T.R. Subramanian, DRTM:
1. On 26.2.1982 an application was filed under Application No. 386950 by Ramakrishna Food Products Pvt. Ltd. 96 TPS Sub-1 Shivajinagar, Pune-411 005 (hereinafter referred to as the applicants) seeking registration of mark in part A of the register in respect of Biscuits (not for animals); Bread, Buns, Cakes, Candy for Food Caramels, Chocolate, Chocolate-Cream, Marzipah (chocolate), Chocolate substitutes, Cocoa, Confectionery (non-medicated), Cornflour, Fruit and Vanila, Flavourings, Foundants (chocolate), Katchup, Lozenges (non-medicated), Puddings, Pastries, Sugar, Sweets, Sweet meats, Vinegar, Yeast and Wafers (biscuits) all being goods including in class 30. The mark was proposed to be used on the date of application. The applicants mark comprises of the words RK NUTTEX. The application was advertised before acceptance for registration in Part B of the register with a disclaimer of the letters RK' in the Trade Marks Journal No. 900 dated 1.12.1986 at page 731.
2. On 26.3.1987 a notice of opposition was filed by R.A.K. Swamy, R.V. Vedavelli, R.A. Madhusudan and R.A. Mythilly trading as Sri Ramkrishan Dairy, 179, S. B. Road, Viveswarapuram, Bangalore-560 004 (hereinafter referred to as the Opponents) objecting to the registration of the applicants on the grounds inter alia:
1. That the opponents are carrying on the business of manufacturing and dealing in food products including instant foods.
2. That the opponents began dealing in food products in the year 1963 under the trade mark ORKAY and the mark was chosen to distinguish and identify their products.
3. That the opponents have registered the mark ORKAY under No. 319629 in class 30 and that the opponents have also applied for several variations of the said word in various vernacular scripts like Tamil, Telugu, Kannda and the same have been numbered as Application Nos. 420255 to 420269 all in class 30. They have also applied for registration of the above trade mark in classes 16, 29,30 and 32 under Nos. 428603 to 428606 respectively.
4. That the opponents have been using the trade mark ORKAY for the last 20 years and the purchasers identify the food products manufactured and marketed by them by the above trade mark.
5. That the use of the impugned trade mark by the applicants is likely to cause confusion or deception in the minds of the public.
6. That the applicants cannot claim to be the proprietors of the above trade mark as the said trade mark has been used by the opponents since 1963 and accordingly the applicants mark should be refused registration.
3. The applicants filed a counter-statement denying all the material averments in the notice of Opposition and contended that in or about the year 1970 they adopted the trade mark RK as their house mark and have been using the house mark continuously and uninterruptedly. They further submitted that the trade mark RK was adopted from the initial letters of their corporate name RAMKRISHNA and therefore the adoption of the mark is honest and bona fide. They had also submitted that they are the registered proprietors of the trade mark RK under registration No. 323446 dated 1.3.1977 in respect of Biscuits and other similar products included in class 30, and that by virtue of the above registration they have acquired statuary rights to use the said trade mark under the provisions of Section 28 of the Trade and Merchandise Marks Act, 1958. They had submitted that they have been using several trade marks in combination with their house mark RK and that some have also been registered and others are pending. They are also the Regd. Proprietors of the trade mark `RK Chocolate' Under registration No. 324305B in class 30. They submitted that at the pre-advertisement stage the Registrar has objected to the acceptance of the impugned mark under Section 9 of the Trade and Merchandise Marks Act, 1958 on the grounds that the letter RK was not inherently adopted to distinguish and, therefore, not distinctive of the goods and were directed to disclaim the letters RK. They had in their reply to the objection have stated that the letters RK had already been registered in their favour under Regd. Trade Mark No. 320446 in respect of the same goods in class 30 and, therefore, they had requested that the impugned application may be associated with their Regd. trade mark. They have also informed the Registrar that they are not agreeable to the disclaimer of the letters 'RK' as it is their house mark and had requested for a hearing. They submitted that this fact had been left out due to oversight on the part of the Registry when the mark had been advertised in the Journal. The rest of the counter-statement were mere denials of the matters raised by the opponents in the notice of opposition.
4. The opponents thereafter filed an affidavit dated 21.3.1988 of Shri B.A. Madhusudan Partner of the opponents Company as evidence in support of the opposition along with Ex. A to F. The applicants vide their letter dated 19.9.1988 had stated that they would rely on the grounds stated in their counter-statement.
5. The case ultimately came up for hearing before me and the parties were informed of the hearing. The applicants filed their request on form T-7 of their intention to appear at the hearing, whereas the opponents did not file any such request.
6. On the hearing date Shri M. R. Nair, Advocate appeared for the applicants but none appeared for the opponents. Even though the opponents were neither present not represented, I have taken into consideration the documents filed by them before arriving at a decision.
7. The issues in those proceedings arise mainly under Sections 11(a), 12(1) and 18(1) of the Act.
8. I would first take up for consideration the issues under Section 11 (a) of the Act. Section 11(a) of the Act provides that the trade mark the use of which is likely to deceive or cause confusion cannot be registered as a trade mark. The onus is on the first instance on the opponents to establish the use and reputation of mark on the date of application. The opponents have adduced sufficient evidence to the fact that they have used the mark `ORKAY' from 22.1.1971. The applicants mark comprises of the world RK NUTTEX whereas the opponents mark comprises of the word ORKAY. The learned counsel for the applicants submitted that the two rival marks are not at all identical and so confusion and deception between the marks does not arise. He submitted that the applicants mark comprises of the house mark RK and the invented word NUTTEX. No doubt the applicants mark `RK NUTTEX' include the opponents mark ORKAY which is phonetically similar to `RK' but the applicants mark includes the word NUTTEX which is an invented word. It has been held that TORNADO is not similar to TORNA. (Tornodo Trade Mark (1979) RPC 155 page 160). I therefore hold that the rival marks are not similar and that the opponents objection under Section 11 (a) is not sustained.
9. I would now take up for consideration the issues under Sections 12 (1) of the Act. As regards the issue under Section 12(1) of the Act two points arise for consideration.
(1) Whether the impugned mark RK NUTTEX is deceptively similar to the opponents Regd. Trade mark ORKAY and
(2) Whether the goods of the applicants and that of the opponents are the same or of the same description.
10. In order that Section 12 (1) can be applied both the above conditions should be present. The learned counsel for the applicants submitted that the rival marks are different as the applicants mark comprises of their house mark `RK' and the invented word `NUTTEX'. He also submitted that the opponents have registered their mark `ORKAY' under No. 319629 for the goods `Mixture of gram of flour for making non-medicated sweetmeats and savoury preparations all being goods included in class 30, whereas the applicants goods comprises of Biscuits (not for animals) Bread, Buns, cakes including sweetmeats, etc.
11. As regards the first condition I have already held earlier that the rival marks are not similar. However, as regards the second condition, I do not agree with the contention of the counsel for the applicants that the goods are different. I am of the opinion that the applicants goods includes the goods of the opponents. As only one of the condition of Section 12 (1) is met I hold that the opponents objection under Section 12(1) is not sustained.
I would now take up for consideration the issues under Section 18 (1) of the Act. Shri M.R. Nair the learned counsel for the applicants submitted that the applicants are the Regd. Proprietors of the trade mark R.K. and the same has been registered under No. 323446 in class 30 in respect of the same specification of goods. He submitted that the present application should have been associated with the above Regd. Trade mark and the Registry should not have advertised the mark with the disclaimer for the letters R.K. He submitted that it may be seen from the records in the Trade marks Registry that they have already requested the Registrar in their letter dated 25.4.86 that their mark should be associated with their Regd. Trade mark No. 323446 and that the question of disclaimer of the letters RK does not arise. They had requested the Registrar to modify the acceptance order or fix a fresh hearing in the matter. However, the Registrar had advertised the mark without giving any opportunity to them. He submitted that the opponents should have applied for rectification of their registered trade mark and they have not done so they cannot now question the validity of the present registration. He also submitted that the applicants mark is a combination of the Regd. Trade mark RK and the invented word NUTTEX and so they are th
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e proprietors of the mark. I have carefully considered the submission made by the learned counsel for the applicants and the submission s made by the opponents. I agree with the contention of the counsel for the applicants that their application should have been associated with their Regd. Trade mark No. 323446 and that the mark should not have been advertised with the disclaimer for the letters RK in the view of the fact that the applicants are the Regd. Proprietors of the trade mark `RK' which their house mark. As I have held earlier that the rival marks are nor similar, I am of the opinion that the applicants are the proprietors of the mark. 13. In the result Opposition No. BOM 6662 is disallowed and application No. 386950 is accepted and shall proceed to registration subject to its association with Regd. Trade mark No. 323446 and without the disclaimer for the letters 'RK'. A corrigendum to be published in the Trade Marks Journal in the respect of the above matters. The opponents shall pay to the Applicants a sum of Rs. 110/- as cost of the proceedings.