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Libra Hosieries v/s Libra Products


Company & Directors' Information:- LIBRA INDIA PRIVATE LIMITED [Under Process of Striking Off] CIN = U51909DL1996PTC082555

    Application No. 474141 & Opposition No. 2729

    Decided On, 15 April 2004

    At, Registrar of Trade Marks Chennai

    By, THE HONOURABLE MR. JUSTICE M.H. MAHENDRA
    By, JRTM

    For the Opponent: Mr. Mohan Dewan, Advocate.



Judgment Text

M.H. Mahendra, JRTM:

1. On 24th June, 1987, S/Shri K.S. Saminathan and P. Kumarasamy both Indian nationals and partners trading as M/s. Libra Hosieries, a registered partnership firm, at Post Box No. 354, Mangalam Road, Tirupur - 638604 (hereinafter referred to as the `Applicants') filed an application being Application No. 474141 for registration of a trade mark consisting of the word LIBRA in respect of `Banians, jetties, brasseries, petticoats, readymade garments, knitted garments, fancy wear, socks and stockings for wear, panties, briefs and vests' being goods included in class 25. The said trade mark is claimed to have been used from the year 1971 on the date of application. The Registrar of Trade Marks raised a preliminary objection on the reason that the same is identical with or deceptively similar to the marks in prior pending applications in the Register. However, after explaining the difference between the rival marks and on the Applicants filing an affidavit to prove the use of the trade mark, the application was ordered to be advertised as accepted for registration in the Trade Marks Journal. The said application was eventually advertised as accepted for registration in the Trade Marks Journal No. 1029 dated 16th April, 1992 at page 114.

2. On 9th July, 1992, S/Shri Velji Thoban Gala (Karta of H.U.F.), Dhirajlal Karsanji Mehta and Ganesh Manilal Mehta all Indian nationals and partners trading as M/s. Libra Products, a registered partnership firm, at 114, Industrial Estate, Gokhale Road South, Dadar, Mumbai - 400 028 (hereinafter referred to as the 'Opponents') filed a notice of opposition to the aforesaid application on the following grounds:-

1. That the Opponents have been engaged in the business of manufacturing and sale of `Readymade garments' including brasseries, panties, undergarments, hosieries and children wear under the trade mark LIBRA since last 10 years;

2. That the Opponents have been using and advertising their trade mark LIBRA in respect of the aforesaid range of goods all over India from the year 1982 and by reason of long, continuous and extensive usage and wide publicity, the said trade mark has become distinctive of and exclusively identified with the Opponents and their products only;

3. That the mark under impugned application is identical with the mark in prior pending Application No. 390340 as of 24th May, 1982 which was advertised in the Trade Mark Journal No. 928 dated 1st February, 1988 at which the Applicants herein had opposed the said application and the said opposition under Opposition No. BOM-7015 was dismissed on 16th August, 1990 by the Assistant Registrar of Trade Marks. The said Applicants herein then moved a Review petition against the said order and the said petition was also dismissed on 25th March, 1992 by the Deputy Registrar of Trade Marks and accordingly, the said application has now proceeded to registration. Further, the goods covered by the impugned application and those in respect of which the Opponents' mark under prior Application No. 390340 is likely to be registered shortly are the same;

4. Having regard to the established user and reputation associated with the Opponents' trade mark LIBRA, the use of an identical trade mark by the Applicants in respect of the same range of goods will undoubtedly cause confusion and deception;

5. That the Applicants were fully aware of the prior adoption and user of the trade mark LIBRA in respect of `Readymade garments' and hosiery by the Opponents and also of the reputation of their trade mark when they applied for registration of an identical mark under the impugned application. They also had the foreknowledge as to the fact that the trade mark LIBRA was pending for registration in the name of the Opponents filed under Application No. 390340 in class 25, and, therefore, they are not and cannot claim to be the proprietor of the trade mark LIBRA within the meaning of Section 18(1) of the Act; and

6. That the registration of the impugned mark in the name of the Applicants would be contrary to the provisions of Section 11(a), 11(e), 12(1), 12(2), 12(3) and 18(1) of the Trade and Merchandise Marks Act, 1958.

7. The Opponents, therefore, seek that the Registrar should exercise his discretion adversely to the Applicants and refuse the application mentioned above in the interest of public and purity of the Register.

8. A counter-statement was filed on 24th February, 1993 by the Applicants generally denying the allegations of the Opponents and contending that the Applicants mark was adopted in the year 1971 without any reference of the Opponents' mark and that they have used the said trade mark continuously, openly and extensively in the course of trade in respect of `Hosiery and readymade garments' and as such the Applicants are entitled to registration of the impugned mark by virtue of honest, concurrent use and other special circumstances as envisaged u/s. 12(3) of the Act.

9. The evidence in support of Opposition consists of an affidavit dated 8th April, 1993 of Mr. Dhirajlal Karsanji Mehta, partner of the firm alongwith the Exhibits A and B collectively as per details contained in the said affidavit. The Applicants' attention was drawn to the Rule 54 of the Trade and Merchandise Marks Rules, 1959 to enable them to file an evidence in support of application vide the Registry's letter No. TOP/1664 dated 17th May, 1993. The Applicants requested for extension of time to file the evidence in support of application which was duly allowed upto 18th January, 1994. Thereafter, the Applicants neither filed any evidence in support of application nor sought any extension of time beyond 18th January, 1994 to file the same and, therefore, the evidence under Rule 54 stage was then treated as closed and the matter was set down for a hearing in due course.

10. The matter was accordingly set down for hearing on 20th December, 2001 and in terms of Rule 59, the respective parties were requested to notify their intention on Form TM-7 to attend the hearing. The matter eventually came before me for a hearing on the date mentioned above, when Mr. Mohan Dewan, Advocate, Trade Marks and Patents Attorneys, Mumbai appeared for the Opponents, but there was no appearance on behalf of the Applicants nor was there any intimation to attend the hearing under Rule 59 of the Trade and Merchandise Marks Rules, 1959. As the matter was pending before the Registry for a long time and in the absence of any communication from either the Applicants or their Attorneys on record, I thought that no useful purpose would be served by adjourning the hearing and so the matter was proceeded with.

11. Mr. Mohan Dewan, Advocate, the learned counsel for the Opponents submitted that the Opponents are the registered proprietors of the trade mark label containing the word LIBRA as an essential feature alongwith the device of Geometrical miscellaneous in class 25 in respect of `Brasseries, panties, undergarments, hosieries including readymade garments and children wear' under Trade Mark No. 390340B and that they have used the said trade mark from the year 1982 in respect of goods mentioned above. Further, the goods under the trade mark LIBRA have been extensively sold all over India including the State of Tamil Nadu and due to very extensive and continuous use and wide publicity, the said trade mark has come to be associated exclusively with the Opponents and their products only. Having regard to the established user and reputation associated with the Opponents' trade mark, the use of the Applicants' mark in respect of the same range of goods will undoubtedly cause confusion and deception in the trade and, therefore, the registration of the impugned mark is prohibited under Section 11(a) of the Act.

Mr. Dewan also stated that the Applicants have adopted an identical mark and/or deceptively similar trade mark with a dishonest intention with a view to trade upon the reputation and goodwill accrued to the Opponents' trade mark LIBRA and that they are trying to pass of their goods as and for the Opponents and, therefore, the registration of the Applicants' mark is prohibited under the provisions of Section 11(e) of the Act.

Mr. Dewan further stated that the mark sought to be registered under Application No. 474141 consists of the word LIBRA is identical with and/or deceptively similar to the Opponents' registered trade mark No. 390340B as of 24th May, 1982 which was advertised in the Trade Mark Journal No. 928 dated 1st February, 1988 at which the Applicants herein had opposed the said application and the said opposition under Opposition No. BOM-7015 was dismissed on 16th August, 1990 by the Assistant Registrar of Trade Marks. The said Applicants herein then moved a Review Petition against the said order and the said petition was also dismissed on 25th March, 1992 by the Deputy Registrar of Trade Marks and the said application has already proceeded to registration and its registration certificate was duly issued on 15th September, 1992. Further, the goods covered by the impugned application and those in respect of which the Opponents' mark is registered are the same and/or of the same description. Therefore, the registration of the impugned mark is prohibited under Section 12(1) of the Act.

Mr. Dewan further submitted that the Applicants were fully aware of the prior adoption and use of the trade mark LIBRA in respect of `Readymade garments and use by the Opponents and also of the reputation of the Opponents' trade mark when they applied for registration of an identical mark under the impugned application. They had also foreknowledge as to the fact that the trade mark LIBRA was pending for registration in the name of the Opponents under Application No. 390340 in class 25. Besides, the very adoption of the mark by the Applicants was dishonest and there had been no bona fide use of the mark by them at any point of time. The Applicants were well aware of the existence of the Opponents' mark and, therefore, they cannot claim any proprietary rights over the mark within the meaning of Sec. 18(1) of the Act.

12. In view of the facts stated above and having regard to the high probability of deception and confusion that may arise by registration of the impugned mark, he accordingly requested the Registrar to exercise his discretion adversely to the Applicants and refuse the application mentioned above in the interest of public and purity of the Register and costs to the Opponents in respect of these proceedings.

13. Though the Applicants did not attend the hearing, I have given the best of my consideration to the Applicants' case on the basis of materials available on record. It is seen from the notice of opposition that the issues involved in these proceedings are mainly based on the provisions of Section 11(a), 11(e) and 18(1) of the Act. In addition, the Opponents' Counsel also invoked an objection based on Section 12(1) of the Act on the reason that the Opponents are now the registered proprietors of the trade mark LIBRA under Trade Mark No. 390340B and the said registration is valid and subsisting.

14. It is, however, seen from para 14 of notice of opposition that the Applicants herein had opposed the Application No. 390340 under Opposition No. BOM-7015 was dismissed on 16th August, 1990 by the Assistant Registrar of Trade Marks said the Applicants herein then moved a Review Petition against the said order and the said petition was also dismissed on 25th March, 1992 by the Deputy Registrar of Trade Marks and obviously the said application was then allowed to proceed to registration. Further, it was explained at the hearing that the ground of objection under Section 12(1) has now been necessitated on account of the Opponents' mark going on the Register after filing of the notice of opposition and the Registrar has discretionary power under Section 18(4) read with Section 21(5) of the Act that even if an objection is not clearly taken before the Registrar, the same can be allowed in the interest of public and purity of the Register.

15. I have gone through the records of these proceedings carefully in presence of Opponents' counsel who is present today for the hearing as well as particulars given in support of the Opposition of the registered trade mark mentioned above, there is no reason why an additional ground in the notice of opposition in this regard should not be allowed as sought for. In view of the facts stated above and having regard to the provisions of Section 21(5) of the Act enabling the Registrar of Trade Marks to allow an additional ground of objection even if an objection is not clearly taken before the Tribunal in the interest of public and purity of the Register, an additional ground of objection under Section 12(1) is also allowed in respect of these proceedings.

16. Turning to the objection based on Section 12(1) of the Act, it is seen that the objection is based on the Opponents' mark consisting of the word LIBRA which was subject-matter of Application No. 390340 as of 24th May, 1982. To sustain an objection under Section 12(1), it is necessary that the trade mark relied upon should be on the Register. In sub-para (vi) of para 4 of his affidavit dated 8th April, 1993 of Mr. Dhirajlal Karsenji Mehta says as under:-

'I say that the review petition was dismissed vide the Deputy Registrar's order dated 25th March, 1992. I attach hereby marked Exhibits A & B respectively the copies of the learned Deputy Registrar's orders dated 16th August, 1990 and 25th March, 1992. I say that my firm's trade mark, consisting of and/or containing the word LIBRA, has already been proceeded to registration and the registration certificate was issued on 15th September, 1992. I further say that my firm's registration under No. 390340B has duly renewed and registration will now be valid upto 24th May, 1996. All other contentions in the said ground of the counter-statement are baseless and without any merits. Significantly, the Applicants herein have not appealed against the orders passed in the opposition and review proceedings pertaining to Opposition No. BOM-7015 to Application No. 390340B and, therefore, the orders/decisions have become final and binding.'

17. Even though the Opponents' mark was not on the Register on the date of filing the notice of opposition, but was entered during the pendency of these proceedings, the Opponents can rightly invoke the provisions of Section 12(1) of the Act.

Section 12(1) provides that 'no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which has already been registered in the name of a different proprietor in respect of same goods or description of goods.'

18. The Opponents' mark LIBRA is registered in respect of `Readymade garments including brasseries, panties, undergarments, hosieries and children wear' being goods included in class 25. The Applicants' mark is sought to be registered inter alia in respect of `Banians, jetties, brasseries, petticoats, readymade garments, knitted garments, fancy wear, socks and stockings for wear, panties, briefs and vests' being goods included in class 25'. It is obvious that the Applicants' specification comprehends goods in respect of which the Applicants' mark is registered and, therefore, the only question which I have to decide whether the Applicants' mark is deceptively similar to the Opponents' trade mark.

19. It is well settled that in comparing that trade marks, the marks will have to be considered as a whole (See Corn Products Refinery v. Shangrila Foods Private Limited, AIR 1960 SC 142). As was held in Pianotist Co. Ltd.'s (1906) 23 RPC 774 in deciding whether the Applicant's mark is deceptively similar to the Opponents' registered trade mark, the Tribunal will assume a notional user that is to say used in a fair and normal manner of the Applicant's mark for the goods for which his mark is propounded for registration and the Opponents' mark for any of the goods covered by the existing registration.

20. Further, it is well-settled proposition that the two marks when placed side by side may exhibit many differences, yet the main idea left on the mind by both may be the same. The marks are remembered rather by general impression of by some significant detail than by any photographic recollection of the whole (See Kerly's Law of Trade Marks and Trade Names at page 439, 12th Edition). Similarly, in Parle Products v. J.P. & Co., AIR 1972 SC 1395, the Supreme Court held that what must be considered are the broad and essential features of the two marks which should not be placed side by side nor find out the differences in design. It is enough if the impugned mark bears an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.

21. In this case, the Applicants' mark consists of the word LIBRA, the goods in respect of which the Applicants seek registration are of `Banians, jetties, brasseries, petticoats, readymade garments, knitted garments, fancy wear, socks and stockings for wear, panties, briefs and vests' being goods included in class 25. The Opponents' registered trade mark No. 390340B also consists of the device of Geometrical miscellaneous and the word LIBRA. The Opponent's said trade mark is registered in respect of `Readymade garments including brasseries, panties, undergarments, hosiery and children wear.

22. Needless to say that in both the trade marks striking and memorable feature in the word LIBRA. It is therefore, reasonable to assume that the persons of average intelligence and imperfect recollection will remember only the word LIBRA which is more memorable and capable of being retained in mind. In view of the fact that the leading feature of the Applicants' mark as well as that of the Opponents' trade mark is the word LIBRA, I have no doubt that the Applicants' mark as a whole is deceptively similar to the Opponents' trade mark so as to fall within the prohibition of Section 12(1) of the Act.

23. As regards the proceeding under Section 12(2) of the Act, it may be seen that this provision refers only to the deferring of acceptance of the later application and does not apply to proceedings subsequent to the advertisement of the applications in the Trade Marks Journal, for instance, where there are cross-oppositions. Indeed, on this question the Applicants herein had earlier filed a notice of opposition before the Registrar of Trade Marks under Opposition No. BOM-7015 to Application No. 390340 in class 25 and the matter was thoroughly gone into and the said opposition was dismissed and the Application No. 390340 in class 25 was allowed to proceed to registration. Accordingly, I do not find any need to consider whether or not to exercise my discretion under Section 12(2) of the Act.

24. Regarding the application of Section 12(3), it is well settled that in an opposition proceeding the onus is entirely on the Applicants to show that the Applicants' mark is entitled to registration and that the opposition is unjustified. In this case, the Applicants have not filed any evidence nor did they attend the hearing to rebut the allegations of the Opponents and establish their case for registration. Though, the Applicants have claimed user of the mark since the year 1971 on the date of application, in the absence of any evidence in support of their claim, I am unable to consider their case even in terms of the provisions of Section 12(3) of the Trade and Merchandise Marks Act, 1958.

25. As regards the objection under Section 11 is concerned, having regard to the use and reputation of the Opponents' trade mark LIBRA with the Geometrical miscellaneous device, the use of the Applicants' mark which contains the word LIBRA as its essential feature would be deceptively similar to the said trade mark and hence would cause confusion and deception. According to the evidence filed in support of opposition, the trade mark LIBRA has been used from May 1982. As against this evidence establishing a factual background of vested use and reputation of Opponents' mark, the Applicants have not raised any objection to rebut the evidence much less did they file the evidence of their user claimed under the impugned application. They cannot rely on the evidence filed at the application stage as they did not comply with the Rule 54. Thus, the Applicants on whom a very heavy burden lies under Section 11 to show that the use of their trade mark would not be likely to deceive or cause confusion have not discharged their onus. I take it that the Applicants admit the registration of the Opponents' mark. If use and reputation of the Opponents' mark is established, it follows that the use of the Applicants' mark as proposed to the words LIBRA as a trade mark in a normal and a fair manner in connection with the goods applied for by the Applicants will be reasonably likely to cause confusion and deception amongst substantial number of persons. Therefore, Section 11(a) which is a mandatory provision constitutes a bar to the registration of the Applicants' mark as proposed.

26. Now, passing the Opponents' objection under Section 18(1) of the Act, it is well settled law that a person cannot claim to be proprietor of the trade mark which is either the same

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or similar to trade mark on which there is already an established claim by other proprietor. The Opponents' contention is that Applicants cannot claim to be the proprietor of the mark LIBRA in possessive form probably because the Applicants' mark is deceptively similar to the Opponents' registered trade mark. In all decided cases, when a party was held not entitled to claim proprietorship on the basis of the deceptive similarity to an existing mark, there is a clear finding that the mark was copied. Further, there is no evidence before me that the Applicants have copied or attempted to copy the Opponents' trade mark mentioned above. Accordingly, I do not find any reason to hold that the Applicants are not entitled to claim proprietorship of the mark LIBRA in relation to their goods namely `Banians, jetties, brasseries, petticoats, readymade garments, knitted garments, fancy wear, socks and stockings for wear, panties, briefs and vests' being goods included in class 25.' Therefore, the Opponents objection under Section 18(1) is not sustained. 27. Lastly, the Opponents have pleaded for exercise of Registrar's discretion under Section 18(4) of the Act. It is well established that in an opposition proceedings, the onus lies on the Applicants to show that the mark is not deceptively similar to Opponents' trade mark and that the opposition was not justified. In this case, the Applicants have not discharged this burden. They have not filed any evidence in support of application and besides the averments in the affidavit filed in support of opposition remain unchallenged. Moreover, they have not cared to attend the hearing and hence they cannot claim registration of the same. In the interest of public and purity of the Register and having regard to my findings under Sections 12 and 11 of the Act and also in the exercise of my discretion under the Act, the impugned application deserves to be refused registration in terms of Section 18(4) of the Act. 28. In the result, the Opposition No. - MAS-2729 is allowed and it is ordered that mark under Application No. 474141 in class 25 shall be refused registration and it is hereby further ordered that the Applicants shall forthwith pay a sum of Rs. 330/- (Rupees three hundred thirty only) to the Opponents as costs in respect of these proceedings. Signed and Sealed at Chennai at 15th day of April, 2004.
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