JUDGMENT
Ramji Lal, ARTM.
1. On 3.9.1987, M/s Parivar Seva Sanstha, B-2/16 Safdarjung Enclave, New Delhi -110029 (hereinafter referred to as the applicants) filed an application for registration of a trade mark BLISS in class 10 in respect of condom under the provisions of Trade and Merchandise Marks Act, 1958 and rules framed thereunder. The application was numbered as TM-1 application No. 477813 in class 10 wherein the user of the mark was claimed as proposed to be used on the date of filing the application in the Trade Marks Registry. In due course, the application was examined and consequent upon a hearing as granted to the application, the application was ordered to be advertised as accepted for registration in the Trade Marks Journal No. 1083 dated 16.7.1994 at page 476.
2. On 6.10.1994, M/s Bliss Chemicals & Pharmaceutical India Limited, having its office at Skypak House Annexe, Marol, Andheri (East), Bombay-400059 (hereinafter referred to as the opponents) gave a notice of their intention to oppose the registration of the trade mark advertised, as aforesaid, on the following grounds :-
1. That the opponents have been carrying on a well established business as manufacturers and dealers inter alia in medicinal and pharmaceutical preparations and substances including contraceptives, etc. for the last several years.
2. That the word BLISS is the essential feature of their corporate name, the word BLISS was conceived by them after making enquiries in the trade that nobody else was using it in respect of the same goods or description of goods.
3. That the word BLISS invariably and in a prominent manner appears on a products manufactured and marketed by them.
4. That the opponents have carried out considerable publicity and undertaken large scale sales promotional efforts and schemes to publicise, promote and popularise the aforesaid goods bearing the trade mark/house mark BLISS.
5. That the applicants have applied for a trade mark consisting of the word BLISS which is identical to their aforesaid mark.
6. That the applicants are seeking registration for their trade mark BLISS in respect of their similar and/or allied description of goods.
7. That the opponents further submitted that the mark applied for by the applicants is neither adapted to distinguish nor it is capable of distinguishing the goods of the applicants during the course of trade. Therefore, the mark applied for by the applicants does not quality for registration within the meaning of Section 9 of the Act.
8. Since the opponents trade mark/house mark BLISS have acquired tremendous reputation and goodwill in the trade of medicinal and pharmaceutical preparations, therefore, the registration of the mark applied for by the applicants shall be contrary to the provisions of Section 11(a) of the Act and so also it is disentitled for protection in a court of law.
3. Finally, the opponents submitted that the registration of the applicants mark will be contrary to the provisions of Sections 9, 11(a), 11(e) and 18 of the Act. They further submitted that the notice of opposition be allowed with costs and the impugned application be refused registration.
4. On 8.4.1996, the applicants filed their counter-statement in the matter generally denying all the material allegations as contained in the notice of opposition. The applicants submitted that on account of prima facie and continuous user and the proposition given to the trade mark BLISS, the applicants have acquired and retained an exclusive right to the use thereof in respect of condom at the time of the adoption of the name, BLISS on the part of the applicants, there was no such or similar mark in the use on behalf of the opponents in respect of condom. The applicants submitted
that the trade mark BLISS applied for by them in the impugned application has become distinctive on their goods. The applicants particularly submitted, that the registrar did not cite any conflicting mark in the examination report issued in respect of the impugned application.
5. Finally, the applicants submitted that the notice of opposition is fraudulent and fictitious, therefore, it should be dismissed and their application No. 477813 so accepted be allowed to proceed to registration and the costs of these proceedings be awarded to them.
6. The opponents filed their evidence in support of opposition under Rule 53 by way of an affidavit dated 24.9.1997 duly deposed by Mr. M.G. Wagle, Managing Director of the opponents company together with some exhibits as mentioned therein.
7. The applicants filed their evidence under Rule 54 in support of their application by way of an affidavit dated 6.2.1998 duly deposed by Mr. Shailendra Singh, Chief Manager of the applicants firm together with some annexure as mentioned therein.
8. The opponents also filed evidence in reply under Rule 55 by way of an affidavit dated 30.6.1998 duly deposed by the same person Mr. M.G. Wagle, together with some exhibits as mentioned therein. The applicants also filed evidence in rebuttal by way of an affidavit of the same person Shri Shailendra Singh together with some annexure as mentioned therein.
9. After completion of the evidence as referred to above, the matter was fixed for hearing and both the parties notified their intention on prescribed Form TM-7 to attend the hearing. Ultimately, the matter came up for hearing before me on 7th December, 2001 when Shri Ajay Sahni, Advocate instructed by M/s International Trade Mark Bureau Bombay appeared for the Opponents and Shri N.K. Anand, Advocate, Miss Satya Siva Swami, Advocate and Miss Ritu Singh Ghuman, Advocate appeared for the applicants. The matter was concluded and argued on 7.1.2001 and the order thereto was reserved by me.
10. At the outset Mr. Ajay Sahni, the Ld. Counsel for the opponents mainly confined his arguments to the objections raised under the provisions of Section 9. He submitted that the mark applied for by the applicants was not distinctive but descriptive in nature and therefore, not registrable under Section 9 of the Act. He argued that BLISS had reference to the character and quality of the goods, i.e., CONDOM and thus laudatory. Shri Sahni drew my attention to an advertisement submitted with the affidavit dated 6.2.98 of Mr. Shailendra Singh and submitted that the applicants have used the mark in a descriptive matter. The advertisement in question carries the slogan “Sheer BLISS” in the left hand upper corner with the picture of a man and woman and then the trade mark BLISS in the right hand bottom corner. In support of his arguments Mr. Ajay Sahni referred to the case of “HOLD and DRAW”, reported
in 1964 RFC 142, wherein the expression HOLD and DRAW in respect of a machine was held to be directly descriptive of the goods and was therefore, refused.
11. I have gone through the judgment and the relevant passage may be stated as under:
“In my opinion, the word “hold refers to the feature of the machine which enables a player to hold any symbol while he plays again. The word “draw”, which is defined in Webster’s New International Dictionary as to take, in the sense of receiving, as a prize from the lottery, seeks to me to refer to the player’s being able to draw a prize in respect of any winning combination, as opposed to exercising his option to “double-up” or “triple-up”. In my view, therefore, the words of which the mark consists have a clear and direct reference to specific characteristics of the goods claimed and so do not qualify for registration under Section 9(1)(d).”
12. Mr. N.K. Anand, the Ld. Counsel for the applicants submitted that the word BLISS is not descriptive of either the character or the quality of the goods nor it is laudatory in relation to condom i.e. which are the goods of the applicants. He submitted that the word BLISS may be suggestive of some idea such as contentment or happiness. But it is not descriptive or laudatory of the goods to be disqualified under Section 9 of the Act. He submitted that the test laid down is one of the direct reference and not some remote reference. He referred to the passage at page 65 of late Dr. S. Venkateswaran’s, ‘The Law of Trade Marks and Passing Off, defining “Direct Reference”, the relevant portion is stated as under:
“The words ‘direct reference’ in this clause imply that a word which has only an indirect reference to the character or quality of the goods does not come within the mischief of this clause.
“In consideration this question (whether the reference is ‘direct’) the Registrar or the Court is not in any way bound by strict grammatical usage, for the test is intended to relate to the conditions obtaining in industry and commerce. Direct reference corresponds in effect to aptness for normal description.”
13. Mr. N.K. Anand, the Ld. Counsel concluded his arguments under Section 9 stating that the trade mark BLISS had no direct reference to the character and quality of the goods in question nor it is laudatory. He submitted that the trade mark BLISS is distinctive of the applicants goods and in actual use for more than ten years.
14. I have carefully considered the arguments of both the Ld. Counsel. The question before me is whether the word is disqualified from registration as having a direct reference to the character or quality of the goods as per Section 9(1)(d) of the Act and whether the word is laudatory of the goods.
15. On the question of direct reference, if the mark has direct reference to the character or quality of the goods, it would not he adapted to distinguish the goods of the applicants and hence, will not be registrable either under part A of the Register or part ‘B’ of the Register. If the mark has no reference to the goods, it would be registrable under part ‘A’ of the Register, all other provisions of the Act being taken into consideration. I will also take up the question of whether the word is a laudatory epithet for the goods.
16. Keeping in view the above principles, I am first examining the meaning of the word BLISS in the dictionary. The Concise Oxford Dictionary (9th edn.) defines the word BLISS as follows :
“Perfect joy or happiness ; enjoyment; gladness ; being in heaven ; a state of blessedness.”
17. The word BLISS does not convey some idea of happiness but not in any descriptive sense. It has been held time and again that a direct reference to the character or quality of the goods means a reference to the composition, type, design, quality or grade of the goods or of their place of origin, sale or manufacture. In my opinion, though the word BLISS may be suggestive of happiness or enjoyment, it is not a descriptive word. It has no reference to the composition, type, design, quality or grade of the goods or of their place of origin, sale or manufacture, and hence, cannot be said to have any direct reference to the character or quality of the goods.
18. The evidence filed by the applicants indicates honest adoption of the mark applied for. The trade mark BLISS has been adopted by the applicants in relation to condoms. Though it is a word of the English language, it has no direct reference to the goods.
19. Shri N.K. Anand, the Ld. Counsel for the applicants submitted that prior to the actual adoption and use, the applicants undertook a search of the trade mark BLISS in class 10 at the Trade Marks Registry which indicated a nil conflict. The official search forming a part of the Trade Marks Registry’s record and issued under No. TM-54/2908/3479 dated 26.8.1987 is annexed as part of Annexure ‘A’ of Shri Shailendra Singh’s affidavit dated 6.2.98.
20. The application in question was filed by the applicants in the Trade Marks Registry on 3.9.1987, i.e., only after conducting the search.
21. It is evident from the evidence filed by the applicants that the applicants have been marketing their products under branded category including condoms under the trade mark BLISS under the Contraceptive Social Marketing Programme of the Ministry of Health & Family Welfare, Govt. of India. The affidavit filed by Mr. Shailendra Singh also show that there was an agreement between the applicants and the Government of India to market inter alia BLISS brand of condoms. A copy of Government’s
order on Hindustan Latex Limited for supply of the applicants inter alia BLISS brand
of condoms has been filed which may be seen at Annexure ‘C’ para 5 of Shri
Shailendra Singh’s affidavit dated 6.2.98.
22. The applicants have furnished sales figures for their products sold under the
trade mark BLISS from the years 1988-89 onwards up-till 1997-98. The quality of products sold under the trade mark BLISS runs into several Lakhs of rupees and is more than 100 Lakhs of rupees for the entire period shown. In this connection, the applicants have filed invoices and also some more invoices pertaining to the trade mark BLISS. All these invoices carry the trade mark BLISS of the applicants. The invoices also indicate that sales of BLISS products have been made all over the country, including inter-alia the National Capital Territory of Delhi, the States of Punjab, Uttar Pradesh, Haryana, West Bengal, Himachal Pradesh and Rajasthan.
23. The applicants have also furnished expenditure incurred on the advertisement of their mark BLISS in the affidavit of Shri Shailendra Singh dated 6.2.1998. These advertisement figures also runs into several lakhs of rupees. The applicants also furnished copies of newspapers, magazines. Copies of orders sent to the applicants asking for BLISS brand condoms.
24. On the evidence filed by the applicants Mr. Ajay Sahni, the Ld. Counsel for the opponents relied upon the judgment in MJ-Tone case reported in 1993 IPLR 39, referring to the principle applicable for securing the benefit of honest concurrent user under the Act. It is stated at page – 46 of the judgment that for the purposes of Section 12(3), the honest concurrent user must be for a period prior to the date of the application and that a party is not entitled to take advantage of use for several years merely because its application for registration remains pending before the Registrar.”
25. In this regard, it is a settled principle that a right to a trade mark is acquired by use of the trade mark upon vendible goods or by virtue of registration. In the instant case, neither the opponents have shown use of BLISS as a trade mark, nor they have acquired rights under the statute by virtue of registration. Under these circumstances, I need not go into the question of whether the evidence, subsequent to the date of application can or cannot be taken into consideration.
26. Mr. Ajay Sahni, the Ld. Counsel for the opponents in the last leg of his arguments relied upon the use of the word BLISS as part of the opponents trading style “Bliss Pharmaceuticals India Limited” since 1984 and due to such prior use invoked the provisions of Section 11(a) read with Section 18(1) of the Act.
27. On the other hand, Mr. N.K. Anand, the Ld. Counsel for the applicants contended that under Section 11(a), the preliminary onus of establishing reputation on the part of the opponents must be the proof of user and reputation claimed of a mark by the opponents upon the goods. Unless there was evidence to the fact that a trade or business name was being used as a trade mark on the goods, the preliminary onus on the opponents would not be discharged under the Section. Shri Anand, submitted
that a word/name merely being used as a trading style, does not amount to a trade
mark used unless it is shown to be so.
28. Mr. Anand further proceeded to argue that the opponents evidence indicated the use of a trade mark today in relation to female contraceptive, but there was no single documents showing trade mark use of the word BLISS. Shri Anand referred to the statement of sales for the period 1985 to 1996 filed by the opponents as Exhibit A to M.G. Wagle’s affidavit dated 13.8.1997, which does not mention the particular product/trade mark for which the statement has been made. Similarly, my attention was drawn to Exhibit B, being a statement of the advertisement and promotional expenses for the period 1985 to the year 1996 which again does not mention the particular product/trade mark for which the expenses were incurred by the opponents.
29. The perusal of Exhibits C-1 to C-5, as filed by the opponents are sales invoices pertaining to the products sold under the trade mark TODAY. There is no mention of a product sold under the trade mark BLISS and hence use of the word BLISS as a trade mark is not shown. Similarly, the cuttings of advertisement issued by the opponents also relate to a product under the trade mark TODAY. The advertisement consist of conversations where the focus is on the trade mark TODAY. After a study of the entire advertisement, I find that the word BLISS as part of Bliss Pharmaceuticals India Limited appears only in very small print and removed to a corner and thus, is inconspicuous. The advertisements do not indicate the use of the word BLISS on the part of the opponents as claimed by them.
30. At this stage Mr. N.K. Anand, the Ld. Counsel drew my attention to the product packaging and literature filed by the applicants of the opponents product TODAY along-with Shri Shailendra Singh’s reply affidavit dated 2.5.2001. A perusal of the packaging shows only use of word TODAY as a trade mark and no use of BLISS as a trade mark.
31. The applicants products BLISS also filed in evidence with Shri Shailendra Singh’s reply affidavit is different in get-up, lay-out and design. The manner of use is different from the opponents products packaging for today, which clearly indicate their being no mala fide in the applicants use. Lastly, I consider the Exhibits 1 and 2 attached to Mr. M.G. Wagle’s affidavit dated 29.6.98. The same affidavit consists of a certificate of renewal license to manufacture drugs and the certificate of renewal license to manufacture drugs and the Certificate of Incorporation and Memorandum and Articles of Association of the opponents company. These again do not show the use of BLISS as a trade mark on the part of the opponents.
32. I find that as per the evidence on record, the opponents have failed to discharge the preliminary onus cast upon them to establish reputation and proprietorship in the mark BLISS in their favour. The question of confusion or deception under Section 11(a) docs not arise. With respect to Section 9, I find the trade mark BLISS does not
suffer from any infirmity as it has no direct reference to the goods nor it is laudatory. It is distinctive for the purpose of registration. Under Section 18(1) of the Act, it is well settled that a party may be proprietor of a trade mark which it proposes to use, and as such the present application is in conformity with the provision.
33. In view of the above. Opposition No. DEL-8987 is dismissed and Application No. 477813 in class 30 so accepted shall proceed to registration. There shall be no order as to the costs.
34. Both the parties are left to bear their own costs.