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High Court Of Calcutta
Padma Khastgir
GOPAL HOSSIERY - Appellant
Versus
THE DY.REGISTRAR OF TRADE MARKS - Respondent
Appeal 37 Of 1980
Decided On : 09/03/1980
Gopal Hossiery v. Om Prakash Mehaswari - Trade Mark and Merchandise Marks Act, 1958 - Sections 9(4), 11(A), (E), 12(1), 18(1) - Honest Concurrent User - Similarity of Trademarks - Public Deception - Registrar's Discretion - Registration of Trademarks.
Fact of the Case:
Gopal Hossiery, a registered partnership firm, filed an appeal challenging the registration of a trademark by Om Prakash Mehaswari under the Trade and Merchandise Marks Act, 1958. Gopal Hossiery claimed that the use of the word 'Shreegopal' by Mehaswari was deceptively similar to their well-known registered trademark 'Gopal', leading to confusion and deception among the public.
Finding of the Court:
The court found that the Registrar of Trademarks had considered the evidence presented by both parties and exercised his discretion in allowing the registration of Mehaswari's trademark on the ground of honest concurrent user under Section 12(3) of the Act. The court held that the Registrar had not erred in his approach or applied incorrect principles of law in reaching his decision.
Issues: 1. Whether the Registrar erred in allowing the registration of Mehaswari's trademark despite the similarity to Gopal Hossiery's registered trademark. 2. Whether the Registrar properly considered the evidence of honest concurrent user presented by Mehaswari.
Ratio Decidendi: 1. The court held that the Registrar has the discretion to permit the registration of trademarks that are identical or nearly resemble each other in cases of honest concurrent use or other special circumstances under Section 12(3) of the Act. 2. The court found that the Registrar had considered the evidence presented by Mehaswari, including the length of time he had been using the trademark, the volume of sales, and the lack of any evidence of actual confusion among consumers. The court held that the Registrar had not clearly gone wrong in his assessment of the evidence and that his decision should not be interfered with.
Final Decision: The court dismissed Gopal Hossiery's appeal, upholding the Registrar's decision to allow the registration of Mehaswari's trademark.
( 1 ) THIS appeal has been filed under the Trade and Merchandise Marks Act, 1958 by Gopal Hossiery, a registered partnership firm. The petitioner started the business in 1936 as manufacturers and dealers of hosiery goods. The respondent No. 3, Om Prakash Mehaswari carries on business under the name and style of Joykali Hossiery as manufacturer of Banians at No. 17, Pagaia Patti, Calcutta. It is the petitioner's case that the word 'gopal' is a leading feature in petitioner's trade name and other principal trade marks and through considerable expenses and labour and by various modes of publicity, the business transaction by the petitioner for the last four decades have increased considerably. The Gopal Hossiery Products are sold by the petitioner throughout India and abroad and the total turnover of the petitioner's is 60 lakhs of rupees per year. Hence it is the petitioner's case that the good will and reputation attached to the word 'gopal' in hosiery trade is very valuable to the petitioner. The word Gopal has been registered under the Act bearing Registration Nos. 158, 690 and the word Gopal in combination with other words have also been registered in favour of the appellant.
( 2 ) THE petitioner have also protected the integrity of its other trade marks by taking appropriate legal actions against unscrupulous and dishonest hossiery dealers who tried to imitate and/or pass off petitioner's products.
( 3 ) ON the 9th June, 1975 the respondent No. 3 made an application before the Registrar of Trade Marks for registration of a Trade Mark label containing prominently in the centre the word 'shreegopal' in Bengali character in the said label. The goods in respect of which registration was sought for were hosiery goods and the respondent claimed that it has been using the said mark from April, 1962. The said application was advertised in the Trade Marks Journal subject to the disclaimer of the word 'joykali', 'shree' and 'kalighat'. It is the petitioner's case that it has come to know for the first time about the use of the word Shreegopal from the said advertisement thereafter the petitioner duly lodged their opposition on the ground that this mark would be deceptively similar to the petitioner's well known registered Trade Mark 'gopal' and because of the long established reputation associated with the petitioner's trade mark and trade name any use of the closely resembling subject trade mark would inevitably lead to confusion and deception to the unsuspecting members of the public. According to the petitioner, the use of the respondents of the said name with the knowledge of the petitioner's products and its reputation is a blatant dishonest conduct on the part of the respondent No. 3 who deliberately copied the petitioner's well known trade mark hence the respondent No. 3 was not entitled to get any registration thereof. The petitioner has also disputed the claim of the respondent No. 3 of the user of such trade mark since the year of 1962, us palpably false and exaggerated. The petitioner relied on the provision of Sections 9 (4), 11 (A), (E), 12 (1) and 18 (1) of the Act and strongly opposed the registration on the ground that such application was tainted with fraud, on the contrary the respondent's case is that he honestly adopted the said trade mark and has been using it since the year of 1962. Hence on the ground of honest concurrent user under Section 12, Sub-section (3) of the Act the respondent should get registration. It has also been stated by the respondent No. 3 that the word 'gopal' has been used as a component feature in other trade marks by various other hosiery traders and relied on some affidavits tiled in support of the respondent's claim. The appellant relied on various documentary evidence i. e. Auditor's Certificate. Advertisement cuttings. Bills for advertisement publicity literatures, original order for goods and various record of court proceedings. Although the respondent No. 3 reli
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