National Chemicals and Colour Co. and others vs Reckitt and Colman of India Limited and another

Judicial Analysis Court Copy Headnote Facts Arguments Court observation

1990 Supreme(Bom) 162

IN THE HIGH COURT OF BOMBAY
Mrs. Sujata Manohar M.P. Kenia, JJ.
National Chemicals and Colour Co. and others.... Appellants.
Versus
Reckitt and Colman of India Limited and another .... Respondents.
Appeal No. 305 of 1985 in Misc Petition No. 52 of 1981, decided on 12-4-1990.
Advocates appeared :
I. M. Chagla, J.P. Avasia , A.J. Almeida i/b Harilal Thakar Co., for appellants.
J.I. Mehta with Virendra V. Tulzepurkar i/b Dhru and Company, for respondents.

Headnote:TRADE AND MERCHANDISE MARKS ACT, 1958
       Sections 12, 11 (a)-Deceptively similar-Trade mark proposed to be registered deceptively, similar to another trade mark already registered-What is the test of Binding out similarly in two trade marks.
       Held-One cannot compare two trade marks by putting them side by side by trying to find out similarities and differences in two marks. What one has to see is the overall impression which the trade mark gives, because this is what members of the public carry in their minds.
       Section 12 (3)-Honest concurrent use-Appellants pleading concurrent use of trade mark proposed to be registered by them which would entitle Registrar to grant registration to their trade mark under Section 12 (3).
       Held-Appellants were aware that there were other similar registered trade marks. Nevertheless they continued to Use the same device 00 their product presumably in the hope of getting registration at a subsequent date. Such a user cannot be considered as an honest concurrent user under Section 12 (3). Hence benefit of Section 12 (3) cannot be granted to appellants.
       Section 109-Registrar giving decision as to whether proposed trade mark of applicant was deceptively similar to registered trade mark of opponent Whether High court empowered to interfere with decision of Registrar.
       Held-Decision of Registrar was not in exercise of any discretion. His decision was an adjudication of the question whether trade mark was likely to deceive or cause confusion. As Registrar was not required to exercise any discretion, there is no question of interferring with his decision.
       TRADE AND MERCHANDISE MARKS ACT, 1958.
       Sections 11 (a) and 12 (1)-Similarities and differences no two trade marks-To judge it-Prime consideration is over all Impression upon public which a reade mark gives- They cannot be compared by putting them side by side or by trying to find out similarities and differences In two marks.
       In the first place, the picture of a bind sitting on a twig which is a registered trade mark of the 1st respondents, is very similar to the picture of two birds sitting on a twig which is proposed to be registered as a trade mark by the appellants. It is true that while the picture mark of the appellants consists of two buds, the picture mark of the respondents consists of only one bird. Nevertheless both the devices bear a close resemblance. One cannot compare two trade marks by putting them side by side and by trying to find out similarities and differences in the two marks. What one has to see is the over-all impression which the trade mark given. Because, this is what members of the public carry in their minds.

JUDGMENT - M.P. KENIA, J.:---Messrs National Chemicals and Colour Company and its two partners are the appellants in this appeal. Messrs Reckitt Colman of India Limited are the first respondents . Messrs National Chemicals and Colour Company carry on the business, inter alia, of manufacturing and selling colouring material and colours. Reckitt Colman of India are manufacturers and dealers in Ultra Marine Blue, Colours, etc.

2. Reckitt and Colman are proprietors of registered trade marks in respect of goods falling in classes 1, 2 and 3 of Schedule IV of the Trade and Merchandise Marks Rules, 1959. One of their registered trade marks consists of a picture of a bird sitting on a twig surrounded by a circle with lines in the background, somewhat like the rays of the sun. The trade mark has the words 'Robin Ultra Marine Blue' on it. Another registered trade mark of Reckitt Colman consists of a bird sitting on a twig.

TRADE MARK

Robin Blue

These trade marks have been registered as far back as 1940 and 1946. These trade marks distinguish the goods of the respondents from similar goods in the market. According to them a typical feature of their trade mark is a bird sitting on a twig.

3. On 26th March, 1971 National Chemicals and Colours Co, the appellants, applied for registration of a trade mark featuring two birds and the words 'Bul Bul' on it. They applied for registration of this trade mark in respect of the goods falling in Class 2 of Schedule IV of the said Rules. The appellants, however, dropped the picture mark which they wanted to register. They obtained registration of only the words 'Bul Bul'. This trade mark was registered in the Trade Mark Journal dated 16th of September, 1973. The trade mark did not contain any device or picture.

4. On or about 11th of May, 1973 the appellants applied for the registration of a trade mark consisting of a device of two birds one partially hiding the other, sitting on a twig with the word ''Bul Bul' written on it. The registration was applied for in respect of goods falling in Class 2 viz., colours. The appellants applied for the registration of this trade mark for the States of Maharashtra, Gujarat, Karnataka, Kerala, Tamil Nadu and the Union Territory of Delhi. The appellants are now willing to restrict the registration further to confine it to specific goods in class 2 namely, colour for use in plastics, paints, printing ink, resins, papers, oils, petroleum products, aluminium foils, polyester films and BOPP films. The trade mark was ordered to be advertised before acceptance. The respondents Reckitt Colman filed a notice of opposition to this trade mark on 5th of May, 1978. Thereafter they filed their affidavits in support of the opposition. The parties also filed their affidavits of evidence. Ultimately the matter came up for hearing before the Deputy Registrar of Trade Marks, who by his order dated 28th October, 1980 dismissed the opposition of the respondents and permitted the registration of the trade mark applied for by the appellants.

5. The Registrar held that though both the trade marks were in respect of goods of the same description, and though both of them contained the same device of bird or birds sitting on a twig, the written part of the label marks, namely 'Robin' and 'Bul Bul' were different and distinguishable. Hence he held that the two marks were not deceptively similar. He also gave to the appellants the benefit of section 12(3) of the Trade Marks Act, 1968 on the ground that they had used the trade marks honestly and concurrently since 1969. Accordingly he permitted the registration of the appellant's trade mark.

6. M/s. Reckitt Colman who were aggrieved by the decision of the Deputy Registrar filed an appeal under the provisions of the Trade Marks Act, 1958 before this High Court being Misc. Petition No. 52 of 1981. The learned Judge by his judgment and order dated 27th September, 1984 allowed the appeal. He has also held that the trade marks are decepti

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