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High Court Of Delhi
L.D.MALHOTRA INDUSTRIES - Appellant
Versus
ROPI INDUSTRIES - Respondent
Civil Miscellaneous (Main) 67 of 1974
Decided On : 10/28/1975
TRADE MARK - KISMAT - ADOPTION AND USE - HONEST CONCURRENT USE - RECTIFICATION OF REGISTER - INFRINGEMENT - INTERLOCUTORY INJUNCTION - DELAY AND ACQUIESCENCE.
Fact of the Case:
Ropis and Malhotras were two industries engaged in the manufacture of dress hooks. Ropis started their business in 1963 and Malhotras in 1967. Ropis applied for registration of their trade mark KISMAT in 1969, while Malhotras had already registered the same word mark in 1967. Ropis opposed Malhotras' registration, claiming prior use and honest concurrent use. The Assistant Registrar upheld Ropis' claim and ordered the registration of their trade mark. Malhotras filed an appeal against this order, which was dismissed by the High Court.
Finding of the Court:
The High Court held that Ropis had a priority both in adoption and use of the mark, and therefore Malhotras were not entitled to claim the mark as proprietors and apply for registration thereof. The court also found that the two marks were deceptively similar and likely to cause confusion among the public. The court further held that Malhotras were not entitled to claim honest concurrent use under section 12(3) of the Trade Marks Act, 1958, as they had knowledge of Ropis' mark and its reputation. The court also upheld the Assistant Registrar's order of rectification of the register, which expunged Malhotras' mark from the register.
Issues: 1. Whether Ropis had a prior right to the trade mark KISMAT over Malhotras? 2. Whether the two marks were deceptively similar and likely to cause confusion among the public? 3. Whether Malhotras were entitled to claim honest concurrent use under section 12(3) of the Trade Marks Act, 1958? 4. Whether the Assistant Registrar's order of rectification of the register was valid? 5. Whether Ropis was entitled to an interlocutory injunction restraining Malhotras from using the trade mark KISMAT?
Ratio Decidendi: 1. On the issue of priority, the court held that Ropis had a priority both in adoption and use of the mark, and therefore Malhotras were not entitled to claim the mark as proprietors and apply for registration thereof. 2. On the issue of similarity, the court held that the two marks were deceptively similar and likely to cause confusion among the public. 3. On the issue of honest concurrent use, the court held that Malhotras were not entitled to claim honest concurrent use under section 12(3) of the Trade Marks Act, 1958, as they had knowledge of Ropis' mark and its reputation. 4. On the issue of rectification, the court held that the Assistant Registrar's order of rectification of the register was valid, as the continued presence of Malhotras' mark on the register was unlawful by virtue of sections 11(a)(e) and 12(1) of the Act. 5. On the issue of injunction, the court held that Ropis was entitled to an interlocutory injunction restraining Malhotras from using the trade mark KISMAT, as there was no delay or acquiescence on the part of Ropis.
Final Decision: The High Court dismissed Malhotras' appeal against the Assistant Registrar's order of registration of Ropis' trade mark. The court also upheld the Assistant Registrar's order of rectification of the register, which expunged Malhotras' mark from the register. The court further granted an interlocutory injunction restraining Malhotras from using the trade mark KISMAT.
( 1 ) THESE are two appeals. This judgment will govern them both.
( 2 ) THE dispute arises this way. There are two industries engaged in the manufacture of dress hooks which are generally used in garments. One is Ropi Industries. Henceforward I will call them Ropis. It is a partnership concern. They set up this industry in 1963. They manufacture hooks at Navsari a town in Gujarat. They started with humble beginnings. In the beginning their sales were only a few thousand. Over the years the sales have increased. They sell their goods at various places in India including Delhi.
( 3 ) THE other industry is called L. D. Malhotra Industries. Henceforward I will call them Malhotras. They also manufacture dress hooks. They are located in Delhi. They got their mark KISMAT (word per se) registered with the Registrar of Trade Marks on December 26, 1967. On that date they were not using this word. In their application under s. 18 (1) of the Trade Marks Act 1958 (the Act) to the Registrar they said that they proposed to use it. The Registrar registered the word per se . They started using the mark on the hooks which they manufactured.
( 4 ) ON December 31, 1969, Ropis made an application for registration of their trade mark in part A of the register in clause 26 for cloth hooks. On November 1, 1970, their application was advertised in the trade mark journel. On February, 1, 1971, Malhotras filed an opposition. The grounds of their opposition were ss. 11, 12 (1), 27, 28 and 29 of the Act. Ropis sought registration of a lable mark of which the word KISMAT is a dominant part. In their application Ropis stated that they were using the label mark KISMAT since May 4, 1963. They adduced evidence before the Assistant Registrar. They gave their sale figures right from April 1, 1963, to the date of the filing of the application. They also filed a number of affidavits of their dealers and other traders.
( 5 ) THE Assistant Registrar held that Ropis were the prior users of the trade mark KISMAT. He upheld their claim under s. 33 as well as under s. 12 (3) of the Act. He found that there was ample and positive evidence in support of Ropis claim under s. 33 and 12 (3) of the Act. The Registrar has summarised the evidence. I need not go through it over again. The Assistant Registrar s conclusion was that there was conclusive and unimpeacheable evidence to establish (1) rior use of the trade mark and that (2) there was honest and concurrent use of the word KISMAT.
( 6 ) AS regards the opposition of Malhotras under ss. 11 and 12 (1) he held (1) that goods of the two industries are the same ; (2) that their respective marks are deceptively similar. The word KISMAT of which Malhotras hold registration is also a dominant feature of Ropis mark; (3) that Malhotras were competent to take objection to the registration of Ropis mark under s. 11 since they had established sufficient user, that is, user from 1967 to 1969.
( 7 ) SINCE Ropis succeeded under ss. 33 and 12 (3) he allowed their application and ordered that their trade mark label be registered.
( 8 ) ALL these proceeding took place at Bombay. None of the parties preferred TO an appeal against this order. This order therefore became final between the parties. This is the first round of litigation.
( 9 ) ON April 2, 1971, Ropis made an application for the rectification of the register under s. 56 (2) of the Act. This application was filed at Delhi. In this application their grievance was that Malhotras mark KISMAT word per se offended against ss. 9 and 11 (a) and (e ). In support of their application Ropis filed a number of affidavits and other documentary proof. Malhotras did not file any evidence. It is true that onus lay on Ropis in rectification proceedings. They sought to discharge it by means of affidavits and documentary proof By order dated April 30, 1973, the Assistant Registrar exercised the discretion for removal of the mark of Malhotras under s. 56 (2) and ordered
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