BEFORE THE DEPUTY REGISTRAR OF TRADE MARKS, MADRAS
C.S. Rao, DRTM:
1. On 6th December 1977 an application was filed, being Application No. 331306, by N.G. Gowrama and others, trading as Kwality Food Products, Post Box No. 2612, Bangalore-39 (hereinafter referred to as "Applicants") for registration of a trade mark consisting of the device of a human head described by the Applicants as a Chef's head and beneath the neck portion of the said head there is a scroll with the word Kwality written in Kannada script. The mark was sought to be registered in part A of the Register in respect of "Biscuits (not for animals) and confectionery (non-medicated)" under class 30 and Applicants claimed proprietorship to the mark on the basis of user since 1962. The mark was accepted subject to a disclaimer of the word "Kwalitys" and subject to association with earlier trade marks the Applicants and it was accordingly advertised in Trade Marks Journal Issue No. 730 dated 1st November, 1979 at page 946.
2. On 25th January 1980 a notice of opposition, objecting to the registration of the above application, was filed by S.V. Krishnan, 3/159, Shri Krupa, Garodia Nagar, Bombay 400 077 (hereinafter referred to as Opponent), who contended mainly, inter-alia, (1) that the impugned mark does not consists of or contain any of the essential particulars specified in section 9 of the Act, since the ordinary device or caricature of a Chef has a direct reference to the character or quality of the goods and the word Quality's or Kwality's shown in Kannada script form is purely laudatory and has been appropriately disclaimed, (2) that no evidence appears to have been filed to show that the mark became distinctive by user nor any other circumstances shown to claim the mark to the distinctive in fact, (3) that the mark offends against Section 11 of the Act, (4) that the Applicants are not the proprietors of the mark, and (5) that the registration shall be refused for the aforesaid reasons and also in the exercise of Registrar's discretion.
3. Applicants filed a counter-statement denying all the material everments in the notice of opposition and they pleaded that on account of the long, continuous and extensive user of the mark since 1962, the distinctive device of the chef's head with word `KWALITY'S" their under has become very popular and acquired goods reputation in Indian markets and that the said device of chef's head with word Kwality's has been registered under Nos. 281917, 281918, 281920, 281921, 287264 and 287265, even after the said marks were opposed by Kwality Restaurant & Ice Cream Company of New Delhi, and Pure Ice Cream Company (P) Ltd., New Delhi. Applicants asserted that device of a chef's head has on reference to the character or quality of goods and that the mark does not offend against Section 9 or Section 11 or even Section 18 and that the present Opposition is malicious, without substance and without any cause of action.
4. Opponent has not filed any evidence in support of opposition but by his letter dated 19-4-1980 he intimated that the intends to rely on the facts and grounds stated in the notice of opposition. Applicants filed an affidavit of their partner, T.V. Viswanath Gupta, as evidence in support of application and they relied on the exhibits filed by them in support of their earlier Application No. 325073 under Opposition MAS--1269 and requested the same to be treated as part of their evidence in these proceedings too. Opponent has not filed any evidence in reply under Rule 55.
5. In the meantime Applicants filed an Interlocutory Petition on 23-5-1981 for recording some changes that occurred from time to time the constitution of their firm, which finally became converted into a Private Limited Company as from 17th March 1981. Opponent was served with copies of the request and he too sent his observations, commenting that he was not supplied copies of deeds relied on by Applicants. But the evidence having been closed in the case, the case was set down for a hearing.
6. When the matter came up for a hearing before me on 15-7-1982 Shri S.V. Krishnan, Opponent, was present at the hearing, while none appeared on behalf of Applicants. The Applicant's counsel, Shri M.R. Lakshminarayana Rao, telephoned to me on that morning, requesting for an adjournment of the hearing. However, an adjournment of hearing was resisted by the Opponent, Shri S.V. Krishnan, on the ground that he came all the way from Bombay for purposes of the hearing and that he had no notice of the belated request for an adjournment, made over phone by Applicants counsel. Opponent also contended that there was no written request at all for an adjournment of the hearing on the prescribed form TM-56 from Applicants and that he would press for very heavy costs on account of his To and From journeys and other costs incurred by him to attend the hearing. In fact, Opponent had earlier sent only some written arguments to be considered on his behalf and he had not filed TM-7 expressing his intention to attend the hearing. On the other hand, Applicants' counsel, Shri M.R. Lakshminarayana Rao, filed TM-7 and also sent a letter dated 8.7.1982 stating that the hearing on 15-7-1982 may not be adjourned. While so, at the time of hearing on 15-7-1982, the Opponent was physically present at hearing and he also filed TM-7 alongwith TM-56 and it is the Applicants' counsel, who neither attended the hearing nor sent any written request on form TM-56 for adjournment of the hearing, though he requested for an adjournment over phone. In these peculiar circumstances obtaining at the time of hearing, Opponent pressed for a hearing or for award of heavy costs and there was none at all for Applicants to agree or to disagree for the heavy terms pressed by the Opponent. Hence the Tribunal found no feasible alternative except to proceed with the hearing. Accordingly the hearing was held and it was also concluded on 15-7-1982, recording all submissions made by Opponent. The Applicants' counsel was intimated by this office letter dated 17-7-1982 that the hearing in the case was held and concluded on 15-7-1982 as the Opponent came all the way from Bombay to attend the hearing. It was only on 16-7-1982 that a letter dated 13th July 1982 from Applicants' counsel, seeking an adjournment of the hearing on 15-7-1982, reached this office and nothing could be done on this, as the hearing was over on 15-7-1982 itself.
7. Even though the hearing was concluded on 15th July 1982 as mentioned above, I could not issue my decision immediately since I proceeded on leave very soon after the conclusion of hearing. In the meantime on receiving this office letter 17-7-1982. Applicants' Counsel, Shri M.R. Lakshminarayan Rao, contacted me over phone again and requested me to defer the issue of judgment as he has been objecting to the very locus standi of Opponent to file the Opposition herein and that he is addressing a representation on the point for Controller General's directions in the matter. Actually Shri M.R.L. Rao addressed two letters dated 5th September 1982 and in the first letter be questioned the locus standi of Opponent in preferring this Opposition and alongwith his second letter he sent a photostat copy of the entries in the Register showing that all TM-24 requests of Applicants were allowed by Trade Marks Registry and that the subsequent proprietor of Applicants' firm were brought on Register, including the latest "Kwality Biscuits (P) Ltd., which is the latest subsequent proprietor. The letter questioning the locus standi of Opponent and seeking Controller General's directions in the matter seems to have been sent direct to Controller General also by Shri M.R.L. Rao himself. I have been directed by Headquarters to give my own considered decision in the matter. I am accordingly proceeding with this decision.
8. Issues in these proceedings arise under Sections 9, 11 and 48 of the Act.
9. Now coming to the issue under `Section 9, which is by far the most important or rather the only important issue in these proceedings, the opponent contends that Applicants' mark does not consist of or contain any of the essential particulars specified in Section 9. He states that the word "Qualitys or Kwality" shown in Kannada characters is purely laundatory and has been appropriately disclaimed, while the ordinary device or caricature of a Chief has direct reference to the character or quality of the goods and hence it is not distinctive. He further alleges that no evidence appears to have been filed to show that the mark became distinctive by use and that there are no other surrounding circumstances such as the mode of representation of the features of mark to claim that the mark is in fact distinctive. The Applicants deny all these averments and claim that the mark contains the device of a chef's head which is distinctive in itself and that it has also become factually distinctive by reason of longer user claimed since 1962 in respect of their goods, namely, biscuits and confectionery. In proof of the said user they filed evidence and they also pleaded their earlier registrations of the said mark (with word "Kwality's" depicted therein English character as an additional circumstance under Section 9(5) in favour of the distinctiveness and acceptability of their mark under Section 9. I shall now examine the above pleas.
10. The Applicants' mark contains the device of a human head with the word "Kwalitys" or "Qualitys" in Kannada characters Identical marks containing identical human head and word "Kwalityis" represented in English characters have already been registered under Registration Nos. 281917, 281918, 281920, 281921, 287264 and 287265. In all these registered marks the word "Kwality's" has been depicted in a possessive form, obviously meant to indicate the short form of the trading style of Applicants, namely Kwality Food Products, which was originally a firm. There appear to be some changes in this firm, but the trading style remained the same practically and even by the latest conversion of the Applicants' business into that of a private limited company under the name Kwality Biscuit (P) Ltd., the word "Kwality's continues to be a short or abbreviate form of the Applicants trading style. Thus, the Kannada word "Kwalitys" appearing in the Applicants' mark under present application is obviously the equivalent of the English word "Kwality's" appearing in the other marks of Applicants. Even through this expression "Kwality's" is a short form of the Applicants' trading style, it is also a descriptive word, being the same as the well-known English word "QUALITY" and hence it is subjected to a disclaimer. Accordingly we need not have to attach any trade mark value of importance to this expression under Applicants' mark.
11. So the main element to be considered for trade mark purposes under the Applicants mark is the device of a human head, which is clearly an imaginary device, not obviously belonging to any real person. Whether we take the device as a mere caricature or otherwise, the face in the device is clear and decipherable. While this device is described by the Applicants themselves as the device of a chef's head, it does not appear to be the usual or conventional device of chef's head. Thus even if one calls the device as some Joker's head with a broad smile and a peculiar cap, it can be accepted as such. In any event, the device appears to be a peculiar as well as distinctive representation of a human head, which easily impresses itself on the mind of the public and when once the public get used to purchasing goods under this mark, they can be reasonably expected to recognise and take the device in its function as a trade mark and identify goods with reference to this mark. In actual fact too, this device mark has been in continuous use since 1962 and Applicants filed evidence to establish the said factual user, supported by their sales and advertisement figures furnished right from 1962-63 till 1979-80 and they also relied on the voluminous documentary evidence filed by them in this Registry in connection with their application No. 325073 under Opposition No. MAS-1269. Applicants' identical marks have been accepted as well as registered under earlier registrations numbers as already mentioned and those registrations were obtained, not as a matter of course but after oppositions thereto were faced and fought by the Applicants, who successfully established the distinctiveness of their mark all through. Now once again the distinctiveness of Applicants' identical mark is being challenged.
12. The Opponent herein contended vehemently that the device of a chef's head is descriptive of the goods in question and that the mark does not qualify for registration, despite any factual use thereof. In support of this plea, Opponent relies on the Chef's head case reported in 1979 RPC 143, in which the representation of a hat nose and moustaches of a chef, fancifully represented in a caricature form, along-with the word "The Chef", being an unused mark, refused registration in their part A or part B in respect of publications on cookery. I have carefully gone through the said decision and I find that it is not at all applicable to the facts of the case on hand. The mark in that reported case contains the words "The Chef" underneath an outline and simplified drawings of a chef's hat and three curvilinear geometric outline shapes, which may be imagined as the nose and moustaches of a comic cartoon drawing of a chef. The Applicants' mark in our case has a clear and recognisable face which can easily impress itself on the public mind, while there is no such clear or decipherable or recognisable face at all in the mark under the reported decision and rather, there is no face at all in that case, except outlines of a hat and drawings, to be imagined as a nose and moustaches. The Applicants' mark in our case with its clear picture has further been in factual use for over decades since 1962 and public identified the mark, while the mark under the reported and decision is altogether unused. It is again important to note that there is no description of the head in Applicants' mark as a chef's head while on the other hand, the mark under the reported decision contains clearly the words "The chef", pointing to the description of the undecipherable drawings as belonging to a chef. The most important point, over all the foregoing, is that the goods under the mark in the reported decisions are "printed matters, newspapers, periodical public instructions and teaching materials etc." and the Registrar as well as the Board of Trade found that the said unused mark if used on printed matters relating to cookery, will be highly descriptive since the mark will a convey a direct reference, pointing the goods are of interest to cooks or are about cookery. The Registrar as well as the Board of Trade further held that while the mark would be descriptive, if the printed matter in relates to cookery, it would be deceptive if the printed matter is not concerned with cookery. In either case the mark was found to be objectionable, not qualifying for registration under section 9. This sort of objection is not even conceived against the Applicants' mark in our case. Even if it is considered that the head device in Applicants' mark is that of a chef, it can not be deemed to be descriptive towards goods like biscuits and confectionery--which are not ordinarily cooked by chefs in a kitchen. "Chef" actually is a fresh word which is the same as "chef' in English. However, in common parlance its use has become more common to mean a "head cook" or merely a cook in a large establishment like hotel, restaurant or clubs Goods under Applicants' mark are not the ordinary or common it of kitchen cooking and hence in my opinion the device of a chef head cannot be deemed to be descriptive of the goods in question. Moreover the head device under Applicants' mark has also become distinctive through a very long factual user and the prior registrations of identical mark also operate as a circumstance under Section 9(5) and as long as those registrations subsist on the Register, the distinctiveness of Applicants' mark cannot be impugned. Thus the Opponent's objections appear to be totally ill conceived. I need not elaborately discuss the other two decisions cited by the Opponent, Shri Krishnan, those reported in 1958 RPC 493 and 1966 RPC 527, as they have no application to the fact of this case, because in the instant case, as I already observed, there is a distinctive device of a human head which also seems to have become imprinted on the public mind through long factual user. I accordingly overrule all the objections of the Opponent under Section 9.
13. Now passing to the nest objection under Section 11, it is not elaborated by Opponent as to how the impugned mark offends Section 11. I find that the Applicants' mark is neither descriptive nor even deceptive and none of the clauses of Section 11 appear to be attracted against Applicants' mark. I accordingly overrule the Opponent's objection under Section 11 also.
14. I further overrule Opponent's pleas under Section 18(1), as Applicants proved their proprietorship to the mark both the adoption as well as user. They are already the registered proprietors of identical marks on the Register. In respect of all these marks, Applicants already filed requests on TM : 24 to bring on the Register some changes in the partnership. Ultimately Applicants' business has been converted into that of a private limited company under the name Kwality Biscuits Private Limited. This company has been brought on the Register as the latest proprietor. Applicants filed a request by an interlocutory petition in these proceedings also to bring this company as the present proprietor, in conformity with the state of Register, and hence I allow the said petition also.
15. In view of all my above findings there is no just or valid ground to invoke my discretion towards a refusal of Applicants' mark under Section 18(4). Accordingly the Opposition fails on all the grounds.
16. Now stands the last and an important point concerning the locus standi of Opponent to file the present opposition proceedings. In para 7 of the counter-statement, the Applicants allege that the Opposition is baseless, malicious and without substance and that Opponent has not cause of action. Though this plea is not further elaborated in Applicants' evidence, Applicants' counsel sought Controller General's directions by reiterating his objection to the locus standi of Opponent through his letter dated 5th September 1982. The relevant portions of the letter are as follows:--
"According to section 21(1) of the Act, no doubt any person may file an opposition. However, in this connection, I beg to submit Mr. S.V. Krishnan is a Retired Assistant Registrar of Trade Marks, and Class I Officer of the Government. He is also drawing pension from the Government of India. If the meaning of any person can be construed too liberally, even a presently working employee in the Trade Marks Registry--either a clerk or any Officer, can file the notice of opposition which does not seem to be the object of Rule makers, because if that is allowed, then there are very goods chances for leaking out the secrets of the applicants or the Opponents and thereby the public may loose confidence with the Trade Marks Registry.
17. I humbly request the Controller General of Patents, Designs and Trade Marks, to please give his directions in this particular matter, and order refusal of such opposition set up an unhealthy practice and are usually frivolous.
18. My clients are big and respectable business people and they do not wish to file application for registration unnecessarily and on the other hand the Opposition is frivolous..........."
19. The objection is sought to be met by the Opponent in his letter dated 1-10-1982 and a material portion of it reads as follows:
"It is a matter for Government to decide whether retired officials of the Trade Marks Registry should not be allowed to practise in the field of trade marks and they should be required to subsist only on their pensions. Other retired officials of the Registry besides me are engaged in such practice. No objection of such a kind was raised when I applied for registration as a Trade Marks Agent. Applicants' Agent himself did not raise any such objection to my locus standi to file the opposition either in the counter-statement or any other stage of the opposition proceedings. The obvious objections to the institution of proceedings under the Act by serving officials of the Registry are, it is clear, in-applicable in the case of those who have ceased to be in service."
20. Now I shall consider the respective contentions of both sides. The Opponent, it is true, is a retired officer of the Trade Marks Registry, receiving pension from the Central Government and he is presently practicising as a Trade Marks Agent. He filed this Opposition in his own name i.e. in a personal capacity and not as a Trade Marks Agent representing some party. I am unable to agree with what all Shri Krishnan wrote, since Shri Krishnan does not plead any other interest except as a Trade Marks Agent, to prefer the present opposition. It sounds inaccurate to describe the filing of opposition in Shri Krishnan's personal capacity as his "practice" as a Trade Marks Agent. By filing an opposition in his own name, he is litigating personally and is not practicising as an Agent because the very words "Trade Marks Agent"--mean an Agent for others in Trade Marks matters. Practice as a Trade Marks Agent can only mean the filing or defending of application, oppositions or other proceedings on behalf of other parties and not in the Agent's own name or in his own personal capacity. I again fail to understand how by filing an opposition in his personal capacity, Opponent earns any income. On the other hand, he incurs the costs of litigation. There appears to be a considerable force in the Applicants' counsel's plea that if a retired officer of the Registry could file an opposition under the definition of "any person" within the meaning of Section 21(1), then even a present employee of the Registry can, by an extension of the logic, be included in the expression "any person" under Section 21(1), and to allow a present employee of the Registry to file oppositions in his personal capacity would be fraught with danger and mischief. In my considered opinion, all the employees of the Registry, whether present or retired, are atleast morally bound to desist from fil
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ing oppositions in their purely personal capacity, unless they can assert or make out their own genuine commercial or trade interests. It is true that several retired officers of Trade Marks Registry practice as Trade Marks Agents after retirement but I have not heard of any retired officer filing an opposition in his own personal capacity, as is done in this case. Actually an indiscriminate filing of Oppositions under the shelter of the expression "any person" under Act is discouraged and in Kerly's Law of Trade Marks (1972 edition) at page 661 it is clearly mentioned under the caption "who may Oppose":-- "There is nothing in Section 18(2) (which provides for opposition to registration) corresponding to the requirement in Section 32. That an applicant for rectification of the Register be a person "aggrieved" by the entry concerned; nor do the rules (or the form on which the Opponent enters a statement of his case) require an opponent to assert in interest. It must, however, be considered open to question whether opposition is open to a mere busybody, or to one solely concerned to annoy the applicant. In this case too, Applicants had indeed faced several opposition already and they obtained registrations of their marks, identical to the mark under the present application, after hard trials and the present opposition is one more exercise, for the Applicants to re-establish the registrability of their mark, even when identical marks of theirs are subsisting on the Register. It would be naive to assert that the present opposition is filed purely in public interest of for the purity of Register, without seeking in the least to rectify the several identical marks of Applicants already standing on the Register and the Opponent herein cannot obviously move for rectifications as he will not be a "person aggrieved", under Section 56. I wish to close this topic with the above observations. I may add, however, that I am disallowing this opposition purely on the merits and not on the question of locus standi of the opponent, over which I passed my observations incidentally as the point is interesting and has been raised for the first time before the Registry. 21. The Opposition herein fails but I cannot, however, pass final orders on the application since there are some more oppositions to the same. 22. In the result Opposition No. MAS-1389 is disallowed and it is hereby ordered that the Opponent shall pay Rs. 95/- (Rupees ninety five only) towards costs of these proceedings to the Applicants.