1. On 9th March, 1987, General Sewing Machine Works, 1-7-177, Bakaram, Hyderabad 500 048 (hereinafter referred to as the Applicants) made an application under the Trade & Merchandise Marks Act, 1958 (hereinafter referred to as the Act) for registration of a trade mark `Vidya' in Class 11 in respect of fans included in Class 11. The application was numbered as 468894 B. After preliminary examination the application was advertised before acceptance in Trade Marks Journal No. 959 dated 16th May, 1989 at page 231.
2. On 10th August, 1989, Sri Rama Krishna Industries, Plot No. 1, Satellite Industrial Estate, Balanagar, Hyderabad-500 037 (hereinafter referred to as the Opponents) gave a notice of their intention to oppose the above said mark, inter-alia, on the following grounds:-
1) that the Opponents carry on an extensive business of trading, merchandising and manufacturing Electrical Fans of all kinds under the trade mark `Vidya' since 1983 continuously, exclusively, extensively and openly and the goods under the mark are known as `Vidya Fans';
2) that the Opponents have also filed an application for registration of their trade mark `Vidya' under No. 453285 in Class 11;
3) that the Opponents' trade mark is well known among the members of the trade and public;
4) that the overall impression of the trade mark consisting the word `Vidya' for which the applicants are seeking registration is such that it can be easily mistaken for their trade mark and suggest theat the Applicants' goods also emanate from them;
5) that the goods in respect of which the applicants are seeking registration are the same as the goods for which the Opponents trademark `Vidya' is used. The registration of the Applicants' trade mark will confuse customers and the trade into believing that the Applicants are connected in the course of trade with the Opponents. There is likelihood of confusion regarding the origin of the Applicants' goods;
6) that the Applicants had knowledge of the origination, adoption and use by the Opponents of their trade mark `Vidya' at the time they adopted the trade mark for which they are seeking registration;
7) that the trade mark for which application for registration is made is not capable of distinguishing or adapted to distinguish the Applicants' goods;
8) that the applicants are not the proprietors of the mark for which they are seeking registration;
9) that the user claimed by the applicant since 23.3.1985 is dishonest and void-ab-initio. The user is not admitted by the Opponents and the Applicants are put to strict proof thereof;
10) that the registration of the trade mark applied for in the name of the applicants will be contrary to Sections 9, 11 and 18 of the Trade & Merchandise Marks Act, 1958;
11) that the foregoing constitutes sufficient grounds for the exercise of Registrar discretion in the favour of Opponents;
12) that the Opponents pray that the mark in the above application may be refused registration and also pray for costs.
3. On 20.11.1989, the Applicants filed a counter-statement generally denying the allegations raised in the notice of Opposition. They have also stated that preparations were started from 23.3.1985 for launching fans with their trade mark `Vidya'.
4. The evidence in support of Opposition consists of affidavit of Mr. Naresh Agarwal, partner of Opponents' Company. Accompanying this affidavit are Exhibit `A' which is an Assignment deed dated 16.2.1986 executed in favour of the Opponents by M/s Pradeep Kumar Agarwal and Yogesh Kumar Agarwal, partners of M/s Pradeep Agencies, Hyderabad, Exhibit `B' which is a copy of order of Deputy Registrar of Trade Marks in application No. 453285 in Class 11 and Exhibit `C' which is a legal notice from the Applicants to the Opponents. The evidence in support of application is an affidavit of Mr. S. Sadanand, partner of Applicants Company. Accompanying this affidavit is Exhibit `A' containing photo copies of few orders, advertisement bills, enquiry letters, sales bills, etc.
5. The matter came up for hearing before me on 6th August, 1996. Mr. C. Daniel, Advocate appeared for the Opponents and Mr.C.S. Rao, Advocate appeared for the Applicants.
6. On 12th February, 1993, the Applicants have filed an Interlocutory Petition alongwith an affidavit of Mr. S. Sadanand a partner of the Applicants' firm alongwith Exhibit `A' and vide Trade Marks Registry's letter dated 23.2.1993 a comment of the Opponents was invited regarding the Interlocutory Petition filed by the Applicants and Opponents comments was received on 12th March, 1993.
7. Before I proceed to examine the Opponents' objection as raised by them in their notice of Opposition, I would like to decide the Interlocutory Petition filed by the Applicants. After carefully going through the Interlocutory Petition and also the comments thereto as forwarded by the Opponents and also after considering the oral submissions of both the sides, I feel that it is in the interest of justice, equity and good conscience to allow the said Interlocutory Petition and I hereby allow it and the material papers filed alongwith it are taken on record.
8. I first turn to examine the Opponents' objection under Section 9 of the Act. The Opponents in para 8 of their notice of Opposition have alleged that the trade mark for which the Applicants are seeking registration, is neither capable of distinguishing nor adapted to distinguish the Applicants' goods. The learned Counsel appearing for the Opponents submitted that the Applicants' mark consist of the word `Vidya' which is a personal name, therefore, Section 9 of the Act is a bar for the registration of the said mark. He further submitted that the Applicants are using the trade mark `Vidya' for `sewing machine' from the year 1954 but they are using the said mark only from 23.3.1987 in respect of fans. On the other hand the Applicants' Counsel Mr.C.S. Rao argued that the Applicants' mark `Vidya' was conceived in the year 1985 in respect of fans. But they are the registered proprietors of the trade mark `Vidya' under No. 215374 in Class 7 in respect of sewing machine and they have been using ever since the year 1954. When the Applicants decided to extend their business to the manufacture and sale of fans also, they conceived the trade mark in the year 1985 in respect of fans. He further invited my attention to para 5 of the affidavit of Mr. Sadanand, a partner of the Applicants' firm and also to the Exhibit `A' accompanying the said affidavit. The Applicants in para 5 of their affidavit filed in support of their application under Rule 54 of the Trade and Merchandise Marks Rules, 1959, have given the advertisement expenses from the year 1984-85 to 1989-90. In support of this statement the Applicants have annexed few copies of leaf-lets, Dealership enquiries for fans, Vidya Fan & Sewing Machine advertisement leaf-lets, enquiry letter for fans from the dealers.
9. It is clear from the material papers on record that the Applicants were not using the trade mark in respect of fans on the relevant date (i.e) the date of making their application of registration of trade mark `Vidya' in respect of fans. I would like to mention here the legal position about the registration of a personal name. Section 9 of the Act prohibits the registration of personal name unless it is proved that it has acquired distinctiveness by user there of or by reason of any other circumstances the mark is in fact distinctive. Shri C.S. Rao, appearing for Applicants contended that even advertisement will amount to the user of the mark and in this respect he relied on `Pepsicola case'. It is pertinent to mention here the `Whirlpool Case' (1996 PTC P.415). In this case it was held by the Division Bench of the Delhi High Court that even advertisement of the trade mark without existence of goods in the market is also to be considered as use of the trade mark. The Applicants' Counsel Shri C.S.Rao further submitted that the Applicants are using the trade mark `Vidya' in respect of sewing machines ever since the year 1954 and by reason of these circumstances also the Applicants' mark is in fact distinctive of the Applicants' goods. In the light of the above discussion I hold that the Opponents' objection under this Section cannot be sustained.
10. Next I turn to Opponents' objection under Sec.11(a) of the Act. For an Opponent to succeed under this Section it is important for him to prove that his mark is not unknown in the market. The Opponents must prove the user and reputation of his mark, it is only then that there can be any question of there being deception or confusion with the Applicant's mark. If the Opponent fails to prove the user and reputation of his mark, which is in any way similar to that of the Applicant's mark, the question of there being any confusion or deception cannot arise. This section contemplates some other mark being in existence with regard to which Applicants mark may cause confusion. Where the Opponent has failed to prove that the mark which he propounded was in existence prior to that of the Applicant's mark for registration and the use and reputation of it, this section cannot be a bar to the registration of the Applicant's mark.
11. Now let me examine the evidence filed by the Opponents to prove such user and reputation of their mark as was alleged by them. The Opponents in para 5 of their affidavit filed in support of the Opposition have alleged that they became entitled to the trade mark `Vidya' by virtue of a deed of assignment dated 16.2.1986. A copy of the said assignment deed is annexed alongwith their affidavit and is marked as `Exhibit A'. On the basis of this assignment they are claiming the user of the mark from the year 1983 and in para 10 of the said affidavit they have given the sales turnover from 1983-84 to 1989-90. There is no document in the form of copies of bills, invoices, order letters, etc., to support the said sales turnovers as alleged by the Opponents in para 10 of their affidavit. The only document they have filed in support of this affidavit is the `Exhibit A' which is an assignment deed. The learned Counsel Shri C.S.Rao appearing for the Applicants had challenged the legality of this deed and has submitted that since this assignment of the trade mark is without any consideration, therefore, it is bad in Law. The Learned Counsel Shri C.S. Rao further invited my attention to para 4 of the Opponents' Affidavit. In this para the Opponents have stated that the mark `Vidya' was originally conceived, originated and adopted in the year 1983 by M/s Pradeep Agencies, Hyderabad, in which the deponent was a partner alongwith Pradeep Kumar alias Pradeep Kumar Agarwal and Yogesh Kumar alias Yogesh Kumar Agarwal. Since the said assignment was executed without any consideration and on the basis of which the Opponents are claiming user of their mark from the year 1983, is of no assistance to the Opponents as was rightly pointed out by the learned Counsel of the Applicants Shri C.S. Rao and in absence of any other document to substantiate the claim and reputation of their mark I am of the view that there was no user and reputation of the Opponents' mark on the relevant date.
12. Now let me see what is the Applicants' case. In para 24 of the affidavit of Shri Sadanand filed under Rule 54 of the Trade and Merchandise Marks Rules, 1959, the Applicants have stated that the mark was not used in respect of fans on the date of filing the application for registration in Class 11, but it is a well known and reputed mark of the Applicants' firm. The public always associate the trade mark `Vidya' with the Applicants' firm and when they see the same mark on fans they are likely to connect the same with the Applicants' firm only and none else. Therefore, the use of the trade mark `Vidya' in respect of fans by the Applicants is not likely to cause confusion or deception regarding the origin of the goods. Further the Applicants in para 7 of their affidavit filed alongwith the Interlocutory Petition have stated that there is a close connection between the trades of sewing machine and electric fans. They have given several examples of several companies which are using the same mark for sewing machines and electric fans, namely, the popular brand names Usha, Singer, Merritt, Luxmi etc. They submit that tin the like manner they also thought of extending their trade to electrical fans and conceived the trade mark `Vidya' in the year 1995 for fans also. The contention of the Applicants deserves acceptance and in the background of there being no user and reputation of the Opponents' mark in respect of fans, the use of the trade mark `Vidya' in respect of fans by the Applicants is not likely to cause confusion or deception among the purchasing public. As a result the Opponents' objection under this Section is also rejected.
13. In the last I come to the Opponents' objection under Sec.18(1) of the Act. The Opponents have alleged that they are the prior user of the trade mark `Vidya' in respect of fans, therefore, it is the Opponents, not the Applicants who are the proprietors of the said mark. On the other hand the Applicants have submitted that they are using the trade mark `Vidya' in respect of Sewing Machines continuously and extensively eversince the year 1954 and they have extended the use of this mark to the trade of fans also and further stated that they adopted their mark on the basis of o
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ne of the partner of the Applicants' firm, namely, Shri S. Vidyanand. While dealing with the Opponents' objection under Sec.11(a) of the Act, I have already held that there was no user or reputation of the Opponents' mark on the relevant date. On the contrary, on perusal of the Application No. 453285 in Class 11 and material paper on record in this Opposition and also the judgement in Rectification No.MAS-308 filed alongwith the Applicants' affidavit marked as Exhibit `A', it appears that it is the Opponents who have copied the Applicants' mark to pirate the reputation and goodwill of the Applicants' mark. In view of this the Opponents' objection under this section is also rejected. 14. The Applicants have submitted that the present Opposition is highly frivolous and vexatious and have requested that the same may be dismissed with exemplary costs awarded to them. Keeping in view the conduct of the Opponents and the material papers on record in this Opposition, I feel that this is a fit case where an exemplary cost may be awarded to the Applicants and, therefore, I hereby order that Opponents shall pay to the Applicants a sum of Rs. 990/- (Rupees nine hundred and ninety only) towards costs of these proceedings. 15. In view of the foregoing, the Application bearing No. 468894B is accepted and shall proceed to registration and Opposition bearing No.MAS-2261 is dismissed. 16. Signed and sealed at Chennai this the 18th day of December, 1996/27 Agrahayana 1918 SAKA.