w w w . L a w y e r S e r v i c e s . i n



Link Auto Spares, Ludhiana v/s Deejvee Agencies, Ahmedabad

    No:..................................

    Decided On, 18 April 1980

    At, Registrar of Trade Marks Bombay

    By, THE HONOURABLE MR. C.S. RAO
    By, DRTM

    For the Petitioner: Ram Parkash, Trade Marks Agent. For the Respondents: V.G. Nair, Advocate for S/Shri R.R. Shah & Company Advocates.



Judgment Text

TRADE MARKS REGISTRY, BOMBAY

C.S. Rao, DRTM:

1. Proceedings herein arise out of an order of the Hon'ble High Court passed on 4th December, 1979 in Misc. Petition No. 713 of 1976 reading as follows:

'I set aside the finding recorded by the Registrar holding that the marks could be registered under Section 12(3) of the Act. I also set aside the finding recorded by the Registrar that there is no prohibition under Section 12(1) of the Act to register the mark of the respondents. The proceedings are remitted back to the Registrar for reconsidering afresh the issue arising under section 12(3) of the Act in the light of the observations made in the judgment. The Registrar should permit both the parties to lead evidence which they desire in support of their respective claims on this issue and record his finding and submit to this Court within a period of three months from the date of receipt of papers. The parties to appear before the Registrar for further directions on January 7, 1980. The final order in the appeal would be passed after the receipt of the finding the Registrar.'

2. The above order was received in Trade Marks Registry on 18th January, 1980 and the Hon'ble High Court was accordingly informed by the Registry's letter No. TOP.150 dated 21-1-1980.

3. Pursuant to the order of the Hon'ble High Court, both parties were called upon to file evidence as per High Court's directions. Thereupon the Petitioners (Opponents in Opposition No. BOM-2063) filed an affidavit of their partner Mohan Singh, besides submitting five trade affidavits sworn by Hardip Singh, Kuldip Singh, Parkash Singh, Karnail Singh, Joginder Singh and Shri Mohan Singh. The Respondents (Applicants in Application No. 270716) filed two affidavits of their partner, Smt. Dahiben Dhulabhai Patel and submitted five more affidavits from traders sworn by Veeresham, Jagjivan S. Patel, Cap. S.S. Chawla, Pamila B. Shah, and Dave Kishorchandra Babulal.

4. The matter was posted for a hearing before me on 22-3-80 when, at the Respondent's counsel's request, the case was adjourned to 17th April, 1980.

5. At the hearing held on 7th April, 1980, the Petitioners were represented by Shri Ram Parkash, Trade Marks Agent, while the Respondents were represented by Shri V.G. Nair, Advocate represented S/Shri R.R. Shah & Company, Advocates.

6. At the above hearing Shri Ram Parkash, Counsel for the Petitioners, explained that the Hon'ble High Court has set aside the findings of the learned Assistant Registrar and sustained the Petitioner's objection under section 12(1) of the Trade & Merchandise Marks Act, upholding conflict between Respondent's trade mark under Application No. 270716 consisting of the word VERA and the Petitioner's Registered Trade Mark No. 227332B consisting of the word NERA. The Hon'ble High Court disagreed with the Assistant Registrar's findings on the issue under Section 12(3) too and remitted the proceedings back to this Tribunal for a fresh reconsideration of the case under section 12(3) in the light of the observations contained in the High Court's Judgment. Accordingly, both the parties have been called upon this Tribunal to file evidence they filed evidence.

7. Shri Ram Parkash commented that even though Respondents have been afforded fresh opportunity, they have not been able to make out any case for a concurrent registration of their trade mark VERA under section 12(3) of the Act, inasmuch they failed to establish that the initial adoption of their VERA mark was honest. Shri Ram Parkash contended that honesty of adoption is a primordial pre-requisite for claiming a concurrent registration under Section 12(3), but Respondents have slavishly copied the Petitioner's NERA mark and thus the initial adoption of VERA mark by Respondents is tainted with commercial dishonesty. Shri Ram Parkash explained that Petitioners have registered their Mark consisting of the word NERA with an artistic stroke (or line) commencing at the end of the first letter N and extending over the last three letter ERA at the top and Respondents have malafide copied Petitioner's above mark by putting a similar stroke or line commencing from the end of the first letter V in their VERA mark to spread on the top of the last three letters ERA. Except for the difference of first letters N and V in the rival marks, Respondent's mark VERA is a slavish imitation of the Petitioners' mark NERA. Respondents failed to furnish any explanation whatever as to how they had hit upon a VERA mark and why they had put a stroke over the letters ERA.

8. Shri Ram Parkash next argued that the Hon'ble High Court has clearly found that goods under rival marks look almost identical and that the two sets of goods are to be treated in any event as goods of the same description. While the Petitioners had user in respect of NERA mark for over a longer period commencing from 1964, the alleged adoption of Respondent's VERA mark in 1968 with the Slavish copying of essential ocular features of Petitioners' NERA mark for use in respect of almost identical goods, cannot be considered or described to be honest. Shri Ram Parkash contended with vehemence that when once the element of honesty is found to be lacking in the adoption of their mark, Respondents cannot be held entitled to the benefits of concurrent registration, since Section 12(3) postulates initially an honest adoption, to be followed by concurrent user.

9. Shri Ram Parkash further argued that Respondents have not furnished the full details of user in respect of their VERA mark, nor did they mention their mode of use such as the user of mark on carton or the impression of the mark on goods themselves. Shri Ram Parkash also contended that Respondents did not file any cogent evidence like bills, books of accounts, advertisement literature or advertisement cuttings, nor did they establish their areas of user. First of all, the Respondents have not given inspection of their accounts books inspite of the Petitioner's counsel serving a notice dated 10.3.1980 on Respondent's counsel calling upon the Respondents to produce their books of accounts and other documents relating to the user of their VERA mark. Inspection of accounts was demanded well before the date of hearing fixed on 22.2.1980, but to the above notice Respondent's counsel sent a reply dated 15.3.1980 furnishing a lame excuse for not producing the accounts books, mentioning that Respondents are on a business tour and hence it is not possible to give inspection of the books of account before the hearing dated fixed on 22.3.1980. The hearing on 22.3.1980 was however, adjourned to 7th April, 1980 at the request of Respondent's counsel. At the said hearing on 7the April, 1980 Shri Ram Parkash once again requested the Respondent's counsel to give inspection of accounts books, but the books were not made available nor produced even at said hearing by Respondent's. In these circumstances Shri Ram Parkash requested the Tribunal to conclude that the Respondents were not prepared to produce reliable evidence before the Tribunal.

10. In the end Shri Ram Parkash contended that there is a triple identity position in this case inasmuch as the rival marks have been clearly held by the Hon'ble High Court to be almost identical, the goods were also found by the Hon'ble High Court to almost identical and the areas of user shall also be taken to be identical since Petitioners obtained registration in respect of their NERA mark on an all India basis and hence the Respondent's area are ipso facto covered by Petitioner's registration. In these circumstances due to the triple identity position the Respondents (Applicants) are not entitled to a grant of concurrent registration under Section 12(3).

11. As against the various foregoing contention advanced on behalf of the Petitioners, the respondent's counsel Shri Nair contended that Respondents have filed their evidence consisting of two affidavits of their partner, Shri D.D. Patel, furnishing all their sales figures Statewise as well as yearwise since 1968 till the date of application. Further, five more trade affidavits have been filed to corroborate the user of Respondent's mark VERA. Shri Nair commented that as against the above, it is indeed the Petitioner's evidence which is most unsatisfactory, inasmuch as their trade affidavits are all stereotyped and in Shri Joginder Singh's affidavit there are also blanks at para 6 concerning sales figures. As regards the triple identity position argued by Shri Ram Parkash, Shri Nair replied that there is absolutely no case of triple identity in these proceedings, in as much the rival marks NERA and VERA are not identical, the rival goods are also not identical, one set of goods being values for diesel engines and the other being valves for automobile engines and the areas of user are also not identical, since Respondents are seeking registration to extend only over certain areas as mentioned in their application.

12. I shall now advert to another interesting argument advanced by the petitioner's counsel, Shri Ram Parkash, who brought to my notice two more registrations of trade marks obtained by the Petitioners under Nos. 268357 and 313998, of which registration No. 268357 is for VERA mark in respect of values for motor and vehicles under Class 12 and registration No. 313998 is for another NERA mark in respect of inlet valves for diesel engine (not for land vehicles) under Class 7. Shri Ram Parkash contended that both these registration are subsisting on the Register and in particular Petitioners are now registered proprietors of a VERA mark (under Registration No. 268357) which is identical in all respects to Respondents VERA mark in respect of identical goods. In view of the aforementioned two additional registrations, the adoption and user of Respondents VERA mark shall be held to be dishonest and Respondents shall be held disentitled to the benefits of concurrent registration under section 12(3). Shri Ram Parkash strongly urged that this Tribunal as well as the Hon'ble High Court Shall have to consult the latest position of Register before ordering a fresh registration of Respondents' mark under Section 12(3) and the said latest state of Register reveals two more registered trade mark Nos. 268357 and 313998 in Petitioner's favour.

3. Shri Nair, on the other hand, contented that I shall not take into account the new facts concerning the two aforementioned subsequent registrations, since the Hon'ble High Court based its findings only with reference to Petitioner's Registered Trade Mark 227332B and remanded the case for findings under Section 12(3) on the above premise.

14. I feel, there is some force in Shri Ram Parkash's plea that the Tribunal as well as the Hon'ble High Court shall have to pay due regard to the present state of Register while ordering new registration. In this connection I may refer to a passage in Dr. S. Venkateswaran's book at page 175 reading as follows: -

'The expression 'no trade mark shall be registered' refers to the 'actual making of the entry of the Mark upon the Register, and that, in considering the operation of that section (i.e. Section 12) regard must be had to the state of Register at the date upon which the new entry therein is proposed to be made.' (vide Palmolive Tm. (1932) 49 R. P. C. page 269)

15. In Ciba Ltd. v. Ramlingam A.I.R. 1958 Bom. P. 56, the Hon'ble Bombay High Court similarly consulted the latest state of Register. In view of these authorities I too felt it proper and necessary to look into the present state of Register. Hence I referred to the Register and verified about the new registration cited by Shri Ram Parkash. But to my surprise I also found that the Registered Trade Mark No. 227332B of the petitioners, on the basis of which the Hon'ble High Court upheld Petitioners' pleas of a conflict under section 12(1), is no longer subsisting on the Register, inasmuch as the said registration was due for a renewal on 22.2.1979, but no renewal fees were paid despite the issue of a Statutory 0-3 Notice by the Trade Marks Registry and a period of more than one year from the due date of renewal had also expired on 22.21980 and hence the mark cannot be even restored to the Register now. In the foregoing circumstances it seemed really useful, relevant and even essential to look the present state of Register. Accordingly, after I examined the present state of Register, I appointed a further hearing on 1.4.80 to inform both the counsel about the present state of Register and to allow them to advance their arguments if any, in the light of the foregoing.

16. At the further hearing held on 14.4.80 Shri Ram Parkash contended that even though the registration of Petitioner's Trade Mark No. 227332B cannot be deemed to be in force-to-day, still the objection under Section 12(1), upheld by the Hon'ble High Court sustains even now, in as much as the Petitioners obtained registration No. 313998 in respect of yet another NERA mark and they further obtained registration No. 268357 in class 7 in respect of VERA mark too (identical to the impugned mark of the Applicants). Hence he requested me to proceed to give my findings under Section 12 (3) as directed by the Hon'ble High Court.

17. On the other hand, Shri Nair contended that since the Registered Trade Mark 227332B is no longer in force, the objection upheld by the Hon'ble High Court under Section 12 (1) falls to the ground and accordingly it is no longer necessary for me to record any finding under Section 12(3) in these proceedings.

18. I have carefully considered all the arguments advanced by counsel on both sides as detailed above I feel prone to accept the plea advanced by the Petitioner's Trade Mark No. 227332B not being in force now, it would still be necessary for me to record findings on the issue under Section 12(3) as directed by the Hon'ble Court, since there exists even now one more NERA mark of the Petitioners on the Register under Registration No. 313998 and the Hon'ble High Court had clearly upheld conflict between NERA mark, of the Petitioners with the impugned VERA mark. No. 227332B is no longer on the Register, the objection under Section 12(1) upheld by the Hon'ble High Court collapses to the ground. This argument overlooks the important point that as per the present state of Register, Petitioners have got more NERA mark on the Register, under No. 313998 even apart from their having obtained registration of a VERA mark too under Registration No. 268357, which is identical on all fours with Respondent's impugned VERA Mark. This Tribunal as will as Courts always refer to the latest position of the Register while considering an objection under Section 12(1) and Section 12(3) is only an exception to section 12(1). Moreover, Shri Nair's contention sounds rather popular since he agrees to rely on the latest state of Register to note that Petitioner's registration No. 227332B is no longer in force but he objects to note the other registrations of Petitioners as per the latest state of Register to rely on the present state of facts and I consider that the objection under Section 12 (1) upheld by the Hon'ble High Court does stand even now as per the present state of Register. Accordingly I have decided to proceed to record my finding under Section 12(3) as per the directions of the Hon'ble High Court.

19. Now passing to the issue under section 12(3), I have carefully considered the various arguments advanced by the counsel on both sides and I also studied the observations and directions issued by the Hon'ble High Court in its judgement dated 4.12.79.

20. As regards the first aspect concerning the honesty of adoption of the impugned mark I feel impressed with the Petitioner's counsel's arguments that the Respondent's adoption of VERA mark does not appear to be prima facie honest. It is clear from records that Petitioners had obtained an old registration under No. 227332B in respect of NERA mark, with a stroke or line commencing from the end of the first letter N and extending over the last three letters ERA and Petitioners claimed user in respect of this NERA mark since 1964. The respondents who admittedly claim adoption of their VERA mark four years later i. e. in 1968 in respect of almost identical goods namely valves, similarly introduced a stroke commencing from the end of the first letter V of their mark to spread over the last three letters ERA. Except for a difference in the first letters N and V, the rival marks look identical for all ocular purposes. Respondents have not furnished any explanation as to why and how they hit upon the adoption of VERA mark and in particular, why they too introduced an identical stroke or line over the identical last three letters ERA. Thus, the adoption of VERA mark by the Respondents in respect of almost identical goods as the Petitioners' goods and containing identical features as under Petitioner's mark, can never in my opinion, be a result of sheer accidental coincidence. This is clearly a case of 'res ipas loquitor' I feel there is no commercial honesty on the part of Respondents in their adoption of VERA mark. An element of honesty is sine qua non for the grant of benefits to concurrent registration under Section 12(3). The rival marks in this case are found to be clearly conflicting inter se the rival goods are also found to be almost identical and the areas of user are also overlapping. This, however, may not lead to a position of triple (absolute) identity. Nonetheless, the adoption of a conflicting mark VERA by Respondents in respect of almost identical goods as under NERA mark of Petitioners and for use in areas overlapping with these circumstances I find that Respondents have failed to establish the honesty of adoption of their mark to claim the benefits under Section 12(3).

21. As regards the evidence of concurrent user, I am not satisfied with this aspect too. The Respondents, on whom the burden of establishing a concurrent user is very heavy, have not filed unimpeachable documentary evidence such as bill books, account books, advertisement literature, advertisement cuttings etc., which form the main indicia to establish a factum of user beyond doubt. Respondent filed just 11 orders from customers which bear the signatures. The earliest order bears the dated 25.1.65 and the last one bears the date 10.6.1981. Curiously enough, these orders refer to some other trade marks in print, reading 'Sole Distributors for Gratco Valves and Gainda Brand', I very much doubt the authoritically as went as the probative value of the few loosed orders filed by the Respondents.

22. It is interesting to note that Petitioner's counsel repeated-by demand an inspection of the books of account from Respondents but the latter did not grant such inspection on some pretext or other. Ultimately, when I held a further hearing on 14.4.86, Petitioners' counsel filed an interlocutory petition seeking an order from this Tribunal to direct the Respondents to produce their books of account for inspection. Shri Nair, counsel for the Respondents, opposed this petition and advanced oral arguments requesting that the petition may be dismissed since, it is filed at a very belated stage and is only intended to create some troubles before the Hon'ble High Court. Even at this stage, there was no offer to give inspection of accounts by the Respondents and their attitude has consistently been to evade the grant of inspection of their account books to Petitioner's counsel. I however, dismissed the Petitioner's interlocutory petition observing that necessary inferences will be drawn by the Tribunal about the non-production of account books by Respondents and as the petition is too belated, it is liable to be dismissed.

23. Thus, apart from the few orders filed with the affidavit of Respondents' partner, Mrs. Dehiben Dhulabhai Patel, there is no corroborative documentary evidence on the aspect of user. Further the earliest order dated 25.10.68 filed by the Respondents clearly falls short of three years' user on the date of application, which is normally insisted for grant of concurrent registration rights. Respondents, no doubt, furnished at page 2 of Smt. D. P. Patel's affidavit dated 29th February 1980, their sales figures since 1978, but as I already observed earlier, in the absence of the production of account books and other unimpeachable corroborative evidence I cannot give much value to the figure furnished in the self-serving affidavit of Respondent's partner. The respondents have also submitted 5 trade affidavits from their dealers and four of the said trade affidavits simply mention that the said dealers were stocking VERA valves since 1968. Without furnishing any specific date or month in 1968. They have also not furnished any details or figures of their sales as dealers of VERA valves.

In view of all the foregoing discussion I hold that the Respondents have not cared to produce the best, the most reliable and unimpeachable evidence and the evidence produced by them looks tardy, meagre and unsatisfactory.

Shri Nair, on the other hand, criticised that Petitioners have not produced their evidence concerning the user of NERA mark. This argument misses one vital point, namely that the burden of proof always rests on Applicants (Respondents) to establish a case for concurrent registration of their mark under Section 12(3) and the Tribunal is not so much concerned with the evidence of user of Petitioners' mark. However, the facts remain that Petitioners obtained registration NERA mark claiming user sine 1964, and with the affidavit of Mohan Singh they filed an old bill book showing their bill from 11-5-69. Besides, Petitioners filed invoices and advertisements. They furnished sales figures from 1964-65 till the date of application. Even though sales figures are not very considerable and are only modest, I believe in the authenticity of petitioners' evidence consisting of old records. Shri Nair commented against the five trade affidavits filed by Petitioners stating that they are stereotyped and one affidavit contains a blank. Nonetheless, I am satisfied with the over all evidence filed by the Petitioners for reasons have already mentioned above. At any rate, I feel that the evidence filed by the Petitioners looks more reliable and more satisfactory than the evidence filed by Re

Please Login To View The Full Judgment!

spondents. I am also much impressed with another argument advanced by Shri Ram Parkash that Respondents have not filed any evidence concerning the mode of user of their VERA mark, which is an important aspect in the circumstances of this case. If rival marks are to be impressed upon goods viz. valves, any improper impression, erasure or wearing out can create serious problems of conflict between rival marks on account of their ocular similarity presenting the last three letters ERA under a stroke, as if they are covered by the symbol of a square root. Thus, I have given a detailed consideration to the various aspects of the case and I ultimately found that due to the fundamental lack of honesty of adoption of Respondents' mark and due to the close similarity between rival marks and the rival goods, with overlapping areas of user of the marks and in the face of non-availability of section 12(3). In addition to these factors, petitioner have since registered one more NERA mark and also a VERA mark and both these registration one are subsisting. It, therefore, appears to be against the public interest too to grant registration to Respondents' VERA mark under section 12(3). Since the Registrar or the Courts are always concerned primarily and more importantly with the aspects of public interest and avoidance of public confusion, then with the individual interests of traders. In view of all the foregoing discussion, I feel that Respondents are not entitled to a grant of concurrent registration under section 12(3). I regret that I have to come to the above conclusion, which is contrary to the conclusion arrived at by this Tribunal as per the Assistant Registrar's order dated 3rd January, 1976. However, when the learned Assistant Registrar of Trade Marks passed his order, both parties were not represented before him at the hearing. But now I have obtained assistance from counsel on both sides and I have also derived great advantage from the findings of the Hon'ble High Court. Further, more evidence and more materials became available on record now and I could also derive necessary assistance by consulting the latest position of the Register. Due to these factors I have now come to a different finding that the Applicants (Respondents) are not entitled to the benefits of Section 12(3). In the light of all the foregoing discussion, I am submitting my findings as above to the Hon'ble High Court as per the High Court's order dated 4.12.1979.
O R