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High Court Of Delhi
LAKBIR SINGH - Appellant
Versus
BAKHAT SINGH - Respondent
First Appeal Order 57D of 1965
Decided On : 11/30/1972
TRADEMARK - REGISTRATION - SIMILARITY - DECEPTIVE - HONEST TRADE PRACTICE - SECTION 11(A), 12(1), 18 OF THE TRADE AND MERCHANDISE MARKS ACT 1958 - SUMMARY
Fact of the Case:
The appellants, owners of a registered trademark for shoulder pads featuring a lion device, opposed the respondents' application to register a trademark featuring a tiger device and the word "tiger" in English. The Assistant Registrar allowed the registration of the respondents' trademark for areas outside the Union Territory of Delhi, finding that the marks were deceptively similar but that the appellants' trademark was only registered for Delhi.
Finding of the Court:
The court found that the two marks were deceptively similar, not only because the words "lion" and "tiger" were both known as "sher" in Hindi, Urdu, and Punjabi, but also because the devices themselves resembled each other. However, the court held that Section 12(1) of the Trade and Merchandise Marks Act 1958, which prohibits the registration of a trademark that is identical or deceptively similar to a registered trademark, did not bar the registration of the respondents' trademark outside the Union Territory of Delhi because the appellants' trademark was only registered for Delhi.
Issues: 1. Whether Section 12(1) of the Trade and Merchandise Marks Act 1958 bars the registration of a trademark that is identical or deceptively similar to a registered trademark, even if the registered trademark is only registered for a particular area or region? 2. Whether Section 11(a) of the Act, which prohibits the registration of a trademark that is likely to deceive or cause confusion, applies even if the opponent's trademark has not been registered? 3. Whether the adoption of a trademark that is deceptively similar to a registered trademark amounts to dishonest trade practice, warranting the exercise of discretion under Section 18 of the Act to refuse registration.
Ratio Decidendi: 1. Section 12(1) of the Act must be read together with Section 18(4), which empowers the Registrar to accept an application subject to conditions or limitations. The registration referred to in Section 12(1) is the registration subject to the conditions or limitations imposed by the Registrar. Therefore, Section 12(1) bars the registration of a trademark that is identical or deceptively similar to a registered trademark only within the area or region for which the registered trademark is registered. 2. Section 11(a) of the Act applies even if the opponent's trademark has not been registered, provided it is proved that the use of the proposed trademark was likely to deceive or cause confusion. However, in this case, there was no evidence that the appellants' trademark had been used outside the Union Territory of Delhi, so Section 11(a) did not bar the registration of the respondents' trademark outside Delhi. 3. The adoption of a trademark that is deceptively similar to a registered trademark can amount to dishonest trade practice, warranting the exercise of discretion under Section 18 of the Act to refuse registration. In this case, the respondents' adoption of a trademark that was deceptively similar to the appellants' registered trademark, with knowledge of the appellants' trademark, amounted to dishonest trade practice.
Final Decision: The court set aside the order of the Assistant Registrar and allowed the appeal, holding that the respondents were disentitled to the registration of their trademark due to dishonest trade practice.
( 1 ) SHRI Bakhat Singh and others, trading as Sardar Trading Company (hereinafter referred to as the respondents) applied to the Registrar of Trade Marks. Delhi, for the registration of a trade mark consisting essentially of the device of a tiger and the word tiger in English in class 25 in respect of shoulder pads. M/s. Fancy Shoulder Pad Makers (hereinafter referred to as the appellants) filed opposition to the said application. The opposition was based upon the ground that the appellants were the proprietors of a registered trade mark consisting of the device of a lion in class 25 in respect of shoulder pads in the Union Territory of Delhi and that the proposed trade mark of the respondents was deceptively similar to the registered trade mark of the appellants and that the adoption of the appellants trade mark by the respondents was dishonest. The Assistant Registrar while holding that the proposed trade mark of the respondents was likely to decieve the public into believing that the proposed trade mark of the respondents was the same as that of the appellants inasmuch as both the words lion and tiger were known in Urdu. Hindi and Punjabi as sher . but taking note othe fact that the appellants trade mark was registered only for the Union Territory of Delhi, rejected the objections of the appellants to the registration of the respondents trade mark for areas other than the Union Territory of Delhi and passed the following order:
"i order that application No. 206506 goods shall proceed to registration subject to the following conditions (a) The specification of the goods shall be limited to shoulder Pad. but not for sale in the Union Territory of Delhi . (b) Registration of the trade mark shall give no right to the exclusive use of the expression fast to wash and dry clean . "the appellants have filed the present appeal against the said order of the learned Assistant Registrar.
( 2 ) BEFORE considering the respective contentions of the parties, I shall refer to the findings of the learned Assistant Registrar about which there is no dispute. The learned Assistant Registrar has recorded the following findings:
(I) The trade mark of the appellants was registered for sale in the Union Territory of Delhi only; (ii) Although the appellants claimed that their registered trade mark had by virtue of extensive use acquired reputation even outside the Union Territory of Delhi, there was no evidence in support of this claim; (iii) The proposed registered trade mark of the respondents was likely to deceive or cause confusion inasmuch as the word lion and the word tiger were both known in Hindi. Urdu and Punjabi as sher and (iv) The registration of the respondents trade mark was barred both by Section 11 as well as by Section 12 (1) of the Trade and Merchandise Marks Act 1958 so far as the Union Territory of Delhi was concerned.
( 3 ) THE learned Assistant Registrar has also given a finding that except for the fact that both the lion and tiger were known by the name of Sher in Hindi, Urdu and Punjabi, the two marks are not similar. This finding is challenged by the appellants. According to the appellants, even the device in the two marks is deceptively similar. I, therefore, compared the two marks both as they appeared in the Trade Marks Journal as well as they appeared on the labels affixed to the shoulder pads. Applying the principle laid down by the Bombay High Court in Ciba Ltd. Basle Switzerland v. M. Ramalingam. AIR 1958 Bom 56. I am of the view that the two marks are deceptively similar although they might differ in some details. It may be stated that the tiger in the respondents proposed trade mark is not distinctive and may easily be mistaken for a lion. Therefore, the similarity between the two trade marks not only lies in the common word sher by which both the devices are known in vernacular languages but also by reason of the resemblance of the devices in the two trade marks.
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