GTC Industries Ltd. v. ITC Limited — 1993 DIGILAW 381 (CAL)

JUDGMENT Ruma Pal, J. 1. THIS is an appeal from an order and decision of the Deputy Registrar of Trade Marks, Calcutta dismissing the appellant's opposition to the respondent No. 1's application for registration of a trade mark. 2. THE facts relating to the case are briefly as follows : The appellant applied for registration of the word mark 'WINNER' on 27th June, 1980 (referred to as the first application). Two years later the respondent No. 1 applied for registration of the mark 'WINEX' being application No. 386593. A few days after that the appellant filed an application for registration of the trade mark label 'WINNER' (referred to as the second application). All three applications related to class 34. 3. ACCORDING to the appellant it had started using the lable mark 'WINNER' on cigarettes and its sale figures in respect of such products exceeded six crores. 4. THE first application of the appellant for registration of the word mark 'WINNER' was published in the Trade-marks Journal on 16th March, 1982. Respondent No. 1 opposed the application by filing an opposition. On 1st December, 1985 the appellant's application for registration of the label 'WINNER' was advertised in the Trade-marks Journal. There was no opposition and on 13th June, 1987 registration was granted to the appellant of the trade mark lable 'WINNER'. On 8th June, 1989 the respondent No. 1 filed an application for rectification in respect of the appellant's lable mark before the Trade mark Registrar, Bombay. This application is pending. 5. ON 1st June, 1989 the respondent No. 1's application No. 386593 for registration of the trade mark 'WINEX' was advertised in the Trade-marks Journal. The appellant filed an objection thereto. After the filing of the pleadings and evidence, the Deputy Registrar dismissed the appellant's opposition to the respondent No. 1's application No. 386593 to proceed for registration. It is this order which is impugned in these proceedings by way of an appeal preferred on 20th March, 1992. 6. IN the meantime, on 6th March, 1992 the Assistant Registrar of Trade-marks, Bombay, dismissed the appellant's first application for registration of the word mark 'WINNER'. The appellant has preferred an appeal before the Bombay High Court against the order dated 6th March, 1992. The appeal is still pending. 6. IN the meantime, on 6th March, 1992 the Assistant Registrar of Trade-marks, Bombay, dismissed the appellant's first application for registration of the word mark 'WINNER'. The appellant has preferred an appeal before the Bombay High Court against the order dated 6th March, 1992. The appeal is still pending. In this appeal a limited interim order was passed on 20th March, 1982 to the effect that if, on the basis of the impugned order the respondent No. 1's mark was in fact registered, such registration would abide by the result of the appeal, if the appeal was ultimately admitted. The appeal was admitted on 13th August, 1992. On the statement of the counsel appearing on behalf of the respondent No. 1 that the respondent No. 1 would not take any steps for registration pursuant to the impugned order until the dismissal of the appeal, no order of stay was granted. The statement was made in order to avoid delay in a final resolution of the matter and without prejudice to the respondent No. 1's rights and contentions either in this appeal or in the appeal from the order dated 6th March, 1992 pending before the Bombay High Court. 7. THE appellant's case is that it is the registered trade mark holder of the trade mark label 'WINNER'. In its notice of opposition to the application for registration of the respondent No. 1 the appellant had canvassed 9 grounds under Sections, 9, 11 (a), 11(b), 11(c), 12(1), 12(2), 28, 18(1) and 18(4) of the Trade and Merchandise Marks Act, 1958 (referred to as the Act). 8. AT the hearing before the Deputy Registrar, the appellant did not press its objection under Section 9 of the Act. In the appeal before this Court, arguments were really confined to the objection under Section 12(1). But it was said that the other points of objection were not being given up. The appellant has stated that merely because the appellants' first application for registration of the word 'WINNER' had been dismissed by the Assistant Registrar, it did not make any difference because of the appeal pending before the Bombay High Court from such dismissal. It is stated that the issue was at large. Reliance has been placed on the decisions reported in AIR 1952 Cal. 124 and AIR 1966 SC 1332 in this connection. 9. It is stated that the issue was at large. Reliance has been placed on the decisions reported in AIR 1952 Cal. 124 and AIR 1966 SC 1332 in this connection. 9. IT is then stated that the appellant was the registered trade mark holder of the label 'WINNER'. The mark of the respondent No. 1 WINEX' was deceptively similar to the appellant's label. There was a likelihood of deception. Therefore Section 12(1) of the Act was a complete bar to the registration of the respondent No. 1's mark 'WINEX'. 10. THIRDLY it is stated that the onus was on the respondent No. 1 to show that the mark sought to be registered by it was not deceptively similar to the mark already on record. It is submitted that in fact the evidence adduced by the respondent No. 1 before the Deputy Registrar in support of its application for registration was entirely inadequate. Fourthly it is contended that the appellant had in fact been using the trade mark label 'WINNER' extensively. The relevant date for determining the issue was the date when the application was being heard. Reliance has been placed on the decision reported in AIR 1958 Bom 56 in this connection. 11. THE respondents have submitted that none of the Sections under which the appellant had raised objections before the Deputy Registrar was at all applicable. THE respondent No. 1 has emphasised the fact that when it made its application for registration in 1982 it had no idea that the appellant had already applied for registration of its word mark 'WINNER' as admittedly the appellant had no user of the word prior to the application of the respondent No. 1. It is stated that the relevant date for determination of the right to registration was the date of the application of the respondent No. 1. 12. SECONDLY it is contended that an objection under Section 11(a) is available either on the basis of prior registration or actual user. As on the date of the respondent No. 1's application the appellant was not registered either in respect of the word mark or in respect of the label 'WINNER' nor was there actual user at all. As far as the question of deception is concerned it is contended that different considerations applied in comparing the respondent No. 1's mark 'WINEX' with the mark of appellant, namely 'WINNER'. As far as the question of deception is concerned it is contended that different considerations applied in comparing the respondent No. 1's mark 'WINEX' with the mark of appellant, namely 'WINNER'. The word 'WINEX' was a coined word. As far as coined words were concerned the rules of comparison were less stringent. Then it is stated that the word 'WINNER' was a laudatory word and no exclusive right to its user could be claimed. 13. IT is also submitted that the appellant's registered label as a whole would have to be compared with the respondent No. 1's mark in order to determine the question of deception. IT is stated that there was no possibility of any deception upon such visual comparison. IT is also argued that the appellant and the respondent No. 1 used and proposed to use their respective label and mark in respect of cigarettes. Cigarettes are addictive and a cigarette smoker would be particularly careful about the brand name and therefore the chances of deception were absent. 14. FOURTHLY it is submitted that the label 'WINNER' was registered as an associated trade mark with the word mark 'WINNER'. The registration of the word mark 'WINNER' having been dismissed, the associated mark cannot stand. The fact of the appeal pending before the Bombay High Court was irrelevant as no stay had been obtained. As far as the onus is concerned, it has been submitted that the issue was irrelevant once the entire evidence was before the authority concerned. 15. FINALLY it is submitted that the Deputy Registrar after considering the entire evidence had passed the order impugned in this appeal. It is submitted that it was well settled that the appellate court would not lightly interfere with a discretion of the Deputy Registrar. 16. BOTH the parties have cited several decisions which have not been noted in connection with their respective contentions as they will be dealt with in the judgement at an appropriate stage. In my view it is well established at least as far as this Court is concerned that in the case of applications for registration of trade marks, including opposed applications, the rights of the party or parties are to be determined as at the date of the applications for registration [See : E. Griffiths Hughes Ltd. v. Vick Chemical Co., AIR 1959 Cal. 654 (DB)]. 17. 654 (DB)]. 17. THIS view has also been held by the High Court at Madras in Mohan Gold Water Breweries (Pvt.) Ltd. v. Khoday Distilleries Pvt. Ltd. and Anr., 1977 (2) IPLR 83, 92 (See : also in the matter of application by Pan Cress Publication 65 RPC 193, 197). 18. THIS also follows from the statutory provisions relating to registration. Under Section 18 (4) of the Act the Registrar has a right to accept an application for registration of a trade mark. It is assumed that the Registrar in exercising his power under Section 18 (4) of the Act does so on the basis of the circumstances existing at the time of the application. If the circumstances existing at the time of the registration are to be considered, the exercise of power by the Registrar on the basis of the application would be an exercise in futility. Secondly, if the rights are to be determined at the time of registration, it would make the right to registration dependent upon the fortuitous circumstances of when the application is in fact heard. THIS might operate unfairly against the applicant. The facts of this case are an illustration of this. The respondent No. 1 had applied for registration of its trade mark on 17.02.82. The advertisement was published only on 1st June, 1989 - 7 years later. The application was taken up for hearing on 2nd December, 1991 - 9 years later. In the meantime, the appellant made on application for registration of his label mark. For whatever reason the appellant's label mark was advertised on 1st December, 1985 prior to the respondent No. 1 and registration was granted to the label mark on 13.06.87 even before the respondent No. 1's application for registration was advertised. The rights of the parties cannot be made to depend on factors beyond their control. 19. THIRDLY, the principle in Section 23 of the Act which grants notional registration with effect from the date of the application for registration would be meaningless if the factors subsequent to the application were to be considered. 20. THE observation in Ciba Limited v. Ramalingam, AIR 1958 Bom. 56 insofar as it holds otherwise, is not acceptable to this Court. THIRDLY, the principle in Section 23 of the Act which grants notional registration with effect from the date of the application for registration would be meaningless if the factors subsequent to the application were to be considered. 20. THE observation in Ciba Limited v. Ramalingam, AIR 1958 Bom. 56 insofar as it holds otherwise, is not acceptable to this Court. Apart from the fact that the view expressed in paragraph 12 of the Report appears contrary to the law as enunciated in the case of E. Griffiths Hughes Ltd. v. Vick Chemical Co. (Supra) the observations do not appear to correctly state the law as it now stands. Their Lordships' view was expressed on the provisions of Trade Marks Act, 1940. It is not clear whether there was an equivalent provision as Section 18(4) in the 1940 Act. The second decision relied upon by the appellant in this context is in the matter of Trade Mark "Palmolive" 49 RPC 269. In that case the Controller General held that the phrase "no trade mark shall be registered" referred to the actual making of the entry of the mark upon the Register and that in considering the operation of the section in which the phrase appeared, regard must be had to the state of Register at the date upon which the new entry was proposed to be made. The Controller General was of the view that to hold otherwise would be to go against a long standing practice in England which had been in operation for long with "evident advantage to traders". No such practice has been pleaded as being present in this country so as to persuade this Court to follow that decision. 21. IN that case also the reason which weighed with the Controller General was the likelihood of prior registered identical trade marks being withdrawn between the dates of the subsequent application for registration of a trade mark and its registration. As far as this country is concerned Sec. 19(b) of the Act provides for such a situation. 22. THE passage in Narayanan's Law of Trade Marks and Passing off relied upon by the appellant in this connection is based on the decision of the Controller General in the case of "Palmolive" (Supra). As far as this country is concerned Sec. 19(b) of the Act provides for such a situation. 22. THE passage in Narayanan's Law of Trade Marks and Passing off relied upon by the appellant in this connection is based on the decision of the Controller General in the case of "Palmolive" (Supra). THE Learned Author does not appear to have considered the decision of the Division Bench of the Calcutta High Court in E.G. Hughes v. Vick Chemical Co. at all. Incidentally this Court in an unreported judgement namely, Jain Rubber Industries v. Crown Private Limited and Ors. (Matter No. 1678 of 1992 Judgment dated 5.4.93) has also held that the date for deciding the rights of the parties in respect of an application for registration is the date of the application itself. I am not persuaded to hold otherwise as far as this case is concerned. 23. THE objection under Section 12(1) arises when : (i) there is already a trade mark registered in the name of a different proprietor in respect of the same goods or description of goods : and (ii) when the subsequent application for registration relates to be trade mark which is identical with or deceptively similar to such prior registered trade mark. 24. ON the basis that the relevant date is the date of the application for registration, there would be no question of Section 12(1) being relied upon by the appellant, because on the date there was no registered mark of the appellant on the basis of which a grievance under Section 12(1) could be made. In fact on the date of the application for registration of the respondent No. 1's mark, the field was untrammelled, apart from the application of the appellant for the proposed user of the mark "WINNER'. And the latter certainly conferred no right on the appellant either under Section 12 or the other sections. 25. ASSUMING that the date of consideration of the rights of the parties is not the date of the application but the date of registration, the next question is whether the two marks are deceptively similar within the meaning of Section 12(1) of the Act. 26. THE appellant's registered trade mark in question is the label mark "WINNER". 25. ASSUMING that the date of consideration of the rights of the parties is not the date of the application but the date of registration, the next question is whether the two marks are deceptively similar within the meaning of Section 12(1) of the Act. 26. THE appellant's registered trade mark in question is the label mark "WINNER". In paragraph 5 of the objection of the appellant before the Deputy Registrar it was stated:- We submit that the mark under the impugned application is deceptively similar to our trade mark "WINNER", registered under No. 386696 in Class 34 advertised in Trade marks Journal No. 876 dated 1st December, 1985 at page 525". 27. THE advertisement referred to consist of a logo with some form of pictorial image on the top left hand corner, the elongation of the 'Ns' of the two Ns in the word "WINNER" in semi-circles stretching diagonally with a thick line in the center, the figure 20 encircled by the words "Cigarettes-made in India" on the top right hand corner and the word "WINNER" again written vertically on the right. 28. THE respondent No. 1's trade mark is the word "WINEX" without any embellishment. Visually the two marks are wholly disparate. But as said in the matter of an Application by the Pianotist Company Ltd., for the Registration of a Trade Mark : 23 RPC 774, at 777:- "You must judge of them, both by their look and by their sound". There is some dispute in this case as to whether the word 'WINEX' should be pronounced 'WINNEX' or as 'WINE-X'. Phonetically, it is possible that the word 'WINEX' would be pronounced as 'WINE-X'. 29. TO uphold the contention of the appellant that the words in this case are similar because both the words started with the word syllable 'WIN' is not convincing. The word 'WIN' in an ordinary English word and the appellant itself has given many instances of its commercial use in relation to goods. TO allow this argument of the appellant would mean granting exclusive rights to the appellant to use the word 'WIN' with a monopoly therein. 30. IN a similar situation in the case of 'ACEC' Trade Mark : 1965 RPC 369 at 372, it was held:- "The opponents' mark ACE is a well-known word in the English language which has a clearly defined meaning. 30. IN a similar situation in the case of 'ACEC' Trade Mark : 1965 RPC 369 at 372, it was held:- "The opponents' mark ACE is a well-known word in the English language which has a clearly defined meaning. It is a word which has appeared many times in the Trade Marks Register in the names of many different proprietors for a wide variety of goods. The applicant's mark ACEC consists of the opponent's mark with the letter C added. There is, however, considerable difference in the appearance of these two marks. The opponent's mark is a well-known English word. The applicants mark is not a word which has any meaning, and does not, in fact, give the appearance of being a word at all." The objection was accordingly dismissed and registration allowed. It is very difficult to draw parallels between phonetic similarities from one case to other cases. Ultimately the matter will have to be decided on a case by case basis on the basis of evidence adduced. 31. AGAIN almost all of the cases relied upon by the parties are decisions taken upon a consideration of evidence as to instances of confusion. The decisions are necessarily coloured by the assessment of the credibility of the witnesses. 32. HOWEVER certain principles are deducible from the vast number of cases cited. The first has been well enunciated in the Matter of Crook's Trade Mark, 31 RPC 79 at 82:- "I think that ordinary reasonable use and ordinarily honest trade have only to be considered; and that the possibilities based either upon stupidity or fraud ought not to be given any undue weight". 33. THE second is that the matter will have to be considered from the point of view of the goods in question and the probable customers. 34. THE third is the actual audio-impact. Now there is no reason to hold that the word 'WINEX' was dishonestly adopted. The appellant had no reputation at all in respect of the word 'WINNER' when the respondent No. 1 applied for registration of its mark. There could be no motive on the respondent No. 1's part to cause any deception by using the mark 'WINEX'. 35. Now there is no reason to hold that the word 'WINEX' was dishonestly adopted. The appellant had no reputation at all in respect of the word 'WINNER' when the respondent No. 1 applied for registration of its mark. There could be no motive on the respondent No. 1's part to cause any deception by using the mark 'WINEX'. 35. AS far as the product and the nature of customers is concerned the product in both cases is tobacco - manufactured tobacco in the case of respondent No. 1 and 'cigarettes in the case of the appellant. 36. BOTH products are addictive, and a cigarette smoker chooses his brand carefully. In Rothmans of Pall Mall Limited v. New Tobacco Co. Ltd. and Anr., (1988) IPLR 103; (1987) 2 CHN 252 , P.K. Majumdar-J. held:- "This deceptive similarity has to be viewed from the stand-point of the persons, the purchasers of the cigarettes, and it is the likelihood of their being deceived that is the subject of consideration. The Court has to determine the question from the view- point of the consumers of average intelligence and imperfect recollection. It is common knowledge, that a smoker has a liking for a brand, and he will not accept the other brand if offered to him. It is the normal reaction of the majority of the smokers, the consumers of cigarettes." 37. THE distinction in the words is in the last three letters, the word of the Appellant ending in 'ner' and the respondent No. 1's word ending with 'ex'. THE respondent No. 1's word is shorter and as in the Matter of An Application by Smith Hyden and Coy. Ltd., 63 RPC 97 at 102:- "I agree with the Registrar in attaching importance to the emphatic characteristics of the second syllable of the appellants' mark". 38. I also agree with the Deputy Registrar's finding that an educated customer will not be misled because of the distinction in the words and the uneducated customer would not be deceived because of the difference in the representation of the two marks. The similarity if any in the words is not such as to create deception or confusion and the opposition of the appellant to the registration of the respondent No. 1's mark on this ground cannot be sustained. 39. I have failed to appreciate the Appellants' objection under Section 12(2) of the Act. The similarity if any in the words is not such as to create deception or confusion and the opposition of the appellant to the registration of the respondent No. 1's mark on this ground cannot be sustained. 39. I have failed to appreciate the Appellants' objection under Section 12(2) of the Act. Section 12(2) of the Act provides:- "S.12 Prohibition of registration of identical or deceptively similar trade marks. (2) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the Registrar may defer the acceptance of the application or applications bearing a later date until after the determination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any." 40. IN other words Section 12(2) of the Act relates to separate applications in respect of identical trade marks or trade marks which nearly resemble each other in respect of the same goods or description of goods. When more than one application is made in respect of such mark the Registrar may defer the acceptance of the application made subsequently until after the determination of the proceedings in respect of the earlier application. The fact that the Registrar's did not exercise his discretion under Section 12(2) of the Act in respect of the appellant's subsequent application for registration of the label mark tells against the appellant. It indicates that the Registrar did not consider that the subsequent application of the appellant to be in respect of a trade mark which was identical or which resembled the trade mark for which registration had been applied earlier by the respondent. 41. IF the Registrar had any doubt, the Registrar power to accept under Section 18 (4) is subject to the provisions of the Act. This again presupposes that in accepting the appellant's applications he was of the view that the respondent No. 1's mark did not violate any of the provisions of the Act including Section 12(1). IF he had any doubt he would have necessarily refused the application for registration even prior to advertisement under Section 18(4). 42. This again presupposes that in accepting the appellant's applications he was of the view that the respondent No. 1's mark did not violate any of the provisions of the Act including Section 12(1). IF he had any doubt he would have necessarily refused the application for registration even prior to advertisement under Section 18(4). 42. AS far as the question of onus is concerned, the Registrar's acceptance of the mark of the respondent No. 1 under Section 18 shows that the respondent No. 1, had, in fact discharged the initial onus of showing that the registration of the trade mark was not contrary to any provision including Section 12(1). Ultimately when all the facts are before the Adjudicating Authority, the question of onus becomes irrelevant and the Adjudicating Authority must weight the whole evidence to decide the matter. The other grounds of objection taken by the appellant before the Deputy Registrar need not be considered in view of the fact that the appellant rested its objection before this court on the provisions of Section 12(1). In any event, I see no reason for disagreeing with the view expressed by the Registrar in respect of such other grounds. 43. I make it clear that I have not taken into consideration the effect of the decision of the Trade Mark Authority in Bombay that the appellant's word mark 'WINNER' was incapable of registration because of the word 'WINNER' was laudatory in nature and lacked the distinctiveness necessary for obtaining registration. 44. THE respondent No. 1 had made a grievance that the appellant had made two incorrect statements in the application filed at the time of admission of the appeal. THE first incorrect statement was that the mark 'WINNER' was in use since 1980 when in fact it was not. THE second one was the statement that the first application of the appellant for registration of the mark 'WINNER' was pending when it had already been dismissed. THEse factors may have been relevant for determining the question of the interim relief pending disposal of the appeal. As it is, at this stage, this conduct of the appellant is no longer material. The last point argued by the respondent was the balance of convenience. In the first place the question of balance of convenience would be relevant to tip the scales when an 'either/or situation' was being considered viz. As it is, at this stage, this conduct of the appellant is no longer material. The last point argued by the respondent was the balance of convenience. In the first place the question of balance of convenience would be relevant to tip the scales when an 'either/or situation' was being considered viz. registration, of either the respondent's mark or the appellant's mark. Here the registrability of the appellant's label is not in issue. 45. AND as said in the Matter of a Application by Fox and Co. to register a Trade Mark : 37 RPC 37 at 41:- "Before the Court is entitled to come to the conclusion that a mark is calculated to deceive or that the applicant for a mark has not discharged the onus which is upon him of showing that it is not, there must be some reasonable and just cause for preventing the applicant for a new and invented mark such as this is from obtaining registration". 46. THE only cause put forward by the appellant for refusing the respondent No. 1's registration is the fact that the respondent No. 1 only proposed to use the mark 'WINEX' whereas the appellant had used the mark 'WINNER' extensively and spent large amounts on advertisements. This is no ground to refuse registration. The fact that the respondent No. 1 had applied for registration in respect of a mark which it only proposed to use will not mean that the respondent had a lesser right to claim registration. Section 16 of the Act allows such an application for registration. This aspect of the matter has also been dealt with at length and lucidly in the case of Mohan Gold Water Breweries Pvt. Ltd. (Supra), the reasoning wherein I respectfully adopt. 47. IN any event I am not prepared to hold on the evidence that the appellant had used the label mark as extensively as it claims. The advertisements referred to by the appellant as indicating its sales do not relate to the label mark at all. The advertisements are therefore immaterial in considering the appellant's claim in respect of its registered label mark. There is also nothing to show that the invoices included in the supplementary affidavit relate to cigarettes being sold using the registered label mark. 48. The advertisements are therefore immaterial in considering the appellant's claim in respect of its registered label mark. There is also nothing to show that the invoices included in the supplementary affidavit relate to cigarettes being sold using the registered label mark. 48. BESIDES the appellant has itself argued that under Section 12(1) of the Act the question of user of trade mark is not material (see : in the matter of an application by William Henry Huxly, 41 RPC 426). For all these reasons the appeal is dismissed. There will however the no order as to costs.