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



Sareen Sports Industries, Meerut (U.P.) v/s Stuart Surridge & Co. Ltd., Witham, Essex, England.


Company & Directors' Information:- V AND S INDUSTRIES PRIVATE LIMITED [Active] CIN = U74899DL1990PTC039251

Company & Directors' Information:- MEERUT INDUSTRIES LIMITED [Strike Off] CIN = U17115UP1997PLC022625

Company & Directors' Information:- AND SPORTS PRIVATE LIMITED [Active] CIN = U74110DL2014PTC272251

Company & Directors' Information:- E S INDUSTRIES PRIVATE LIMITED [Strike Off] CIN = U74999TN2012PTC086119

Company & Directors' Information:- S P INDUSTRIES PVT LTD [Strike Off] CIN = U20232AS1980PTC001853

Company & Directors' Information:- ESSEX (INDIA) PRIVATE LIMITED [Strike Off] CIN = U36911RJ1997PTC013764

Company & Directors' Information:- K INDUSTRIES PVT LTD [Strike Off] CIN = U99999KA1946PTC000938

Company & Directors' Information:- C. L. INDUSTRIES PRIVATE LIMITED [Active] CIN = U27109RJ2014PTC045306

Company & Directors' Information:- I N D SPORTS PRIVATE LIMITED [Strike Off] CIN = U92412TN2011PTC083708

Company & Directors' Information:- SPORTS PRIVATE LIMITED [Active] CIN = U27101UP1952PTC002419

Company & Directors' Information:- INDUSTRIES INDIA PRIVATE LIMITED [Strike Off] CIN = U00349KA1947PTC000501

Company & Directors' Information:- J INDUSTRIES PVT LTD [Strike Off] CIN = U18101OR1960PTC000388

    No:................

    Decided On, 12 April 1994

    At, Registrar of Trade Marks Kolkata

    By, THE HONOURABLE MR. V. RAVI
    By, ARTM

    For the Opponents: Romesh Chadha, Advocate Of M/S.Romesh Chadha & Co., For the Applicants:C.K. Bakshi, Advocate Instructed By M/S. Depenning & Depenning



Judgment Text

V. Ravi, ARTM:

1. On 21.10.1981, M/s. Stuart Surridge & Co. Ltd., P.O. Box 1, Witham, Essex, England (herein called 'The Applicants') made an application for registration of a composite lable mark consisting predominently of the letters `SS' alongwith the words 'STUART SURRIDGE' with the device of a man riding on horse on the top left and right hand corner below which the word 'WELLINGTON' is depicted. The said application was made in class 28 in respect of cricket bats. The use claimed (vide their amended TM-16 dated 15.10.1984) was a 'proposed to be used'. The application was initially objected to under section 9 of the Act. However, after a hearing in the matter the application was ordered to be advertised as accepted in Part B of the Registrar subject to disclaimer of the words 'STUART', 'SURRIDGE', 'WITHAM', 'ENGLAD', letters `SS' and the expressions and numerals 'WELLINGTON' and 'PATENT REINFORCED TOE No. 19386/28'. Later on it was advertised in Trade Marks Journal No. 979 at page 1529 dated 16.3.1990.

2. On 24.4.1990, M/s. Sareen Sports Industries, Sports Colony, Victoria Park, Meerut-250 001, Uttar Pradesh (herein called 'the opponents') filed a Notice of Opposition to oppose registration of the trade mark mentioned above. The main grounds for opposing the said application are as under :-

The opponents are in the business of manufacturing and export of sport articles, games and playthings.

The opponents claim to be the true and lawful owners and proprietors of the letter mark `SS' which is claimed to have been adopted from the first letters of their trading style 'Sareen Sports Industries'.

The said mark of the opponents as much is claimed to be used since 1.8.1971 and their products are wellknown as `SS' brand, and therefore, distinctive of their goods.

Valuable goodwill and reputation have accepted to the opponents' trade marks.

The opponents have also filed an application under No. 459091 in class 28 on 25.8.1986 which is pending before the Registrar.

The impugned mark will cause embarrasment to the opponents' business and will be mistaken for their goods which will be passed-off as that of the opponents.

The rival goods are the same or goods of the same description.

There will be confusion as to the trade source if the impugned application is allowed to proceed to registration.

The impugned mark is no distinctive of the applicants' goods.

The use of the impugned mark will lead to various forms of confusion.

There is no justification for adoption of the impugned mark by the Applicants.

The applicants are fully aware of the use and reputation of the opponents' mark as much.

The applicants cannot claim to be the proprietors of the impugned mark.

The registration of the impugned mark is neither in public interest nor in the interest of the purity of the Register.

The registration of the impugned mark is prohibited under Sections 9, 11(a), 11(e) and 18(1).

The foregoing constitutes sufficient grounds for the exercise of the Registrar's discretion in the opponents' favour.

It is therefore prayed by the opponents that the subject application be refused registration and the opposition be allowed with cost.

3. In their counter-statement, the Applicants state that the impugned mark `SS' was originally conceived and adopted by them in England. The said mark is in use in England since 1968. However, due to severe import restriction the goods are not available in India. Even so the Applicants have supplied their renowned cricket bats bearing the impugned mark `SS' to all Test playing teams throughout the world. The Applicants state that they are lawful and rightful owner of the composite label device under the present application. The rest of the counter-statement is a mere denial of all the material statements which are inconsistent with or contrary to the Applicants' claim for registration.

4. The evidence in support of the opposition is an affidavit of Narendra Kumar Sareen, partner of the opponents' company dated 7.4.1992. Accompanying the said affidavit are a large number of invoices ; literatures and newspaper cuttings to support the opponents' contention and to prove use and reputation of the opponents' trade mark.

5. The evidence in support of the Application is an affidavit of John Swannack Surridge, Director of the Applicants' company dated 2.3.1993. Accompanying the said affidavit are copies of certificate of registration of U.K. Sri Lanka and U.S.A. as also catalogues, literature and publicity materials. There is also a supplementary affidavit which was filed by the abovementioned John Swannack Surridge dated 2.3.1993 which elaborate that the front and rear sides of two cricket bats (photo attached) which are autographed bats of Ken Barrington and Peter May famed Test Batsman who are stated to have such bats in 1966 and 1967 respectively. The reply evidence under Rule 55 is also an affidavit of Narendra Kumar Sareen dated 10.6.1993.

6. The matter was set down for hearing and came up before me on 15.11.1993 when Shri Romesh Chadha, Advocate of M/s. Romesh Chadha & Co. appeared on behalf of the opponents and Shri C.R. Bakshi, Advocate instructed by M/s. DePenning & DePenning, appeared on behalf of the Applicants.

7. I shall next summarise the oral arguments advanced by the learned counsel at the time of hearings. According to Shri Chadha, their trade marks have been registered in Bangladesh and they have taken legal action against other persons using the same or similar mark. In fact, the wellknown cricketer Vinod Kambli is using the bat bearing the opponents' trade mark. The prominent and leading feature of the impugned trade mark is the letter `SS'. According to the opponents the prominent feature of a trade mark cannot be disclaimed. The authority for this is based on 1948 RPC 238. Further, the mark propounded for registration is only proposed to be used. Moreover, the disclaimer does not go into the market. It was further submitted that `the mark is open to objection under section 9 as the leading feature is a letter mark. On the other hand, it was alleged by the Applicants that there has been some previous disputes between the opponents and the applicants and the opponents have given an undertaking not to use the word 'JUMBO' but are now contesting a disclaimable feature under the present opposition. Therefore, the Applicants are pointing out the impropriety and dishonest conduct of the opponents. In these proceedings Shri Bakshi relied on Silverking case in support on this point. It is also submitted that the opponents had knowledge of the Applicants' company's existence in U.K. Besides, the applicants are using the letters `SS' as a composite mark. It is alleged by the applicants that the opponents' entire conduct in these proceedings is open to suspicion because in the beginning the opponents have copied another trade mark of the applicants 'SURRIDGE' and adopted 'SUNRIDGE' as their brand name and now they are in turn attacking at a disclaimable feature of the Applicants' label i.e. letter mark `SS'. It was submitted by the Applicants that the mark has to be considered as a whole. Further, the Applicants have also relied on para 16.05 of P. Narayanan's book where – the circumstances of original adoption of a mark has a crucial hearing on the fate of an application in opposition proceedings. It was stressed that the opponents herein lack commercially honey which is the essence of intellectual property proceedings. It was also argued that the opponents are trying to block free trade in India and are denying the Applicants' benefit of registration of their own mark in India. In their rebuttal it was argued by the opponents that admittedly the applicants' mark was proposed to be used on the date of filing of the said application and in fact till the date of hearing there is no evidence of use of the Applicants' mark. Besides, on the basis of registration in U.K., the applicants cannot claim registration in India. Further, it was also submitted that the `Silverking' case will not apply to these proceedings as the opponents have as such prior adoption and use of the letter mark `SS' and therefore they have better right. The opponents have relied on paras 15.08, 15.09 and 15.79 of P. Narayanan's book on trade m ark to support their arguments.

8. I shall firstly take up the opponents' objection under Section 9 of the Act. The impugned application has been advertised as accepted in Part B of the Register. The mark on the date of application was proposed to be used. I shall, therefore, consider whether the mark applied for is capable of distinguishing the applicants' goods. In other words, it is to be decided on examination whether the label before me is shown to possess the capacity of distinguishing the goods to which it is applied? Letters per se are considered prima facie not capable of distinguishing but it will be highly inappropriate to Judge the application only on the basis of letters `SS'. It has been repeatedly laid down in a number of cases that the mark has to be considered as a whole and even though the prominent feature of the present label is the letter `SS' nevertheless the total visual effect of the whole label is so striking that it override the significance of non-distinctive feature in the mark however, prominent I do not think that any other trader would claim a proprietory right firstly on the letters `SS'; secondly on 'STUART SURRIDGE'; thirdly on the device of a warrior riding on horse and lastly other descriptive feature in one label like 'WELLINGTON', 'WITHAM', 'ENGLAND', etc. all at the same time in one label. The probability of another trader coming forward with such a label is next to Nil. Thus, even though the mark was only proposed to be used I am satisfied that the mark applied for is not incapable of subsequently becoming distinctive. In any event a combination of so many features in a composite label has to be regarded inherently capable of distinguishing, and therefore, I take the view that the mark is registerable in Part B without evidence of capacity to distinguish. In the circumstances, I rule that the impugned application qualifies for registration under Section 9(4) of the Act. I would however qualify this ruling with caveat about which I would refer to later in these proceedings.

9. I shall next take up the objection under section 12(1) of the Act relied on by the opponents. It appears that initially no objection under section 12(1) was raised on the date of filing of the notice of Opposition but subsequently between the filing of Notice of Opposition i.e. 24.4.1990 and before the date of hearing of these proceedings the opponents' trade mark letter `SS' under No. 455091 in class 28 is now a registered trade mark with effect from 25.8.1986. On perusal of section 12(1) I find that there is no bar for an opponent to raise an objection under that section so long as it is registered prior to the date of hearing. However, in these proceedings the opponents have not filed any application by way of an interlocutory petition to amend the Notice of Opposition by incorporating section 12(1) also as a ground for objection to this application. Merely bringing out the factum of registration at the reply evidence stage will not by itself afford an opportunity to the opponents to agitate an objection under section 12(1). I am in agreement with the learned counsel of the Applicants that serious procedural irregularities like going outside the pleading should not be permitted by this Tribunal, and therefore, I am not in a position to entertain the opponents' objection under section 12(1) of the Act without giving due opportunities to the other side. In these circumstances, I am not required to go into the question of section 12(1) objection in these proceedings.

10. I shall next examine the objection under section 11(a) of the Act. Section 11(a) states that the mark the use of which would be likely to deceive or cause confusion shall not be registered as a trade mark. Under the section the question is one of public interest and not merely one of competing mark and right interest of respective owners. Under Section 11, the question at issue is determined by reference to the opponents' right founded on actual user and reputation of his mark and by postulating notional user of the applicants' mark in respect of any of goods for which registration is sought. What the Registrar has to see is whether looking at the circumstances of the case a particular trade mark is likely to deceive or cause confusion and the onus is heavily on the opponent to show that his goods are known by the name alleged. Once that onus is discharged it is for the applicant to satisfy the Registrar that there is no reasonable probability of confusion. In these proceedings there is no dispute that the opponents are using the letter mark `SS' as a house mark as also a trade mark since 1971. It was however vigorously argued by the Applicants that the use of the mark by opponents themselves is totally tainted. It is a well settled proposition of law that if either the original adoption or the subsequent user of the mark is proved to be dishonest no amount of user will help the alleged owner. It is true that the opponents in these proceedings have by cogent documentary evidence established the use of the trade mark bearing the letters `SS' in the market in India since 1971. There is no dispute on that account. However, there are also evidence to show that the Applicants herein had originally conceived and adopted the letters `SS' as a trade mark in respect of cricket bats even though the same was done by them in England. The Applicants have relied on the use of the cricket bat by Ken Barrington and Peter May both well known English Test Cricketers bearing the trade mark `SS' way back in the sixties. In fact this has been put down in the affidavit itself by the Applicants. This aspect cannot be lost sight of. The question then arises who adopted first the letter `SS'?

On the material before me I have no hesitation in concluding that it is the Applicants who first devised, originated and coined the letters `SS'. From the record it also appears that some sort of undertaking was given by the opponents to the Applicants in respect of some other features bearing the legend 'JUMBO'. So the inference I have to draw is that the opponents were very much aware of the Applicants' trade mark when they decided to adopt the same letters `SS' as a trade mark. Now they are trying to justify the use and adoption by claiming that it is devised and adopted from the first letters of their trading style 'Sareen Sport Industries' (one wonders why not S.S.I. and any conveniently limit it to S.S. only). The fact that the Applicants have not come to India for the last 20 years ; the fact that the famous cricketer Vinod Kambli is using the cricket bat under the opponents' trade mark ; the fact that Applicants' mark I only proposed to be used in India. All these cannot erase the basic question who has copied whose mark? I have every reason to believe that in this particular case it is the opponent who fliched the Applicants' mark and not the other way round. The essence of intellectual property law is based on commercial honesty and that I find is wholly lacking in this case. Going by the logic of opponents' arguments any reputed trade mark of any country in respect of any product can be easily usruped without the slightest scruples by advancing

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dubious reasons for adopting a famous trade mark. It cannot be denied that the opponents were not aware of the reputation and fame of the Applicants' brand name in England in respect of cricket bat. Against this background it will be totally meaningless to give the benefit of section 11(a) to the opponents. Such confusion as are likely to arise by the use of the Applicants of their trade mark is of the opponents' own making and beyond the purview of protection in a court of law. I, therefore, dismiss the opponents' objection under section 11(a) as not well founded. 11. For the foregoing reasons, I uphold the Applicants' claim of being the lawful owners and true proprietors of the trade mark as applied for subject, however, to the Applicants' agreeing to reduce the size of the letters `SS' so as to be in the same proportion as the other features in the label, namely 'STUART SURRIDGE', the device of warrior riding on horse and the word 'WELLINGTON', 'WITHAM' and 'ENGLAND'. This notification of the mark is necessary, as the opponents have rightly argued that the prominent feature in a label cannot be disclaimed as held in 1948 RPC page 238. In any view once the size of the letters `SS' is uniformly proportion to be the other features in the label, the application then can qualify for registration in Part B of the Register as applied for. 12. In the result, the Opposition No. CAL-2209 is dismissed and Application No. 382244B in class 28 shall proceed to registration after receipt of TM-16 accompanied by appropriate fees and 16 fresh labels to be deposited in the Registry. The opponents are directed to pay a sum of Rs. 120/- (Rupee One Hundred Twenty only to the Applicants as costs of these proceedings.
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05-12-2019 M/s. Bhuwalka Steel Industries Ltd & Another Versus Union of India & Others Supreme Court of India
03-12-2019 P.G. Amirthalingam, Represented by his Power Agent V. Krishnasamy Versus The Government of Tamil Nadu, Rep. by its Secretary, Industries Department, Chennai & Others High Court of Judicature at Madras
03-12-2019 G. Jaisankar Srinivasan Versus The Tamil Nadu Small Industries, Development Corporation, Rep. by its Chairman and Managing Director, Chennai & Others High Court of Judicature at Madras
03-12-2019 Punjab Agro Industries Corporation Limited Versus The Regional Provident Fund Commissioner & Others High Court of Punjab and Haryana
28-11-2019 M/s Deep Industries Limited Versus Oil And Natural Gas Corporation Limited & Another Supreme Court of India
27-11-2019 R. Murugesan Versus M/s. Pidilite Industries Ltd., Rep. by its Authorised Nominee, R. Govindan High Court of Judicature at Madras
27-11-2019 Mettur Minerals, Represented by its Partner, Madhappan Versus The Secretary, Industries Department, Chennai & Others High Court of Judicature at Madras
27-11-2019 M/s. Refex Industries Pvt. Ltd., Rep. by its Production Manager, A. Ravi Versus The Chief Commissioner of Customs, Office of the Chief Commissioner of Customs, Chennai & Another High Court of Judicature at Madras
20-11-2019 The State of Tamil Nadu, Rep. by the Secretary to Government, Industries Department, Chennai Versus Dalmia Cements (Bharath) Ltd., Dalmiapuram, Tiruchirapalli & Another High Court of Judicature at Madras
19-11-2019 Miss Miriam Mizpah Orchid, Minor Represented by her father & natural guardian B. Vasanthakumar, Thanjavur Versus Union of India, Represented by its the Secretary to Govt. of India, Ministry of Youth Affairs & Sports, (Department of Sports), New Delhi & Others High Court of Judicature at Madras
18-11-2019 Texel Industries, Rep. by its Sole Proprietrix, Chennai Versus M/s. Export Credit Guarantee Corporation of India Limited, Chennai Exporters Branch, Chennai High Court of Judicature at Madras


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