JUDGMENT
S.N. Kapoor, J.
1. This CM(M) 69/77 takes exception to an order rejecting the application No. 2568/75 for registration of trade mark consisting of the words ‘JAY KAY’ in class 6 in respect of locks, rolled and cast building materials, bolts, nuts, screws, door hinges and nails for sale in the States of Uttar Pradesh, Mysore, Andhra Pradesh and Tamil Nadu.
2. According to the petitioner Kedar Nath Gupta the mark ‘JAY KAY’ is being used by him since 1965. It is claimed that since 1948, the applicant was working under the name and style J.K. Varshney & Co. He adopted the trade name ‘JAY KAY’ after his trading style ‘Jay Kay & Company’ for his manufactured locks by adopting the initials of his father and his own name for the customers and dealers in South India made clerical mistakes in the cheques in misspelling and word ‘Varshney’ in the year 1965. He claims to have following sale turnover of his goods under the trade mark ‘JAY KAY’:
Period Sale in Rs. 1965 1,11,000.00 1966 70,526.79 1967 89,673.45 1968 1,11,960.74 1969 (till May) 8,475.59
The appellant moved this application, for registration, accordingly on 19.5.1969.
3. After the trade name was advertised in the Trade Marks Journal No. 552 dated 1st June, 1972, JK Organization, an association registered under the Indian Trade Unions Act, 1926 entered into opposition to the registration of the aforesaid trade mark on 1st September, 1972. The grounds of opposition are as under:
(i) The JK Organization controls more than 40 industrial, com mercial or manufacturing concerns as members of their organiza tion and have been using a trade mark consisting of the letters ‘J.K.’ or the word ‘JAYKAY’ within a toothed wheel or without the device of a hand holding a hammer and other device as a symbol
trade mark of their Organization. The said trade marks have been registered in the names of several of their units under Nos. 4227, 85062, 85063, 212257, B73262, 213693 and 212256 in classes 24, 26, 27, 22, 24, 16 and 23 respectively. It is a house mark of JK Organization having a good deal of reputation.
(ii) By reason of this use on a large number of goods by the various constituents units of the organization, the use and registration of the applicant’s mark is likely to deceive or cause confusion under Section 11(a) and the applicant is not
entitled to the benefit of Section 12(3) of the Act. However, learned Counsel for the Objectors dropped the objection under Section 12(1) of the Act.
4. This objection was contested by the applicant interalia on the ground that the opponents have no locus standi since.it is a non-trading organization. It is not entitled to maintain the opposition under Section 11 of the Act in the absence of reputation of the mark connected with them in the course of the trade which is said to be deceptively similar.
5.1. The learned Assistant Registrar of the Trade Mark took the view that the applicants have got substantial interest in use of the mark by 40 constituent units and it is their duty to protect their mark from any unauthorised use outside the purview of these 40 constituent units. The JK Organisation could manufacture locks and sell in the market under the mark JK and people would be buying such locks as those manufactured by JK Organization member units within their industrial competence. Consequently, the mark is barred by the provisions of Section 1(a) of the Act. He also held that in order to take advantage of the name of JK, the applicant changed its name by deleting the word ‘Varshney’ and consequently, as provided under Section 11(e) of the Act, the mark is not entitled to protection. The petitioners are not the proprietor of the trade mark and as such the
claim of the applicants proprietary rights in the mark is not free from doubt within the meaning of Section 18(1) of the Act.
5.2. The learned Assistant Registrar also raised the objection under section 9 of his own to find out distinctiveness and in the absence of distinctiveness, refused to register in view of the provisions of Section 12(3) of the Act and rejected the application.
6. Feeling aggrieved by the aforesaid order, the petitioner Kedar Nath Gupta has moved this petition challenging the impugned order interalia on the ground that the respondents themselves have dropped objection under Section 12(1) because the respondent had no trade mark of their own. The finding of the Assistant Registrar that the respondent had locus standi to enter the opposition having sufficient interest in respect of opposition under Section 11(a), of the Act is erroneous. It is for the opponents to prove that any reputation has accrued to the respondents trade mark and it was likely to cause confusion or deception in the normal course of trade. The opponent trade union being a non-trading organization has no locus standi. The opponent trade union could not have been equated with its members in respect of the use of the said mark by the Association itself specially when none of the members came to oppose and depose and/or lead any evidence to register its objection. The learned Assistant Registrar has been extremely unfair in holding that the mark is non-descriptive of appellants goods and under Section 9 and that it is not entitled to protection as provided under Section 11(e) or that the petitioner is not the owner of the trade mark and that it was of deceptive character under Section 12(3).
7. I have heard the parties Counsel at length and gone through the record.
8. Before proceeding further, it is desirable to have a fresh look at the concerned legal provisions. An application for registration of a trade mark is filed under Section 18 of the Trade and Merchandise Marks Act. This section reads as under:
18. Application for registration-(1) Any person claiming to be proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark either in Part A or in Part B of the register.
(2) An application shall not be made in respect of goods comprised in more than one prescribed class of goods.
(3) Every application under Sub-section (1) shall be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants the principal place of business in India or the applicant whose name is first mentioned in the application, as having a place of business in India, is, situated:
Provided that where the applicant or any of the joint applicants does not carry on business in India, the application shall be filed in the office of the Trade Marks Registry within whose territorial limits the place mentioned in the address for service in India as disclosed in the application, is situate.
(4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modification, conditions or limitations, if any, as he may think fit.
(5) In the case of an application for registration of a trademark (other than a certification trademark) in: Part A of the register, the Registrar may, if the applicant so desires, instead of refusing the application, treat it as an application for registration in Part B of the register and deal with the application accordingly.
(6) In the case of an refusal or conditional acceptances of an application; the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.
9. Section 19 provides for withdrawal of acceptance and Section 20 provides for advertisement of the application. Section 21 of the Act provides
for opposition to registration. Section 21 reads as under:
21. Opposition to registration.-(1) Any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration. (2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner, a counter statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application.
(3) If the applicant sends such counter-statement, the Registrar shall serve a copy thereof on the person given notice of opposition.
(4) Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall given an opportunity to them to be heard if they so desire.
(5) The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions or limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not.
(6) Where a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such notice neither resides nor carries on business in India, the Registrar may require him to give security for the costs of proceedings before him, and in default of such security being duly given, may treat the opposition or application, as the case may be, as abandoned.
10. The applicant pressed his application ultimately for registration of trade mark ‘JAYKAY’ confining it to locks in class 6 of the fourth schedule.
11. The question for determination is: “whether in aforesaid circumstances registration of trade mark ‘JAY KAY’ in respect of locks under class 6 would cause any deception or confusion especially when neither the opponents nor any member of their organization is manufacturing any article in class 6?”
12. The name JK has certainly acquired the reputation of belonging to a particular group of industrialists having to do something with JK Organization. This fact is not under challenge. However, it is being contended from the side of the appellant that neither the organization nor its members are the owners of the trade mark ‘J.K.’ so far as lock is concerned and as such it could be registered.
13.1. According to Section 18 of the Act, “Any person claiming to be the proprietor of trademark” could move an application for registration. The emphasis is on the proprietary rights. If a similar complementary phrase is sought to be seen in Section 21 which provides opposition to registration, then the term, “Any Person” (indicating opponent/applicant) is not qualified by the clause “claiming to be the proprietor of a trade mark”. But he is required to apply under Section 21 in a prescribed manner and the prescribed manner is provided under the Rules 51 to 60 of the Trade and Merchandise Marks Rules, 1959. A notice of opposition is required to be
given in triplicate on form TM 5. Rule 51 also requires that notice shall include the statement of the grounds on which the opponent objects to the registration. This TM 5 also does not specify that an opponent should be the proprietor of the trade mark. However, under Section 56, an application for rectification could be moved “by any person aggrieved”. Seeing Section 21, it appears that the omission of phrase “claiming to be proprietor of trade mark” used in Section 18 or “any aggrieved person” under Section 56
is intentional. While Section 18 is confined to proprietor of a trade mark, Section 56 extends the arena to include any aggrieved person like registered user of a trade mark or user of certification trademark. In this
light, it appears that Section 21 of the Act does not require that the opponent must be an aggrieved person.
13.2. The term “any person” in Section 21 of the Act came to be interpreted in P.N. Mayor vs Registrar of Trade Marks, and
it was held that “any person” need not be only a prior registered trade mark owner. Even a customer, a purchaser or a member of the public likely to use the goods may object to the registration of a trade mark in respect of such goods on the ground of possible deception or confusion. Deception or confusion is a matter of public interest which is an important concern of the trade mark law.
13.3. The case of KAROSTEP Trade Mark, 1977 RPC 255 was also referred to. In that case, there were seven members of the applicant association, who filed application for rectification. Their locus standi was challenged on the ground that they were non-trading body. The objection against the locus standi of the Association was rejected for it was deemed appropriate that the Applicant Association on whom the responsibility rested for maintaining the rights and obligations associated with the mark in general should have the locus to seek rectification. In that case, goods were same and there was no argument about any limitation or constraint, as has been argued before this Court in the Light of Section 15(c) of the Trade Unions Act.
13.4. MOLYSLIP Trade Mark case, 1978 RPC 211 was also referred to. One Baron B. controlled the South African Ship Group of Companies including the company which owned the MOLYSLIP mark. None of them were manufacturers but owners of registered users market in lubricant MOLYSLIP. Locus standi of the South African Ship Group of Companies was disputed. Since the applicant themselves have not traded in the relevant products, they did not qualify as persons aggrieved. It was held that since this group had been closely involved in South Africa as well as in UK with that trader and came under
the same controlling interest, the applicants had locus standi to be heard on the application for rectification, being aggrieved person”.
13.5. In this case also the group was trading in concerned product. In both the cases Powell’s Trade Mark (1894) 11 RPC 4 was referred to on the constriction to be placed on the phrase ‘person aggrieved’. The Act being a beneficial legislation, even a consumer or consumer organization or any other Organisation can oppose registration of a trade mark, in so far as Section 21 is concerned. In so far as Section 21 is concerned, the finding of the learned Assistant Registrar that any person may oppose an application for registration of a trade mark and he need not be necessarily an aggrieved person, appears to be justified.
14. But at the same time, this by itself may not be sufficient in case opponent suffers from any incapacity to file such opposition. This right may be modulated and circumscribed by the limitations and constraints imposed under the different enactments enabling deemed personalities to came into existence by virtue of registration of persons like trade unions.
15. The second plank/limb of the argument of learned Counsel for the appellant/petitioner is founded on the alleged incapacity of the trade union to contest such an opposition in a trade mark matter. It is contended that the JK Organization is not a ‘person’ for it has got no personality of its own. According to the learned Counsel for the petitioner, the personality aspect characterises the legal entity in question, i.e. if it is a living individual or a company or other corporate entity, it has a personality to be considered as a person whereas it is a group of individuals
such as members of a club and an association, then it may not have the requisite personality to be a person.
16. The learned Counsel for the appellant himself answers and shatters his own argument when he contends that although the definition of a person under General Clauses Act is wide enough to include an association of persons whether incorporated or not. But he rightly submits such a person is subject to specific legislation and if there is something repugnant with the concerned specific legislation, the activities of such a person would be accordingly modulated.
17. According to the learned Counsel for the petitioner, the trade union is not supposed to oppose or defend the registration of trade marks, specially in terms of limitations imposed on a Trade Union under Section 15(c)
of the Trade Unions Act. In the light of the submissions of learned counsel, it is to be seen how far section 15(c) of Trade Unions Act curtails the rights of trade unions in opposing a registration of trade mark. Learned Counsel for the petitioner contends on the authority of Senaji
Kapurchand vs Pannaji Devichand, AIR 1930 PC 300 that the word ‘person’ in section 4 of the Companies Act, 1913 denoted individuals and did not include bodies of individuals, whether corporate or not.
18. For the purpose of having an overall view, one must not confine himself to Clause (c) of Section 15 of the Trade Unions Act, but must see
the entire Section 15. This Section reads as under:
15. Objects on which general funds may be spent-The general funds of a registered Trade Union shall not be spent on any other objects than the following namely-
(a) the payment of salaries, allowances and expenses to office bearers of the Trade Union,
(b) the payment to expenses for the administration of the Trade union, including audit of the accounts of the genera funds of the Trade Union;
(c) the prosecution or defense of any legal proceeding to which the Trade Union or any member thereof is a party, when such prosecution of defense is undertaken for the purpose of securing or protecting any rights of the Trade union as such or any rights arising out of the relations of any member with his employer or with a person whom the member employees;
(d) the conduct of trade dispute on behalf of the Trade Union or any member thereof;
(e) the compensation of members for loss arising out of trade disputes;
(f) allowances to members of their dependents on account of death, old age, sickness, accidents or unemployment of such members,
(g) the issue of, or the undertaking of liability wider, policies of assurance on the lives of members, or under policies insuring members against sickness, accident or unemployment;
(h) the provisions of educational, social or religious benefits for members (including the payment of the expenses of funeral or religious ceremonies for deceased members) or for the dependents of members;
(i) the upkeep of a periodical published mainly for the purpose of discussing questions affecting employers or workmen as such;
(j) the payment, in furtherance of any of the objects on which the genera funds of the Trade union may be spent, of contributions to any cause intended to benefit workmen in general, provided that the expenditure in respect of such contributions in any financial year shall not at any tine during that year be in excess of one-fourth of the combined total of the gross income which has up to that time accrued to the general funds of the Trade Union during that year and of the balance at the credit of those funds at the commencement of that year; and
(k) subject to any conditions contained in the notification, any other object notified by the appropriate Government in the Official Gazette.
19. It appears from a reading of Section 15 that a Trade Union may pursue prosecution or defense in legal proceedings only either under Clause (c) or Clause (d) of Section 15. Clause (c) is confined to proceedings undertaken
“for the purpose of securing or protecting any rights of the Trade Union as such or any rights arising out of the relations of any member with his employer or with a person whom the member employs”. Clause (d) relates to “trade dispute” as defined in Clause (g) of Section 2 of the Trade Unions Act. Section 2(g) of the Trade union Act reads as under:
(g) “trade dispute” means any dispute between employers and workmen or between workmen and workmen, or between employers and employers which is connected with the employment or non-employment, or the terms of employment or the conditions of labour, of any person, and ‘workmen” means all persons employed in trade or industry whether or not in the employment of the employer with whom the trade dispute arises;”
20. Before proceeding further, meaning of the “trade union” as defined in Section 2(h) should. also be seen to appreciate the meaning of the phrase “for the purpose of securing or protecting any rights of the Trade Union as such”. Section 2(h) of the Trade Unions Act reads as under:
(h) “Trade Union” means any combination, whether temporary or permanent, formed primarily for the purpose of regulating the relations between workmen and employers or between workmen and workmen, or between employers and employers, or for imposing restrictive conditions on the conduct of any trade or business, and includes any federation of two or more Trade Unions:
Provided that this Act shall not affect –
(i) any agreement between partners as to their own business;
(ii) any agreement between an employer and those employed by him as to such employment; or
(iii) any agreement in consideration of the sale of the goodwill of a business or of instruction in any profession, trade or handicraft.
21. “Trade Union” includes and embraces any combination formed primarily “for imposing restrictive conditions on the conduct of any trade or business” as well. Consequently, a Trade Union could protect rights of its members by objecting to the registration of trade name or trade mark if intends to protect the rights of the Trade Union for the said purpose of imposing restrictions on the conduct of “any trade”. The word “any” has a diversity of meaning and may mean some; one out of many; an indefinite number. It may be employed to indicate “all” or “every” as well as “some” or “one”, and its meaning in a given statute depends upon the context and subject of the statute. “At any time” is commonly construed as meaning within reasonable time; and as the words “any other” following the enumeration of particular lassesare to be read as “other such like,” and include only others of like kind or Character (see Black’s Law Dictionary 6th Edition P.94). Seeing the nature of the statute, its object and purpose and context, the term “any trade” has to be confined to trades with which the Trade Union is concerned. Consequently, the term any trade” cannot mean all trades with which neither the Trade Union nor its members are concerned; it could mean only “any concerned trade”. Since it is not the case of the opponent that the opponent Trade Union or its members are dealing in any article of class 6 and locks specifically, it does not appear plausible to accept that a Trade Union not concerned with one trade should be allowed to prosecute or defend trade mark matters in respect of another trade for Trade Union is not a pro bono publico and is supposed to act within limitations and constraints of the Trade Unions Act.
22. Another limb of argument of learned Counsel for the appellant is that if the Trade Mark ‘J.K’. without being registered as certification mark under the registered users provisions of Section 48 is being used by 40 organisations, it would amount to trafficking in trade mark. Such a trade mark could not be protected for there is neither any financial nor any contractual control of the JK Organisation over the trade mark licence agreements between it and its members. In so far as the financial control and contractual control is concerned, this does not appear to be very material in view of the language of Section 21, as has been mentioned above. It is also submitted that mere membership of an organization cannot permit the organization to oppose on behalf of its members. To illustrate the absurdity, the learned Counsel referred to it situation where a law firm by the name of “ABC” wished to sue another firm who may have adopted the same name, High Court Bar Association would not have any locus standi to oppose such a registration. In Consortia Del Prociutto Di Parma Vs. Marks & Spencer Pic and Others, [1991] RPC 351, after referring to American Cynamid Co. Vs. Ethicon Ltd. [1975] AC 396 (HL), Speeches of Lord Diplock and Lord Fraser of Tullybelton in Warnink Vs.Townend, Reckitt Coolman Products Ltd. Vs. Borden Inc. [1990] 1 WLR 491 and Perry Vs. Truefit (1842) 6 Beav. 66, 73, observed as under:
“There was some debate in argument as to what precisely is the reputation for which the consortium contends. For present purposes I think it is clear enough that they contend that Parma ham is (1) a dry cured ham extracted from the flank of a heavy adult hog, (2) of distinctive characteristics as to shape, weight, colour when cut, aroma and flavour, (3) produced in the Parma region of Italy, (4) which bears a visible seal of authenticity up to the point of retail sale. For present purposes, the defendants do not contest any of these features other than (4), since all the others are asserted features of the pre-sliced and packaged ham which is sold by Marks & Spencer.
In order to obtain a permanent injunction at the trial, the producers will have to establish, first, that they have acquired in England a reputation in the trade description ‘Parma ham” as one connoting ham sliced in the presence of the retail purchaser from a leg bearing the Parma crown, secondly, that the defendants have represented that Marks & Spencer’s ham is ham of that description ‘in such a way as to confuse ordinary, sensible members of the public or a section of them, and thirdly, that such confusion has caused or is likely to cause damage to the producers. In order to obtain an injunction at this interlocutory stage, the consortium must establish that there is a serious question to be tried as to each of those three matters. If they do not do that, the balance of convenience does not become an issue and no, injunction is appropriate.
As to reputation, the producers will face the obvious difficulty that, many people’s normal, perhaps their only, experience of Parma ham in this country comes from consuming it in restaurants, where it is very rarely, if ever, sliced off the leg in their presence. However, the judge accepted that the evidence certainly disclosed that to some people in England Parma ham was synonymous with a whole ham bearing the crown sliced in the presence of the ultimate purchaser. That evidence came from people in the wholsale and retail food trades, restaurateurs and publishers and writers of books on food. I am not quite sure whether the judge was of the view that it established a serious question to be tried as to the existence of the alleged reputation amongst a section of the public, but for my part I am prepared to assume that it does.”
23. Seen in this light, it would appear that so long as the plaintiff/Union does not claim that they have acquired in India a reputation in the trade description JAY KAY locks, there could neither be any misrepresentation nor could there be any confusion. There must be both. On this basis, the learned Counsel for the appellant submitted that the registration of trade mark could not be denied.
24. In view of the foregoing discussion and the constraints and limitations imposed on the trade union /opponent under the Trade Union Act, it is incapable of raising any opposition but not in view of the language of Section 21 of the Trade Unions Act.
25. Moreover, registration of trade mark and trade certification marks being confined to one prescribed class of goods-, under Section 18(2) and under Section 62 read with Section 18(2), the contention of the learned Counsel for the appellant appears to be justified. It is rightly contended that the opponents should have got JK registration as collective trade mark under Section 60 of the Act as a certification mark in relation to specific goods and not in relation to all goods. The opposition should have been
filed by any of the members of this organization manufacturing or dealing in goods to file an opposition relying upon its registration or use or both. Since none of these courses has been adopted, the opposition was not maintainable.
26. It is further contended that for a trade mark which is as common as two letters of alphabet, the Court could not grant exclusive rights so wide as to cover unrelated goods such as locks. The term ‘JK’not being an invented mark it ought to have been strictly restricted to their goods. It is also contended that none of the members of the JK Organization have trade mark registration or any user for locks or anything similar to locks. This submission is not without force.
27. In this regard, it could not be denied that the mark ‘JAY KAY’ being phonetically close to the letters ‘J.K.’ would certainly cause confusion and deception in case the opponents are dealing in the same goods. In this connection, it has also been pointed out that the trade name/mark ‘JAY KAY’ is being, used for electrical cables, fabrics, watches, textile goods, machines, stoves and spices by different persons other than the members of the opponent Trade Union. It is not the case of the opponent that any one of its members is dealing in locks and is registered for anything in class 6.
28. Following a judgment of a Division Bench of this Court in Synthes Ag Chur & Ors. Vs. Rob Mathys India Pvt. Ltd., 1997 (17) PTC (DB) 669 and seeing the nature of the provisions laying emphasis on relation of trade mark with the goods, I am of the definite opinion that any attempt by any trade or industry to bask in the warmth of and make illicit profit and reputation not earned legitimately by their own effort but built by others, has to be disapproved in order to protect not only public interest of Indian consumers, private rights of the traders but commercial morality is well. But this approach has to be confined to same or similar products or at the most closely related products. This approach cannot be extended to totally different kind of products. In this latter area in order to protect the economic interests of manufacturers of different kind of goods and the public interest, English rigidity appears to be essential.
29. It may further be mentioned that the absolute identity of the two competing marks and their close resemblance is only one of the tests and not the only test. Every case must depend on its own facts. The value of the authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion in case of commonly used words in trade descriptive of the name, colour or nature. Quality of the goods, for like ‘micro’ and ‘sun’ could not be permitted to be monopolized excepting when two or more such words are used as a composite word. It may be mentioned that if a trade mark does not create any confusion in relation to goods then it would be difficult to accept that a similar mark is likely to deceive or cause confusion in relation to goods of others. It is not the case of certification trade mark where it might have caused confusion on account of simply on the pattern of franchise arrangement. It would be too much to assume and presume such kind of relationship in a case where there is no trade certification mark registered. Therefore, while reading Section 11(a), this aspect cannot be ignored.
30. No doubt ‘JK’ may be the house mark of the JK organization but this house mark could only be confined to the goods to which there is registration and not for all kinds of goods, for the Act does not recognise any collective mark excepting ” certification trade mark” and for the present purpose in the trade mark and certification trade mark both are related to goods and not independent of goods, for the present purpose. The ‘JK’ trade mark, thus, may have a particular bearing in respect of the registered trade marks in respect of specified class of goods and not all the goods. Except the phonetic similarity, no other thing is alleged to be common.
31. The learned Assistant Registrar referred to the following observations of Kerly in 10th edition at p.452:
“…it is not necessary, in order to find that a mark offends against Section 11, to prove that there is an actual probability
of deception leading to a passing off or an infringement action; it is sufficient if the result of the registration of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.”
32. But it is apparent from the foregoing that “cause of wonder” must relate to the same kind of goods, which are likely to be taken as coming from the same source, though actually coming from different source. Here, no lock or anything relating thereto is coming from the source of JK organization and therefore, there is no possibility of even wondering of a customer that the locks are of one of the concerns of JK organization. The fact that JK organisation can manufacture locks in future, is certainly not going to help for JK could be the name of not only JK organization but also
of many individual firms and concerns where name of one of the partners /their father starts with the letter J and the name of other partner or son starts from K. There could also be name of an individual JK. Is it plausible to stop the use of the letters “JK” or “Jay Kay” in registration of the different kinds of goods of different classes on the plea of causing confusion and deception?
33. In this regard, in response to the above question,, a number of authorities have been cited at the Bar.
34. The first is Dalip Chand Aggarwal & Ors. Vs. M/s. Escorts Ltd, . In that case, by a Division Bench of this Court following observations were made:
12. It will thus be seen that in all these cases even though the opponent was not manufacturing the goods of similar description for which registration of the trade mark was sought by the applicant, the application was refused on the ground that because of the reputation in the market of the opponents the goods of the applicants may be taken to be those of the opponents. In the present case admittedly the sales by the respondents of their
various goods and which are accepted in the market under the trade mark ‘Escorts’ have run into over crores. The respondents are undoubtedly a well known manufacturing company and have a reasonably known name. They had also started manufacturing goods even of the same description as that of the applicant though it was in the range of a few lakhs by 1963. The user by the appellant was undoubtedly very limited as of his own showing it was to the tune of about 2 1/2 lakhs, though as pointed out relevantly by the learned Judge the invoices did not relate to the period subsequent to 1960. In that state of affairs it could not really be said that there was an extensive user by the appellant as to satisfy the test of concurrent user within the terms of Section 12(3) of the Act. It is no doubt true that it is not necessary for the applicant’s trade to be larger than the opponent’s but then the extent of the business along with the extent of the business interest of the proprietor and the interest of the public have all to be correlated in deciding whether applicant’s mark should be registered or not. In this connection it is relevant to note that there is no absolute right to have the mark registered and if the Court is in any doubt that if the mark will cause confusion egistration will be refused. There is of course no fixed rule as to the minimum period of honest concurrent use necessary to lead to registration. In Kerley’s Law of Trade Mark and Trade Names, 9th Edition at Article 340, it has been stated that there was no reported case in which a period of concurrent use, so short as 21/2 years has been proved to be sufficient to bring the application within the advantage of Section 12(2). Even if this view was strictly applied and even a smaller use was held to be established from 1958 on which there is to say the least, fair amount of doubt the period would be too short to satisfy the test of extent of user for the purpose of Section 12(3) of the Act. It cannot be forgotten that the word ‘Escorts’ was in the market right from 1951 onwards with a very considerable sale. It is correct that prior to 1961 the goods which were sold by respondents were different but that will not take the case out of Section 11 and would at least show some indication as to why the appellant had used the word ‘Escorts’. Considering however, that the respondents were in field with the trade mark even though of other goods from 1951 onwards and considering that there was a very small amount of goods sold by the appellant in a period of a year or two prior to the registration by the respondents, the onus which was on the applicant, was rightly held not to have been destroyed. We, therefore, see no infirmity in the judgment of the learned Single Judge. The appeal is, therefore, dismissed. There will be no order as to costs.
35. Next case referred to by the learned Counsel for the respondent is M/s. Jugmug Electric & Radio Co. Vs. M/s. Telerad Private Ltd., ILR (1978) 1 Delhi 667. In that case, the respondent was the registered user of the Trade Mark “TELERAD” in respect of radio receiving sets and component parts thereof. However, the appellant also got registered the same trade mark “TELERAD” subsequently in respect of domestic electrical appliances. The rectification application under Section 56(l) was allowed and the registration granted in favour of the appellant and the registration granted in favour of the appellant was cancelled by Assistant Registrar. An appeal was filed. That was also dismissed. On further appeal, a Division Bench of this Court after considering the factors leading to deception or confusion under Section 11(a)(i) nature of the mark itself, (ii) the class of customers, (iii) the extent of the reputation, (iv)the trade channels, etc. dismissed the appeal. Following observations at p. 677 are relevant:
“We have considered the strong relevance of the nature of the trade marks in the relevant case. The class of customers are ordinary people who are not well versed in the specific information as to what is manufactured by the respondent and what is not manufactured by it. These customers go by the general impression that electrical manufacturers often manufacture both the types of goods and dealers sell both of them together. This leads to the impression which is formed by the customers by a confusion or deception taking place in their minds. We have also considered the trade channel and how it is common to both these types of goods. We have shown that the connection between the two is both at the manufacturing and at the marketing stages. Almost all the factors which are relevant for consideration under section 11(a) are, therefore, present in this case.”
Thus, this case was not decided on the basis of just phonetic similarity. Some other factors leading to deception and confusion were also found present. Besides, ‘TELERAD’ was an invented word.
36. In M/s. Escorts Ltd. Vs. Surinde Nath & Ors, , the
respondents applied for registration of trade mark consisting of word ‘Escorts’ in class 9 in respect of “Electric Wires and Cables”. M/s. Escorts Limited filed objections, being the registered proprietors of the trade mark ‘Escorts’ various classes for various types of goods manufactured by them. The appellants M/s. Escorts Ltd. had been manufacturing some of the goods since 1951 under the Regd. Trade marks ESCORTS under various classes. The trade marks under No. 202188 was registered under class 9 for electric flats, irons and electric kettles etc. The registered trade mark No.202190 besides others included electric heating elements, heating tubes, ater heaters and other items mentioned in the certificate of registration. The trade mark “ESCORTS’ applied for under No. 241605 for “for electric wires and cables’ by the respondent was deceptively similar to appellants’ registered trade mark ‘ESCORTS’. The Assistant Registrar as well as the High Court took the view that the respondent’s mark was deceptively similar to the appellant’s registered trade mark ‘ESCORTS’ and that M/s. Escorts Ltd. were using their mark prior to the date of filing of the application of the impugned mark by the respondents and after that on account of great reputation acquired by the appellant’s mark the use of a identical or deceptively similar mark by any other person is bound to cause confusion or deception among the general public. But despite this finding, the Assistant Registrar found that the respondent’s goods namely ‘electric wires and cables’ could not be considered as goods of the same description. He rejected the contention of the appellants that the respondent’s goods were allied goods. Dalip Singh v. Escorts’ case (supra) was relied upon by the learned Counsel for the respondent for, the objection under Section 11(a)
of the Act was found to be maintainable. Registration granted by the impugned order was set aside and the appeal was allowed. On this basis, it is submitted that the learned Assistant Register could not grant registration
under Section 12(3) of the Act.
37. M/s. Fatima Tile Works & etc. Vs. M/s. Sudarsan Trading Company Ltd. & Anr., was also referred to. But it does not touch upon the issues involved in the present matter. Though, in response to the above
question, above said authorities have been cited, yet these authorities cannot be followed in view of the recent judgment of the Supreme Court in Vishnudas Trading as Vishnudas Kishendas Vs. Vazir Sultan Tobacco Co. Ltd, 1996 PTC (16) 512. In this case, M/s. Vazir Sultan Tobacco Co. Ltd. has been manufacturing the brand name cigarette CHARMINAR and they were having the trade mark registered. However, they did not manufacture anything other than cigarettes since 1942. On the other hand, the appellant Vishnudas was manufacturing ‘quiwam’ and ‘zarda’ since 1973 and the appellant has been using the name ‘Charminar’on his bottles and boxes of ‘Quiwam’ and ‘Zarda’. Appellant applied for registration of ‘Quiwam’ and ‘Zarda’ under the Trade and Merchandise Marks Act, 1958 and the rules made thereunder. The respondent company filed objections the trade mark being in conflict with the registered trade mark of the respondent No,. 9951 and 170427 obtained in 1942 and 1955. The registration was refused. The appellants ultimately knocked the doors of the Supreme Court and the Supreme Court in this regard observed as under:
45. “…In our view, if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bona fide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader of manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers to get registration of separate and distinct goods which may also be grouped under the broad classification. If registration has been given generally in respect of all the articles coming under the broad classification and if it is established that the trader or manufacturer who got such registration had not intended to use any other article except an article being used by such trader or manufacturer, the registration of such trader is liable to be rectified by limiting the ambit of registration and confining such registration to the specific article or articles which really concern the trader or manufacturer enjoying the registration made in his favour. In our view, if rectification in such circumstances is not allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trade mark. Looking to the Scheme of the registration of trade mark as envisaged in the Trade Mark Act and the Rules framed thereunder, it appears to us that registration of a trade mark cannot be held to be absolute, perpetual and invariable under all circumstances. Section 12 of the Trade Marks Act prohibits registration of identical or deceptively similar trade marks in respect of goods and description of goods Which is identical or deceptively similar to the trade mark already registered. For prohibiting registration under Section 12(1), goods in respect of which subsequent registration is sought for, must be, (i) in respect of goods or description of goods being same or similar and covered by earlier registration, and (ii) trade mark claimed for such goods must be same or deceptively similar to the trade mark alreadyregistered.Itmay be noted here that under sub-section (3) of Section 12 of the Trade Marks Act in an appropriate case of
honest concurrent use and/or of other special circumstances, same and deceptively similar trade marks may be permitted to another by the Registrar, subject to such conditions as may deem just and proper to the Registrar. It is also to be noted that the expression “goods” and “description of goods” appearing in Section 12(l) of the Trade Marks Act indicate that registration may be made in respect;of one or more goods or of all goods confirming a general description. The Trade Marks Act has noted distinction between description of goods forming a genus and separate and distinctly identifiable goods under the genus in various other Sections, e.g., goods of same description in Section 46, Sections 12 and 34 and class of goods in Section 18, Rules 12 and 26 read with 4th Schedule to the Rules framed under the Act.
46. The “class” mentioned in the 4th Schedule may subsume or comprise a number of goods or articles which are separately identifiable and vendible and which are not goods of the same description as commonly understood in trade or in common parlance. Manufactured tobacco is a class mentioned in Class 34 of 4th Schedule of the Rule; but within the said class, there are number of distinctly identifiable goods which are marketed separately and also used differently. In our view, it is not only permissible but it will be only just and proper to register one or more articles under a class or genus if in reality registration only, in respect of such articles are intended, by specifically mentioning the names of such articles and by indicating the class under which such article or articles are to be comprised. It is, therefore, permissible to register only cigarette or some other specific products made of manufactured tobacco a mentioned in Class 34 of 4th Schedule of the Rules. In our view the contention of Mr. Vaidyanatha that in view of change in the language of Section 8 of the Trade Marks Act as compared to Section 5 of the
Trade Marks Act, 1940, registration of trade mark is to be made only in respect of class or genus and not in respect of articles of different species under the genus is based on incorrect appreciation of Section 8 of the Trade Marks Act and 4th, Schedule of
the Rules.
38. In Roshan Lal Oil Mills Ltd, Vs. Assam Company Ltd, 1996 PTC (16) 699, in a similar situation relying on the judgment of Supreme Court in Vishnudas Trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Co. Ltd., (supra), Hon’ble Mr. Justice M.K. Sharma relating to similar trade mark ‘JUMBO’ observed in paras 15,16 and 17 as under:
15. In my opinion it could be said that there is an innocent esemblance of the word ‘JUMBO’ between the two trade marks but it cannot, be said that the defendants have deceptively copied the trade mark in its letter and its essential features. It appears to me the trademark of, the plaintiff denotes, ‘JUMBO’ aeroplane whereas that of the defendant denotes ‘JUMBO’ elephant. The idea is to convey super-power or strength in edible oils and, tea respectively and, therefore, it cannot be said that there is an imitation by the defendant of the plaintiff’s trade mark and that the defendant is using the same with the sole object of diverting the business of plaintiff.
16. In this connection I may appropriately refer to the decision in the case Coca Cola Company of Canada Ld. V. Pepsi Cola; 1942 (59) RPC 127. In that case the question was whether the word ‘COLA’ was descriptive and commonly adopted in naming of beverages. It was held that ‘Cola’ was descriptive and commonly used by the manufacturers of non-alcoholic drinks. It was held that:
“The distinguishing feature of the mark Coca-cola was coca and not cola. For the same reason the distinguishing feature of the mark Pepsi Cola was Pepsi and not cola. It was not likely that any would confuse the word Pepsi with Coca.”
17. On analysis of all decisions placed before me including the decision in Vishnu Das Trading (supra) wherein it is stated by the Supreme Court that if trader or manufacturer trades in one or some articles coming under a broad classification, such trader or manufacturer cannot be permitted to enjoy monopoly and applying the said principles of law to the facts of the, present case, I am prima facie of the opinion that issuance of interim injuction at this stage is not called for in the present case. Accordingly, the application filed by the plaintiff and registered as IA 8444/1994 stands dismissed. It is made clear that the findings arrived at by me herein are my tentative and prima facie opinion and shall not be treated as my final and conclusive opinion on the merits of the case.
39. The case in hand is certainly better than the case of Vishnudas trading as Vishnudas Kishendas v. Vazir Sultan Tobacco to. Ltd., (supra) decided, by the Supreme Court for even it has not been shown that the respondents are producing and manufacturing locks of that class and the facts of the case appear to be the closest to the facts of the case of “JUMBO EDIBLE OIL”, and “JUMBO TEA”.
40. It appears that simple similarity in the name in the trade mark alone is not sufficient to make out case either of infringement or of passing off for in both the cases confusion or deception is the essential element. For ascertaining confusion, one has to examine: (a) the nature of the two marks including the letters used, the style of using letters, the devise in which they have been used, the colour combination of the trade mark, (b) the class of customers, (c) the extent of reputation, (d) the trade channels, (e) the existence of any connection in the course of trade and, (f) all
other surroundings circumstances. No doubt, it is not essential that all such factors should exist in each and every case to make out a case of passing off or infringement or to delay the registration of similar trade mark. But at the same time, it is also true that in case of presence of one single factor, leading to alleged deception or confusion would by itself not be sufficient to uphold the objection for registration of the trade mark.
41. The names starting with letters ‘J’ and ‘K’ being very common names, it is submitted that it cannot be inferred that it would cause deception and confusion in relation to different kinds of goods under Clause ‘a’ of Section 11. It is further argued that in case this kind of proposition is accepted, then any letter and common words used by public in general could be monopolised. Even ‘Sun’ and ‘micro’ could be monopolised by one or, the other firm.
42. Causing confusion or deception must relate to the goods alongwith the trade mark and not alone to the trade mark, is the submission of the learned Counsel. It is rightly contended that the moment it is accepted that the confusion and deception has to be in relation to the goods and that the opponents were not producing locks nor they had got any trade mark registered for the purpose of manufacturing the locks or anything of the Class 6, there could neither be confusion nor deception nor it is possible to presume so.
43. Changing the name from JK Varshney & Company to JK & Company does not appear to be a sin prohibited, barred or punishable under the Trade Marks Act and if the applicant could run the business of JK Varchney & Company then by changing from letters ” JK” to “Jay Kay” he is also trying to distinguish the resemblance with letters “JK’ used by the members of the JK Organization in their trade marks. To say that removing “Varshney” did not appeal to the rational mind on account of the confusion in spellings and consequential delayed payments, does not appear to be very plausible. One could imagine the deception and confusion if any member of the opponent was manufacturing anything of the Class 6 but it is not possible to do so in the absence of production of locks by any of its members.
44. In Regard to ownership of trade mark in relation to locks, a portion of the observations of the learned Assistant Registrar is required to be reproduced for the purpose of appreciating the evidence regarding distinctiveness of the trade names and the locks. It reads as under:
“…I have seen the evidence filed by way of bill books and orders. The orders are dated 1967 onwards and the bill books are from 1962. The user is claimed from 1949. At no stage the user of the mark since 1948 is substantiated by producing single document of sale of that year. Even the documents before me do not
disclose the consistent or systematic or continued sale of lock is under this mark. The applicant hails from Aligarh and the sales are effected in corner regions of South India. The sales appear to be sporadic and cannot constitute sufficient base to provide necessary distinctiveness as stringently required under the provisions of the Act to hold that the mark has become sufficiently distinctive to be entitled to find a place in the Register to enjoy the protection of the statue as provided in its preamble. Moreover, when the mark is hit by the prohibition of Section 11, it cannot be deemed to be distinctive as Kerly in his Footnote to page 171 of his 10th edition commented. “Strictly a mark that offends Against Sec. 11 or Sec. 12(1) cannot be distinctive”.
With regard to Section 12(3), it is well settled that mark should be distinctive and concurrently used. The mark being of deceptive character, it is extremely doubtful whether the same has been honestly adopted and concurrently used so as to take the benefit of this Section. It is well settled that the mark in double (?) should be refused as held by the House of Lords in 7 RPC 311. I, therefore, hold that the mark is not entitled to any protection or relief under the provisions of Section 12(3) of the Act.”
45. There are document from p.12 to p.83 such as telegrams, post cards, letters and bills on record which do not substantiate the finding of the learned Assistant Registrar. In the light of these documents, there does not appear any reason to disbelieve the affidavit filed by Shri Kedar Nath Gupta to indicate that he has been using the trade name ‘JAY KAY’ since 1965. It is evident that he has been receiving letters since 1966 in the name of JAY KAY & Company and booking orders of JAY KAY locks since 6th March, 1964. One fails to understand that if such a large number of bills and letters could not satisfy about the distinctiveness of the name of the locks of the applicant and his proprietorship of the trade name, then what would satisfy the Registrar of Trade Marks. Affidavits of Budh Sen Agarwal or Surendra Nath Sharma do not disclose anywhere that at any point of time, they had produced locks. The entire emphasis of their affidavits is that
nobody should use the letters ‘J.K.’ or ‘JAY KAY’ in trade name and trade mark for it has been virtually monoploised by them in respect of all kinds of goods whether the members of the opponent Trade Union are manufacturing or not or whether there is registration of the trade mark or not. The moment this monoply is rejected in respect of goods other than the goods which the members of the opponent Trade Union are manufacturing and/or Trade Marks relating thereto, the objection falls on ground.
46. As regard the distinctiveness and proprietary rights of the plaintiff in the trade mark of JAY KAY in locks, they are very well established by the sales, bills and correspondence and other evidence on record.
47. Now coming to the objection relating to Section 12(1) of the Trade and Merchandise Marks Act, 1958. This section reads as under:
12. Prohibition of registration of, identical or deceptively similar trade marks.-(1) Save as provided in Sub-section (3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods.”
48. This Section 12(1) specifically provided that in case of, concurrent user, identical or nearly resembling and deceptively similar trade marks in respect of the same goods or description of goods may be registered subject to certain reasonable conditions. This prohibition does not relate to different kinds of goods, to goods having different description.
49. In so far as the objection relating to Sub-section (3) is concerned, it is not the case of the opponent that they are using the same trade mark in respect of the same goods or description of goods.
50. It is necessary to reproduce here Sub-section (3) of Section 12 of the
Act. It reads as under:
(3) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.
51. So long as there is no concurrent user or any other special circumstances in respect of the same goods or description of goods, the Registrar could not think it fit to impose any conditions or limitations. The Assistant Registrar however could limit the registration in respect of locks and only in view of the stand taken by the applicant himself.
52. While one could not be oblivious to the expansionist approach of every trader whether it is of the opponents or that of the applicant, the Registrar of Trade Marks is not supposed to be swayed by these expansionist and extreme approaches. Small fishes have a right to survive despite the existence of the big fishes in the trade of different kinds.
53. For the foregoing reasons, the appeal is allowed and the Registrar of Trade Mark is directed to register the trade mark of the petitioner limiting the registration in respect of locks only for sale in the States of Uttar Pradesh, Andhra Pradesh, Tamil Nadu and Mysore.
54. In the peculiar circumstances of the case, parties are left to bear their own costs.
Appeal allowed.