TRADE MARKS REGISTRY, MADRAS
C.S. Rao, ARTM:
These proceedings relate to the registration of a trade mark under Application No. 281921, filed on 5th August 1972 by N. V. Gowramma and others trading as Kwality Food products, Post Box No. 2612, Mysore Road, Bangalore-39 (hereinafter referred to as 'Applicants'). The mark, as represented in a label containing a light blue coloured background, consists of the device of a chief's head depicted in white and deep blue colour combination and there appears a scroll in blue colour underneath the chief's head wherein the word 'KWALITY' is written in thick white lettering. The mark was applied for registration in part A of the register in respect of goods amended to read as 'Biscuits (not for animals) and confectionary (non-medicated) 'falling under Class 30. The Applicants claimed proprietorship to the mark on the basis of their user since 1st July, 1962 and they also submitted evidence to substantiate their user. At a hearing held on 16.11.1973 mark was ordered to be advertised before acceptance, subject to its association with Applicants' Registered Trade Mark No. 253012 and marks in some more pending applications and subject to limitation of the mark to the colours appearing on the label. Applicants' mark was accordingly advertised in Trade Marks Journal issue No. 598 dated 1st May, 1974 at page 112.
A notice of opposition was filed by S/Shri Kwality Restaurant & Ice Cream Co., 7, Regal Building, Cannaught Place, New Delhi, now at Top Floor, Marshall House, L, Hanuman Road, New Delhi (hereinafter referred to as the Opponents) objecting to the registration of Applicants' mark, pleading inter alia (1) that Opponents are registered proprietors of trade mark 'GAYLORD KWALITY' under Registration No. 244231 in Class 30 in respect of bread, biscuits, cakes, pastry, Confectionary, ice cream and ice cream Powder, (2) that their sister concern namely Pure Ice Cream Co. (1967) Private Limited, are subsequent Proprietors of Registered Trade Mark No. 178269 and also Registered proprietors of Trade Marks Nos. 255297, 255298, 267195 and 267196 in Class 30 in respect of ice cream and that all the aforementioned registrations contain KWALITY as a trade mark, (3) that by reason of long, continuous and extensive use of KWALITY marks in India and abroad by Opponents and their sister concern since 1940 the Applicants' mark containing the expression KWALITY'S would lead to confusion and deception among the trade and public and that Applicants' adoption of KWALITY mark is tainted with dishonesty, (4) that registration of Applicants' mark will be contrary to the provisions of Sections 9, 11(a), 11(e), 12(1) and 18 of the Act and (5) that Applicants' mark shall be refused under the aforesaid provisions as also in the discretion of the Registrar.
The Applicants filed a counterstatement denying all material averments in the notice of opposition. Applicants contend that the word 'KWALITY'S' in their mark is only a descriptive term and is accordingly disclaimed as having no trade mark value and that their mark as a whole with particular reference to the distinctive device of chef's head has to be considered favourably for purpose of registration.
The applicants have filed in all seven applications as per Application Nos. 231917, 231913, 231920, 231921, 237264, 237265, 237266, against which S/Shri Pure Ice Cream Co. (P) Ltd. filed Opposition Nos. MAS-902, MAS-903, MAS-893, MAS-897, MAS-995, MAS-899, and MAS-924, respectively, while S/Shri Kwality Restaurant & Ice Cream Co., filed Oppositions Nos. MAS-901 and MAS-904, MAS-894, MAS-898, MAS-896, MAS-900 and MAS-925 respectively. The essential features of all marks under the above noted seven applications consist of identical device of chef's head with a scroll underneath containing word 'KWALITY'S' inscribed therein and Applicants claimed user in respect of all marks since 1.7.1962. The pleadings of both Opponents, which are sister concerns, are identical against Applicant's mark under the above noted oppositions and Applicants' reply to the Opponents' contentions is the same. The evidence in support of each of the above oppositions consists of a main affidavit by P.L. Lamba, partner of both Kwality Restaurant &Ice Cream Co., and Pure Ice Cream Co. (later converted into Pure Ice Cream Co. (P) Limited). Besides Lamba's affidavit which is supported by some documentary evidence, a few supporting trade affidavits are also filed by Opponents in support of their oppositions. The evidence in support of Applicants consists of a main affidavit by Applicants' partner T.V. Viswanatha Gupta supported by some documentary proof and a few more trade affidavits were filed in opposition No. MAS-893, while in other cases, T.V. Viswanatha Gupta's affidavit alone was filed relying on the documentary proof and other evidence filed in Opposition No. MAS-893. To Applicant's evidence, Opponents filed in each case Lamba's affidavit by way of reply evidence. Besides there being common identical evidence in all the fourteen oppositions' the issues too are identical and hence a common hearing was held in respect of all oppositions.
The cases came up for hearing on 2nd November, 1976, when none appeared on behalf of Opponents, while Shri M. R. Lakshminarayana Rao, Trade Marks Agent appeared on behalf of Applicants. Opponents' counsel Shri Anoop Singh, however, sent a telegram stating that he is not attending the hearing and requested for consideration of oppositions on their merits citing a decision reported in 65 R.P.C. 238 in favour of Opponents' contentions. He followed up the telegram by a letter dated 30th Otcober, 1976. The hearing was accordingly held on 2nd November, 1976. At the said hearing Shri M.R. Lakshminarayana Rao submitted that in order to clarify beyond doubt that Applicants are not claiming any rights in the word 'KWALITY'S', he would reduce the size of the scroll containing the word 'KWALITY'S' to extend only to the size of the neck below chef's head thereby making the word KWALITY'S look insignificant under chef's head. He requested time till 20th November, 1976 for the said purpose. He could, however, file requests on form TM-16 on 24th November, 1976 alongwith amended representations reducing the size of word KWALITY'S in all his marks as explained above. A copy of each request on form TM-16 along with each amended representation was served on Opponents' counsel for comments and a further hearing was appointed on 27th and 28th December, 1976. Even for the said hearings, Shri Anoop Singh did no personally attend, but he sent comments through a letter dated 9th December, 1976. Shri M.R. Lakshminarayana Rao appeared before the Tribunal for hearing on 27th December, 1976 and made further submissions on the requests on form TM-16 dated 24.11.1976.
The issues in all these proceedings arise under Sections 9, 12(1), 11(a), 11(b), 11(c) and 13(1) of the Act.
As regards issue under Section 9, I am unable to uphold Opponents' objection since the Applicants' marks depict the device of a chef's head drawn in a peculiar configuration as the main and essential feature and this device is in my opinion, a distinctive device per se and each label as a whole has also acquired factual distinctiveness through user. The word 'KWALITY'S' written within a scroll underneath the chef's head has no trade mark value and this point is clearly admitted in Para 5 of Applicants' counterstatements. The word KWALITY'S is unhesitatingly disclaimed by Applicants. Further the word written inside the scroll is not 'KWALITY' as contended by Opponents, but is 'KWALITY'S' suggesting a source of goods and obviously referring to Applicant's trade name 'KWALITY' Food Products. On factual aspect of distinctiveness too I find that the device of chef's head is associated with Applicants' trade and with Applicants' goods viz., biscuits for a pretty long period since 1st July, 1962 (i.e.) for over 10 years on the date of application. The Applicants filed voluminous documentary evidence MAS-893 in proof of their user. In addition they filed 19 trade affidavits corroborating Applicants' user of all marks. Applicants' partner, Viswanatha Gupta, furnished sales and advertisement figures in para 7 of his affidavit. From a fair and modest start of sales turnover in 1962-63 at Rs. 65,820/-, Applicants' sales rose progressively and by the date of application, the sales turnover overshot the figures of a crore of rupees during 1972-73, while advertisement expenses for the same year exceeded five lakhs of rupees. In 1973-74 and 1974-75 Applicants' sales turnover rose even beyond two crores of rupees per year. All these figures are corroborated by a Chartered Accountant's certificate and Bill books right form 1963 to 1969 were filed. Applicants' marks have been widely advertised in leading English news papers like Hindu, Indian Express, Deccan Herald as also in several other vernacular newspapers and periodicals as mentioned at para 3 of the affidavit and numerous advertisement cuttings from 1969 to 1972 were filed. Applicants' biscuits were being advertised even over A.I.R.'s Vividh Bharathi. Applicants obtained supply orders for their biscuits even from the Railways, as evidence by Exhibit H and Exhibit J which are orders of Southern Railway and Central Railway for supply of Applicants' biscuits to the Departmental Catering Units of those railways. Applicants' biscuits were sold in the canteens attached to Grand Trunk Express and Brindavan Express etc. Exhibit D 2 shows that a reputed company like Hindustan Lever Limited operated a tie-up in 1970 between their Himapeas and Applicants' biscuits in a number of cities in all the four States of South India. Applicants also filed a Directory of Indian Processed Food and Allied Industries, published by Central Food Technological Research Institute, Mysore. An entry at page 44 of the book shows that Applicants' Company was established in 1962 and was manufacturing biscuits. Decided cases caution against placing much reliance on Trade Directories nonetheless I can consider this piece of evidence in conjunction with all other substantive evidence of user referred to above. Thus I find that Applicants have established by cogent evidence their case of user since 1962 and succeeded in substantiating the factual distinctiveness of their marks. In fact Applicants produced even more evidence of user at the time of hearing (as undertaken in Vishwanath Gupta's affidavit) but to be fair to opponents who were not present at hearing, I declined to receive the said evidence at the hearing stage.
It in further important to note that Opponents' partner Lamba has neither seriously nor effectively denied Applicants' user in his reply affidavit. However, Shri Anoop Singh, Advocate for Opponents charged the Applicants in his written arguments with false claims of user and of subsequent interpolation of word 'KWALITY'S' in Applicants' marks. He drew the attention of this Tribunal to Applicants' previously Registered Trade Mark No. 253012 containing only the device of a chef's head without word 'KWALITY'S'. Shri M.R. Lakshminarayana Rao answered these charges by explaining that Applicants' mark, as originally applied under Application No. 253012, also contained the word KWALITY'S underneath chef's head but the Tribunal then strongly suggested deletion of the said word 'KWALITY'S. As the Applicants treated chef's head to be the main feature of their mark for purposes of distinctiveness, they deleted the word 'KWALITY'S'. Shri Rao said that the fact, however, remained that Applicants' mark with the device of a chef's head and also word KWALITY'S was used continuously since 1962 and that there is no misstatement regarding Applicants' user. I am satisfied with this explanation since the Bill books from 1963 to 1969 filed in evidence, contain the device of chef's head alongwith word KWALTIY'S and the innumerable advertisement cuttings filed for period 1969 to 1972 also contain chef's head with word KWALITY'S. Under Registered Trade Mark No. 253012 there is also a condition that registration of the mark shall give no exclusive right to the head of chef except as shown in the representation on the form of application. Shri Rao said that now, in the face of long established user and heavy sales turnover, the Tribunal ought to be fully satisfied that peculiar configuration of chef's head appearing in Applicants' marks became associated with Applicants' goods and Applicants' trade and there is no need or justification now to impose a similar condition. In order to verify all the above facts as also in the interests of justice, I scrutinised the concerned previous records of the Registry and I am fully satisfied from Applicants' innumerable trade affidavits that, by virtue of long user, all the labels of Applicants containing mainly the configuration of chef's head and each label as a whole containing such chef's head & other descriptive matter did become in fact distinctive of Applicants' goods on the date of the relative application. In view of all my foregoing discussion, I dismiss the Opponents' plea that word 'KWALITY'S' forms a main feature of Applicants' marks and I also disagree that the said word 'KWALITY'S' is subsequently interpolated. Accordingly Shri Anoop Singh's citations of Burocombe's application (65 R. P. C. 197) have no relevance to the facts of this case as there are no misstatements on the part of Applicants.
In view of all my foregoing discussion I uphold the distinctiveness of Applicants' marks both inherently as well as factually and I overrule all objections of Opponents under Section 9 of the Act.
Now I shall pass to the consideration under Section 12(1). Two points arise for consideration under Section 12(1) Viz, (1) whether rival marks are identical or deceptively similar and (2) whether goods under the rival marks are same or of the same description. The second point does not present much difficulty in this case since Applicants' goods are biscuits while goods covered by the conflicting mark registered by Kwality Restaurant & Ice Cream Co. include biscuits. Even Ice Cream covered by Pure Ice Cream Co. Ltd's registrations are, in my opinion, goods of the same description as biscuits. Thus the second point under Section 12(1) being satisfied, I shall proceed to comparison of rival marks.
Courts have repeatedly declared that no a prior principles can be laid down on the comparison of marks and each case has to be decided independently on its merits. Especially while comparing composite marks, the duty of a court or Tribunal becomes more onerous since the marks have to be compared as wholes, locating at the same time the distinctive leading and essential feature of each marks and disallowing extravagant claims to the descriptive or disclaimed parts of the competing marks. In the celebrates Shree case (1955 S. C. 558) the Hon. Supreme Court observed at page 565 ;-
'It is true that where a distinctive label is registered as a whole, such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as whole. As said by Lord Esher in – 'Pinto v. Badman', 1891-8 RPC 181 at p. 191 (J);
'The truth is that the label does not consist of each particular part of it, but consists of the combination of them all.'
Bearing in mind the above essential guidelines, I shall now proceed to compare the rival marks.
All the trade marks of the Applicants under pending applications contain the device of a chef's head as the distinctive and essential feature, while the word 'KWALITY'S' appears in a scroll underneath the chef's head. Applicants readily disclaimed the word 'KWALITY'S' as well as other distinctive wordings appearing in their labels. Applicants contend that each of their labels as a whole is distinctive, claiming the device of chef's head to be the main, distinctive, leading and essential feature of the marks in all labels.
Opponents rely on the marks as per Registration Nos. 178269, 255297, 255298, 267195 and 267196 belonging to Pure Ice Cream Co. (P) Ltd., and on the Registered Trade Mark No. 244231 of Kwality Restaurant & Ice Cream Co. All the registered trade marks of Pure Ice Cream Co. are composite marks, each containing the device of an animal Seal, word Kwality and other descriptive matter or descriptive wordings. It is pertinent to note that under each of the registrations, the descriptive wordings or matter including the word KWALITY have been expressly disclaimed by Opponents' thereby indicating unequivocally that distinctive and essential feature of Opponents' marks is only the device of animal Seal. In Registered Trade Mark No. 244231 belonging to Kwality Restaurant & Ice Cream Co. also the word KWALITY is expressly disclaimed even in the small word mark GAYLORD KWALITY. Thus, it is apparent that under the registration GAYLORD alone was treated as the distinctive and essential feature of the mark. In fact GAYLORD was already registered by Kwality Restaurant & Ice Cream Co. under an earlier registration No. 231578 and GAYLORD – KWALITY was accordingly accepted as an associated mark with disclaimer over the descriptive word KWALITY. Hence, keeping in mind all the descriptive and disclaimed features of rival marks, when I compare the marks as wholes paying due attention to the essential and distinctive features of the marks, a finding is inevitable that there is no conflict between the rival marks inter se, as all the marks, Applicants contain as essential feature the device of a chef's head and all the marks of Opponents contain as essential feature the device of animal Seal or word GAYLORD, as the case my be. There is no similarity even in the get up of rival marks. However, curiously enough, Opponents have built up their entire case of conflict under Section 12(1) around the descriptive word 'KWALITY' appearing in their marks. Opponents want to the extent of claiming KWALITY to be their trade mark and claiming statutory rights thereto. Such claims are clearly incorrect, extravagant and impermissible in law. In fact, the reason for imposing a disclaimer on the word 'KWALITY' over all the registrations obtained by Opponents and for imposing a similar disclaimer on word 'KWALITY'S' appearing in Applicants' marks is straight and obvious. KWALITY is phonetically equivalent to the unregistrable word 'Quality' which is purely a descriptive term inherently unadopted to distinguish goods and inherently incapable of distinguishing goods of any one particular trader. It is a term that shall be left open to the entire trading community for bona fide descriptive purposes and no statutory monopoly can be granted over the said terms favour of any one trader. This is a cardinal principle of trade mark law clearly pronounced in Parle case (15 R. P. C. 151) and reiterated with approval in several other cases including Orlwoola case (16 R. P. C. 850) and in the latest decision of House of Lords in Electrix case (1959 R. P. C. 283)-Reference may also be made to Janta case (1972 Delhi 179) wherein Janta was similarly treated as a word of common use, incapable of conferring any exclusive statutory monopoly.
Accordingly opponents cannot claim any exclusive statutory right over the open expression KWALITY appearing in their marks. Afortiori, no finding of a conflict is possible on the basis of this expression which is notoriously open for use by the entire trading public and possessing no statutory trade mark value. Opponents are not only claiming extravagant rights over this descriptive and disclaimed word KWALITY, but they are actually doing what is strongly disapproved by the Hon'ble Supreme Court in Shree case (1955 S. C. 558). In the said case the Hon'ble Supreme Court approved of the imposition of a disclaimer by the Registrar over the common registerable word 'Shree' appearing in a composite label and severely criticised the erroneous, extravagant and untenable claims of the Registered Proprietor over the word 'Shree'. The Hon'ble Supreme Court observed at page 566: -
'......the Registrar did advert to the other important consideration, namely, that on the evidence before him and the statement of counsel it was quite clear that the reason for resisting the disclaimer in this particular case was that the company thought, erroneously no doubt but quite seriously that the registration of the trade mark as whole would, in the circumstances of this case, give it a right to the exclusive use of the word 'Shree' as if separately and by itself it was also its registered trade mark and that it would be easier for it to be successful in an infringement action than in a passing off action. It was precisely the possibility of such an extravagant and untenable claim that called for a disclaimer for the purpose of defining the rights of the respondent company under the registration.'
In the above case, the mark consisted of the expression 'Shree' written in bold Bengali script at the top of the label and beneath the said expression there is an ornamental figure of triangles and petals. At the center again Shree written in Devnagri script. The ornamental figure is a non-descript device, albeit it is being considered as the main distinctive feature of the mark. Hence obviously Shree is the only vocal part of the mark. Nonetheless, the Hon'ble Supreme Court dismissed all statutory claims or rights to the expression 'Shree.' On analogy, therefore, even if KWALITY were accepted to be a vocal feature of Opponents' marks (though in fact it is not even so), still Opponents cannot set up any exclusive statutory claims over KWALITY, which being a descriptive term of common trade use, is naively open to the entire trading community including the Applicants.
Opponents herein have indiscreetly built up their entire case over three forbidden grounds viz. (1) claiming statutory trade mark rights in an open, common descriptive term KWALITY, contrary to even the fundamental principles of trade mark law, (2) claiming KWALITY to be their trade mark as if it is registered separately as a trade mark, though it is, in fact, a part only of composite marks containing seal of Gaylord is essential features and (3) claiming extravagant rights in respect of the expressly disclaimed word KWALITY. All the above three grounds are specifically disapproved by Supreme Court in the Shree Case. Thus Opponents' objection developed on ill-conceived and illegal premises cannot stand.
Shri Anoop Singh cited in his written arguments in 'Ace' case reported in 65 R.P.C. 179 but that decision has no application to the present proceedings. In Ace case the Court rejected Applicants' plea for an imposition of disclaimer on word 'Ace' holding that 'Ace' itself is a distinctive feature and a feature and a disclaimer over a distinctive feature would be inappropriate. In our proceedings the word KWALITY is descriptive and is not distinctive and disclaimer over KWALITY is absolutely appropriate. Hence Ace case has no Application herein. I do not agree with Shri Anoop Singh's plea that 'KWALITY' is the prominent and eye-catching portion of Applicant's marks. In fact, Applicant's marks contain the word 'KWALITY'S' and not 'KWALITY'. It may be significant to note here that in Opponent's registered trade marks the work 'KWALITY' represented even more prominently and in comparatively largest lettering than in Applicants' marks, though Opponents too disclaimed KWALITY. Hence this attack carries neither grace nor conviction.
Further, on 24th November, 1976, Applicants filed requests on form TM-16 in all their applications to reduce the size of the scroll containing the word 'KWALITY' to extend only upto the neck portion of the chef's head. The Opponents in their comments simply contended that even in the amended labels word' 'KWALITY' is still prominent, Beyond this statement, no other objection is raised against the requests on TM-16. On a careful consideration, I am allowing the Applicants' requests on TM-16 dated 24th November, 1976 in each application, since the Tribunal is vested with powers under Section 22 of the Act to permit amendments at any stage of an application. In Batok Chhap case (1958 Bombay 47) Chagla C.J. analyzed the law on the subject of amendments and held that an application for amendment of a mark is permissible at any stage of the application (even after its acceptance) provided that amendment does not substantially affects the identity of the mark. The amendment sought by the Applicants is only to reduce size of the scroll beneath chef's head. The amendment does not affect the identity of the mark as the contents of each mark remain the same and only the size of scroll beneath chef's head and consequently the size of letters within the scroll are reduced. This amendment is sought purely to establish Applicants' bona fides about their not claiming any trade mark value or prominence for word KWALITY'S.
In view of my detailed discussion on all aspects concerning Sec. 12(1), I conclude that there is no conflict between the essential feature of Opponents' marks and Applicants' marks or between the competing marks as wholes. According
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ly opponents' objections under Section 12(1) are overruled. Now coming to the objection under Section 11(a), I am not satisfied with the evidence produced by Opponents in support of their vested use claimed right from 1957 in evidence. They have not submitted the labels as actually used and all their deponents speak of KWALITY being the trade mark, ignoring the real distinctive features like animal seal and distinctive word GAYLORD. The documentary evidence produced only dates from 1967 but not from 1957. On this unsatisfactory, slender and nebulous evidence, I am unable to uphold Opponents' contention the use of Applicants' marks would be likely to deceive or cause confusion. It is further signification note that there is no evidence at all of actual confusion inspite of Applicants to clear use of their marks since 1962 and the alleged claims of Opponents' use of their mark since 1957 onwards. In these circumstances, I feel fully justified to disregard Opponents' trade affidavits pointing to some hypothetical confusion, weaved solely (and unjustifiably) around the descriptive word KWALITY and disregarding, or at any rate, not paying any attention to the essential features of rival marks such as animal seal, word GAYLORD and chef's head. The dismalabsence of even a single instance of actual confusion, despite long concurrent use of rival marks, clearly negatives Opponents further claims and apprehensions about Applicants' goods being passed off as Opponents' goods. In view of all my foregoing discussion I find that the use of Applicants' marks would not be likely to deceive or cause confusion and I overrule all pleas of Opponents under Section 11(a). I also overrule Opponents' objections under Sections 11(b) and 11(e) since it is not shown how the use of Applicant's marks would be contrary to any law nor is it shown how Applicants' marks would be disentitled to protection in a Court. I also overrule Opponents' plea under Section 18(1) as I have upheld Applicants' proprietorship to the marks applied for while dealing with Section 9 and found that Applicants' marks have become factually distinctive of Applicants' goods. I cannot exercise any judicial discretion towards a refusal of Applicants' marks since, in view of Applicants' long user, it would create undue hardship to Applicants' and justice as well as balance of convenience do not warrant a refusal. In the result, I dismiss the opposition and I accept the Applicants' mark as amended and I order that after a due notification of the amended mark in the Trade Marks Journal, the marks shall proceed to registration subject to the term already imposed advertising the application. In the circumstances of this case, I order that each party shall bear its own costs.