V. Ravi, ARTM:
1. On 2nd March, 1981 Arun Kejriwal trading as Hindustan Hosiery Mills Kalachowkia Road, Bombay-400 033 (herein called 'the Applicants') made an application for registration of a label mark containing the letters HHM in respect of Socks and stockings in Class 25. The said mark HHM is embossed inside a distinctive device some what resembling a shield. The said letters HHM is already registered under Nos. 242473 and 248301 in Class 25. The impugned mark under the new label in red and black background is claimed to have been used since 25th February, 1969, as evidenced by the user stated in TM-1 even though inadvertently the Trade Marks Journal shows user from 1979. The application was after examination accepted for registration subject to association with the already registered trade marks and subsequently published in Journal No. 892 dated 1st August, 1986 at page 366.
2. On 8th October, 1986 M/s. Kamal Hosiery Industry 5, Kamal Kutir, Behind Filmistan Cinema, New Delhi-5 (hereinafter called 'the Opponents') filed a Notice of Opposition against the registration of the trade mark advertised as mentioned above. The main grounds for opposing this application are as follows:
3. The Opponents who are in the business of manufacturing socks are the Registered Proprietors of the trade mark KHI which is the trading style of Kamal Hosiery Industry. The Opponents state that they have adopted the label KHI as far as back in 1964 and since than used extensively. The Opponents said label was registered under the Copyright Act in 1977 and is still valid. The Opponents have spent as substantial amount of money in popularising their trade mark. The impugned mark is not registrable as it is neither distinctive nor capable of distinguishing the Appellants goods and it does not satisfy the requirements of the Act as to the registrability. The impugned mark is alleged to be in all essential respects identical with or deceptively similar to the Opponents label in respect of the same goods or description of goods for which the Applicants are seeking registration. If the impugned mark is allowed to be registered there would be deception among public and injury to the Opponent's trade mark and business. The Applicants thus cannot claim to be the proprietors of the mark applied for. It is alleged that the Applicants have made several material mis-statements which was not due to genuine mistake but were made with an intention to get improper advantage or the ulterior motives. The Opponents also state that the user claimed by the Applicants is false and their goods is likely to be passed off as the goods of the Opponents. In view of this subject application merits dismissal.
4. In their counter-statements the Applicants state that they are carrying on an established business as manufacturers and dealers in socks, stockings and other hosiery goods for the last 2 decades. The Applicants also claim to be the Registered Proprietors of the trade mark HHM under No. 242473 and 248301 in Class 25. The mark was adopted in early 1969 and has been continuously used since than. The Applicants state that the label under the impugned application is also registered under the Indian Copyright Act under No. A-5919/73. They also state that their product under the impugned label has been sold throughout India on a very large scale and that they have been spending 2 to 3 lakhs of Rupees every year towards advertisement, publicity and sales promotion of their under the impugned label have become very popular because of the intrinsic goods quality and superior finish and valuable reputation and goodwill stated to have accrued to their said mark and the goods sold. Thus, the Applicants state that the impugned mark has always been identified and associated with their goods. In or about August, 1977 the Applicants came to know that the Opponents herein were marketing socks in cartons which were identical with and/or deceptively similar to the Applicants label under the impugned application. The Opponents were also found using a label on socks which was identical with and/or deceptively similar to the Applicants Registered mark No. 248301 (it has also been registered under the Copyright Act). The Applicants, therefore, filed a criminal complaint against the Opponents in the Court of Additional Chief Metropolitan Magistrate at Esplanade, Bombay being Case No. 18/1 & R/1977 (subsequently converted into CC/190/S/77). After the trial, the Opponents were found guilty of an offence punishable under Section 78 of the Trade and Merchandise Marks Act, 1958 and Section 63 of the Copyright Act, 1957. By this judgment dated 26th March, 1979 the Addl. Chief Metropolitan Magistrate Mr. M.H. Jadhav convicted the Opponents and sentenced them to suffer imprisonment and also to pay fine. In Criminal Appeal No. 247 of 1979, the Ld. Sessions Court upheld the findings of the lower court and confirmed the conviction and sentence. Thereafter the Opponents appealed to the High Court of Bombay which set aside the lower court's judgment and acquitted the Opponents on the ground that the procedure followed by the lower court was not proper. However, the Applicants state that the conviction against the Opponents herein related to an offence under Section 78 of the Trade and Merchandise Marks Act, 1958 and it was set aside only on technical ground. The Applicants specifically alleged that the Opponents have imitated the Applicants label just before the complaint was filed by the Applicants in 1977. It is alleged that after the said criminal proceedings the Opponents have changed their label. The Applicants also assert that the Opponents have fraudulently registered their mark under the Copyright Act because the Applicants themselves have got the impugned label already registered the under Copyright Act much earlier in 1970 under Registration No. A-5919/70. In any event, the Applicants maintain that the registration of the Copyright Act cannot constitute a ground for opposing the label under the impugned application. It is submitted by the Applicants that the Opponents label is similar to their label and the very adoption and use was patently illegal and cheating unwary customers and will cause confusion and deception in the trade. It is alleged by the Applicants that the Opponents have filed these proceedings while indulging in criminal infringement activities like imitation and copying and infringing of the Applicant's trade mark. The Applicants assert that they are already the Registered Proprietors of the trade mark HHM. They have thus claimed statutory rights to the use of the mark under the impugned application and in fact have been using the said trade mark for the last 17 years without causing any confusion and deception. The Applicants claim to have used the mark since February, 1969 whereas the Opponents by their own admission have adopted and copied their label in 1977. In the result the Applicants pray the subject opposition should be dismissed and the application be allowed to proceed to registration.
5. The evidence in support of the opposition is an affidavit of Madan Kumar Jain the sole proprietor of M/s. Kamal Hosiery Industry, dated 16-7-1987. The said affidavit is accompanied by invoices and the Opponents label bearing the trade mark KHI. The Applicants have not filed evidence in support of their application and the matter was thereafter set down for a hearing and it come up before me on 12th October, 1992 when Shri Ram Parkash Kumar, Instructed by Delhi Registration Service appeared on behalf of the Opponents and Shri M.R. Nair, Advocate appeared on behalf of the Applicants.
6. According to Shri Ram Parkash Kumar, the mark applied for by the Applicants is stated to be in use since February, 1979. He submitted that the impugned mark is an exact copy of the Opponents Copyright Registration under No. A-19004/77. The Opponents have filed evidence in support of opposition and inspite of several reminders the Applicants failed to file evidence in support of their application. Thus, according to Shri Ram Parkash Kumar the learned counsel for the Opponents, it is presumed that the Applicants admit the Opponents user since 1977 for which sufficient documentary evidence has been filed. Shri Ram Parkash Kumar relied on the judgment of Silexine Paint's Application for Rectification (1954) 71 RPC 91 where it was observed that 'Where a filing of single declaration sufficiently raises the point, and there is no denial by the opposite party, it is presumed that the facts stated therein are valid and there is no need to support such declaration by trade evidence'. Further Shri Ram Parkash Kumar pointed out that according to their own statement the Applicants have claimed to have used their mark only from February, 1979 which leads to the conclusion that they have adopted the mark later on.
7. I shall now examine various grounds for objection raised by the Opponents. A cursory look at the Notice of Opposition clearly indicates that the Opponents are not the Registered Proprietors of their mark bearing the letters KHI which according to them is deceptively similar to the Applicants' label mark bearing the letters HHM. In other words, the Opponents cannot raise objection under Section 12(1) of the Act. Further, it is not at all clear from their pleadings under which specific section of the Act the subject application is barred. Nevertheless I will look into the whole case. So far as objection under Section 9 is concerned the same is not a serious ground for objecting to this application as letter marks are considered to be distinctive in respect of textile goods. I therefore, hold that the Applicant's label mark bearing the letters HHM is a distinctive trade mark and is also adapted to distinguish the goods of the Applicants.
8. So far as the objection under Section 11(a) is concerned the Opponents are under wrong notion that the Applicant's mark has been adopted or used subsequent to the Opponents. On the other hand the Applicants are already the Registered Proprietors of the letters HHM. Further, the user of the Applicant's mark as printed in the Trade Marks Journal was from 1979 which is a printing error. Statement of use stated in Form TM-1 as shown in the application is from February, 1969. The Applicants also state that the same label has been registered under the Copyright Act much prior to the Opponents in 1970 under No. A 5919/70. From all these it would appear that the Applicants could not have possibly copied the Opponents' label. As mentioned earlier the Applicants herein have filed a criminal complaint against the Opponents before the Chief Judicial Metropolitan Magistrate in CC/190/S/77 and the Opponents herein have already been convicted for sentence under Section 78 of the Trade and Merchandise Marks Act and Section 63 of the Copyright Act. This clearly goes to show that the Applicants could not possibly have copied the Opponents' mark. These are the circumstances which leads to believe that the impugned mark is associated with the goods of the Applicants. I will therefore turn down the allegation made by the Opponents raising an objection under Section 11(a) that the use by the Applicants of the impugned mark is likely to deceive or cause confusion. It is true that the Applicants have not filed any evidence in support of their case. It is also true that the onus rest on the Applicants to make out a case that the mark applied for is fit for registration. Nevertheless, it is impossible for me to conclude on the basis of material before me that the Opponents have conclusively established their prior vested use and reputation in the mark applied for. Section 11(a) is wide enough to cover deception or confusion resulting from any circumstances whatsoever. However, each case under that section must be decided upon its own facts. In these proceedings the Applicants have relied on certain criminal complaints which have been proved and thus are material circumstances which lead me to infer that the Applicants could not possible have copied the Opponent's label as alleged. Any confusion that may arise between the two marks is squarely of the Opponents own making. In my view no convincing case under Section 11(a) of the Act has been made and therefore the same fails.
9. For the same reason I also hold that the Applicants must be regarded as the lawful owners and proprietors of the impugned mark within the meaning of Section 18(1) of the Act. The Opponents have in their Notice of Opposition claimed to have used their trade mark KHI from 1964 onwards. There is no evidence to that effect in the file. In the affidavit of Mr. Madan Kumar Jain the Proprietor of the Opponents' firm is stated in para 3 that the firm has been using the trade mark KHI in a distinctive make-up, style, composition and illustration before the trade mark KHI and the same was adopted in 1977. These are inconsistent claim and raises suspicion about the Opponent's claim of use of the mark. There are authorities for the proposition that the affidavits and documents which have been used in a judicial proceedings for the purpose of proving a particular facts is taken as evidence in a subsequent proceeding to prove the same fact. The purpose of mentioning this is to emphasize that the Applicants have relied on the findings of Chief Metropolitan Magistrate which has direct bearing on the result of these proceedings. On a perusa
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l of the same the antecedent of the Opponents in relation to these proceedings becomes quite clear. 10. On an overall assessment of the facts and circumstances of this application I am satisfied that the Applicants have deviced, coined and adopted the impugned mark honestly and bonafidely and that they are just and justified in adopting and using the same. 11. Finally, I would like to refer to the case law relied on by the Opponents on the judgment in Silexine Paints in an Application for Rectification 71 RPC 91 where it was observed 'Where a filing of single declaration sufficiently raises the point, and there is no denial by the opposite party, it is presumed that the facts stated therein are valid and there is no need to support such declaration by trade evidence'. In my respectful view the proposition advanced by Shri Ram Parkash Kumar does not clearly apply into these proceedings because the Applicants, in fact, are strongly denying and challenging the evidence filed by the Opponents. On the basis of statements made in the counter-statement and arguments advanced at the time of hearing and in view of the Applicants having relied on a criminal complaint which has a material bearing to this case. 12. In the result Opposition No. BOM-6948 is dismissed and Application No. 372934 in Class 25 shall proceed to registration. The Opponents are directed to pay a sum of Rs. 110/- (Rupees one hundred ten only) as cost of these proceedings to the said Applicants.