BEFORE DEPUTY REGISTRAR OF TRADE MARKS, DELHI
M.R. Bhalerao, DRTM:
On 16th September, 1980, Smt. Veena Devi, trading as Veena Hosiery House, 69-Swadeshi Market, Sadar Bazar, Delhi-110006(hereinafter referred to as 'the Applicant') made an application, being No. 366177, in Class 25, to register the trade mark FIAT (word per se) in respect of 'hosiery'. The user claimed in the Application was 'since 1.1.80'. In due course, the Application was advertised in the Trade Marks Journal No. 786 dated the 1st March, 1982 at page 894.
On 11th June, 1982, Fiat Societa Per Azioni (a Company organised and existing under the laws of Italy) of Turin, Italy, (hereinafter referred to as 'the (Opponents') lodged a Notice of Opposition, under Section 21(1), to the registration of the aforesaid trade mark on the grounds which are summarised as follows :-
1. That the Opponents are the proprietors of the trade mark FIAT which is being used by them for many years.
2. That the word FIAT constitutes the vital and memorable part of the Opponents' name and that the goods under the trade mark FIAT enjoy a global reputation.
3. That the Opponents have registered their trade mark FIAT in many countries.
4. That the Opponents have registered their trade mark FIAT in classes 7 and 12 under numbers 140468 and 137888 respectively.
5. That the Applicant cannot claim to be the proprietor of the trade mark.
6. That the adoption of the Applicant's trade mark is dishonest.
7. That the registration of the trade mark applied for will be contrary to the provisions of Sections 9, 11 (a), 11 (e) and 18 (1).
8. That the registration of the trade mark should be refused in exercise of the Registrar's discretion.
In her counterstatement, the Applicant asserts that her goods are different from the Opponents' goods and that there is no trade connection between her goods and the Opponents goods. She denies the statements and allegations made by the Opponents in their Notice of Opposition. The Applicant states that she may be granted registration under Section 12(3).
The evidence in support of opposition consists of one affidavit dated 28th March, 1983 by Dr. Paolo Sani.
The evidence in support of application consists of one affidavit dated 25th May, 1983 by Smt. Veena Devi.
The evidence in reply consists of one affidavit dated 30th November, 1984 by Dr. Paola Sani.
The matter came before me for hearing on 3rd February, 1986. Shri V.G. Nair, Advocate instructed by S/Shri De Penning & De Penning, Patents and Trade Mark Attorneys appeared for the Opponents, Smt. Savita Kishore, Advocate instructed by Shri K.L. Aggarwal, Advocate appeared for the Applicant. On 3rd February, 1986, Smt. Savita Kishore, Advocate filed one petition. Hearing was adjourned to 4th February, 1986. On 4th February, 1986 Shri V.G. Nair, Advocate appeared for the Opponents. None represented the Applicant.
Firstly, I shall deal with the Applicant's petition filed on 3rd February, 1986. By filing that petition, the Applicant desires to amend her counterstatement by taking an additional plea that the Opponents' trade mark FIAT has been used by a good number of parties for different goods and that the trade mark FIAT has been registered by some other parties in respect of different goods and such registration have been renewed and that if such use and registration is proved, the Applicant's case will be covered under 'Special circumstances' under Section 12(3) (para 8 of the petition). The reason why such plea was not taken up earlier by the Applicant, as stated by her is that she come to know of such registrations and use recently (para 6 of the petition).
The rule of law as to when a new ground should be allowed to be introduced is elaborately discussed in F.A.O. No. 84 of 1970 (Delhi High Court) Amin Chand & Sons v. Sohan Lal Bassan & Bros. 1977 (2) IPLR 160. From that decision it is seen that it is discretionary with the Registrar to allow or not to allow an amendment. The circumstances when an amendment should be allowed is stated in Pirgonda Hongonda Patil v. Kalgonda Shidgonda Patil AIR 1957 SC 363. The following paragraph of that decision in quoted in F.A.O. No. 84 of 1970.
'All amendments ought to be allowed which satisfy the two conditions (a) of not working injustice to the other side, and (b) of being necessary for the purpose of determining the real questions in controversy between the parties………..amendment should be refused only where the other party cannot be placed in the same position as if the pleading had been originally correct, but the amendment would cause him an injury which could be compensated in costs. It is merely a particular case of this general rule that where a plaintiff seeks to amend by setting up a fresh claim in respect of a cause of action which since the institution of the suit had become barred by limitation, the amendment must be refused, to allow it would be to cause the defendant an injury which could not be compensated in costs by depriving him of a good defence to the claim. The ultimate test therefore, still remains the same; can the amendment be allowed without injustice to the other side, or can it not ?'
Shri Nair, the learned counsel for the Opponents vehemently argued that if the proposed amendment is allowed injustice would be done to the Opponents. He further argued that the rights of the parties are to be determined as on the date of the Application namely, 16th September, 1980 and that, therefore, the registrations effected after the date or the use of the trade mark FIAT after the date of the Application have no relevance. He further argued that even if it is assumed that some other parties have copied the Opponents' trade mark FIAT for some other goods it does not mean that the Applicant should also be allowed to copy the Opponents' trade mark FIAT for hosiery.
After completion of evidence by both the parties, according to Rules 53 to 55, hearing was fixed for 3rd February 1986. Instead of arguing the case on 3rd February, 1986, the Applicant has filed the petition to amend her counterstatement. The grounds sought to be introduced are that some other parties have used the trade mark FIAT for some other goods and some other parties have registered the trade mark FIAT for some other goods and such registrations have been renewed. It is well settled that the rights of the parties are required to be determined as on the date of the Application. The Application was filed on 16th September, 1980. The registrations obtained by other parties after 16th September, 1980 have no relevance. If some parties had obtained registrations earlier to 16th September, 1980, the Applicant could have inspected the Register and incorporated such a Plea in the counterstatement. Similarly, any cases of use of the trade mark FIAT by other parties for some other goods, pertaining to the period subsequent to the date of the Application, have no relevance. Any cases of use prior to the date of the Application could have been pointed out earlier and such a plea could have been taken up earlier. As correctly pointed out by the Opponents' counsel, the Application was filed on 16th September, 1980 and that when hearing was fixed for 3rd February, 1986 (after five and half years), instead of arguing the case on merits, the Applicant has now come up with the petition and that if such a petition is allowed it would amount to injury to the Opponents. On the facts of the case looking into the ground sought to be introduced in the counterstatement it is correct that the petition is filed only to gain time and that it such a petition is allowed it would amount to injustice to the Opponents. The said petition is the before refused.
Regarding merits of the case, Shri Nair, the learned counsel for the Opponents confined his arguments to the Opponent objections based on Sections 11 (a) and 18 (1).
Section 11 (a) reads as follows :-
'A mark the use of which is likely to deceive or cause confusion ……….. shall not be registered as a trade mark.'
The language of Section 11(a) is substantially similar to the relevant part of the U.K. Act of 1938. An oft quoted statement of the requirements under this part of Section 11 was made by Romer, J. in Ladislas Jellinck's Application (63 RPC 59 at p. 78) as follows :-
'Upon the evidence which I have before me, what is the test which I have to apply in considering whether deception or confusion within the meaning of Section 11 is likely to occur ?
Mr. Burrell, on behalf of the Opponents, submitted to me the following propositions with regard to this section : (1) In all applications for registration of a trade mark the onus is on the applicant to satisfy the Registrar (or the Court) that there is no reasonable probability of confusion. (2) It is not necessary, in order to find that a mark offends against the section to prove that there is an actual probability of deception leading to a passing-off. It is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt. (3) In considering the probability of deception, all the surrounding circumstances have to be taken into consideration. (4) In applications for registration, the rights of the parties are to be determined as at the date of the application. (5) The onus must be discharged by the applicant in respect of all goods coming within the specification applied for,……………'I think that these propositions are, in substance, well founded, and I would merely add. With regard to the second of them the following extract from the judgement of the Farewell, J... in Bailey's case reported in 52 RPC. 136, at page 153 : 'I think that the Court has to be satisfied not merely that there is a possibility of confusion : I think the Court must be satisfied that there is a real tangible danger of confusion if the mark which it is sought to register is put on the Register.'
Whenever the Opponents invoke the provisions of Section 11(a), firstly they have to establish prior user of reputation of their trade mark, as claimed by them (Arthur Fairest Ld's Appln. (1951) 68 RPC 197 at p. 209). Paragraphs 5 and 6 of the affidavit dated 28th March 1983 by Dr. Paolo Sani reads as follows :-
'5. FIAT Societa per Azioni was originally incorporated under the name 'F.I.A.T.'(Fabbrica Italiane Automobile Tonino) during July 1899. The initials 'F.I.A.T.' were used to indicate the goods of its manufacture, in either of the forms 'F.I.A.T.' or 'FIAT'.
6. By a decision taken at the ordinary Shareholders meeting of 24th April 1918, the articles of the association were modified, and the word 'FIAT' was subsequently adopted as the characterising part of the company's trading style.'
According to the above statement, the Opponent have adopted and used their trade mark ''F.I.A.T.' or 'FIAT' since July 1899.
In his affidavit dated 28th March, Dr. Paolo Sani has furnished yearwise figures relating to the number of vehicles exported by the Opponents to India and their value and the value of the spare parts exported to India. These figures are for the years 1946 to 1968 and 1975 to 1977. According to the Opponents' evidence, they have established that their trade mark FIAT has been used in India for motor cars and their spare parts and that it had become well known in India, as on the date of the Application; namely, 16th September, 1980.
The Opponents have used their trade mark FIAT in India for motor cars and their spare parts. The Applicant's goods are hosiery. The Applicant's case is that the goods of the rival parties are not of the same description and that they do not have any trade connection and that, therefore, there will be no confusion or deception. On the other hand, the Opponents' case is that what is required to be seen is whether there will be confusion or deception or not ? On looking into the cases decided under Section 11(a) it is seen that in most of the cases there was some connection between the goods of the rival parties. However, Shri Nair, the learned counsel for the Opponents cited the following decided cases. In these cases, there was no connection between the goods of the rival parties.
Caltex Trade Mark Case Sunder-Parmanand Lalwani and others v. Caltex (India) Ltd. AIR 1969 Bom 24.
In this case, an Application for registration of the trade mark 'Caltex' for 'horological and chronometric instruments' was opposed by the proprietors of the trade mark 'Caltex' for 'Petroleum products'. 'Caltex' was an invented word. The Deputy Registrar of Trade Mark allowed the application by giving finding against the Opponents. On first appeal to the High Court, the finding of the Deputy Registrar of Trade Mark in respect of Section 11 was confirmed but his decision was reversed in exercise of the discretion of the Court. On appeal to the Division Bench, the Application was refused. In this case, the goods of the rival parties were totally different. There was no trade connection between the goods. The Trade channels were different. Even then, it was held that a large number of persons, if they see the trade mark 'Caltex' on watches they would think that watches were in some way connected with the Opponents and that they would assume that such watches originate from the Opponents.
Hindustan Lever Ltd. v. Radha Products ---(1973) 2 Industrial Property Law Reporter 72 at p. 79-80 (Madras High Court).
In this case, an application for registration of a trade mark consisting of the device of a lotus and words 'Lotus brand' in respect of honey was opposed by the proprietors of a similar trade mark registered and used for hydrogenated edible vegetables oils and edible vegetable oils. The application was refused under Section 11(a) on the ground that the mark was likely to deceive or cause confusion in view of the reputation acquired by the opponents' mark.
Golden Jet Tm. Case 1979 RPC 19.
An application to register a trade mark containing the device of a three pointed star inside a decorated border and the words 'Golden Jet' on the border for articles of clothing in class 25 was refused under section 11 on opposition by the proprietors of an identical three pointed star device (Dalmler Benz A.O.) used extensively in respect of motor vehicles. The Opponents' evidence showed that in their advertising techniques the opponents had applied a three pointed star, a device of a motor car and the name Mercedes-Benz on a variety of goods which they distributed through gift shops. There was also some evidence of use of the device on T-shirts and evidence to the effect that whenever T- shirts bore the trade mark of a well-known company then the trade assumed that there was a connection between the company and the T-shirt supplier.
In Caltex Case (AIR 1969 Bom 24) and Lotus Brand Case [(1972) 21 IPLR 72] the application for registration were refused on the ground that they were likely to deceive or cause confusion under Section 11(a) in view of the reputation of the Opponents' trade mark.
The facts of the instant case are nearer to the above-mentioned third case; namely, Golden Jet Tm Case (1979 RPC 19). In that case, the Opponents' trade mark was used for 11 years. In the instant case, the Opponents' trade mark FIAT has been used in India for more than 34 years. In Golden Jet Tm Case, the Opponents' goods are motor vehicles and parts thereof. In Golden Jet Tm Case, the Applicant wanted registration for 'articles for clothing'. In the instant case, the Applicant wants registration for 'hosiery'. In Golden Jet Tm Case, there was evidence that the Opponents distributed through gift shops variety of goods including T-shirts, scarves, sweat-shirts duly marked with their trade mark. In the instant case also, the Opponents have distributed several gift articles with the Opponents' trade mark thereon. (See paragraph 14 of affidavit dated 28th March, 1983 by Dr. Paolo Sani). Among the gift articles distributed by the Opponents include 'golfsweater' and 'articles of clothing'. (Exhibits B and C of Dr. Paolo Sani's affidavit). In Golden Jet Tm Case, there was evidence to the effect that whenever T-shirts bore the trade mark of a well known company then the trade assumed that there was a connection between the company and T-shirt supplier, (1979 RPC 19, middle paragraph at page 23). In the instant case, there is no such evidence. In Golden Jet Tm Case, the Applicant had not filed evidence; whereas in the instant case, the Applicant has filed evidence.
In Golden Jet Tm Case (1979 R
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PC 19), the Application for registration was refused on the ground that the use of the Applicant's trade mark on such goods as T-shirts, scarves and sweat-shirts would be likely to deceive or cause confusion since (I) there was evidence that some deponents would be confused and that (ii) there was evidence that well-known trade marks are commonly placed on such garments with the authority and approval of their owners. In the instant case, there is evidence that for publicity purposes the Opponents are distributing sweaters and clothing articles with their trade mark thereon. (See paragraph 14 of Dr. Paolo Sani's affidavit dated 28th March, 1983 and Exhibits B and C). when the customers will come across the Applicant's hosiery goods with the trade mark FIAT thereon, they may think that such hosiery goods have some connection with the manufacturers of FIAT motor cars and their spare parts. Accordingly, the use of the Applicant's trade mark would be likely to deceive or cause confusion. The registration of the Applicant's trade mark is therefore prohibited under Section 11(a). The Applicant has copied the Opponent's trade mark. The Applicant cannot therefore claims to be the proprietor of the trade mark applied for. The Applicant has copied the Opponents' trade mark. Hence, adoption of the trade mark is not honest. The Applicant has claimed to have used the trade mark for about 8 months, as on the date of the Application. The period of user, as claimed by the Applicant, is too short for grant of registration under Section 12(3). The Applicant's trade mark is therefore not registrable under Section 12(3). For the foregoing reasons, the said Opposition is allowed and Application No. 366177 is refused. The Applicant shall pay Rs. 140/- (Rupees One Hundred Forty) only to the Opponents as costs of these proceedings.