(Circuit Bench at Ahmedabad)
S. Usha, Vice Chairman
1. The above appeal arises out of the order passed dated 04.04.2000 passed by the Assistant Registrar of Trade Marks dismissing the opposition No.AMD-50821 and allowing the application No. 460284 in class 11 to proceed to registration under the provisions of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as 'the Act').
2. The brief facts of the case are as follows:
The respondent No. 1 herein had filed an application for registration of the trade mark in a form of a label consisting of the words CROWN, C.No.1, BRAND and device of CROWN under application No. 460284 in class 11 in respect of bathroom and sanitary fittings, water taps and parts of the aforesaid goods included in class 11. The said mark was advertised in the Trade Marks Journal No.1138 dated 01.11.1996 at page No. 1096. The appellant herein had opposed the same on the grounds that they are the proprietors of the trade mark consisting of device of a crown and the word ‘C’ written in a particular manner and the same is being used by them in respect of metal-coke, valves, known as installation for water supplying and sanitary fittings purpose. Along with the device of the crown the word CITIZEN is also used by them on their product and the particular mark CITIZEN is also registered under No. 367914 in class 11 and application for registration of the trade mark device of crown written in a particular manner is also pending registration under No. 367913.
3. They had also stated that the mark applied for is similar to their registered trade mark and also stated that the registration would be in contravention of the provisions of the Act.
4. The respondent No. 1 herein filed their counter-statement denying the averments made in the notice of opposition and specifically pleaded that they are the bonafide users of the impugned trade mark since 50 years and they are also the proprietors of the trade mark registered under No. 85069 in class 11. They further stated that this application is in association with the said trade mark No. 85069 and prayed that the opposition be dismissed and the application be proceeded for registration.
5. On completion of the pleadings, the respondent No. 2 heard the matter and disposed of the case with the findings that the trade mark as a whole has no direct reference to the character and quality of the goods. Hence the appellant’s objection under section 9 of the Act was rejected. The objection under section 11 of the Act was also rejected on the ground that the respondent No. 1 are the registered proprietors of the trade mark and they have satisfied the Registrar with sufficient evidence. The preliminary onus cast upon the appellant under section 11 of the Act was not discharged by the appellant. The respondent No. 1 had acquired a statutory right by virtue of section 28 of the Act and their rights are to be protected and accordingly the objection under section 12 (1) of the Act was also rejected. Having rejected all the objections, the Registrar held that the respondent No. 1 are the bonafide proprietors as per section 18 (1) of the Act and their right to claim proprietorship was valid. Being aggrieved by the said order, the appellants herein preferred an appeal before the Hon’ble High Court of Gujarat under No. Appeal No.5/2000. Pursuant to the provisions of section 100 of the Trade Marks Act, 1999, the appeal was transferred to this Appellate Board and re-numbered as TA/282/2004/TM/AMD.
6. The appellant is engaged in the business of manufacturing and marketing of metal valve and other water supplying and sanitary fittings. To distinguish their goods from that of others the appellants had adopted a trade mark containing the device of a crown and word CITIZEN since 1980 and have been using it openly, extensively and continuously in Indian markets. The appellants have also spent huge amounts by which the appellant’s products bearing the trade mark has acquired good reputation and goodwill throughout the country in respect of metal valve and other water supplying and sanitary fittings.
7. The appellants herein beg to prefer the above appeal on the following grounds: -
(i) the impugned order is liable to be set aside as the order is erroneous and bad in law and on facts;
(ii) the respondent No.1’s claim of proprietorship is without any evidence on record;
(iii) the respondent No. 2 has misdirected himself without verifying the facts on record that the registration is not granted and the mark was advertised before acceptance and thereby heavy burden of proving the use of the mark was on the applicant/respondent No. 1;
(iv) the respondent No. 2 failed to appreciate that the word CROWN and the device of crown and C.No.1 are not registrable under section 9 of the Act as the same are having direct reference to the character and quality of the goods;
(v) the respondent No. 2 committed an error in not considering the bonafide use of the mark CRWON BRAND in respect of identical goods;
(vi) the use of the trade mark by the respondent No. 1 is contrary to the provisions of section 11 of the Act;
(vii) the respondent No. 2 has also committed an error in considering two marks not similar on the ground that comparison should be as a whole whereas the admitted position is that both the marks are having the device of crown and therefore, the essential features are identical;
(viii) the respondent No. 2 committed an error in considering that the appellant has not filed cogent evidence of deception and confusion;
(ix) the respondent No. 2 committed an error in not considering the appellant’s evidence which was produced but has considered the evidence produced by the respondent No. 1;
(x) the respondent No. 2 has also committed an error in considering the respondent No. 1 as the proprietor of the mark as per section 18 of the Act;
(xi) the impugned order is illegal, contrary to the provisions of law and deserves to be quashed and set-aside;
(xii) the respondent No. 2 has erred in not considering the ratio laid down by various courts including the Hon’ble Supreme Court of India;
(xiii) the impugned order is otherwise erroneous, contrary to the provisions of law, illegal, against the principles of natural justice and deserves to be quashed and set-aside;
(xiv) the respondent No. 1 herein filed their counter-statement. The respondent No. 1 stated that the appeal is barred by limitation and the same is not maintainable;
(xv) the appellant have also opted for other remedy by filing a review petition before the Registrar. On this account the appeal petition is not maintainable. The appellants are trying to misguide and misdirect the court by suppressing the facts of filing review petition before the Assistant Registrar.
8. The respondents are manufacturers, merchants and dealers of water taps and C.P. fittings since the year 1930. The trade mark CROWN C No. 1 with the device of crown represented in a special and particular manner has been adopted continuously and unhindered from their successor in title i.e., Chunnilal Uttamram and Company a joint Hindu Undivided Family firm represented by its Karta. The respondent was registered proprietor of the trade mark C.No.1 1 with a device of crown under no. 85069 in class 11 in the year 1943.
9.The predecessors in title and the respondents have done extensive business under the trade mark with number 1 with a device of crown and under the trade mark CROWN C.NO.1 continuously in India since the year 1930. The appellant’s mark prominently consist of the device of crown on top of the word C and the word CITIZEN which was adopted by the appellants in the year 1980 which is at later in point of time than the respondent’s use since the year 1930. In view of the above, the respondents deny the various other allegations made in the grounds of the appeal and pray that the appeal may be dismissed in-limini.
10. The matter came for final hearing on 24.11.2010 at the Circuit Bench Sitting at Ahmedabad. We have heard the arguments of Shri Jatin Trivedi learned counsel appearing for the appellant and Shri V. Brahm Bhatt, learned counsel appearing for the respondent No. 1.
11. The learned counsel for the appellant submitted that the learned Registrar went wrong in holding the respondent No. 1 to be the subsequent proprietor when the proprietor of the trade marks registered under no. 85069 is in no way related to the present respondent No. 1. The counsel also stated that in the affidavit of evidence in support of opposition the appellant had denied the averment made in the counter-statement that the respondent No. 1 is the subsequent proprietor of the trade mark under no. 85069.
12. The appellant further contended that the finding that the respondent is the proprietor of the trade mark No. 85069 which has been proved, made in the impugned order is baseless. The appellant further stated that the impugned trade mark has been filed by three persons namely Bipin Chandra Amrutlal Kansara, Jagdish Amrutlal Kansara and Smt. Hasmukhben Amrutlal Kansara trading as Crown Metal Industries whereas the counter-statement on Form TM 6 has been filed by Bipinchandra Amrutlal Kansara as sole proprietor which again raises a doubt as to the constitution of the firm. The counsel also pointed out various other discrepancies as regards the constitution of the firm.
13. The appellant has produced evidence before the Registrar to prove that they had been using the trade mark with a device of a crown with the letter C on top of the word Citizen since 1984. The counsel also relied on few judgements in support of his case.
14. The learned counsel for the respondent No. 1 submitted that necessary steps were taken for the change to be brought on record but the same has not been done. The counsel further stated that the judgements relied on were not relevant to the case on hand.
15. We have heard and carefully considered the arguments of both the counsel and have gone through the pleadings and documents relied on.
16. A mark qualifies for registration only if it is distinctive or is capable of being distinguished by use. The user claimed in the application is since 1930 based on another application No. 85069. The respondent has also associated this impugned trade mark with the other application No. 85069. On perusal of the certificate of registration under No. 85069, it is seen that it is in the name of Mulchand Chunnilal Kansara (Karta of Joint Hindu Family firm) trading as Chunnilal Uttamram whereas the subject matter of the application under No. 460284 before us the names of Bipinchandra Amrutlal Kansara, Jagdish Amrutlal Kansara and Smt. Hasmukhben Amrutlal Kansara trading as M/s Crown Metal Industries (a partnership firm) are seen. There is no clear picture as to how these two trade marks are associated. When this is not clear then how the respondent No. 2 has considered and observed in the impugned order that the respondent No. 1 is the subsequent registered proprietor and has accepted the use since the year 1930. On perusal of the lower court records, there is no document found to say that the respondent No. 1 is the assignee of the trade mark by Chunnilal Uttamram & Co., or to say the respondent No. 1 has acquired the rights to the trade mark under No. 85069 by some other deed/document.
17. Moreover, the respondent No. 1 has not made clear as to the constitution of its firm. The respondent No. 1 claims to be a sole proprietorship firm in one place and in another claims to be a partnership firm. Having not substantiated their claim of subsequent registered proprietorship by any proper evidence, their use is not a valid and honest use. The respondent No. 1 also cannot claim to be the proprietor since 1930 through Chunnilal Uttamram & Co. The sales figures furnished also cannot be considered, as the sales figures given from the year 1930 is the sale made by Uttamram & Co., and not by the present respondent No. 1. It is clear that the respondent No. 1 being a pirator of the trade mark cannot be considered to have a valid and exclusive right over the trade mark. The respondents, therefore, cannot be said to be using the trade mark since 1930.
18. The appellants have produced documents to prove their user at least since 1984 though claim to have been using since the year 1980. Therefore, the objection under section 11 of
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the Act sustains. The user of the mark by the respondent is likely to cause confusion and deception among the public. 19. The other objection under section 12 (1) of the Act was allowed by the Registrar on the finding that the marks (label) are to be compared as a whole and cannot be scanned word by word or device by device and also that the applicants i.e. the respondent No. 1 herein is already the registered proprietor of the trade mark No. 85069. This finding of the Registrar is baseless in our considered opinion as there is nothing placed on record to say that the respondent No. 1 has acquired the right in the trade mark No. 85069. 20. The finding that the respondent No. 1 is the proprietor of the trade mark as they are first in use, adoption and registration cannot be accepted as there is no proof for the same. When no proof is filed to prove the relationship between the two i.e. between Uttamram & Co., and Crown Metal Industries, the use by the respondent No. 1 since 1930 cannot be accepted. The respondent No. 1 is not the proprietor of the trade mark and therefore does not qualify to have the trade mark registered as per the provisions of the Act. 21. In view of the above, we set aside the order of the Registrar dated 02.04.2000. Accordingly, the appeal is allowed and the application No. 460284 is class 11 is refused registration. There shall be no order as to costs.