Dr. Raghbir Singh, Vice Chairman:
1. The respondent/applicant filed an application bearing No. 447114 to register trade mark label containing the device of two bent stripes and the word `asha' as its essential feature in respect of hosieries in class 25. The trade mark was claimed to have been used since September 1979 on the date of application. The application was advertised before acceptance under proviso to Section 20(1) of the Trade and Merchandise Marks Act, 1958 in the Trade Mark Journal No. 1066 dated 1st November, 1993 at page 818. The notice of opposition was filed on 13th December, 1993 by M/s. Aysha Hosiery Factor Pvt. Ltd., Cannanore, Kerala.
2. The grounds of opposition taken were as under:-
(i) That the opponents are the registered proprietors of the trade mark `AYSHA' in respect of hosiery, inner wears and outer wears under trade mark No. 385576 in class 25;
(ii) that the opponents have continuously and extensively used the said trade mark since the year 1936 in respect of goods mentioned above and due to such continuous and extensive use, it has become well known and has attained a very high reputation;
(iii) by reason of long and continuous use, advertisement, sales promotion work and also the superior quality of goods sold under the trade mark `AYSHA' great reputation and goodwill have accrued to their said trade mark;
(iv) having regard to the established user and reputation associated with the opponent's trade mark, the use of the applicant's mark will result in deception and confusion and, therefore, its registration is prohibited by the provisions of Section 11(a), 11(b) and 11(e) of the Act;
(v) that the trade mark sought to be registered by the applicant is identical with and/or deceptively similar to the opponent's trade mark mentioned above and the goods in respect of which the applicant is seeking registration are the same and of the same description compared with the goods in respect of which the opponents have been marketing `AYSHA' for the last several years and, therefore, its registration is prohibited under Section 12(1) of the Act;
(vi) that the impugned mark is neither adapted to distinguish nor capable of distinguishing the goods of the applicant and the same fails to qualify for registration under Section 9 of the Act;
(vii) that the applicant cannot claim to be proprietor of the trade mark under Section 18(1) of the Act; and
(viii) the registration of the impugned mark is prohibited under Sections 9, 11(a), 11(b), 11(e), 12(1) and 18(1) of the Trade and Merchandise Marks Act, 1958.
3. The allegations of the appellant/opponent were denied in the counter statement filed by the respondent/applicant on 22nd August, 1994. The respondent/applicant claimed that they had been using the mark since 1978 without causing any obstruction or confusion in the trade and there was no similarity between the trade marks of the respondent/applicant and the appellant/opponent. Both the parties filed their evidences through affidavits alongwith the respective exhibits referred to in the evidence. The learned Deputy Registrar heard the matter on 30th June, 2000 and passed his orders on 20th June, 2002 allowing the registration of the mark to proceed.
4. The appellant/opponent aggrieved by the decision of the Deputy Registrar filed an appeal under Section 109(3) of the Trade and Merchandise Marks Act, 1958 in the High Court of Judicature at Madras which has been transferred to this Appellate Board in terms of Section 100 of the Trade Marks Act, 1999 for disposal.
5. The appellant/opponent claims to be a registered proprietor of the trade mark `AYSHA' in respect of hosiery, inner wears and outer wears under trade mark No. 385576 in class 25. The appellant claims to be in the business of manufacturing and marketing the said products since 1936 under its trade mark `AYSHA'. The appellant contends that upon the knowledge of proposed registration of the first respondent's trade mark under application 447114 in class 25 in respect of hosiery and under wears, the appellant filed the opposition bearing number MAS 2958 opposing the registration of the said trade mark of the first respondent. The said opposition was set for hearing by the Deputy Registrar of Trade Marks and he dismissed the plea of the appellant/opponent opposing registration of the mark of the respondent/applicant. Aggrieved by the decision of the Deputy Registrar, the present appeal has been filed by the appellant/opponent. The grounds taken for appeal are briefly as under:-
(a) The argument in the case were concluded as early as on 30th June, 2000 and the order was reserved consequently. The Deputy Registrar pronounced his orders only on 20th June, 2002 after a lapse of two years resulting in that the Deputy Registrar might not have arrived at the conclusion in the right perspective and the same in contravention of the decision of the Hon'ble Apex Court.
(b) Since the appellant and the respondent hail from the same State and the appellant being undisputedly the prior user of the trade mark `AYSHA' and the respondent having subsequently adopted the imitative similar trade mark `asha', the facts leads to the conclusion of dishonest intention of the respondent in adopting a deceptively similar mark.
(c) The Deputy Registrar has failed to consider the similarity between the essential feature of the trade marks of the appellant and the respondent. `AYSHA' and `asha' are identical or much less similar.
(d) The Deputy Registrar has erroneously proceeded to reject the opposition of the appellant without understanding the true impact of Section 9(1) of the Trade and Merchandise Marks Act, 1958.
(e) There is wrong appreciation of the respondent's trade mark having attained distinctiveness for it being in use for more than 6 years.
(f) The Deputy Registrar has not correctly appraised the contention of the appellant as to the phonetic similarity of both the marks, more particularly in light of the decision of the Supreme Court in the Cadila case.
(g) The respondent is out to make illegal gains out of the goodwill of the appellant/opponent since on an earlier occasion also he made an application for registration of the trade mark `PUSHPAK' which was opposed by the appellant and the application was rejected by the Deputy Registrar. The Deputy Registrar has rejected the objection of the appellant to the fact that the respondent is not a honest concurrent user of the trade mark on the grounds that the objections under Section 12(1) of the Act has not been substantiated.
(h) The Deputy Registrar has proceeded on the grounds that the appellant's trade mark as a whole was completely different from the respondent's trade mark which is contrary to the law laid down by the Supreme Court in Cadila case.
(i) The Deputy Registrar has not taken into account the reputation of the goods of the appellant by an extensive and uninterrupted use since 1936.
(j) The Deputy Registrar has wrongly decided to proceed in favour of the respondent that the mark has been honestly conceived since the name of the respondent's daughter is`Asha'.
6. Shri S. Balachandran, learned counsel for the appellant referred to the registration certificate issued for the trade mark `AYSHA' in class 25 under No. 385576 on 21.1.1982. The learned counsel also drew our attention to the fact that the appellant has been using that mark since 1936 and the respondent/applicant has started using the mark `asha' after a lapse of 43 years of the use of the mark `AYSHA' of the appellant. He further argued that the respondent's mark is deceptively similar to the mark of the appellant as in both the marks the suffix and the prefix agree to each other. He further mentioned that the respondent has claimed user of his mark since 1979-80 only with a meagre sale of Rs. 15,623 rising to a paltry amount of Rs. 1,15,308 in 1983-84. He further argued that with a view to vouchsafe the popularity of the mark and its use, affidavits from the users thereto should have been produced which have not been done. He argued furthermore that the judgment had been reserved by the Registrar on 30.06.2000 and delivered on 20.06.2002. It leads to an impregnable conclusion that the Registrar has not arrived at conclusion in the right perspective.
7. Shri M.K. Rao, learned counsel for the respondent argued that the sales figures of the respondent as reflected in type set page 35 are substantial which goes to prove the popularity of the mark of the respondent. He claimed that `AYSHA' and `asha' are distinct words and there is no deceptive similarity. There had been absolute honesty of adoption in the word `asha' - the same having been named after the daughter of the respondent. There is no phonetic similarity in the pronunciation of the word in the vernacular. Furthermore, there is no visual deception also. The words are not to be viewed in isolation. The overall impression of the mark has to be taken. The mark `asha' is simply accompanied by two inverted stripes, whereas the word `AYSHA' is invariable and essentially accompanied by the figure of a parrot sitting on the branch of a tree and the image having been put in a circle with added feature of words `MADE IN INDIA' having been written. Since the word `AYSHA' is always accompanied by other words which are dominating in character, there is no scope for confusion. The learned counsel for the respondent pleaded that in use of the word `asha' with bent stripes and the use of the word `AYSHA' by the appellant, there had not been any suit for infringement ever since 1979 when the respondent started using the word `asha'. He pleaded for grant of honest and concurrent user under Section 12(3) of the Act also since marketing of the goods are restricted to Kerala.
8. The learned counsel for the appellant relied upon House of Lords judgment in Yorkshire Copper Works Ltd. v. Registrar of Trade Marks, (1954) 71 RPC 150, where geographical name of 'Yorkshire' was held to be in fact adapted to distinguish the applicant's goods was inherently not adapted to distinguish the goods of any trader and thus the mark was held to be not a distinctive one. We are of the view that the case has no application to the facts of the present case. The words `AYSHA' and `asha' are the names of person belonging to feminine gender and have no geographical nexus.
9. The learned counsel for the appellant, disagreeing with the findings of the Deputy Registrar in the case, has referred to in his pleadings the Reckitt and Coleman of India Ltd. v. Medicross Pharmaceutical Ltd., PTC (Suppl) (1) 284 (Bom) where the Bombay High Court held that the mark `Medisprin' is visually, phonetically and structurally dissimilar to `Disprin' and thus held that the same is neither deceptively similar nor the user thereto is likely to be deceived or cause confusion. In the said case, the addition of the prefix `Me' has made a change leading to distinctiveness of both the marks and thus leading to the acceptability of the mark `Medisprin'. It can be safely argued on the analogy of the same that it is not only `A' as a vowel which is common in both the marks but there is something more, a consonant `Y' in the mark `AYSHA' leading to a distinctive pronounciation of `AYSHA' quite different from what is required in pronouncing the word `asha'.
10. The learned counsel for the appellant has put heavy reliance upon the Cadila judgment [Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 PTC 541 (SC)]. It is important to note that the said case related to a matter involving passing off relating to a medicine. Hon'ble Supreme Court after observing various cases relating to deceptive similarity and passing off matters and the cases relating to similar issues of the Supreme Court of India and the English and American Courts laid down the following factors to be considered in relation to actions of passing off on the basis of unregistered trade marks generally for deciding the question of deceptive similarity:-
(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
11. The Supreme Court in the initial years of our Republic in National Sewing Thread Co. Ltd. v. James Chadwick and Bros. Ltd., AIR 1953 SC 357 held that in issues relating to deceptive similarity of marks, the real question to decide is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark and what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing. In Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142: (1960) 1 SCR 968 the Supreme Court held that it is well recognised that in deciding the question of similarity between two marks the marks have to be considered as a whole. In deciding as to the deceptive similarity between two marks 'Amritdhara' and 'Lakshmandhara', in Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449, the Supreme Court heavily banked upon the observation of Parker, J. in the Pianotist Co.'s Application, Re, (1906) 23 RPC 774. The following observations of Farwell, J., in William Bailey (Birimingham) Ltd.'s Application, (1953) 52 RPC 136 referred to in the Cadila case are very much significant in deciding the present case:-
'I do not think it is right to take a part of the word and compare it with a part of the other word; one word must be considered as a whole and compared with the other word as a whole.... I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word.'
The following observations of Lord Jhonston in Lavroma case (Tokalon Ltd. v. Davidson & Co., 32 RPC 133) referred to in Cadila case are relevant in deciding the issue under consideration:-
'...We are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop'.
Since the issue in the Cadila case pertained to medicinal products, the Supreme Court, while arriving at the broad principles to be taken into consideration while deciding the issue relating to an unregistered trade mark in passing-off matters, surely was influenced by the principles laid down in cases relating to medicinal products. It has been laid down again and again in those cases that a higher standard of scanning in the matter of deceptive similarity is to be applied in relation to the registration of medicinal products. In spite of the fact that the Cadila case involved a matter pertaining to registration of drugs which are to be sold under prescription and thus a heavier scrutiny about the possible scope for deceptive similarity, still after scanning the impugned trade mark of the respondent/applicant at the bench mark laid down in Cadila, we feel inclined, in the light of the guidelines laid down by the Hon'ble Supreme Court in that case, that there is no scope for causing of confusion and deceptive similarity in the registration of the mark `asha' for the following reasons:-
Appellant/opponent has in his pleadings and arguments put emphasis upon the word `asha' being deceptively similar to his registered trade mark `AYSHA'. In view of the judicial dicta discussed above, the mark has to be taken
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as a whole and the total impression and the total figurative description is to be compared. The word `asha' simply appears in two inverted stripes. The word `AYSHA' is joined with lot many other descriptions which are having a dominant feature thereupon and any user or buyer of the product cannot view the said word in isolation. In the mark there is a parrot sitting on a branch of the tree and the figure relating to parrot has been put in circle, the expression `Made in India' in upper casings is an integral part of the mark and the word `AYSHA' as such is also written twice - once horizontally and then diagonally. The word `asha' appears to be of Sanskrit origin whereas the word `AYSHA' is of Arabic origin. However, it can be argued that the consumers, users or buyers of the products in question, that is, hosieries and under-wears probably may not have that capacity to etymologise the distinctive roots of the words. The only additional letter `Y' occurring in `AYSHA' is heavy in weight to tilt the balance between the two marks leading to `AYSHA' being quite distinctive in phonetics vis-a-vis `asha'. It is just not another vowel, but a consonant with a heavy sound and making lot of difference in pronounciation and tongue twisting, particularly in Indian vernaculars. 12. In view of the above we are of the opinion that even though the mark `asha' simply with two inverted stripes and the mark `AYSHA' with a parrot on a branch of the tree put in circle with additional words of `made in India' in upper casing and the word `AYSHA' written both diagonally and horizontally relate to the same description of goods i.e. hosieries, underwears and outer wears, the marks are distinct with no scope for causing confusion. Consequently, the appeal stands dismissed. No order for costs.