JUDGMENT
S. Jagadeesan, Chairman
1. The appellant has filed this appeal against the order of the Deputy Registrar of Trade Marks, Delhi, dated 15.3.1995, rejecting the opposition of the appellant.
2. One Shri Satya Narain Gupta, Proprietor of M/s. Lal. Products, Kanpur, U.P., filed an application No. 371404 B on 24.1.1981, to register the trade mark ‘LALA’ word per se in respect of spices, hing, jeera, compounded asfoetidia, for cooking purposes, included in Class 30 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The said application was advertised in the Trade Marks Journal No. 882, dated 1.3.1986 at page 689. On 31.3.1986, the appellant herein M/s. P. Mittulaul Lala and Sons, Madras, filed their notice of opposition on the ground that the appellant is the registered proprietors of trade mark LALAH’S under No. 322245 in respect of curry powder and spices in powder form in class 30 and another mark under No. 358026 in respect in spices, spice powder, curry powder and condiments in class 30 and that the impugned mark is deceptively similar to that of the first respondent and the goods covered by the impugned mark are the same or of the same description. The further opposition is that the registration of the impugned mark will be contrary to the provisions of Section 11(a), 11(b), 11(e), 12(1), 12(3) and 18(1) of the said Act. The first respondent filed the counter statement denying all the material averments made in the opposition and further stated that the first respondent is the leading manufacturer and merchant of the goods with the impugned mark ‘LALA’. The mark ‘LALA’ means “Seth” or an owner of a shop or a person commanding respect in the Society. The first respondent honestly adopted the impugned mark being a part of their trading style and they are using the impugned mark for the past 15 years of the date of application and, therefore, due to extensive, open and continuous use, they are entitled for registration under Section 12(3) of the said Act. The impugned mark is not deceptively similar to that of the appellant’s mark and, therefore, the registration of the same will not in any manner contravene the provisions of Sections 11, 12 and 18(1) of the Act. Both the parties had filed their evidence by way of affidavits and also documents. The Deputy Registrar, after hearing the respective counsel, by order dated 24.9.1992, disallowed the opposition No. DEL-4529 of the appellant and accepted the application No. 371404 of the first respondent in class 30 for registration, dealing with the opposition of the appellant in respect Sections 9 and 11 of the said Act. The Deputy Registrar did not deal with the opposition of the appellant under Section 12 of the said Act on the ground that the counsel for the appellant had given up the said plea. The appellant herein filed an appeal CMM 41/1993, on the file of the High Court of Delhi. The learned Judge allowed the appeal and remanded the matter back to the Registrar for fresh hearing on the following terms:
It is made clear that the petitioner before me i.e., the opponent before the Registrar has not actually given up his objection under Section 12. In fact, the trade mark of the opponent, i.e., the petitioner before me was registered earlier and normally no Registered Proprietor would give up such an objection under Section 12. Notes of arguments are furnished to me which were filed before the Registrar. In the circumstances, the order of the Registrar is required to be set aside since he had failed to consider the case under Section 12. The Registrar is required to consider the objection of the petitioner. Accordingly, the order of the Registrar is set aside. The matter is remitted back to the Registrar for reconsideration of the matter. Parties are directed to be present before the Registrar on 7th November, 1994 at 11.00 A.M.
The petition is accordingly allowed.
3. After the remand, the Deputy Registrar reheard the matter and passed the present impugned order over-ruling the objection of the appellant under Sections 9, 11(a), 11(b) and 11(e) of the said Act. Insofar as the objection of the appellant under Section 12(1) of the said Act is concerned, the Deputy Registrar upheld the same on the ground that both the impugned mark and that of the appellant are similar and appellant’s goods as well as the first respondent’s goods fall in class 30 with same description. However, the Deputy Registrar found that the first respondent is entitled for the benefit of Section 12(3) on the ground that the first respondent is using the trade mark “LALA” in Northern India and the word “LALA” is also commonly used in Northern India and further the first respondent has been using the impugned mark since 1971 in respect of only a few goods out of the goods registered under the appellant’s mark and ultimately disallowed the opposition of the appellant.
4. Aggrieved by the same, the appellant filed an appeal CM(M)-320/95 on the file of the Delhi High Court which stood transferred to this Appellate Board by virtue of Section 100 of the Trade Marks Act, 1999, and numbered as TA/114/2003.
5. We have heard the arguments of Shri N.K. Anand, the learned Counsel for the appellant and Shri R. Bhalerao for the first respondent.
6. Shri N.K. Anand, the learned Counsel for the appellant contended that the Deputy Registrar, having upheld the objection of the appellant under Section 12(1), ought not to have extended the benefit of Sub-section (3) of Section 12 to the first respondent. He also contended that the appellant’s mark as well as the first respondent’s mark are similar and that there would be confusion in the trade if the impugned mark is allowed to be registered. He further contended that the appellant’s mark is a world famous one as they are exporting their goods to various countries and in 1985-86, the appellant’s sales for export was approximately Rs. 2.00 crores and the sales in India was Rs. 73.00 lakhs. The appellant is associated with the trade mark since 1920 and the first respondent had adopted their mark which is similar to that of the appellant’s mark since 1971, i.e., after nearly 50 years. In such a circumstance, the adoption of the first respondent of the impugned mark cannot be said to be an honest adoption and consequently the first respondent is not entitled for the benefit of concurrent user as contemplated under Section 12(3) of the said Act.
7. On the contrary, the learned Counsel for the first respondent contended that the sales statistics of the appellant do not reveal any indigenous sales from 1968 to 1977-78. Only from 1978-79, the separate sales statistics in respect of the export sales and indigenous sales were furnished. In that case, upto 1977-78, the appellant had no indigenous sales at all. In such circumstances, the adoption of the mark ‘LALA’ by the first respondent, though phonetically similar to that of the appellant, cannot be said to be a dishonest adoption. The first respondent’s use of the impugned mark since 1971 had neither been disputed nor denied at least after the production of the documentary evidence. On the date of application for registration, the first respondent had been using the impugned mark for a decade and there was no objection from the appellant. Hence, the Registrar had rightly held that the adoption of the impugned mark by the first respondent is honest and granted the benefit under Section 12(3) of the said Act. Insofar as confusion is concerned, the learned Counsel for the first respondent contended that the appellant had not produced any evidence.
8. We have carefully considered the above arguments of both the counsel.
9. The learned Counsel for the appellant did not advance any argument with regard to the objection under Sections 9 and 11 since the same were over-ruled by the Deputy Registrar in the earlier order dated 24.9.1992. Before the High Court of Delhi in CM(M) 41/93, the appeal filed by the appellant against the order of the Deputy Registrar dated 24.9.1992, the only argument advanced seems to be that their objection under Section 12 was not considered and the appellant’s counsel would not have given up the said objection, especially, when the appellant is a registered proprietor of the trade mark. The learned Judge of the High Court of Delhi, set aside the order of the Registrar only on the ground that he failed to consider the case of the appellant under Section 12 and the matter was remanded back to the Registrar for reconsideration of the matte. Hence, before us, the learned Counsel for the appellant has challenged impugned order of the Registrar only on the ground that the first respondent is not entitled for the benefit under Section 12(3) on the ground that his claim under Section 12(3) itself makes it clear that the first respondent’s use of the impugned mark is not with honest intention and he has adopted the same to encash the well known mark of the appellant and to make a claim as honest concurrent user. It is for us to consider whether the Deputy Registrar is correct in concluding that the first respondent is entitled for the benefit of Section 12(3) of the said Act. For the purpose of convenience, Section 12 is extracted hereunder:
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 different proprietor in respect of the same goods or description of goods.
(2) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or merely resemble each other in respect of the same goods or description of goods the Registrar may defer the acceptance of the application or applications bearing a later date until after the determination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any.
(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 merely resemble each other (whether any such trade mark is already registered to not) in respect of the same goods or description of goods, subject to such conditions arid limitations, if any, as the Registrar may think fit to impose.
Sub-section (1) of Section 12 bars the registration of identical or deceptively similar trade mark especially in respect of the same goods or the description of goods which is identical with or deceptively similar to a trade mark which is already registered. Sub-section (3) of Section 12 is an exception to the bar contemplated under Section 12(1). Sub-section (3) provides for registration of same trade mark by more than one proprietor in the case of honest concurrent use or under other special circumstances. While considering the honest concurrent user, the factors relevant for the subject have been enumerated and explained in several judgments of various High Court as well as the Supreme Court. They can be broadly summarized as follows:
(1) Honest of concurrent user;
(2) Period of use;
(3) Extent of use;
(4) Degree and probability of confusion and deception;
(5) Proof of confusion in use;
(6) Balance of convenience, and
(7) Other special circumstances.
10. It is the contention of the learned Counsel for the appellant that the claim of the first respondent for the benefit of Section 12(3) itself is a clear proof of his dishonest intention in adopting impugned mark ‘LALA’. When the impugned mark and the mark of the appellant are phonetically similar and the appellant’s registered mark is in use since 1920, the adoption of the impugned marks by the first respondent cannot be said to be honest and as such, the first respondent is not entitled for the benefit of Section 12(3) of the Act. In considering this issue, we have to advert to the evidence let in by both the parties. The appellant claimed that the use of its trade mark is well known in India as well as abroad and its export sale is much more than the indigenous sale in India. Hence, there cannot be any doubt that the traders are very familiar with its trade mark ‘LALAH’S’ which is in the market since 1920. The adoption of the impugned mark by the first respondent is only in 1971 and in such a case, the adoption cannot be bona fide.
11. The appellant filed the sales statistics which is extracted below:
Period Sales turnover Sales turnover Sales promotional
relating to the relating to the expenses
appellant's goods appellant's goods
bearing the trade bearing the trade
mark LALAH'S mark LALAH'S
(export only) (indigenous sale
only)
1968-69 47,05,529.00 Both 12,643.00
Export/Indigenous
sales together
1969-70 33,11,996.00 " 66,784.00
1970-71 20,12,939.18 " 5,273.02
1971-72 38,90,817.20 " 2,456.87
1972-73 30,78,956.59 " 4,188.33
1973-74 32,14,578.41 " 7,071.40
1974-75 50,29,526.04 " 3,042.80
1975-76 44,70,735.29 " 2,315.36
1976-77 47,82,259.47 " 2,578.54
1977-78 60,38,656.10 " 1,01,598.00
1978-79 52,41,296.43 13,68,597.55 1,11,106.33
1079-80 61,78,086.73 26,93,170.13 80,376.77
1980-81 69,95,134.63 24,27,358.96 76,533.72
1981-82 67,42,635.14 34,97,757.01 2,35,359.52
1982-83 96,65,607.33 39,69,260.78 1,32,495.90
1983-84 1,01,64,263.48 51,73,467.07 1,81,431.64
1984-85 1,53,72,597.00 65,67,226.46 3,98,398.50
1985-86 2,07,03,273.14 72,88,420.58 7,08,398.24
From the above statistics furnished by the appellant, it is clear that from 1968-69 to 1977-78, it specifically reflects the export sale of appellant’s goods. The column relating to indigenous sale specify a note “Both Export/indigenous sales together” The appellant had not furnished any details with regard to the places of their sales and the separate sales figures in respect of each area. Of-course, the appellant has claimed that they are having their trade throughout India. In the absence of any proof of evidence that the appellant is having the trade in the place of the first respondent and the first respondent is fully aware about the appellant’s trade mark, the adoption of the impugned mark by the first respondent cannot be said to be dishonest.
12. The first respondent has claimed the benefit of Section 12(3) only in the counter statement since the appellant in their opposition has averred that the first respondent is not entitled for the registration of the impugned mark even under Section 12(3). When the first respondent has claimed the benefit of Section 12(3) in the counter statement because of the denial by the appellant, it cannot be said that the first respondent had made such claim or adopted the impugned mark with the knowledge of the appellant’s registered mark.
13. Coming to the use of the first respondent’s mark, there is no doubt that the first respondent is using the impugned mark since 1971. In fact, even in the grounds of appeal, the appellant has stated as follows:
The necessary pre-condition that when the mark are identical, and the goods are identical, the use should be extensive and for a considerable length of time, has not been identified. Whereas the word LALAH’S has been associated with the appellant since the year 1920, the respondent’s use has only been in the year 1971 abut 50 years later.
This statement would definitely be an admission with regard to the use of the impugned mark by the first respondent since 1971. Though the appellant claimed that the first respondent has admitted knowledge of the appellant’s mark while adopting the impugned mark, nothing has been pointed out from the records, with regard to the admission of such knowledge by the first respondent. The first respondent has also along with his counter statement filed the sales statistics. As per the said sales statistics, their turn over in the year 1971-72 was Rs. 79,913.16.
The sales had increased in the year 1987-88 to 7,85,291.97. On the date of the application, i.e., in the year 1981, the turn over of the first respondent is nearly Rs. 3.00 lakhs. Hence, it is clear that the first respondent has been extensively using the impugned trade mark in the State of Uttar Pradesh for a considerable length of 10 years prior to the date of the application and thereafter also continued to use the same. The period of long use as well as the extent of use from the sales statistics would satisfy the honest concurrent use of the impugned trade mark by the first respondent.
14. So far as the confusion or deception is concerned, there is absolutely no evidence from the side of the appellant. Not even a single affidavit has been filed in this regard. Considering the question of balance of convenience also, the first respondent has been suing the impugned trade mark since 1971. The use of the impugned trade mark has in no way affected the sales of the appellant. The sales statistics of the appellant shows a phenomenal increase in the sales as the years passed. The 1968-69 sales of Rs. 47,05,528.00 of the appellant has increased in the year 1985-86 to Rs. 2,07,03,273.14, so far as the export is concerned and Rs. 72,88,420.58 insofar as indigenous sales are concerned. Similarly, the appellant’s promotional expenses had also increased from Rs. 12,643.00 during the period 1968-69 to Rs. 7,08,398.24 during the period 1985-86. Hence, the sales of the appellant seems to have never been affected.
15. The other special circumstance can be the inaction on the part of the appellant. If the first respondent is to the construed with the knowledge of the appellant’s mark because of the registration, the appellant can also be imputed with the knowledge of the use of the impugned mark. If the appellant is aware of the use of the impugned mark, if not since 1971, atleast at a later point of time, there is absolutely no explanation from the appellant for not taking any action against the use of the impugned mark. The net result is that the first respondent had been using the mark for more than a decade till the date of the application and nearly for a quarter century subsequent to the filing of the application for registration. In such circumstances, we do not think, it would be proper to refuse the registration of the impugned mark.
16. However, taking into consideration of the fact that the first respondent is having the major trade in the State of Uttar Pradesh alone, we are inclined to impose a restriction for the use of the impugned trade mark in the Northern India alone. Accordingly, the appeal is dismissed with a direction to the Registrar of Trade Marks, Delhi, to restrict the use of the impugned trade mark ‘LALA’ in respect of application No. 371404 in class 30 within the States of Uttar Pradesh and Uttaranchal alone. There will be no order as to costs.