TRADE MARKS REGISTRY, DELHI
M.R. Bhalerao, DRTM:
On 17th May, 1975, Rana Bikram Singh, trading as United Industries, 224 Dada Colony, Industrial Area, Jullundur – 144004 (hereinafter referred to as 'the Applicant') made an application, being No. 305549, to register a trade mark consisting of letters 'UI, in an oval, in respect of the specification of goods which on subsequent amendment reads as 'pipe fittings made of Common metal included in Class 6'. An objection on the ground of conflict with Registered Trade Mark No. 257375B and the marks in pending Application Nos. 228506 and 299408. On receipt of evidence, the application was advertised before acceptance in the Trade Marks Journal No. 653 dated 16th August, 1976 at page 461.
On 16th October, 1976, Unique Steel Engineering Works (Regd.) of Industrial Area, Jullundar (hereinafter referred to as the Opponents) lodged a Notice of Opposition, under Section 21 (1), to the registration of the aforesaid trade mark on the following grounds: -
1. That the mark applied for is deceptively similar to the trade mark 'U' in triangle registered under No. 257375B in Class 6 in respect of 'pipe fittings made of Cast Iron, in the Opponents' name and therefore the registration is prohibited under Section 12(1) of the Act.
2. That having regard to popularity and reputation acquired by the Opponents' mark due to its long and extensive use, the use of the Applicant's mark would be likely to cause confusion and deception.
3. That the adoption of the mark applied for is dishonest.
4. That the Applicant had originally filed Application No. 294350; but, the same was abandoned due to the issuance of a notice regarding conflict by the Registry to the Opponents.
5. That registration of the mark would be contrary to the provisions of Sections 11 and 12(1) of the Act.
The Counterstatement filed by the Applicant on 7th February, 1977 is one of denial of what is contained in the Notice of opposition. The applicant has stated that he is entitled to registration under Section 12(3) of the Act.
The evidence in support of opposition consists of two affidavits by S/Shri Bhim Sain and Ram Sarup. The evidence in support of application consists of one affidavit by Rana Bikram Singh. The evidence in reply consists of one affidavit dated 21.6.1978 by Rama Sarup. By allowing the Applicant's interlocutory petition filed on 21.4.1981, the order dated 28.7.1979 in Case No. 300/1 of 1977 issued by the Court of S. Dalbara Singh, PCS, Judicial Magistrate, Ist Class Jullundar, is considered as further evidence under Rule 56. The Opponents did not file evidence in rebuttal. Eventually, the matter came up before me for a final hearing on 9th September, 1981. None appeared on behalf of the Opponents. Shri V. P. Ghraiya, Advocate appeared on behalf of the Applicant.
The Opponents' objection under Section 12(1) is based on their Registered Trade Mark No. 257375B.
Particulars thereof are as under: -
Trade Mark GoodsUser claimed
'U' in triangle Pipe fittings made of Cast iron 1962
The goods for which registration is sought are 'Pipe fittings made of common metal included in Class 6' The Opponents' registration is in respect of 'Pipe fittings made of Cast iron.' The goods of the rival parties are either the same or of the same description. The main question which is required to be considered for the purpose of Section 12(1) is whether the Applicants' mark is deceptively similar to the Opponents' mark. The Opponents' Registered Trade Mark No. 257475B consists of letter 'U' in a triangle. The mark applied for consists of the letters 'UI' in an oval. In the instant case, the following rules of comparison of marks are relevant: -
Device Marks: -
'The question of resemblance and the likelihood of deception are to be considered by reference not only to the whole mark, but also to its distinguishing or essential features, if any,' and that the mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection'. (Saville Perfumery Ltd. V. June Perfect Ltd. 58 R. P. C. 147 at p. 162).
Word Marks: -
'You must take the two words. You must Judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of these trade mark is used in a normal way as a trade mark for the goods of the respective owners of the marks. If considering all these circumstances, you come to the conclusion that there will be a confusion-that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods then you may refuse the registration, or rather you must refuse the registration in that case.' (Pianotist Co. Ld.'s Appln. 23 R. P. C. 774 at p. 777)
Imperfect Recollection: -
'It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter-by-letter and syllable-by-syllable, pronounced with the clarity to be expected from a teacher of elocution. The Court must be careful to make allowance for imperfect recollection and the effect of pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants.' (Aritoc case 60 R. P. C. 87 at p. 108, 62 R. P. C. 65 at pp. 72-73).
Surrounding Circumstances: -
'In considering the question whether this result is probable to occur in the course of its use in the trade, it seems to me you have a right to look at the circumstances of the case. I think you have to look, amongst other things, at the question whether or not blurring may possibly take place, and if so, whether it is likely to take place. I think you may consider the question whether, having regards to the special class of articles on which the impression is to be made, if it is an impression that has to be made on articles there is likely to be such indistinctness produced as is calculated to deceive. It seems to me that you may regard though I do not think any of these things are definitions to be found in the Act of Parliament – I think you may in my cases be obliged to regard the size of the article upon which the mark is intended to be made or fixed, the material-the ground-work, so to speak upon which it is to be placed. It seems to me that it would not be wrong to consider the probability if it was an impression which had to be made on a hard substance, of some letters being more likely to take with distinctness than others, or parts of the design being likely to come out with more perfection, while parts would remain more imperfectly represented. All these things seem to be the kind of considerations which a man of common sense and business, not as a matter of law, but as a matter of inference of fact, would take into account if he were asking himself the question-is one trade mark so like another as to be calculated, in the probable course of its use in trade to deceive'. (Lyndon's Trade Mark 3 R. P. C. 102 at p. 106).
Letters and Numerals: -
'The General principles of comparison of letters and numerals are the same as for other marks. Both phonetic and visual similarity must be considered.' (Narayanan on Trade Marks and Passing Off, Second edition para 691 page 236).
As already stated the Opponents' mark consists of letter 'U' in a triangle. The Applicant's mark consists of two letters 'UI' in an oval. The essential feature of the competing marks consists of letter 'U' and letter 'UI' in both the marks. The device of a triangle and device of an oval in the competing marks can be considered as a subordinate feature and they appear more or less in the form of a decoration. When these marks are embossed on metallic surface there is every likelihood that some blurring may possibly take place. Bearing in mind the above principles of comparison of marks and considering the essential feature of the competing marks and the surrounding circumstances that the marks may be embossed or metallic goods and considering the class of purchasers of these goods, in my view, the Applicant's mark is deceptively similar to the opponents' marks. At the hearing the learned counsel for the Applicant pointed out that some witnesses in Case 300/1 of 1977 in the Court of Shri S. Dalbara Singh, PCS, Judicial Magistrate, Ist Class, Jullundur have stated that they would not be confused by the competing marks. Whether people would be confused is one of the questions for decision by the Registrar or the Court (Spiller Ld.'s Appln. 69 R.P.C. 327 at p. 334 and Ciba Ltd. V. M. Ramalingama AIR 1958 Born 56 at p.59)
Some of the reported cases, wherein some letter marks were considered as similar, are as follows:
'A. E. C. or 'E. C.' held similar to 'G.E.C.', the former used in respect of lamp holders and the latter in respect of apparatus devices and fittings for use with electric lights and electric light installation – The General Electric Co. of India (P) Ld. Vs Pyara Singh, A. I. R. 1974 (P. & H.) 14.
'C. B. & Co.' and 'C. B. D.' have been held similar to the letters 'C. B.' inside a star device, goods being corsets – Charles Bayer Vs. Connell Bros. & Co., 16 R.P.C. 157.
'Letters 'J.B.D.' and 'G.B.D.' were held similar, both used on tobacco pipes-Merechal and Ruchon V. M. Colgan, 18 R.P.C. 262.'
The goods of the rival parties are either the same or of the same description. The Applicants' mark is deceptively similar to the Opponents' mark. The registration of the mark applied for is, therefore, prohibited under Section 12(1) of the Act.
From the Opponents' objection it is seen that they have raised the objection under Section 11(a) on the ground of alleged similarity of the Applicant's mark to the Opponents' mark and the prior use of the Opponents' mark as on the date of the application. While examining the Opponents' objection under Section 12(1), it was seen that the goods of the rival parties are either the same or of the same description and that the Applicant's mark is deceptively similar to the Opponents' mark. For the purpose of Section 11(a) the main question which is required to be considered is whether the Opponents have established vested use of their trade mark 'U' in respect of 'Pipe fittings' made of Cast Iron' as on the date of the Application. In paragraph 2 of his affidavit Ram Sarup, a partner in the Opponent firm, has deposed that the Opponents' trade mark 'U' in respect of 'Pipe fittings' was in use since 1962. In paragraph 9 f the same affidavit, Ram Sarup has given yearwise advertisement expenses for the years 1972-73 to 1974-75. In paragraph 10, the same deponent has furnished yearwise sales figures for the period 1970-71 to 1974-75. In support of the claim of the Opponents' prior use, some documentary evidence in the form of price list, advertisements and caution notice, letters, post-cards and orders are enclosed. On the basis of the Opponents' entire evidence it can be safely concluded that the Opponents have discharged the preliminary onus of establishing prior use of the trade mark 'U' in respect of their 'Pipe fittings' as on the date of the application. Having regard to the prior use of the Opponents' mark, the use of the deceptively similar mark by the Applicant on the same goods would be likely to cause confusion and deception. Hence, the registration of the mark applied for is prohibited under Section 11(a) of the Act.
To enable the Applicant to claim benefit of Section 12(3), the Applicant has to establish that the adoption of the mark applied for is honest. The Opponents' registered their trade mark 'U' in a triangle on 12.6.1969 and claimed user thereof since the year 1962. In support of their claim of prior use of the mark, the Opponents have filed their evidence in the form of Ram Sarup's affidavit. Both Parties belong to Jullundur. Both parties deal in the same trade. On the basis of the prior registration and use by the Opponents, as established by eviden
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ce, it is impossible to believe that the Applicant was not aware of the Opponent's mark before adopting a deceptively similar trade mark. The explanation offered by the Applicant that he coined the trade mark from his trading style cannot be considered as satisfactory as the trading style itself has been devised much subsequent to the use of the Opponents mark. On the basis of the facts of the case and the evidence led by the parties, the adoption of the Applicant's mark cannot be considered as honest. The Applicant has claimed user since 14.5.1972. Subsequently, the Applicant filed a request on form TM-16 to amend his user to read as 'Since the year 1971'. From the Applicant's evidence, it is seen that the earliest order containing his trade mark is of 14.6.1972. According to the Applicant's evidence, there is no justification to allow the said request. As already seen, the Applicant's user cannot be considered as honest. If the user in its inception is tainted, it would be difficult in most cases to purify it subsequently (Parkington & Coy. Ld.'s Appln. 63 R. P. C. 171) at pp. 181-182. This is, therefore, not a fit case to be permitted under Section 12(3) of the Act. For the foregoing reasons, the said Opposition No. DEL-2360 is allowed and the Application No. 305549 is refused. The Applicant should pay Rs. 92/- (Rupees Ninety Two only to the Opponents as costs of these proceedings.