* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on : 27.01.2010
Date of decision: 05.02.2010
+ OCJA No.3/2000
PRAMOD KUMAR GARG .... ..... .... ..... APPELLANT
Through : Mr.Neeraj Grover, Advocate
VERSUS
M/S PUNJAB TRACTOR LIMITED .... ..... RESPONDENT
Through : Mr.M.G.Ramachandran and
Mr.Atishi Dipankar, Advocates
CORAM:
HON'BLE MR. JUSTICE SANJAY KISHAN KAUL
HON‟BLE MS. JUSTICE VEENA BIRBAL
1. Whether the Reporters of local papers
may be allowed to see the judgment? YES
2. To be referred to Reporter or not? YES
3. Whether the judgment should be YES
reported in the Digest?
SANJAY KISHAN KAUL, J.
1. The appellant as a sole proprietor of M/s Prakash Agricultural
Industries (India) filed an application with the Trade Mark
Registry on 22.06.1979 seeking registration of the trade mark
„SWARAJ‟ in respect of Diesel Oil Engines (not for land
vehicles), hand water pumps and parts thereof in Class 7 for
sale in the States of Uttar Pradesh, Madhya Pradesh,
Rajasthan, Bihar and Haryana. The appellant claimed user of
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the mark since 1975 on an advertisement of the mark in the
Trade Mark Journal on 16.03.1984. The respondent gave a
notice of intention to oppose the registration of the mark on
the ground that it was violative of Sections 11, 12 & 18 of the
Trade and Merchandise Marks Act, 1958 („the said Act‟ for
short). On completion of trial on this question, the Registrar
was pleased to dismiss the opposition and accepted the
request for registration of the mark.
2. Respondent aggrieved by this Order, preferred C.M.(M)
No.49/1994 and succeeded vide Order dated 27.01.1997 in
seeking a remand for fresh consideration of the matter after
giving sufficient opportunities to the parties to lead their
evidence. Fresh evidence was filed and once again the
opposition to the mark was dismissed by the Order dated
30.12.1997. Respondent aggrieved by this Order preferred
C.M.(M) No.97/98 before the learned Single Judge of this Court
(as he then was) which was allowed on 14.01.2000.
3. The present appeal has thereafter been preferred under
Section 109 (5) of the said Act.
4. The opposition arose on account of the claim of the
respondent that the trade mark „SWARAJ‟ was registered in its
name under Class 12 on 12.12.1977 for tractors and parts
thereof and on 13.05.1986 in respect of hand tools in Class 8
as also on 13.05.1986 in respect of the tractors/harvester
combines, forklifts and parts thereof in Class 12. The
respondent claimed identity of marks in respect of similar
goods as both sets of goods are used in agricultural activity,
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the source of supply is same from the concerned shops and
there is commonality of the consumer. Thus, the plea raised
was of likelihood of discipline or causing confusion in the mind
of the consumer in respect of the trade source. The
respondent claimed reputation on account of extensive use
and pleaded that the registration of the mark of the appellant
is prohibited on that account in view of the provisions of
Section 11 (a) of the said Act. On the other hand, the
appellant pleaded that the goods are quite similar in nature in
attracting the provisions of Section 10 of the said Act.
5. The impugned order has discussed the aforesaid pleas and
the finding of the Registrar is that there was no likelihood of
deception. The plea of the respondent that the evidence
produced by the appellant of user from 1975 to 1980 being of
a doubtful nature has also been considered. The alternative
plea of an honest concurrent user has also been examined.
6. The learned Single Judge has found that the undisputed facts
show the registration of the mark of the respondent. The sale
figures for tractors show a limited sale between October, 1974
to June, 1975. The application of the appellant was filed on
22.06.1979 but they claimed user from 01.06.1975. The two
marks were identical. The learned Judge has observed that a
tractor also has an engine fitted to it and is operated with
diesel oil. It has a four-stroke engine whereas harvester
combines are the attachments to the tractor. On the other
hand, the goods of the appellant are a unit for conversion of
chemical energy of diesel oil into mechanical energy. Thus,
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though the goods may not be same in a technical sense but
both the equipments are machines for conversion of chemical
energy into mechanical energy. The important aspect
considered is the user which is primarily in agricultural activity
forming one class of consumers with the trade channels being
the same. Thus, the finding is of a broad similarity, affinity
and other circumstances like the purchasing public and thus if
the dispute is judged from a commercial and business point of
view, there is a chance of confusion and deception in the
minds of the purchasing public. A finding has also been given
that the respondent has been in the trade from 1972,
registration was obtained in 1977 while the appellant filed an
application for registration in June, 1979 though alleging user
from 01.06.1975. The knowledge is attributed to the appellant
on the ground that while making the application they
consciously made the same for diesel oil engines (not for land
vehicles) being aware of the fact that for the tractors the mark
was already registered and thus sought to specifically include
the goods of the respondent and there cannot thus be an
honest concurrent user.
7. Learned counsel for the appellant, at the inception,
emphasized that the learned Single Judge of this Court ought
not to have interfered lightly with the Order of the Registrar of
Trade Marks merely because another conclusion was possible
on the basis of the material on record. It was pleaded that
the main aspect of the case was the likelihood of causing
confusion in the minds of the purchasing public and the
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products of the appellant and respondent were registered in
different classes. It was thus submitted that the prohibition of
registration of the mark would arise in case of an identical or
deceptively similar trade mark as per Section 12(1) of the said
Act and in view of the registration of the mark being under
separate classes there was no such likelihood. It was also
emphasized that the relevant date was the date of application.
The alternative submission once again advanced was based on
the plea of honest concurrent user under Section 12(3) of the
said Act. It was pleaded on behalf of the appellant that the
registration of the mark and the sale of goods are two different
aspects and though the appeal succeeded no action had ever
been taken by the respondent from the inception of the
registration of the mark in the form of the injunctive relief to
prevent the appellant from selling its product under the mark
in question, which is a factor to be taken into account.
8. Learned counsel for the appellant referred to the judgments of
the learned Single Judges of the Calcutta High Court in Gopal
Hossiery v. The Deputy Registrar of Trade Marks and Others;
AIR 1981 Calcutta 53, J&W Hardie Ltd v. Joseph E.Seargram &
Sons Inc. & Anr.; PTC (Suppl) (1) 567 to advance the plea of
honest concurrent user. In this regard, judgments of the
Supreme Court in Amritdhara Pharmacy v. Satyadeo Gupta;
PTC (Suppl) (2) 1 (SC) and London Rubber Co.Ltd v. Durex
Products Incorporated and Anr; AIR 1963 SC 1882 were also
referred as also the judgment of the Division Bench of Madras
High Court in National Match Works, Sivakasi v.
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S.T.Karuppanna Nadar (died) and Ors; AIR 1979 Madras 157.
Learned counsel also referred to the observations of the
Division Bench of the Bombay High Court in Sunder
Parmanand Lalwani and Ors.v. Caltex (India) Ltd; AIR 1969
Bombay 24 to contend that all the factors must be considered
in combination to come to a conclusion whether a mark was
likely to deceive or cause confusion.
9. Learned counsel also referred to the judgment in Vishnudas
Trading as Vishnudas Kishendas v. Vazir Sultan Tobacco Co.
Ltd.; 1996 PTC (16) to support the plea arising out the word
„SWARAJ‟ not being an invented word but one of common use.
Learned counsel also emphasized that while considering the
present appeal the principles of a second appeal are not to be
applied and the High Court has all the powers of the Registrar
and can make any order which the Registrar could make under
the said Act. In this behalf, learned counsel referred to the
observations in Prem Nath Mayer v. Registrar of Trade Marks
and Anr.; AIR 1972 Calcutta 261 in para 31 and 33, which are
as under:
“31. We cannot accept this contention of Counsel for
the respondent. In dealing with this appeal this Court
is not a Court of second appeal as contemplated by
Section 100 of the Civil Procedure Code. The appeal
which this Court is dealing with, is not from the
judgment of Court subordinate to the High Court. The
trial Court dealt with the appeal as a High Court under
Section 109 (2) of the Act and this Court is dealing
with the appeal again as a High Court under Section
109 (5) of the Act. Secondly, under Section 109(6) of
the Act, the High Court in dealing with an appeal, has
all the powers of the Registrar and can make any
order which the Registrar could make under the Act.
Then again, in dealing with the question of deception
and confusion under Section 11(a) of the Act and the
question of deceptive similarity under Section 12 of
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the Act this Court must necessarily look into the
evidence adduced by the parties in order to
determine whether the bar created by Section 11 and
Section 12 of the Act can be invoked by a party
opposing registration of a trade mark.
33. We are unable to accept the respondent‟s
contention that this Court in dealing with the appeal
under Section 109(5) of the Act is a Court of second
appeal under Section 100 of the Code of Civil
Procedure, and for that reason, is unable to go into
questions of fact. The provisions of the Act enjoin this
Court to determine questions of deception, confusion
and deceptive similarity, and that can only be done
by taking into consideration the evidence tendered on
behalf of the parties.”
10. Learned counsel for the respondent on the other hand
has supported the impugned judgment to contend that the
trade marks were identical to both in relation to products for
agriculture. Learned counsel invited our attention to the
observations made even by the Registrar while recording his
finding that the evidence filed by the respondent definitely
indicated a good reputation of their trade mark „SWARAJ in
respect of their goods namely tractors but came to the
conclusion that since the goods are of different descriptions, it
nullifies the effect of likelihood of confusion ensuing due to the
identicalness of the trade marks. The relevant observations
are reproduced below:
“The evidence filed by the opponents definitely
indicate a good reputation of the opponents
trade mark SWARAJ in respect of their goods,
namely, tractors. Since the applicant goods as
held above are of different description, it
nullifies the effect of likelihood of confusion
ensuing due to the identicalness in trade
marks.”
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11. Learned counsel for the respondent also submitted that
the documents filed by the appellant as evidence of reputation
are highly unreliable. The bills filed by the appellant show the
trademark of the appellant as „PRAKASH‟ in hand while
describing the goods sold word „SWARAJ‟ has been written.
The other bills are also written in hand as „SWARAJ‟. It is thus
submitted that the trade mark really utilized by the appellant
is „PRAKASH‟ and unreliable evidence has been led to sale
under the trade mark „SWARAJ‟.
12. Learned counsel for the respondent emphasized that
the products have the same trade source for the sale and
there are common dealers through whom sales take place.
The application for registration of the mark by the appellant
was made only in 1979 though he claimed sale from 1975.
13. Learned counsel emphasized that the factors to be
taken into consideration to decide whether the goods of same
description are :
a) Nature and composition of the goods
b) Respective uses and functions.
c) The particular channel through which they are bought and
sold.
There is no single conclusive test in this behalf and the
phrase “goods of same description‟ ought not to be given too
restrictive a construction so as to be limited to goods
substantially analogous in kind or commonly used as mere
substitute or alternative to one another. Learned counsel to
advance this proposition referred to the commentary of
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P.Narayanan‟s Law of Trade Marks and Passing Off, Sixth
Edition, Kerly‟s Law of Trade Marks and Trade Name, Twelfth
Edition and Escorts Limited, New Delhi v. Escort Engineering
Corporation, Rajkot before the Trade Marks Registry, Bombay;
1981 PTC 223.
14. Learned counsel submitted that with reference to the
order passed by the Trade Mark Registry, Bombay, same can
be of assistance though not a binding force where the mark
„ESCORT‟ was sought to be registered for diesel engines and
was opposed by the proprietors of trade mark of the same
name for agricultural machinery, tractors, motor cycles etc. It
was found that the applicants had copied the trade mark and
the thus the trade name could not be registered. We may
state at this stage itself that, as pointed out by learned
counsel for the appellant, one aspect considered in this case is
the manner of writing „ESCORTS‟ which was also similar.
Learned counsel for the respondent also referred to the
Judgment of the Chancery Division in the matter of Turney and
Sons‟ Trade Mark; 1984 10 TLR 175 where it has been
observed that in deciding whether an application is bona fide
or not the first question to be asked is as to why the applicant
seeks to use this mark which a great many people think is
calculated to deceive especially when it is not a mark being
used by them for some time but a new mark. If suspicious
circumstances are found, then the trade mark ought not to be
registered.
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15. Lastly learned counsel referred to the Judgment of the
Division Bench of this Court in Dalip Chand Aggarwal & Ors.v.
M/s Escorts Ltd., New Delhi; AIR 1981 Delhi 150 to deal with
the aspect of scope of jurisdiction to rebut the plea of the
learned Single Judge in respect of findings of the Registrar
being interfered lightly. It was observed that a Registrar
having expert familiarity with the subject, his finding should
not be lightly interfered with by the appellant court, but at the
same time the discretion of the Registrar does not relieve the
court of its individual responsibility. Thus, the discretion of the
Registrar is like the discretion of everybody else which is liable
to be controlled by a superior tribunal and the discretion
should have been judicially exercised.
16. On consideration of the relevant pleas of the learned
counsel for the parties, the principles of law as enunciated in
the aforesaid judgments are abundantly clear. The question is
whether the Registrar exercised the discretion judicially and
on the well-accepted principles. It is no doubt true that the
goods are registered under different classes and are not
identical. The matter has, however, to be looked at also from
the business and commercial point of view and in this behalf
the trade channel becomes an important consideration. The
manufactured products in question are both used in the
agricultural sector. What is important is the profile of the
customer. The test is of a man of an average intelligence with
imperfect recollection. The profile of the customer in the
present case is likely to be less educated and less discerning.
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17. We thus find that the conclusion arrived at by the
learned Single Judge that the customer may assume the
source of supply to be one from the respondent in case of the
product of the appellant on the basis of the same trade mark
is a grave possibility. Learned Single Judge has also rightly
emphasized that the products of both descriptions convert
chemical energy into mechanical energy. The channel for
buying and selling is also same.
18. The evidence filed by the respondent shows that they
have another trade mark „PRAKASH‟. The bills are printed in
the name of „PRAKASH‟. The word „SWARAJ‟ has been added
in front of the office copy of the bills. There are some non-
printed bills. It is not understood that if the trade mark
„SWARAJ‟ was being used from the inception as claimed by the
appellant, why the bills with the trade mark „PRAKASH‟ were
printed and not with the trade mark „SWARAJ‟. This throws
doubt on the nature of evidence led.
19. Insofar as the alternative plea of honest concurrent user
is concerned, the appellant claims to be user from 1975, but
as stated above the evidence led does not evoke confidence.
This is coupled with the fact that the application for
registration was filed only in 1979. If the mark was being used
from 1975, there was no reason for the appellant not to have
applied for a period of four years. On the other hand, the
mark of the respondent is registered and sales have been
shown at least from 1974 albeit the initial sales were not very
high. The application filed by the respondent was much earlier
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in 1977. Thus, even if the date of the application is taken into
consideration, the plea of honest concurrent user by the
appellant is not really advanced. The reputation of the trade
mark of the respondent has been recognized even by the
Registrar. The appellant succeeded before the Registrar on
the plea of the goods being of different descriptions and thus
there being no likelihood of confusion.
20. In view of the aforesaid, we find that the appellant has
not been able to point out any infirmity in the impugned order
so as to call for our interference.
21. The appeal is accordingly dismissed with costs of
Rs.10,000/-.
SANJAY KISHAN KAUL, J.
FEBRUARY 05, 2010 VEENA BIRBAL, J. dm
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