Madras High Court
Paragon Polymer Products Private ... vs Sumar Chand Nahar on 7 January, 2025
Author: N.Seshasayee
Bench: N.Seshasayee
(T)CMA(TM) No.80 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved on : 29.11.2024
Pronounced on : 07.01.2025
CORAM : JUSTICE N.SESHASAYEE
(T)CMA(TM) No.80 of 2023
(OA/8/2020/TM/CHN)
Paragon Polymer Products Private Limited
Previously M/s.Paragon Rubber Industries
PB No.61, Paragon Building
Opp.Bishop Jacob Memorial Hall
Srinivasa Iyer Road
Chalukkunnu, Kottayam
Kerala - 686 001. ... Appellant
Vs
1.Sumar Chand Nahar
Trading as : M/s.Paragon Engineers
#2, 3rd Floor, B.V.K.Iyengar Road
P.B.No.7927, Bangalore - 560 053.
2.The Joint Registrar of Trade Marks
Intellectual Property Office
Intellectual Property Office Building
G.S.T.Road, Guindy
Chennai - 600 032. ... Respondents
PRAYER : Appeal filed under Section 91 of the Trade Marks Act, 1999
praying to dismiss the order of the Joint Registrar of Trade Marks be
1/20
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(T)CMA(TM) No.80 of 2023
dismissed and the impugned mark be denied registration, and any other
further order this Court may deem fit and proper in the facts and
circumstances of the case.
For Appellant : Mr.R.Sathish Kumar
for Mr.B.Karthick
For Respondent : Mr.Arun C.Mohan for R1
Mr.R.Rajesh R.Vivekananthan for R2
Amicus Curiae : Mr. Avinash Wadhwani
JUDGMENT
The appellant herein has lost its opposition against the registration of trade
mark in an application filed by the first respondent for registering the device
mark, which is a composite mark of a word 'PARAGON' + 'a flying bird'
under Class-9. This Order is now under challenge.
2.1 The facts that led to the institution of this appeal may be briefly stated:
(a) The appellant has been in the business of manufacture and sale of
footwear under its trade name 'PARAGON', since 1975. It has
registered its mark PARAGON under Class-25 and allied classes
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associated with Class-25, on various dates.
(b) The first respondent has been doing business in the manufacture
and sale of electric motors etc., since 1977, under the trade name
PARAGON with a flying bird as a device. It has registered its
mark as 'PE' along with words 'PARAGON ENGINEERS' written
beneath it under Class 7.
Appellant mark Respondent mark
(c) Be that as it may, a certain D.M.Tea Corporation, represented by
Mr.Kundan Sharma, filed an application before the Trade Mark
Registry, for registration of the very word 'PARAGON' under
Class 30, for its products which inter alia included 'blended tea
and tea powder'. The appellant herein had opposed the said
registration successfully, and in its order dated 26.07.2017, the
Trade Mark Registry had declared that the appellant's mark
PARAGON is a well known mark.
(d) It is in these circumstances, the first respondent had applied for
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registration of an identical mark PARAGON under Class 9, which
relates to electric motor starters, etc. For the current purpose, it
may be stated that Class 9 is closely associated with Class 7
category of goods, all of which fall within one common
denominator of 'electric motors' broadly. (This distinction may not
be very relevant for the current purpose).
(e) The first respondent had filed its application on 28.09.2001, and
after examination, it came to be published in the Trade Mark
Journal 1330 dated 01.05.2005.
2.2 On gaining knowledge about the application of the first respondent for
the registration of the mark PARAGON under Class 9, the appellant herein
entered appearance to oppose the registration of the said mark on the
following grounds:
a) That the word PARAGON, was coined by the appellant, that it is
being used by it uninterruptedly from 1975, and ever since the word
'PARAGON' has come to be associated with the appellant as a
composite mark. It is registered under various classes including
classes 1,7, 17 and 25. The appellant has a pan India market for its
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products. Therefore, allowing the first respondent to trade using the
mark 'PARAGON' for its products' would cause confusion in the
minds of the consumers and lead to dilution of the appellant’s mark.
b) The adoption of the mark “PARAGON” by the first respondent is not
bonafide. The first respondent began to use the mark only 10 years
after the appellant started using its mark, and in the same
geographical location as the appellant.
c) The mark of the appellant has been recognized as a well-known mark
by the Trade Marks Registry, and it is associated with the products
manufactured by the appellant. Therefore, even if the first respondent
uses the mark to sell products belonging to a different classes, the
public would still associate the same as that of the appellant.
d) The registration of the proposed mark of the first respondent would
violate Sections 9,11,12 and 18 of the Trade Marks Act.
2.3 The first respondent rebutted the opposition of the appellant by stating:
a) The first respondent company was established in the year 1966, and is
involved in the manufacture of a wide range of electrical products.
b) In 1986, it honestly adopted the mark PARAGON for selling its
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electric motor starter and other allied products falling under Class 9.
c) In 2001, to statutorily protect its mark, it made an application under
Class 9 before the Registrar of Trade Marks. Previously, it has also
obtained registration of a similar mark under Class-7, which remained
unopposed by the appellant.
d) The appellant has acquiesced to the mark of the first respondent and
is estopped from questioning the registration of the present mark.
e) The word “PARAGON” has acquired a secondary meaning and is
associated by the public with the first respondent as far as electrical
products are concerned.
f) The mark of the appellant is well-known in the industry of footwear
and other cognate products alone. However, the mark of the first
respondent is well-known in the field of electrical pumps.
g) The mark of the first respondent has acquired distinctiveness due to
long usage in the field of electric motors and pumps.
h) The purchasers of the product of the first respondent and the
appellant are not the same. Therefore, there is no possibility of
confusion.
i) The marks on the whole are different (applicant’s mark has the word
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PARAGON + bird device, whereas the opponent’s mark is
characterized by the word PARAGON alone).
j) Paragon is a dictionary word, and the appellant cannot claim any
exclusive right over the same.
2.4 Vide its Order, dated 18.06.2019, the Trade Marks Registry has rejected
the opposition filed by the appellant. Its line of reasoning are:
a) The applicant/first respondent is the first adopter of the mark
PARAGON with a bird logo in Class 9, and due to the long usage of
this mark in products falling under Class 9, the applicant satisfies the
test of 'acquired distinctiveness'.
b) The word PARAGON is not a coined word as it a common English
word with a dictionary meaning, and the opponent/appellant herein
cannot claim exclusive right over the word.
c) The marks on the whole are different (applicant’s mark has the word
PARAGON + bird device, whereas the opponent’s mark is
characterized by the word PARAGON alone). And, products in
which they deal are also different and public will not be confused .
d) Even otherwise, the applicant is entitled to Section 12 of the Act for
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honest and concurrent use.
3.1 Describing that the impugned order of Registrar of Trademarks is
bristled with several factual inaccuracies, the learned counsel for the
appellant would submit that the Registrar has not addressed the grounds of
opposition of the appellant against registering the mark of the first
respondent nor has it considered its own order passed on 26.07.2017, vis-a-
vis the opposition it offered in the matter of M/s.D.M.Tea Corporation,
wherein its opposition was allowed, and its mark was declared to be a well
known mark.
3.2 Developing his argument further, the learned counsel submitted that :
a) The second respondent has got the date of registration, category of
registration, date of user as well as the Trade Mark journal, all wrong
in its order;
b) On merits, it ignored its own finding that the appellant trade mark has
been recognised as a well known mark; and
c) It has referred to Section 12 in its order, but does not discuss how
Section 12 will apply to factual situations.
In effect, the impugned order is an amalgam of errors, inaccuracies and
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confusion, and takes the matter nowhere.
4. The counsel for the first respondent made the following submissions
which is more in alignment with the line of reasoning of the second
respondent. It is as below:
a) The first respondent honestly adopted the composite mark comprising
of the word PARAGON with a device of a bird for selling its electric
motor starter and other allied products falling under Class 9 in 1986.
The mark of the first respondent, unlike that of the appellant, is not a
word mark for it also has a bird device, and it has been continuously
and uninterruptedly used in the sale of electrical pumps and other
cognate products since 1986.
b) Though the mark of the appellant is well-known in the industry of
footwear, the mark of the first respondent is equally well-known in
the field of electrical pumps. Therefore, the first respondent’s mark
has acquired distinctiveness due to long usage and is associated by
the public with the first respondent as far as electrical pumps are
concerned.
c) Even otherwise, the word PARAGON is a dictionary word, and the
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appellant cannot claim any exclusive right over the same.
d) Further, the first respondent has also obtained registration of a similar
mark under Class-7, which remained unopposed by the appellant.
Therefore, the appellant is estopped from questioning the registration
of the impugned mark on the ground of acquiescence of the first
respondent’s mark by the former.
e) Finally, the purchasers of the product of the first respondent and the
appellant are not the same, hence there is no possibility of confusion.
5. Certain basic facts are not in dispute:
a) That the appellant began using its word mark 'Paragon' as its
trademark for marketing its footwear-products since 1975 and has its
registration in Class 25.
b) The first respondent is stated to be in business since around that time,
but is not a competitor to the appellant as he has been involved in the
manufacturing and marketing of electric motors etc under the
trademark Paragon with a device of bird attached. He has his
registration in Class 7 which he had obtained in 1986. And the
appellant has no qualms over it.
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c) Then the first respondent has applied for registering his trademark in
Class 9. Now, the appellant became conscious to protect the
commercial interest which its trade mark has given it and opposed the
registration of trademark.
6. The principal argument which echoed strongly during the hearing was
that since the appellant's word mark has been declared as a Well Known
Mark, it is entitled to protect it across classes, and hence the first respondent
can no more have a fresh registration of his old mark in another class, which
to remind, does not bear any proximity to foot wears which the appellant
markets, but is more close to its own line of business in electric motors, in
Class 9.
7.1 According to appellant its mark has been declared as a Well Known
Mark only in 2017. And it has no dispute that the first respondent has
registered its own mark Paragon with a bird device attached to it even in
1986, but is only worried about invasion of its intellectual property rights
when a known mark in class 7 is attempted to be registered again in class 9.
In other words, the first respondent only seeks registration of its own
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established mark for a certain class of goods in another class which is
associated with the former class of goods. He therefore, is not a new entrant
to business who tries to steal the word Paragon, the registered mark of the
appellant, but only attempts to expand his business activity to his allied
business in Class 9 and tries to use the very mark which he has been using
since 1986.
7.2 To state the issue differently, by virtue of the declaration of Well
Known Mark which the appellant has obtained for its word mark Paragon,
it intends to give retrospectivity to it and tries to ensure that even a
trademark which is already in currency and in active use can be ejected from
the market. This takes the Court to the next question: Whether declaration
of Well Known Mark gives the owner thereof a right to eliminate those who
have been using a similar mark, or even identical mark and who have
developed a certain level good will for it through their honest and
continuous use from future use?
8. Given the intricacy of the question, this Court requested Shri. Avinash
Wadhwani to assist the Court as amicus curiae. Shri. Wadhwani made the
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following submissions:
a) The protection given to intellectual property in the trademark is the
recognition of the intangible efforts exerted by the creator or inventor
to commercialize or economically exploit the property.
b) The concept of simultaneous use of a trademark is intrinsically linked
to the honesty of the user balanced with the likelihood of confusion
that may arise in the mind of the public. It must be borne in mind that
the genesis of the law of trademark was not to enable monopolization
but to protect the public from unscrupulous traders who look to
profiteer at the expense of the goodwill generated by the owner of the
trademark.
c) Intellectual Property of which trademark is a part, is intangible
property, and was protected earlier under Article 19 (1)(f) and now is
protected under Article 300A of the Constitution Vide KT Plantation
Pvt Ltd Vs State of Karnataka [AIR 2019 SCC1].
d) Constitutionally, any prohibition on the use of a mark as a trademark
must be construed as an aspect of public interest, and hence it may
not be read within fundamental right to trade under Article 19 (1) (g)
of the Constitution. And any restriction imposed on the user of the
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mark therefore, has to be considered as part of the reasonable
restriction under 19(6) of the Constitution.
e) Set in the context, any decision to permit more than one user of the
same mark must be considered as an exception to the rule of
protection accorded to the trademark, and it is achieved through an
act of balancing within the scheme of the statute.
f) The registration of a trademark is only a statutory reiteration of the
common law right. Consequently, any statutory previlege attached to
a trademark as a well known mark is only statutory in nature.
g) The concept of 'well known trademark, is an outlier to the entire law
of trademark. The evolution of the law of trademark was to protect
the consumers from identical or deceptively similar marks - to protect
the public, whereas the concept of a well known trademark focuses on
the protection of the mark on behalf of the user.
h) A Well-Known Trademark is defined under Section 2(1)(zg) of The
Trademarks Act, 1999 as a mark which has become so to the
substantial segment of the public which uses such goods or receives
such services that the use of such mark in relation to other goods or
services would be likely to be taken as indicating a connection in the
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course of trade or rendering of services between those goods or
services and a person using the mark in relation to the first-
mentioned goods or services”, See: Addely Bourne Vs Swan [].
i) While Sec.11(6) delineates the the parameters for guiding the
Registrar to declare a mark as a well-known trade mark, Sec.29(4)(c)
of the Act underscores the need for registration of a trademark that
has a reputation in India. Therefore for a mark to be declared as a well
known mark it must have to be registered.
j) The added protection to a well known mark is the ability to cut across
classes. It must however be borne in mind that the added protection to
a well known trademark, especially the right to cut across classes, can
only be deemed to be prospective in nature and not retrospective. See:
M/s VANS Inc USA Vs. FCB Garment Tex India &Anr [Delhi High
Court-C.O. (Comm. IPD-TM) 161/2021 & I.A. 15763/2022] and
VANS Vs. Fateh Chand Bhansali &Anr. [Delhi High Court-C.O.
(Comm. IPD-TM) 416/2022].
Discussion & Decision
9. The point is whether the appellant, by virtue of the declaration of its
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mark PARAGON as a well known mark in class 25 for foot-wears can
obstruct the first respondent from registering its existing mark which has
already been registered under class 7 in 1986 after its honest and concurrent
user since 1977, in class 9? The answer is a plain No.
10. No mark is born as a well known mark. It is only an acquired status
which a registered mark is accorded with. It is a recognition given to a
mark that satisfies all or any of the parameters which are broadly delineated
in Sec.11(6) of the Act. The adage 'born great' will not apply to well known
mark. It has to be earned. Necessarily it can, and at all times has to be only
prospective in operation. The rule is simple: for an advantage earned today,
credit cannot be given to it yesterday.
11. If however, a well known mark is given a retrospective operation, then it
may date back to the very date on which the mark was registered, and that
would be inconsistent with the scheme envisaged under Sec.11(6) of the
Act. And, if retrospective operation is ever permitted, it will be a licence to
stamp on the honest and concurrent user of similar trademark of other
proprietors in the same class or in different classes. That never has been the
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legislative intent enabling declaration of marks as a well known mark. Here
this Court agrees with the ratio of the Delhi High Court in the Vans case
12.1 There is one aspect which this court however, would like to clarify. As
rightly argued by the learned amicus, while registration of a trade mark aims
to protect the consumers of goods and services, declaration of a mark as a
well known trademark goes to protect the user thereof. He however, made a
statement that while trademark is a property within the meaning of Article
300A of the Constitution, it still will not be entitled to any protection as a
fundamental right within Article 19(1)(g), since it aims to protect the
consumers and the not the owner.
12.2 This Court considers that there is an element of hypocrisy the
trademark jurisdiction accommodates. Let the plain truth be stated in a
plainer language. While glorifying the objective behind protecting a
trademark as something aimed to protect the consumers of goods and
services, yet the owner thereof aims to protect his mark not because he
worries for the consumer, but because he worries over his profit, for, if any
attempt is made by a third person to pass off his goods and services as that
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of the owner of the mark, it may affect the profit of the owner of the mark.
Therefore, it is time a trademark is also recognised as associated with the
market-sustenance of the business of the owner of the mark. After all when
passing off is enabled, it will lead to fall in profits, and eventually a
successful business may become a liability. While a trade mark per se may
not qualify to be protected as a fundamental right under Article 19(1)(g), its
violation can impact business adversely to interfere with the right under
under Article 19(1)(g). Therefore, while interpreting a statute providing for
declaration of well known mark, it is necessary to ensure that the right of an
honest and concurrent user of a similar mark is not affected as it may have a
telling effect on his fundamental right to do business.
13. What can the appellant now expect? Obviously it cannot claim any
retrospective privilege for its well known mark and cannot bulldoze the first
respondent from using his mark which he has been using since before 1986.
Therefore, it cannot oppose the first respondent registering its mark under
Class 9.
14. Ideally both the appellant and the first respondent must be restricted to
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use their mark in the class of goods that they deal in. The second
respondent therefore has a job at hand as he may now have to conceive such
conditions or limitations to enable both the appellant and the first
respondent to co-exist using their respective marks.
15. This appeal is allowed and the matter is remanded back to the second
respondent to impose such necessary conditions or limitation on the use of
the mark by both the appellant and the first respondent, after affording both
the parties an opportunity of being heard in the matter. No costs.
07.01.2025
Index : Yes / No
Speaking order : Yes / No
Neutral Citation : Yes / No
ds
To:
The Joint Registrar of Trade Marks
Intellectual Property Office
Intellectual Property Office Building
G.S.T.Road, Guindy
Chennai - 600 032.
https://www.mhc.tn.gov.in/judis
N.SESHASAYEE.J.,
ds
Pre-delivery Judgment in
07.01.2025
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