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1989 Supreme(Cal) 65
High Court Of Calcutta
BABOO LALL JAIN
BANIK RUBBER INDUSTRIES - Appellant
Versus
D.B.RUBBER INDUSTRIES - Respondent
Suit 1301 Of 1985
Decided On : 02/24/1989
The use of a trade mark that is deceptively similar to a registered trade mark is likely to cause confusion and deception among the purchasers and is therefore prohibited.
Headnote:
TRADE AND MERCHANDISE MARKS ACT, 1958 - SECTION 56 - APPLICATION FOR CANCELLATION OF A REGISTERED TRADE MARK - SIMILARITY OF MARKS - LIKELIHOOD OF DECEPTION OR CONFUSION - PUBLIC INTEREST.
Fact of the Case:
The petitioner, Banik Rubber Industries, sought the cancellation of a trade mark registered by the Registrar of Trade Marks in favor of the respondent, Sree K. B. Rubber Industries. The petitioner claimed that the respondent's trade mark 'ananta Hawai' and 'hammer Brand' were deceptively similar to its registered trade marks 'ajanta Hawai' and 'mugur Brand'. The petitioner also alleged that the respondent's use of the impugned trade marks was likely to cause confusion and deception among the purchasers.
Finding of the Court:
The court held that the two marks were deceptively similar to each other and that the respondent's use of the impugned trade marks was likely to cause confusion and deception among the purchasers. The court also held that the petitioner had not acquiesced in the respondent's use of the impugned trade marks and that the delay in filing the application for cancellation was not fatal.
Issues: 1. Whether the respondent's trade marks 'ananta Hawai' and 'hammer Brand' were deceptively similar to the petitioner's registered trade marks 'ajanta Hawai' and 'mugur Brand'? 2. Whether the respondent's use of the impugned trade marks was likely to cause confusion and deception among the purchasers? 3. Whether the petitioner had acquiesced in the respondent's use of the impugned trade marks? 4. Whether the delay in filing the application for cancellation was fatal?
Ratio Decidendi: 1. The court held that the two marks were deceptively similar to each other based on the following factors: - The words 'ajanta' and 'ananta' were visually and phonetically similar. - The words 'Hawai' were common to both marks. - The marks were used on similar products, namely, chappals. - The marks were placed in a similar manner on the chappals. 2. The court held that the respondent's use of the impugned trade marks was likely to cause confusion and deception among the purchasers based on the following factors: - The marks were deceptively similar to each other. - The products were similar. - The purchasers were likely to be unwary and not have the opportunity to compare the two marks side by side. 3. The court held that the petitioner had not acquiesced in the respondent's use of the impugned trade marks based on the following factors: - The petitioner had taken steps to oppose the respondent's use of the impugned trade marks, including filing criminal complaints and opposing the registration of the trade mark. - The petitioner's delay in filing the application for cancellation was not fatal.
Final Decision: The court ordered the Registrar of Trade Marks to cancel and/or remove the entry bearing No. 377580 in Class 25, in the Trade Marks Register entered in favor of the respondent. The court also directed the Registrar to rectify the Register of Trade Marks and serve an appropriate notice of rectification upon the Registrar, Trade Marks, and the respondent.
( 1 ) THIS is an application under Section 56 of the Trade and Merchandise Marks Act, 1958. The petitioner Banik Rubber Industries is seeking the cancellation of a trade mark which has been registered by the Registrar of Trade Marks, under Registration No. 377580 in Class 25 in the Trade Marks Register. The petitioner is also seeking the rectification of the register of trade marks by removal of the aforesaid entry, from the register of trade marks, in favour of the respondent No. 1, Sree K. B. Rubber Industries.
( 2 ) THE case of the petitioner inter alia is that the firm in the name of Eastern Rubber Works had got registration in respect of two trade marks. One was the trade mark bearing Registration No. 232909 dated 27th December, 1965 in Class 25 in the Trade Mark Register in the name of "ajanta Hawai" in respect of Chappals and soles and straps. The other trade mark is the trade mark bearing No. 242561 dated 7th June, 1967 in Class 25 in the Trade Mark Register under the name of "mugur Brand" in respect of chappals. There is no dispute that the petitioner, Banik Rubber Industries, is the present holder and/or assignee of the said trade marks, under the name of "ajanta Hawai" and "mugur Brand". The said Eastern Rubber Works was also the proprietor of a registered copyright in respect of artistic work relating to the aforesaid trade marks, under copyright registration No. A 11318/74 dated 11th June, 1974. However this court is only concerned with the rights if any of the parties under the Trade and Merchandise Marks Act 1958.
( 3 ) ON 8th June, 1981 the petitioner sent a notice to Sree K. B. Rubber Industries, the respondent No. 1, stating inter alia that the respondent was using the trade mark "ananta" in such a fashion so as to deceive or confuse the customers or intending purchaser of "ajanta Hawai" Chappals. The petitioner also objected to the use of the trade mark "hammer Brand" which according- to the petitioner, was confusingly similar and/or nearly resembled the registered trade mark "mugur Brand". By the said letter the petitioner inter alia requested the respondent No. 1, to desist from manufacturing, stocking, selling, advertising and/or distributing any products bearing the offending trade marks. The respondent No. 1 by its letter dated 26th June, 1981 replied claiming that the said trade mark "ananta" and the "hammer Brand" were their distinctive trade marks which they had been unsing over three years. According to the respondent No. 1, on comparison of the respective marks there were differences in them and nobody could be misled and/ or confused in selecting the article intended to be purchased. The respondent No. 1 refused to comply with the request made by the petitioner. On 26th June, 1981 the respondent No. 1 filed an application for registration of its trade marks under the name of "hammer Brand" and "ananta Hawai" with a crossed "hammer" within the circle. Pursuant to the application an advertisement was issued in the Dainik Basumati under Section 20 (1) of the Trade and Merchandise Marks Act, 1958 before acceptance.
( 4 ) ON 25th August, 1981 a petition of complaint was filed under Section 156 (3) of the Criminal Procedure Code read with Sections 77, 78 and 79 of the Trade Marks Act by one of the partners of the Eastern Rubber Works. On 2nd February, 1982 the said criminal complaint was dismissed and the partners of the respondent No. 1 were discharged inter alia on the ground that there was a sufficient evidence. On 14th April, 1982 another criminal complaint was filed and the same was marked as Case No. 137 under the same sections of the Criminal Procedure Code and the Trade and Merchandise Marks Act. Further, advertisements were published in respect of the proposed trade mark, inter alia in trade marks journal. On 21st January 1983 the petitioner filed an opposition to the registration of the proposed mark in favour of the respondent No. 1 under the name "hammer Brand" and "an
