ORDER (No.24 of 2014)
K.N. Basha, Chairman
This appeal is preferred by the appellant challenging the order of Deputy Registrar of Trademarks, Chennai dated 09/03/2010 dismissing the notice of opposition filed by the appellant opposing the registration of the trademark ―JONES‖(label) by the respondent herein.
2. The case of the appellant is that the appellant is a foreign company and they are the registered proprietors of trademark ―JONES NEW YORK‖and using it internationally in relation to wide range of goods from the year 1966 and acquired international reputation. It is their case that they are dealing in clothing for men, women and children, hosiery, footwear, leather goods etc. It is claimed by the appellant that they are the prior user of the trademark ―Jones New York and they are acquired international reputation and transborder reputation. It is their case that the respondents have copied and adopted the opponent’s trademark in respect of identical / same goods and as such the use of the impugned trademark by the respondent would cause confusion and deception among the public.
3. The respondent/applicant filed their counter statement to the grounds of the opposition filed by the appellant denying and refuting the allegation. It is stated that the trademark ―JONES‖is different from the opponent’s trademark ―JONES NEW YORK‖and the goods in respect of which the opponents have registered with the trademark are sold only in foreign countries and not in India. It is further stated that the opponents have no use of their trademarks in India and that they have adopted the trademark honestly and they are having continuous use of their trademark right from the year1993. There is no question of confusion or deception.
4. Both the appellant/opponent filed their respective documents of evidence in support of the claims and contention before the Registrar. The appellant raised grounds of opposition for the violation of section 9(1), 9(2)(a), 11(1), 11(2), 11(3), 11(10) and 18(1) of the Trade Marks Act, 1999 (herein after referred as Act). The Deputy Registrar on considering each and every objection of opponent and contention of the appellant by rendering findings on each ground dismissed the notice of opposition and allowed the registration of impugned trademark ―JONES‖. On being aggrieved against the said order the appellant preferred the present appeal.
5. Ms. Sumitra Chowdhury, the learned counsel for the appellant would vehemently contend that the impugned order passed by the Deputy Registrar of Trade Marks is liable to be set aside as the reasons are factually incorrect and based on the pleadings which were not raised by the respondent and put forward the following contentions :-
(1) The Deputy Registrar failed to consider the adoption and use of the mark ―Jones New York‖from the year 1966 by the appellant and the international reputation and transborder reputation earned by the appellant.
(2) The appellant use their mark ―JONES NEW YORK‖in more than 35 countries including USA and got the registration of their trade mark and earned worldwide reputation in the field of their business in garments both in men and women, children, leather goods etc.
(3) The Deputy Registrar failed to note that the appellant has registered their trademark in India in the year 1977 in respect of class 25 relating to same goods as of the respondent.
(4) The respondent has not shown any substantial sale of their goods by using the impugned trade mark and the Deputy Registrar also pointed out that they have produced only meager sale. As such the respondent cannot claim reputation among the public in respect of their goods using the similar trade mark as adopted by the appellant.
(5) In view of the development of the technology and communication the respondent cannot claim ignorance of international reputation of the trade mark of the appellant.
6. In support of her contention the learned counsel for the appellant placed reliance on the following decisions :
(1) 2004(28)PTC 314 IPAB -- Vishnu Cement Limited vs. B.S. Cement Private Limited – Indian Kanoon
(2) Hon’ble High Court of Calcutta– Calvin Klein Inc. vs. International Apparel Syndicate on 16 March, 1994 -- Indian Kanoon
(3) AIR 1995 Delhi 300, 1995 (34) DRJ 109 -- Hon’ble High Court of Delhi–N.R. Dongre and Ors. vs. Whirlpool Corporation and Anr.
(4) IPAB Order No.74/2012 dated 04/04/2012– Shalimar Chemical Works Limited, Kolkata vs. The Deputy Registrar of Trade Marks, Chennai and Ors.
(5) IPAB Order No.209/2012 dated 24/08/2012– M/S Tirupathi Foam Limited vs. M/S R.P. Foam Home Pvt. Ltd.
(6) 2004 (28) PTC 585 -- Hon’ble Supreme Court of India – Milmet Oftho Industries & Ors. vs. Allergan Inc. on 07/05/2004
(7) Hon’ble High Court of Bombay– Lupin Limited vs. Johnson & Johnson on 06/09/2012-Indian Kanoon
(8) IPAB Order No.92/2013 dated 30/04/2013 – OA/21/2008/TM/KOL–M/S JAGUAR Cars Limited, England vs. M/S Manufacture Des Montres Jaguar S.A, Switzerland.
(9) 2004 (29) PTC 314 IPAB -- Kalyanpuri Flour Mills Pvt. Ltd. vs. Jagmohan Kumar -- Indian Kanoon
7. Mr. Rajesh Ramanathan, the learned counsel for the respondent would contend that there is no infirmity or illegality in the impugned order. It is contended that the Deputy Registrar has assigned valid reasons for the findings rendered by him. It is pointed out by the learned counsel for the respondent that the main question to be considered in this matter was clearly pointed out by the Deputy Registrar in its impugned order in the inner page 6 as here under :-
'Since, the speaking parts of the rival marks being
'JONES‟are same and the goods under the competing trade marks are same, trade channels are same, class of customers is same, the competing marks can be considered similar, however, the million dollar question arises whether the opponents‟trade mark by way of use is competing in India and/or the international reputation/transborder reputation as alleged by the opponents is percolated into India as on the date of application, the material date.'
8. The learned counsel for the respondent would strongly contend that the crux of the question involved in this matter as pointed out by the Deputy Registrar is that whether the appellant has established their use of trade mark ―JONES NEW YORK‖in India on the date of application filed by the respondent before the Registrar for the registration of the impugned trade mark. It is contended that till date the appellant is not using their trademark ―JONES NEW YORK‖in India. Therefore, it is contended that there is no question of establishing their transborder reputation in India. The learned counsel for respondent would place strong reliance on the decision of the Hon’ble Supreme Court in Milmet Oftho Industries & Ors vs. Allergan Inc reported in 2004 (28) PTC 585 relied by the learned counsel for the appellant as the Hon’ble Apex court held that the multinational corporation who have no intention of coming to India or introducing their products in India should not be allowed to throttle an Indian company. Therefore, it is contended that the appellant has not made out any ground for interference of this Board in the impugned order of the Deputy Registrar.
9. We have given our careful and thoughtful consideration to the rival contentions put forward by either side and perused the entire materials available on record including the impugned order passed by the Deputy Registrar.
10. At the outset it is to be stated that the undisputed fact remains that the appellant till date is not using their trade mark ―JONES NEW YORK‖in respect of their business in India and it is their categorical statement that they proposed to use their trade mark in India. It is pertinent to note that though the appellant claimed that they are using their trade mark right from the year 1966 the fact remains that there is no evidence to show that they are using their trade mark from the year 1966 as they have filed their documents only from the year 1997. On the other hand the respondent claimed that they are using the impugned trade mark right from the year 1993 and they have also produced documents to substantiate their claim. With the above said facts we have no hesitation to hold that there is no question of causing any confusion on the part of the public in respect of the goods sold by the respondent more particularly in India and as such no violation of provision under section 11 of the Act on the part of the respondent. It is also to be stated that the appellant has not discharged their burden of establishing their alleged use and sale and the reputation of their trademark in India more particularly on the date of application of the respondent filed before the Registrar of Trade Marks. The Deputy Registrar also given a finding in the impugned order based on the materials relied by the appellant as hereunder:
'No specific Newspaper or magazine containing the advertisement of the opponents‟trade mark having circulation in India, which may be considered as cogent and relevant evidence is not available on record. Thus, the opponents have failed to discharge the onus initially cast upon them to establish the user as on the date of application and make out the case of opposition in their favour and when there is no product of the opponents available in India, how the impugned trade mark is likely to cause confusion or deception among the Indian consumers and the trade and how the Consumer of the applicants‟goods may assume that the applicants have some trade connection with the opponents as alleged by the opponents.'
11. It is also rightly pointed out by the Deputy Registrar that even assuming the opponent/appellant’s trademark acquired reputation in foreign countries where their trade mark is registered, there cannot be any presumption that trade mark of the appellant registered in foreign countries have acquired reputation in India or transborder reputation is percolated in India as we have already pointed out that the mark of appellant has not at all in use in India or any place of registration.
12. The learned counsel for the appellant contended that the Deputy Registrar has given the findings in favour of the respondent on the basis of provision under section 12 of the Act regarding concurrent user without any plea raised by the respondent. We are constrained to state that it is well settled principle that any findings of the Deputy Registrar should be based on the pleadings of both sides and in the impugned order if any findings rendered without pleading we have to simply ignore the said findings, as we have pointed out that the other findings rendered on the pleadings of both sides are to be considered by us.
13. The yet another contention of learned counsel for the appellant is that the respondent produced material evidence to show their annual sales figure and the same reflects only meager sales in lakhs and therefore the same is not sufficient to distinguish the respondent’s goods. We are unable to countenance the said contention of the learned counsel for the appellant. The Deputy Registrar has rightly observed in the impugned order that when the respondent, namely the applicant before the Registrar, is prior in adoption and use of the mark in India, the quantum of sales figure is immaterial. It is rightly held by the Deputy Registrar that the respondents have discharged the onus ultimately cast upon them that there is no likelihood of confusion or deception and as such they are entitled for registration. It is also rightly held by the Deputy Registrar that the rival marks are dissimilar and different and accordingly rejected the objection under section 11(1) and 9 (2) (a) of the Act. In view of the same the Deputy Registrar also rightly rejected the objections under section 11(2), 11(3) and 11(10) of the Act.
14. As we have already pointed out that the main crux of the question in this matter is that whether the appellant has established their transborder reputation, it is to be reiterated that the appellant has not at all used the trademark in India till date and it is their categorical claim that they proposed to use. The decision relied by the learned counsel for the appellant are not helpful to advance their claim as they are not applicable to the facts and issues involved as many of the decisions are not related to the issue in the instant case. On the other hand the decision of the Hon’ble Apex Court in Milmet Oftho Industries & Ors vs Allergan Inc (supra) is in favour of the contentions of the respondent as the Hon’ble Apex Court held here under :-
'Thus, if a mark in respect of a drug is associated with the Respondents worldwide it would lead to an anomalous situation if an identical mark in respect of a similar drug is allowed to be sold in India. However one note of caution must be expressed. Multinational corporations, who have no intention of coming to India or introducing their product in I
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ndia should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market. Thus the ultimate test should be who is first in the market.' 15. The principles laid down by the Hon’ble Apex Court in the decision cited supra makes it crystal clear that the multinational companies who have no intention of introducing their product in India should not be allowed to throttle an Indian company and the Indian company who has genuinely adopted the mark and developed product and it is first in the market cannot be prevented from using the mark. 16. The Hon’ble Apex Court further held in the decision supra as here under:- 'However, if an evidence it is shown that the Respondents had not adopted the mark prior to its use in India by the Appellants then, undoubtedly, the trial Court would vacate the injunction.' 17. The principles laid down by the Hon’ble Apex Court in the decision cited supra are squarely applicable to the issue involved in the instant case as we have already held that the respondent has discharged their onus by establishing that they are prior in adoption and use of the impugned trade mark in India. 18. In view of the aforesaid reasons, we are constrained to dismiss the appeal as devoid of merits No order as to cost. Consequently Miscellaneous Petition No.260/2010 is closed.