(CIRCUIT BENCH SITTING AT AHMEDABAD)
ORDER (No. 271 of 2012)
HON’BLE SHRI V. RAVI, TECHNICAL MEMBER:
The applicants herein are seeking the removal from the Register of trade marks of application No. 1457787 in Class 34. The trade mark in question is GOPAL Chhap and the device of Lord Krishna and Cow. ( label/mark).
The grounds for rectification are summarised below:-
2. The applicants are the registered proprietors and the owner of the trade mark/label with the device of Lord Krishna which has been used since 1950. They hold many registration with the device of Lord Krishna in Class 34. It is being used in respect of flavoured chewed tobacco, pan masala and other tobacco products. The word ‘Gopal’ is the permanent & essential features of the trade mark of the applicant. The applicants have registered it both in English and Hindi along with device of Lord Krishna.
i) They are also the owners of several copyright registration in respect of GOPAL ZARDA & GOPAL LABEL.
ii) To expand their business, the applicant entered into a Trade Mark & Copyright Licence agreement in 2004 with M/s Flakes-N-Flavours and later in 2007 with M/s Gopal Corporation Limited.
iii) The applicant through its licensee have been continuously promoting its sale of the said goods and the business under the said trade marks/labels through different media such as trade journals, trade literatures etc.
iv) The applicants have furnished sales turn over in respect of tobacco products under the trade mark GOPAL and the Lord Krishna device from 1995 to 2006 and also the advertisement expenses for the said period.
v) In view of the foregoing, the applicants are the recognized owner & proprietor of GOPAL and the Lord Krishna Device ( in English and Hindi) in respect of tobacco related products serving as source of origins of their goods.
vi) Applicants are also very vigilant in taking infringement action to protect their IP rights that vest in the trade mark GOPAL (English and Hindi) and the LORD KRISHNA LABEL.
vii) The respondent herein have adopted an identical/deceptively similar trade mark GOPAL CHHAP (DEVICE OF KRISHNA & COW LABEL) in relation to snuff, tobacco and tobacco articles.
viii) This adoption is dishonest as in each and every respect the adopted mark is phonetically, visually, structurally identical. Therefore the respondent cannot be proprietor of the impugned mark.
ix) The respondents trade mark which was advertised in the Trade Marks Journal No.1373 escaped the notice of the applicant and hence the applicants are seeking the immediate cancellation of the impugned trade mark.
x) The dishonest adoption and registration of the impugned mark is actuated with a clear intention to encash on the goodwill and reputation of the applicants trade mark.
xi) As the resemblance between the two marks are so close, the adoption and use is clearly a deliberate imitation. An unwary purchaser of tobacco products from the lower strata of society and other gullible people are bound to be deceived while dealing with and purchasing the respondent’s goods and business under the impugned trade marks on the impression that it is emanating from the applicants source or that some vital links exist between the applicant and the respondent. Innocent purchaser would be deceived and irreparable loss caused to the trade and consuming public.
xii) In view of the prior adoption and registration of an identical mark for the same products, the registration of the impugned mark is bad in law. It is contrary to the provisions of Section 9, 11,12, 18, 47 and 57 the Trade Marks Act, 1999. Therefore, the impugned registration of the respondent is void ab-initio.
xiii) In the light of the foregoing, the applicants pray that the impugned trade mark be removed from the Register.
3. The case of the respondent is as follows:-
(i) The present rectification application is not maintainable as the applicant is not a ‘person aggrieved’ within the meaning of the Section 57 of the Act. There is no ground favourable to remove the impugned mark. The respondents’ label/mark is totally different and distinct with its unique colour combination artwork, device of Lord Krishna and Cow packaging and overall get up and, therefore, the impugned mark is inherently distinctive of the respondent’s goods. The respondent is in the business of snuff whereas the applicant’s are into tobacco and zarda and there is no conflict between rival mark and the goods.
ii) The respondent is using the impugned mark since 1960 openly and extensively and uninterruptedly without any objection.
iii) There is no complaint of confusion or deception for the last four decades and the present petition is merely to harass the respondent. The respondent has been using the trade mark GOPAL since 1960 initially through its predecessor and subsequently by the respondent himself without any complaint of confusion or objection from the market. The applicant has not objected to the use and registration of the respondents mark Lord Krishna for more than four decades on account of confusion or deception. The present application is therefore barred by the principle of estoppel.
iv) The impugned mark is an auspicious symbol and is used by many traders for different products and the applicant cannot claim exclusive rights over the word mark GOPAL or the device of Lord Krishna and the Cow it being publici juris.
v) Documentary evidence produced by the applicant is full of discrepancies. For instance, there are different partners in different applications sought by the applicant and the ownership status is not clear. Further, many invoices produced are illegible and not reliable. Also a large number of the invoices are hand-written. Most of the invoices do not contain the word GOPAL and hence irrelevant and none of the invoices is for the goods in respect of which the respondent are the registered proprietor. Also, the licence agreements with the applicants are not reliable as they are in respect of different marks for totally different goods.
vi) The registered trade mark of the applicant is in respect of products other than ‘snuff’ and are easily distinguishable.
vii) The respondents predecessor M/s Jagjivandas Bhanji Dani & Co., (also known as J.B. Dani & Co.) had honestly coined and adopted the mark/label GOPAL in a special and particular manner along with a full picture of Lord Krishna with cow having a different and distinct colour combination and get up in the year 1960 . Their predecessor were the owners of the registered trade mark GOPAL label along with the device of Lord Krishna and cow under application No. 415478 since 1984. The respondents have applied for another application under No. 1457787 in their own name being the impugned mark. It is hard to believe that applicant’s are not aware of this.
viii) The present rectification suffers from delay, laches and acquiescence and the applicant is estopped by his own conduct from taking objection. The respondent have been in the market for over four decades. The respondent further states use of numeral is common to tobacco trade. Thus the allegation of confusion or deception are totally baseless. The respondent vehemently deny all statement, averment or claim of the applicant. Thus application No. 268259, 331481 and 333612 of the applicant are for totally different goods bearing different mark. The respondent is doing business in ‘SNUFFS’. On the date of application respondent‘s mark was distinctive of his goods. Any use or registration or reputation of applicants mark are irrelevant for the present proceedings. It is in the interest of justice, equity and good conscience to dismiss the present rectification application.
4. From the record, it is obvious that the applicant hold more than 40 registration for the word Gopal in Class 34. But not all is accompanied by the device of Lord Krishna or cow. Yet at least 16 of these 40 are device mark containing the picture of Lord Krishna and Cow. However, one noteworthy feature of these registration is almost 37of 40 (over 92% of registered trade mark) is in respect of Chewing Tobacco (Zarda), the rest being for pan masala and betel spice and gutka. The other point to note is the very vast and consistently impressive annual sales figure of over Rs. 100 Crs since 2000 achieved by the applicant for a whole range of tobacco products. The applicant have proved the ability to protect statutory rights by securing injunction in several cases. Further, their advertisement expenses in 2005 -06 for instance was over Rs. 44 lakhs. All these show the tremendous goodwill enjoyed by the applicant in respect of his registered trade mark.
5. In the light of the foregoing we need to examine the case at hand. Let us depict some of the applicant registered trade mark.
Applicant’s Trade Mark
Most of the other device marks of the applicant are similar.
Respondent’s Trade Mark
6. Let us now examine the various objection raised by the applicant starting with Section 9. Here the test to be applied has a very low threshold. The issue can be formulated as – is the trade mark, hypothetically at least, capable of performing the function of identifying all the goods for which it is registered – indicate that it comes from the control of the same undertaking.? If the answer to this question is yes, the trade mark can be considered further for registration. Section 9 is neutral and there is no presumption in favour or against registration. The combined effect of Section 9(1)(a) and 9(1) (b) is to eliminate the discretion that the Registrar previously had to make a judgement, and now he has to act upon materials before him as to the registrability of the mark. There is nothing in the nature of a burden for the Registrar to discharge in order to refuse an application.
7. Let us apply this test to the fact of this case. The respondent are using an identical mark for ‘Snuff’. It is their contention that the impugned mark can distinguish it from the products of the applicant i.e. chewing tobacco and ‘Zarda’ for which they too are registered. We think that there is force and substance in the argument. Past court rulings have held that chewing tobacco and smoking tobacco (pipe) and cigarettes [ See – Thomas Bear and Sons (India) Ltd. Vs Prayag Narain (1941) 58 R.P.C. 25- Passing Off] are goods of different description. Similarly, cigarettes and Bidis too have been held to be goods of different description [See – ITC,India v. Mullaji Jamaluddin –Appl.No. 549 of 1934 in Nagpur High Court ]. By the same logic the use of identical trade mark ‘Gopal’ with device of Lord Krishna in respect of ‘Snuff’ is capable of distinguishing the product of the respondent, without any possibility of confusion, from those of the applicant. The impugned trade mark does distinguish the origin of the respondent’s goods (snuff) even without recourse to use and so passes the test of Section 9 barrier. The old test of distinctiveness under the repealed TMM Act, 1958 Act is no longer valid. Previously, the test was whether other traders are likely without improper motive to desire to use the mark in connection with their own goods. The correct test now is whether the mark itself (abscent use) distinguishes respondent’s goods from the applicant. If so, it has a distinctive character. For the forgoing reasons the impugned mark qualifies for registration. Hence, in our view the objection raised under section 9 is not well founded.
8. The next objection is based on relative grounds under Section 11 keeping in mind that the rival marks are identical even though the competing products are not so. Can Section 11 be a bar to the impugned mark? The test involves looking at the category of goods; the average consumer of those goods; how the goods are used; whether it is in competition or a substitute for each other and sold in the same market. The respondent’s good ‘Snuff’ is made from pulvarised tobacco. It is inhaled through the nose. It is free from tar and harmful gases such as carbon monoxide and often considered acceptable substitute for smoking. Chewing tobacco for which the applicant hold a large number of registration has direct known health risk such as heart attacks, strokes, chronic bronchitis, cancer etc. Chewing tobacco generally has higher tar content and is carcinogenic in nature. Chewing tobacco in particular is known to cause cancer of mouth and throat. In our view the competing products ‘snuff’ and ‘chewing tobacco’ are not a substitute of each other. Both are addictive by its nature but ‘snuff’ have less negative health consequences. They relate to completely two different markets and is not a substitute for each other. Thus the objection raised under Section 11 also fails.
9. The next objection relates to Section 12, in that the impugned trademark cannot co-exist in the register. It has been in use for over four decades in the market and had made sale for over Rs.63 lacs in 2007-08. No concrete instance of confusion have in fact been proved. After four decades would it be just and necessary to throw out a mark from the register merely on the strength of great name and fame of applicant’s mark on the purported allegation that the applicant have willfully copied their mark? It has not been established by required evidence that the respondent’s were aware of the applicants trade mark that would perpetuate confusion. There is nothing unique in adopting
Please Login To View The Full Judgment!
a device trade mark with image of Lord Krishna and Cow as to do hundreds of other traders for many products. Further, seeking removal of a registered trade mark after four decades puts the respondent to immense hardship and the public to great inconvenience. The respondent’s trade mark is used only in respect of ‘Snuffs’ since long. Their claim of acquiescence by the applicant cannot be dismissed lightly. On balance, we find no merit in evicting the impugned mark under Section 9 or 11 and it has right to co-exist in the register under Section 12. 10. The last point agitated was questioning the ownership of the respondent’s mark under Section18(1). The aforesaid analysis adequately goes to show that no serious allegation of mala fide adoption has been made out. The fact remains that the applicant are still not in the business of ‘snuff’ trade as per record. It will be unethical to oust a small time bona fide trade mark owner dealing in unrelated goods albeit for identical marks over long period. In the instant case applicant’s might is of no avail as the respondent have every right to the use and continued registration of their mark. Trade marks protection under the statute is not meant to conquer all rivals. Each has a place under the sun, other things being equal. The plea under Section 18(1) consequently fails. 11. In the result, ORA/157/2009/TM/AMD is dismissed. The applicant are directed to pay a sum of Rs. 5,000/- to the respondent as costs of these proceedings.