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High Court Of Calcutta
SABYASACHI MUKHERJI
GAZIPUR CHEMICAL WORKS - Appellant
Versus
DEPUTY REGISTRAR OF TRADE MARKS - Respondent
A. F. O. O. 164 Of 1975
Decided On : 11/07/1978
TRADEMARK - REGISTRATION - SIMILARITY OF MARKS - SECTION 11(A) AND 12(1) OF THE TRADE AND MERCHANDISE MARKS ACT, 1958 - APPLICANT'S MARK HELD DECEPTIVELY SIMILAR TO OPPONENT'S REGISTERED MARK - REGISTRATION REFUSED.
Fact of the Case:
The appellant applied for registration of a trademark consisting of a label containing devices of four kites, the words "char GUDDI ASLI KEORA JAL" in various languages, and devices of keora flowers. The opponent, respondent No. 3, filed a notice of opposition based on Sections 11(a) and 12(1) of the Trade and Merchandise Marks Act, 1958, claiming that the appellant's mark was deceptively similar to their registered trademarks for "tekka Asli Golab Nirjas" and "Extract of rose (perfumery)".
Finding of the Court:
The Deputy Registrar refused the appellant's application, holding that the marks were deceptively similar under Section 12(1) and that the opponent had established prior user and reputation under Section 11(a).
Issues: 1. Whether the appellant's mark was deceptively similar to the opponent's registered trademarks under Section 12(1) of the Act? 2. Whether the opponent had established prior user and reputation under Section 11(a) of the Act?
Ratio Decidendi: 1. In determining whether marks are deceptively similar, the court considered factors such as the nature of the goods, the type of customers, the overall similarity of the marks, and the likelihood of confusion. The court found that the appellant's mark bore such an overall similarity to the opponent's mark as would be likely to mislead a person usually dealing with one to accept the other if offered to them. 2. The court found that the opponent had established prior user and reputation through evidence of sale figures, which the appellant failed to disprove.
Final Decision: The appeal was dismissed, and the appellant's application for registration was refused.
( 1 ) THIS is an appeal from the decision of the Deputy Registrar of Trade Marks dated 24th of Feb. , 1975 Whereby the Deputy Registrar has refused the application of the appellant for registration. It appears that on the 24th of March, 1969 the appellant made an application being application No. 255595 to register in Part A of the Register a trade mark consisting of a label containing mainly the devices of four kites in a double-lined circle and the words "char GUDDI ASLI KEORA JAL" in Devana-gari, Urdu and Bengali characters and "char GUDDI KEORA WATER" in Roman characters, also the devices of keora flowers on the left and right-hand sides of the label and the name and address of the applicants in Class 3 in respect of a specification of goods which was subsequently amended to read as "keora water (perfumery)". There was objection to the registration of the said mark on the ground that the said claim conflicted with Registered Trade Marks Nos. 163808, 189857 and 189856 under the provisions of Section 12 (1) of the Trade and Merchandise Marks Act, 1958. The appellants agreed to amend the mark at the hearing of the application and the application was advertised. On the 20th of Aug. , 1973 Md. Abbas Ansari, the respondent No. 3 herein trading as Gazipur Star Chemical Works of Calcutta filed a notice of opposition to the registration of the aforesaid trade mark on the grounds mainly based on the provisions of Sections 11 (a) and 12 (1) of the said Act. On the 12th of Nov. , 1973 the applicants filed their counter statement denying all the allegations made in the notice of opposition. Evidence in support of the opposition consisted of an affidavit by one Abbas Ansari the opponent himself. The evidence in support of the application consisted of an affidavit by a partner of the applicant firm. The evidence in reply consisted of another affidavit by the said partner. The matter was thereafter heard by the Deputy Registrar. Before the hearing there was a request made on the part of the appellant for correction of the application to read that the user has been since Jan. , 1968. Originally the statement given in the application was to read as "proposed to be used. " As the application was advertised in the Trade Marks Journal as proposed to be used and inasmuch as according to the Deputy Registrar the application for amendment was to obviate the objection of the Registry under Section 12 (1) of the Act accordingly the prayer for amendment of the period of user was refused by the Deputy Registrar. The appellants were seeking registration of a composite label consisting of the devices of four kites in double-lined circle, the words "char Guddi Asli Keora Water" and the devices of Keora flowers and the trading style and the address of the applicants. As mentioned hereinbefore the registration was sought in Class 3 in respect of "keora water (perfumery)" and the mark was proposed to be used. There is also no dispute that the opponent being the respondent No. 3 herein was holding registration in respect, of a label mark containing of devices of heart, club, diamond and spade within a circle and also the words "tekka Asli Golab Nirjas". The said registered marks were 189856, 189857 and 163803 all in Class 3 and another being 190671 in Class 5.
( 2 ) THE Deputy Registrar has refused the appellant's claim both under Section 11 (a) and Section 12 (1) of the Act. Under Section 11 (a) of the Trade and Merchandise Marks Act, 1958 there is the restriction or prohibition of mark the use of which was likely to deceive or cause confusion. Under Section 12 (1) of the said Act in respect of the same goods or description of the goods if there is an existing trade mark in favour of another proprietor then any mark which is identical with or deceptively similar to that mark cannot be permitted registration in favour of a different proprietor. Under Section 12 (1) of the Act two conditions are necessary to bring an application wit
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