was that mark „Cobra‟ applied for by

the Petitioner, being identical to the registered trade mark of

Respondent No.1 would cause confusion and deception and was,

therefore, not registrable under Sections 9, 11(a), 12(1) and 18(1) of the

TM Act, 1958.

4. The Petitioner claimed that it has been using the mark since 1978 but

failed to produce any evidence to substantiate the said claim.

Respondent No.1 filed a communication before the Deputy Registrar

that they did not wish to file any evidence under Rule 53(1) of the

Trade and Merchandise Marks Rules, 1959 („TMM Rules, 1959‟) and

wished to only rely upon the facts and circumstances averred in the

notice of the opposition. On its part, the Petitioner relied upon the

statement of annual sales from the year 1978-79 to 1992-93 and certain

unattested photocopies of bills.

5. The Deputy Registrar allowed the opposition filed by Respondent

No. 1 and refused to register trade mark „Cobra‟ in favour of the

Petitioner. Apart from holding that the Petitioner had not produced any

affidavit of user since 1978, the Deputy Registrar held that the mark

„Cobra‟ was not distinctive of the goods. Further, because of non-use of

the mark, it was not registrable under Section 12(3) of the TM Act,

1958. It was also held that the goods of the Petitioner and Respondent

No.1 were of same description falling in Class 9. The Deputy Registrar

held that with the mark of Respondent No. 1 being identical and being

registered in the forum, acceptance of the application of the Petitioner

for the same mark would cause confusion and, therefore, could not be

allowed. It was held that triple identity test, i.e., the mark being

identical, the goods being of same description and the area of sale or the

sales channel being the same stood satisfied.

6. Before the IPAB, the arguments already advanced before the Deputy

Registrar were reiterated by the parties. As regards the finding on triple

identity, the IPAB observed as under:

"8. So far as this finding is concerned, there is absolute no dispute. The main objection on the part of the learned counsel for the appellant is that the first respondent is not using the mark, whereas, the appellant had let in evidence in respect of the use of the impugned mark and hence, there cannot be any objection under Section 11(a) of the Act. Such a plea was

raised on the assumption that the appellant is regularly using the impugned mark COBRA for Voltage Stabilizers and the documentary evidence produced by the appellant is more than sufficient to establish such a plea. In such circumstances, we have to consider whether the evidence produced by the appellant establishes their use of mark COBRA. We have perused the sales statistics, Annexure-A to the affidavit of Shri N.K. Jain filed as evidence in support of application. It is a statement of the appellant without any reference to any of the returns submitted to the statutory authorities and not even authenticated by the Auditor. Hence, the self serving documents cannot be taken as valid evidence. The copies invoices and the bills produced by the appellant at Annexure- D3 to D75 do not reveal that the appellant had sold the Voltage Stabilizers under the brand name COBRA. Some of the printed Bills/Invoices bear the name of the appellant Jain Electronics. In those Cash/Credit memos, the monogram of Cobra along with the word COBRA is printed. What is significance attached to the monogram of the cobra along with the words is not clear. In the description of goods sold by the appellant, it is simple mentioned „Automatic Voltage Stabilizer‟ without any reference to the trade mark. In such circumstances, it is very difficult for us to accept the plea of the appellant that they used the impugned trade mark in relation to the Voltage Stabilizers. Unless the trade mark with the description of goods or the goods identified by the trade mark is mentioned in the bills or invoices, the relation between the two cannot be inferred or cannot be said to have been established."

On the above reasoning, the IPAB rejected the Petitioner‟s appeal.

7. Appearing for the Petitioner Mr. A.K. Goel, learned counsel

reiterated the submissions advanced both before the Deputy Registrar

and the IPAB. Mr. S.K. Bansal, learned counsel appearing for

Respondent No. 1 also reiterated the submissions advanced before the

two authorities.

8. The submissions of learned counsel for the Petitioner was that

Respondent No.1 not having led any evidence to establish its case that

it had the proprietorship of the marks even before 1978, the case of

prior user since that date ought to have been accepted. This submission

overlooks the basic rule that the Petitioner had to make good its case of

prior user since 1978. The Deputy Registrar as well as the IPAB

concurrently held that the Petitioner failed to do so. Before this Court,

the learned counsel referred to the duplicate copies of certain invoices

which did not bear the mark „Cobra‟ but on which a handwritten date of

1978 figured. This certainly cannot be considered satisfactory evidence

of user since 1978. Further, even the invoices produced by the

Petitioner are since 1984 onwards. Many of them do not show the sale

of voltage stabilizers with the name of Cobra, although the mark figures

in the top position of the invoices. Learned counsel for Respondent

No.1 is right in pointing out that the user had to be in relation to the

goods and not merely the invoices.

9. On the evidence produced by the Petitioner the concurrent finding of

the Deputy Registrar as well as the IPAB is that the user since 1978 of

the mark in relation to goods produced and sold by the Petitioner has

not been established. This Court is not persuaded to come to a different

conclusion.

10. Extensive case laws were relied upon by the learned counsel for the

Petitioner to urge that the Petitioner could avail of defence of

concurrent user of the mark even if not a prior user. It was also

submitted that Respondent No.1 not having sought any infringement

action against the Petitioner must be held to have acquiesced in the use

of the mark „Cobra‟ by the Petitioner.

11. With there being a registered trade mark „Cobra‟ in the name of

Respondent No. 1, which has not been opposed by the Petitioner till

date, there can be no doubt that grant of registration in respect of an

identical mark in favour of the Petitioner would cause deception and

confusion. The mark has been registered in favour of Respondent No. 1

in respect of goods which included electrical apparatus. The Petitioner

is seeking registration of an identical mark in respect of voltage

stabilizers. It was sought to be urged that Respondent No. 1‟s goods

were electric cables whereas the Petitioner‟s were voltage stabilizers

and therefore the goods were different. There can be no doubt that the

electric cables are used in voltage stabilizers as well. The trade channel

is essentially the same. The goods are available usually in the same

place as well. Use of an identical mark in respect of the two goods is

bound to cause deception and confusion in the market. The Deputy

Registrar and the IPAB concurrently concluded that the triple identity

test stood satisfied in the present case, particularly since the description

of the goods is the same, the area of the sale and the trade channel are

the same. This Court concurs with the said view. The registration in

favour of Respondent No. 1 dates back to 1980, whereas the

Petitioner‟s invoices, all of which do not show use of the mark in

relation to goods, is only since 1984. In the circumstances, the plea of

concurrent user is not available to be taken by the Petitioner.

12. This Court finds that no ground is made out to interfere with the

impugned order dated 10th March 2005 of the IPAB. The petition is

dismissed.

S. MURALIDHAR, J NOVEMBER 30, 2010 ak