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1998 Supreme(Mad) 65
High Court of Judicature at Madras
THE HONOURABLE MRS. JUSTICE A. SUBBULAKSHMY
Kirit Kumar Girdharlal Doshi - Appellant
Versus
Wimco Limited - Respondents
T.M.A. 1 of 1988
Decided On : 24 January 1998
A trademark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.
Headnote:
TRADEMARK - SIMILARITY - BOAT AND SHIP - DECEPTIVE SIMILARITY - REGISTRATION PROHIBITED - SECTIONS 9, 11 AND 12 OF THE TRADE MARKS ACT, 1958.
Fact of the Case:
The appellant applied for registration of a trademark consisting of a device of a boat and the word "Boat" for safety matches. The opponent, Wimco Limited, filed a notice of opposition, claiming that its registered trademarks consisting of the word and device of a ship for safety matches would be deceptively similar to the appellant's mark.
Finding of the Court:
The court found that the devices of a boat and a ship were deceptively similar and that the use of the appellant's mark would be likely to deceive or cause confusion. The court also found that the goods covered by the appellant's mark were the same as those covered by the opponent's marks.
Issues: Whether the appellant's trademark was deceptively similar to the opponent's trademarks.
Ratio Decidendi: The court held that the appellant's trademark was deceptively similar to the opponent's trademarks and that its registration was prohibited under Sections 9, 11, and 12 of the Trade Marks Act, 1958. The court reasoned that the devices of a boat and a ship were similar in appearance and that the goods covered by the marks were the same. The court also found that the appellant had not discharged the burden of proving that its mark would not lead to confusion or deception.
Final Decision: The court dismissed the appeal and upheld the decision of the Deputy Registrar of Trade Marks to refuse registration of the appellant's trademark.
A. SUBBULAKSHMY, J.
On 18-7-1973, the applicant filed an application under Section 18(1) of the Act bearing No. 289498 for registration of a trade mark consisting of a device of boat and word "Boat" in Class 34 for a specification of goods which read as "safety matches". The said application was advertised in the trade marks journal on 1-1-1980.
2. The opponent Wimco Limited filed notice of opposition for registration of the applicant's trade mark "Boat" stating that the opponents is carrying on an old, established and reputed business in the manufacture and sale of safety matches under a distinctive trade marks consisting of the word ship and the device of a ship registered as trade mark Nos. 6858 and 6859, and so they are the proprietors to the trade marks comprising the word and the device ship for safety matches and the impugned mark is deceptively similar and the goods covered under the registration are also similar and so, the registration of the impugned mark is prohibited by the provisions of Section 12(1) of the Act. The opponent further contends that the registration of the impugned mark is prohibited by the provisions of Sections 11, 12(3), 19 and 18(1) of the Act.
3. On enquiry conducted, the Assistant Registrar of the Trade Marks allowed the opposition and refused registration of the trade mark of the applicant.
4. Aggrieved against that order, the present appeal is filed by the applicant.
5. In this appeal, the appellant contends that the mark applied for registration by the appellant is different from that of the respondents mark, the appellant's trade mark is Boat Safety matches while the first respondent's trade mark is known as Ship Safety matches and the colour scheme is also different and the device Boat and Ship are also different and so, there is no resemblance between the applicant's trade mark and the opponent's trade mark and so, the application of the appellant for registration of the trade mark has to be allowed.
6. The Counsel for the appellant pointed out that both the trade marks Boat and Ship are not similar and they are distinct and the registration of the trade mark is not barred under Sections 9, 11, 12 and 18 of the Act. Appellant's trade mark is Boat and the respondent's is ship. On a perusal of the devices, they both appear to be similar.
7. The Counsel for the appellant pointed out that there are vast difference in the devices in the shape of boat and the ship. But, these devices have to be noticed so meticulously and by observing these trade marks for a while. Immediately on perusing the device, an ordinary illiterate common man cannot distinct them so easily. The goods involved in both the marks are the same i.e., safety matches. Even though the word boat and the ship are mentioned in those labels, the devices appear to be similar. Merely on seeing it, it cannot be distinguished so easily.
8. The Counsel for the appellant draw my attention to the Chamber's Dictionary meaning for the word Boat and Ship. Boat means a small open vessel or water craft propelled by oars. So, he points out that Ship and Boat are entirely different and they will not cause confusion and deception. He further pointed out that the shape of the Ship and Boat is also different and so, the impugned mark is not deceptively similar.
9. The Counsel for the respondent pointed out that the trade marks are similar and the boat or the ship as the case may be is found as shipping vessel and the goods are also of the same safety matches and so, these trade marks will certainly cause confusion in the minds of the common people and especially among the illiterate.
10. On a perusal of both the marks, it is seen that in both the marks the boat and ship appears as sea-going vessel. So, from features, it is clear that they are deceptively similar. As per Section 9 of the Act, the trade mark which is to be registered should contain a distinctive mark. As per Section 11 the mark which is likely to deceive or cause confusion is proh
