Dori Lall Gupta v. Dharampal Premchand P. Ltd. — 1978 DIGILAW 420 (CAL)

JUDGMENT 1. THIS is an appeal from a decision by the deputy registrar of the Trade Marks passed on 1st of September, 1975. By the sad decision the Deputy Registrar has refused the application of the appellant for registration. It appears that on the 12th of november, 1970 Dori Lall Gupta trading as Bengal Tobacco Chemical Industry, calcutta made an application to register in Part 'a' of the Register of Trade Marks, trade mark consisting of a label containing the bust portrait of a man and the words "lal EABA KESHARI zarda" in Bengali characters in class 34 in respect of specification of goods subsequently amended to read as "zarda (chewing tobacco) for sale in the States of West Bengal, Assam, Madhya Praaiesh, orissa and Bihar. 2. THE registration of the mark was objected to on the ground of conflict with certain marks. After proper advertisement opposition was filed by one Dharam Pal prem Chand Private Ltd. of Delhi. It was alleged by the opponent which is the respondent herein that the opponent is the leading manufacturer of chewing tobacco and has been using the trade mark "baba BRAND" on the product ever since the year 1958, that the opponent was holding registration for the trade mark "baba Brand" which had acquired and valuable goodwill and reputation by reason of its extensive sale and publicity thereof. If was "further alleged that the appellant's mark which was sought registration was deceptively similar to the opponent's aforesaid trade mark and the registration of the mark would contravene the provisions of sections 9, 11 (a), 11 (e), 12 (1) and 18 (1) of the Act. On the 29th May, 1973 the appellant filed his counter statement denying the allegations made in the notice of opposition and further asserted the claim of the appellant to registration in any event under section 12 (3) of the Trade and Merchandise Marks Act, 1958. 3. THE evidence in support of the opposition consisted of an affidavit of one S. P. Gupta, a Director of the opponent company. The evidence in support of the application of the appellant consisted of an affidavit by the appellant himself supported by several affidavits of traders. The respondent filed an affidavit-in-reply. 3. THE evidence in support of the opposition consisted of an affidavit of one S. P. Gupta, a Director of the opponent company. The evidence in support of the application of the appellant consisted of an affidavit by the appellant himself supported by several affidavits of traders. The respondent filed an affidavit-in-reply. The matter was heard by the Deputy Registrar and before him the opponent confined its objections to sections 11 (a), 12 (1) and 12 (3) of the trade and Merchandise Marks Act, 1958. The Registrar on an analysis of the evidence and the materials on record came to the conclusion that the objection of the opponent under section 12 (1) was maintainable. The Registrar, further, came to the conclusion that the objection of the respondent under section 11 (a)was also maintainable. The Registrar further held that under section 12 (3) of the Act the appellant was not entitled, to claim registration. He, accordingly, rejected the application of the appellant for registration. Being aggrieved by the aforesaid decision of the Deputy Registrar the appellant has preferred this appeal. 4. BEFORE me several contentions were urged in support of this appeals. It was urged that there was in fact no evidence of any actual confusion by any trader. It was also emphasised that on the other hand, the appellant had filed several affidavits by trailers who had said that the appellant's goods were known by trade mark "lai Baba" and was distinguished as such. It was, further, emphasised in those affidavits, to which my attention was drawn by Counsel for the appellant, that the article with which the appellant was concerned was known as the article bearing the trade mark of "lai Baba". There was no such thing in the market as a goodwill or distinguishing mark of "baba" as such. It was urged that the respondent could not have a monopoly of the expression "baba" as such. It was emphasised that the "baba" chhap device of a saint bearing Registration no. 189640 was registered in favour of one Lalaram Muni Lall Gupta of U. P. and therefore, the respondent could not claim either any monopoly of the expression "baba" or any distinctiveness of the mark "baba" as such. It was emphasised that the "baba" chhap device of a saint bearing Registration no. 189640 was registered in favour of one Lalaram Muni Lall Gupta of U. P. and therefore, the respondent could not claim either any monopoly of the expression "baba" or any distinctiveness of the mark "baba" as such. Counsel for the appellant submitted that the Deputy Registrar was impressed by the large amount of money that the respondent was alleged to have spent in its publicity and advertisement but Counsel urged reasonably that though a small trader, the appellant was, entitled to consideration of this application in accordance with law, which according to him had not been done. He drew my attention to certain decisions which I shall note presently. 5. IT has to be borne in mind that the Deputy Registrar has refused the application under section 11 (a) of the trade and Merchandise Marks Act, 1958 as well as under section 12 (1) of the said Act. I shall consider the appellant's contention under section 12 (3) of the act later. 6. UNDER section 1l (a) of the Act the use of a mark which is likely to deceive of cause confusion is prohibited. Under section 12 (1) a trade mark shall not be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade marl which is already registered in the name of a different proprietor. Reading the two sections, in my opinion, the two marks must be considered in the background] of the surrounding circumstances to determine whether there is firstly, either any resemblance or identity between the two marks and then secondly, whether the one mark is so similar that it causes either confusion or deception or there is a possibility of causing either confusion or deception having regard to the goods or the description of goods for which re registration is there and for which registration is sought. Both the marks might consist of words or both the marks might consist of devices or both the marks might be a combination of words and devices. Both the marks might consist of words or both the marks might consist of devices or both the marks might be a combination of words and devices. One has to compare the one mark with the other in any of the contents as mentioned here and see how far in its essential element not whether there has been any actual confusion, but whether there is any possibility of either a confusion between the two or of deception. This aspect of the matter was considered by a Division Bench of the bombay High Court in the case of james C. and Bros. v. 2v. S. T. Company ltd. reported in AIR 1951 Bombay 147 where the Bombay High Court was dealing with the similar provision under the trade Marks Act, 1940. The Division bench reiterated that the burden of proving that the trade mark which a person seeks to register is not likely to deceive or cause confusion is upon the applicant It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of the Act. In deciding whether a particular trade mark is likely to deceive or cause confusion it is not sufficient merely to compare it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the former trade mark. What is important is to find out, what is the distinguishing or essential feature of the trade mark already registered and what is the main feature or the main idea underlying that trade mark, and if it is found that the trade mark whose registration is sought contains the same distinguishing or essential feature or conveys the same idea, then ordinarily the Registrar is right if he comes to the conclusion that the trade mark should not be registered. 7. THE real question is as to how a purchaser, who must be looked upon as an average man of ordinary intelligence would re-act to a particular trade mark, what association he would form by looking at the trade mark and in what respect he would connect the trade mark with the goods which he would be purchasing. 7. THE real question is as to how a purchaser, who must be looked upon as an average man of ordinary intelligence would re-act to a particular trade mark, what association he would form by looking at the trade mark and in what respect he would connect the trade mark with the goods which he would be purchasing. Chief Justice Chagla who delivered the judgment of the Division bench also observed that the Registrar, in coming to the conclusion whether a trade mark should or should not be registered, exercised the discretion vested in him by statute and the Court in appeal should always be extremely loath to interfere with that discretion. 8. THE aforesaid view of the Division Bench of the, Bombay High Court was affirmed by the Supreme Court in the case of. N. S. T. Co. Ltd. v. James chadwick and Bros. Ltd. reported in AIR 1953 S, C. 357. There the Supreme court observed that on the question as to whether one mark was likely to deceive or cause confusion with another mark, the Registrar has to see whether looking at the circumstance of the case particular trade mark is likely to deceive or to cause confusion. In deciding that the duty is not discharged by arriving at the result by merely comparing it with the trade, mark which is already registered and whose proprietor is offering opposition to the registration of the mark. In the instant case with which i am concerned, the mark consisted of an expression Lal Baba Keshari Zarda and below a symbol of holy man. The marks of which the respondent herein was the registered owner consisted of either of "baba" Brand of chewing tobacco and snuff of "baba" brand on a device of a saint of scented chewing to bacco or scented tobacco products and snuff or 'baba' brand with a device of a saint and bust of a man for chewing to bacco and snuff. 9. THE real question, according to, the. Supreme Court, to decide in such cases is to see as to how a purchaser who must be looked-upon as an average man of ordinary intelligence, would re-act to a particular trade mark, what association he, would form by looking at the trade mark and in what respect he would connect the trade mark with the goods which he would be purchasing. The Supreme court in that case held that camouflaging an Eagle into a vulture by calling it such was likely to cause confusion especially when it did not represent a vulture, or look like, a vulture. 10. THE Supreme Court had again occation to consider this question in the case of Krishna Chettiar v. Arnbal and co., AIR 1970 Supreme Court 146. The supreme Court there reiterated that whether, if the proposed trade mark is used in a normal and fair manner and if similarly fair and normal user is assumed of the existing marks, will there be such a likelihood of deception that the proposed mark ought not to be allowed to be registered is a question which has to be decided on a comparison of the competing marks as a whole and their distinctive and essential features. The Supreme court, further, reiterated that the resemblance between the two marks muse be considered with reference to the ear as well as the eye and ocular comparison was not always the decisive test. Therefore, even if there be no visual resemblance between the two marks, that did not matter when there was a close affinity of sound between the words which were distinctive features of the two marks. Merely because the distinctive words used in both the marks had distinctive meanings It could -not be said that the phonetic resemblance did not lead to confusion, when it was likely that the majority of the customers were not capable of understanding the fine distinction between, the meaning of the two words. The Supreme Court also reiterated that the Registrar being an expert in this matter his decision should not be lightly disturbed. There the Supreme court was dealing with the question, whether, where a dealer sold snuffs under a registered trade mark and the word "ambal" was the distinctive and essential feature of that trade mark and that word fixed itself in the recollection of an average buyer with imperfect recollection, another also dealing, in. snuff could not be allowed to get the trade mark registered of which the word "andal" was a distinguishing feature, as there was a striking similarity and sanity of sound between the words "ambal" and "andal". snuff could not be allowed to get the trade mark registered of which the word "andal" was a distinguishing feature, as there was a striking similarity and sanity of sound between the words "ambal" and "andal". In the case of Roche and Ca v. G. Manners and Co., AIR 1970 SC 2062 at page 2064 of the report the Supreme court referred to the decision in the case of Parker Knell Ltd. v. Knell international Ltd., 1962 RPC 265 where Lord denning explained the distinction between "to deceive" and the phrase "to cause confusion". Lord Denning in the aforesaid decision put the position as follows : "secondly, to deceive is one thing. To cause confusion is another. The difference is this When you deceive a man, you tell him a be you make a false representation to him and. thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or in tent Ion ally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him to because he may not even taken the trouble to do so. " 11. IN that decision the Supreme court also' referred to the application of platonist Co. Ltd., reported in (1906) 23 rpc 774 where Lord Parker has formulated the tests for comparison of the two word-marks as follows: 38 "you must take the two words. You must judge 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 those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those 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. " The Supreme Court also reiterated that both visual and phonetic tests should be applied in determining whether there is similarity or possibility of confusion. The question must be determined in the light of the facts and circumstances of the case and as to the persons who are likely to be affected. 12. THIS position had been exhaustively dealt with by the Supreme Court in the case of Amritadhara Pharmacy v. Satya Deo, AIR 1963 SC 449 . The Supreme Court reiterated that what degree of resemblance between two marks was necessary to deceive or cause confusion must in the nature of things be incapable of definition a priori. The Supreme court at page 453 reiterated that for deceptive resemblance two important questions were, (1) who were the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on the goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. A sense of wonder, as has been put in some of the decisions, is sufficient to come, within the mischief of causing confusion. The class of buyers or the customers and the type of goods are also a relevant and material factor. In the case of Bengal immunity v. D. C. Manufacturing Co. AIR 1959 Calcutta 635 a Division Bench of this Court also reiterated the same principal while dealing with, whether "b. I. Phlogiston" resembled "antiphlogistine". The class of buyers or the customers and the type of goods are also a relevant and material factor. In the case of Bengal immunity v. D. C. Manufacturing Co. AIR 1959 Calcutta 635 a Division Bench of this Court also reiterated the same principal while dealing with, whether "b. I. Phlogiston" resembled "antiphlogistine". The Division Bench reiterated whether or not there was any resemblance and whether or not the resemblance was such as was likely to deceive or cause confusion were questions which had to be decided by the Registrar and the court on the basis of their own understanding of the matter. The position clearly is that the Registrar in the first place and then when the matter goes to the Court, the Court has to decide for itself quite apart from evidence of cases of actual confusion or the opinion of experts as to the likelihood of confusion, as to the inherent probability of the confusion. In making a decision on this question the Registrar and the Court has to take into consideration all the surrounding circumstances, the extent of the resemblances, visual or phonetic, the nature of the market of goods, the character, education and general mental equipment of the persons who are likely to purchase these goods and all other matters which are relevant. Absence of any evidence as regards any actual case of confusion or deception is, therefore, of not much significance. The Division Bench also dealt with the provisions of section 10 (2) of the Trade Marks Act, 1940. which is similar to section 12- (3) of the present Act, and held that where the concurrent use of trade mark, had been proved to be dishonest, it was not open to the Registrar to permit registration on the basis of other special circumstances. In the case of Prem Nath v. Reigstrar, Trade Marks, AIR 1972 Calcutta 261 the question was again considered and the principles mentioned were reiterated. In the case of Capritans v. Registrar of Trade Marks, 75 CWN 641 a learned single Judge had occasion to consider this question and observed that the Judge has to consider the evidence before him not the opinion and he has to consider for himself not whether any body has been actually deceived or confused but whether there was possibility of confusion or deception. In the case of k. R. C. Chetty v. K. V. Mudaliar AJR 1974 Madras 7 a. Division Bench of the madras High Court was dealing with the question between two marks "radha's sri Andal" and "sri Ambal". The Division Bench held that the combination of the words "radha's Sri Andal" was likely to be taken by snuff users as the snuff manufactured and marketed by the applicant originally as "'sri Andal". Further there was a tangible danger, the Court found, that a substantial number of persons would confuse the applicant's "radha's. Sri Andal" mark applied for with the opponent's "sri Ambal" snuff. Counsel for the petitioner drew. my attention to the decision in the case of Re Christiansen's Trade Mark, RPC page 54 and submitted that in this case having regard to the evidence of user of the trade mark by the appellant for a long time registration should have been allowed. He drew my attention to the observations appearing at page 61 of the report, reliance was also placed on the observations in the case of R. Reddaway and Co. Ltd. v. Frictionless Engine packing Company Ltd., and Harry Gordon small, 19 RPC page 505 and my attention was drawn to the observations appearing at page 516. There it was observed that the Court did not seat to protect imbeciles but to protect ordinary persons using ordinary common serge. Therefore, whether there would be confusion or deception must be judged by the yardstick of ordinary common sense and the intelligence of ordinary persons who were expected to be dealing with the goods in question. In the case of "frigiking" Trade Mark 1973 RPC page 739 at page 752 Mr. Justice Whit ford observed that essentially the question of confusion must be decided in the background of the facts and circumstances of each case. 19. Now; in the instant case having the aforesaid principles in mind I shall have to examine the decision of the deputy Registrar. The Deputy Registrar has referred to the evidence of S. P. Gupta to the effect that the opponent had been using the trade mark 'baba brand on Chewing Tobacco since the year 1958; that the given figures of sale are running into lakhs of rupees and the advertisement expenses were also enormous. The chart showing these figures were placed in the form of affidavit of evidence before the Deputy Registrar. The chart showing these figures were placed in the form of affidavit of evidence before the Deputy Registrar. The opponent had also filed orders from customers and also the advertisement cuttings pertaining especially to the state of West Bengal, Assam, Madhya pradesh, Orissa and Bihar for which territories registration was sought for. On discussion of the evidence the Deputy registrar found that the turnover and the reputation and goodwill for the goods of the opponent with the Baba Brand was substantial. There is nothing on record to impeach that finding of the deputy Registrar. In those circumstances the conclusion reached by the Deputy registrar about section 11 (a) of the act cannot in my opinion be interfered with. The opponent was holding registration for the trade mark 'baba Brand' whereas the applicant was seeking registration for a composite mark consisting of the bust portrait of a man and the words Lal Baba, Keshari Zarda'. The case of the opponent was that the words 'lal Baba' constituted the leading feature of the applicant's mark. No doubt the mark contained the bus portrait of man also but the goods would be known by the words 'lal Baba Brand' only. In view of the nature of the two marks and in the light of the principles referred to hereinbefore, in my opinion, this decision of the Deputy, Registrar that 'lai Baba was deceptively similar to the opponent's registered trade mark and, therefore, could not be registered under section 12 (1) of the act must also be sustained. There was no dispute about the similarity of the goods. 13. THE last aspect that has to be considered is the claim of the appellant under section 12 (3) of the Act. For this it is necessary to have concurrent user or other special circumstances for the registrar to allow registration. Concurrent user need not always depend upon the volume of user. But the user must be honest. The user must be concurrent. The user must be from a commercial point of view and certain stray cases would not be sufficient to justify application of section 12 (3) of the Act. In this case the explanation given by the appellant for choosing the name of 'lal Baba' is not satisfactory. But the user must be honest. The user must be concurrent. The user must be from a commercial point of view and certain stray cases would not be sufficient to justify application of section 12 (3) of the Act. In this case the explanation given by the appellant for choosing the name of 'lal Baba' is not satisfactory. The deputy' Registrar has noted that originally it was stated to be a fictitious person then it was stated that he was a saint living near Belur, around Calcutta. There being no satisfactory evidence of the reason for the choice of the particular name, the appellant should be deemed to halve known about the registered trade mark of the respondent. The appellant has nowhere in his affidavit stated that he was unaware of the opponent's trade mark. If the person was a fictitious person then there was no reason why the name of 'lal Baba' should be given to that fictitious person. The evidence of the user of the mark was also not satisfactory and that evidence has been discussed by the Deputy registrar. In those circumstances the deputy Registrar has exercised his discretion in not granting registration under section 12 (3) of the Act and I find no material to interfere with the exercise of such discretion by the Deputy Registrar. In the aforesaid view of the matter, this appeal fails and is accordingly dismissed. In the facts and circumstances of this case, however, there will be no order as to costs. Appeal dismissed, no costs.