The likelihood of customer confusion is paramount in trademark disputes, emphasizing prior use and visual similarity over phonetic differences in name.

JUDGMENT :

P.B. BALAJI, J.

1. The present appeal is preferred, challenging the order of the Deputy Registrar of Trade Marks, Chennai, dated 13.01.2011.

2. I have heard Mr.Arun C. Mohan, Learned Counsel for the Appellant and Mr.P.Valliappan, Learned Senior Counsel for the 1st Respondent and Mr.K.Subbu Ranga Bharathi, Learned Senior Panel Central Government Standing Counsel for the 2nd Respondent. I have also perused the records placed before me by way of typed set of papers and also carefully gone through the decisions on which reliance is placed on by the Learned Counsel for the parties.

3. The Learned Counsel for the Appellant would attack the findings of the Authority on the following grounds:

i) The Appellant is the prior user of its mark, in fact, since 1956 whereas the 1st Respondent has been using its mark only from 1995, which has gone unnoticed.

ii) The impugned order has not touched the aspect of passing off and thereby there has been total disregard of Section 11 of the Act.

iii) The Registrar has failed to step into the shoes of the customer and decide the matter, especially when both the Appellant and the 1st Respondent trade in fireworks and the visual image adopted by the 1st Respondent was likely to cause confusion amongst the customers.

iv) The finding that both the Appellant and the 1st Respondent are from Sivakasi was immaterial and in fact, not even based on record and was also not proved.

v) The similarity/identity test under Section 11(1)(b) of the Trademarks Act, 1999, has not been applied to the facts.

vi) The Registrar has failed to advert to passing off effect under Section 11(3) of the Trademarks Act, 1999.

vii) The fact that the Appellant did not oppose the earlier registration of the 1st Respondent’s mark is irrelevant to application of Section 11 of the Act.

viii) The Registrar has not followed the dictum of the Apex Court in Cadila Healthcare Ltd. Vs. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73 .

4. Mr.Arun C.Mohan, Learned Counsel for the Appellant would fortify the above submissions by placing reliance on the following decisions:

1) National Sewing Thread Company Limited Vs. James Chadwick and Brothers Limited (J&P Coats Limited, Assignee), (1953) 1 SCC 794

2) J.C. Eno Limited Vs. Vishnu Chemicals Co. 1940 SCC Online Bom 130

3) National Chemicals and Colour Co. and Others Vs. Reckitt and Colman of India Limited and Another , 1990 SCC Online Bom 104

4) Bhatia Plastics Vs. Peacock Industries Limited , ILR (1995) I Delhi

5) K.R. Chinna Krishna Chettiar Vs. Shri Ambal and Co. Madras and Another , (1969) 2 SCC 131

6) Amritdhara Pharmacy Vs. Satya Deo Gupta , (1963) 2 SCR 484

5. Per contra, Mr.P.Valliappan, Learned Senior Counsel, would submit that:

st i) Both the Appellant and the 1 Respondent are from Sivakasi and selling same goods and there has been no confusion or deception for the last several years.

ii) There is no phonetic or visual similarity between the two rival marks.

iii) In terms of Section 33, the Appellant has acquiesced of the use of the mark by the 1st Respondent.

iv) The conduct of the Appellant in not opposing the registrations of the 1st Respondent, one prior and one later would be a relevant factor and have significant bearing in the present case.

v) The images are entirely different and there is no likelihood of any confusion.

vi) The Registrar has taken into account all relevant factors and decided the matter in favour of the 1st Respondent and the same does not require any interference in appeal.

6. I have carefully considered the submiss