JUDGMENT
Raghbir Singh, Vice-Chairman
1. CM (M) No. 61/78 and CM(M) No. 327/94 filed in the High Court of Delhi have been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TA/290/2004/TM/DEL and TA/89/2003/TM/DEL respectively.
2. Appellant in TA/290 M/s Bhagwant Lal Chaman Lal and Sons made an application, being No. 280750 to register in class 8 a trade mark consisting of the word ‘OLDSPICE’ (standing alone) in respect of safety razors. The said application was advertised in the Trade Marks Journal No. 579 dated 16.7.93 at page 389. M/s Shulton Inc, the respondent lodged a notice of opposition to the registration on the grounds that the impugned trade mark is deceptively similar to its trade mark Nos. 259664, 229254 and 211048 and the goods in respect of which the registration is sought for and many of the items of the respondent’s registration are goods of the same description and, therefore, the registration is barred by Section 12(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The goods for which the registration is sought would lead to confusion and deception as the trade and the public, being familiar with the past use of the respondent’s registered trade mark, would assume a connection in the course of trade between the appellant and the respondent. In conclusion, the respondent submitted that the mark offends the provisions of Sections 9, 11(a), 11(e) and 12(1) of the Act. The appellant filed its counter statement on 20.4.74 denying all the allegations contained in the notice of opposition of the respondent. Evidence in support from both sides was filed by way of affidavits.
3. The matter was heard by the Assistant Registrar of Trade Marks, Delhi on 9.8.78, Learned Assistant Registrar first of all took up examination of the matter under Section 12(1) of the Act. The respondent is holding registration under No. 229254, 211048 and 259664. Registration Nos. 229254 and 211048 are subject to disclaimer of the two words “OLD SPICE”. The similarity between the mark of the appellant and the respondent’s two marks is only in respect of disclaimed words ‘OLD SPICE’. His conclusion, therefore, is that the appellant’s mark sought to be registered is identical to the respondent’s registered trade mark No. 259664. But it was not deceptively similar to the registered trade mark Nos. 229254 and 211048 due to imposition of disclaimer of the words “OLD SPICE”. In matter of nature of goods of the appellant and the respondent, he found that their goods arc not similar. However, while making the examination as to whether the rival goods are of the same description, he found that there is no material before him to show that the rival goods are produced by one and the same manufacturer or distributed by the same wholesale house and in the absence of evidence to show that the goods are produced by one and the same manufacturer he concluded that rival goods are not of the same description and in matter of Section 12(1) of the Act the appellant’s registration is not prohibited. In matter of Section 11(a) his findings were that the respondent has discharged the preliminary onus of establishing that it is the prior user of the trade mark ‘OLD SPICE’ as on the date of application of the impugned mark. Thus, he found that the burden of proof stood shifted to the appellant to prove that the registration was not likely to deceive or cause confusion upon for registration. While relying upon the number of cases of High Courts he came to the conclusion that having regard to the user of the respondent’s trade mark ‘OLD SPICE’ in respect of “After Shave Lotion”, the use of the appellant’s trade mark ‘OLD SPICE’ for safety razors is bound to create confusion and deception. In matter of his examination under Section 12(3) of the Act, he went into the period of user of the appellant and found that the appellant had claimed user of the mark for a period of about six months only and found that it was not a fit case to exercise discretion under Section 12(3) of the Act in favour of the appellant. In conclusion he allowed the opposition.
4. The appellant in the appeal filed has taken the plea that the Assistant Registrar has given undue importance to the respondent’s trade mark ‘OLD SPICE’ which in fact has been disclaimed and the statutory right of the respondent is limited to the picture of the ‘SHIP’ only. The trade mark of the appellant is one word ‘OLDSPICE’, whereas the respondent’s trade mark consists of two words ‘OLD’ and ‘SPICE’. Thus, the marks of the appellant and the respondent are distinctive. The respondent has no locus standi to raise objection under Section 11(a) of the Act. The respondent is not an aggrieved person.
5. Respondent No. 1 in TA/89 who happens to be the appellant in TA/290 filed an application on 17.3.79, being application No. 347165, for registration of a mark ‘OLD SPICE’ in respect of shaving brush in class 21. The mark was advertised in the Trade Mark Journal 742 dated 1.5.1980 at page 131. The appellant filed opposition on 23.6.80 opposing the registration of the mark under the provisions of Sections 9, 11(a) and 18 of the Act. The trade mark ‘OLD SPICE’ is identified with the appellant and with its goods throughout the world. The respondent filed their counter statement denying all the material averments on 10.10.80. The Deputy Registrar held hearing on 30.10.92. In matter of Section 9 the Deputy Registrar held that the goods of the respondent being different from that of the appellant, the mark is entitled for registration under Section 9. Similarly, he held that the goods of the appellant being different there is no bar under Section 11(a) for the registration of the mark. He similarly overruled the opposition under Section 18(1) and held that the mark is entitled for registration under that section also. In conclusion, he said that all the objections under Sections 9, 11(a) and 18 having been overruled, the mark is entitled for registration under Section 12(3) of the Act. Accordingly, he allowed the registration.
6. The appellant has made submissions that the Deputy Registrar has misdirected himself while interpreting and applying provisions of Section 9 of the Act. The Deputy Registrar has erred in dismissing the opposition of the appellant under Section 11(a) of the Act. He has committed a grave error in his finding in matter of allowing the registration under Section 12(3) of the Act.
7. The respondent in their counter affidavit rebutted the above pleas of the appellant. The appellant filed rejoinder in the matter on 17.11.95.
8. Both the appeals were taken up for arguments together in the sitting of the Board held at New Delhi on 15.9.04 and 16.09.04. With the consent of both the counsel, it was decided to have common arguments in both the cases as the facts in both the cases are similar and the legal issues involved arc also the same. Learned counsel Shri Sanjay Jain appeared for M/s Shulton Inc appellant in TA/89 and respondent in TA/290 and learned counsel Shri M.K. Miglani appeared for M/s Bhagwant Lal Chamanlal appellant in TA/290 and respondent in TA/89.
9. Learned counsel for Shulton Inc argued that learned Deputy Registrar in TA/89/03 has made no examination of provisions of Section 9 and has jumped to a conclusion without discussing any merits of the case. He submitted that the reputation of the goods is to be taken from different sources. The transporter reputation is very relevant which should be taken due notice of. He cited the cases of Centurion Industrial Alliance Ltd. v. Gillette UK Ltd., 1998 PTC 288 (Bom) and Whirlpool & Co., and Anr. v. N.R. Dongre, 1996 PTC 415 (Del). He submitted that the learned Assistant Registrar in TA/290 has correctly arrived at the conclusion that since the products involved are of same description, the impugned mark is likely to cause confusion and deception and correctly disallowed the registration of the mark.
10. Learned counsel for M/s Bhagwant Lal Chaman Lal made his submissions on 16.9.04 and put forth that the expression ‘OLD SPICE’ has been disclaimed. He drew our attention to affidavits of various persons filed in support of M/s Shulton Inc. All those affidavits are of a stereotype format with blanks left wherein the names of different persons executing those affidavits have been filed in and the stamp papers were bought in the names of respective persons. His contention was that it is an organised exercise which has been done and there is no independent application of mind. He drew our attention to the affidavit of Shri John K. Bangas wherein no sale figures have been mentioned. He drew our attention to the internal page 5 of the impugned order of TA/290 where the Assistant Registrar while quoting from Dr. S. Venkateswaran’s book has mentioned that whether or not two sets of goods are of the same description is a question of fact and in deciding the question one has to look at the trade and one must look at it from a practical business and commercial point of view. He however drew our attention to internal page 6 of the same order wherein the Assistant Registrar has inferred that there is no material before him to infer that the rival goods are produced by one and the same manufacturer or distributed by the same wholesale houses, thus leading to a conclusion by him that the registration is not prohibited under Section 12(1) of the Act. He submitted that excepting the one affidavit submitted, there are no sales vouchers and details of expenditure on advertisements which have been submitted. He too wondered that the Deputy Registrar in TA/89 having cleared the application under Sections 11(a) and 12(1) of the Act, for what reason resorted to its clearance under Section 12(3) of the Act. In conclusion, he said that both the applications should proceed for registration.
11. We have very carefully considered the arguments advanced by the both counsel and find that in matter of examination under Section 12(1) there is no doubt as to the identity of marks held by M/s Shulton Inc, more particularly in relation to No. 259664 which is not subject to disclaimer, and the impugned marks in TA/89 and TA/290. However, in relation to the description of the goods to what learned counsel for M/s Bhagwant Lal Chaman Lal drew our attention at internal page No. 5 of the order of the Assistant Registrar in TA/290 is very much relevant. Whether or not the two sets of goods are of the same description is a question of fact and in deciding the question one must look at it from a practical business and commercial point of view. The classification in the Fourth Schedule of the Trade and Merchandise Marks Rules, 1959 is no criterion as to whether or not two sets of goods are of the same description. Lord Reid in Daiquin Rum TM 1969, RPC 600 HL has this to say:-
“the same description does not mean that you look for a description which applies to both goods, but rather indicates a similarity in various respects, there being no single conclusive test.”
Distribution by the same wholesale houses, selling in the same shops over the same counter and to the same class of customer are the significant determinants to conclude the similarity of description of goods. Egg Products Ld’s Appl., (1959) RPC 120″
The goods in the nature of safety razors, shaving brush under the impugned mark and the goods, namely, after shaving lotion, cologne for men, body talc, hair cream, brillianline and shaving cream, for which M/s Shulton Inc is holding registrations in India are the goods carried in the same kit by the user, made available by the hotels to its guests in the same bathroom and sold in retail from the same sales outlets. We feel that this is enough to indicate that they belong to the same family, same description and to the same class of goods, irrespective of the fact whether those are creams, razors or hair brushes. This is enough to place that in the same description of goods for the purpose of Section 12(1) of the Act. We are not in agreement with the conclusion of the Registrars in both the cases for having not disentitled the impugned registration under Section 12(1) of the Act. Similarly, M/s Shulton Inc is having transborder reputation in relation to the products for which they are holding their registration under three numbers in India and they have their local manufacturers in Goa for the products. Many affidavits have been filed from the retail dealers submitting that they stock and sell the Shulton Inc products manufactured by Colfax Laboratories (India) Private Limited, Goa. There is no merit in the submission of the learned counsel for M/s Bhagwant Lal Chaman Lal that in view of the similarity of submissions made in these affidavits, those lose their credibility. There is nothing to conclude that the impugned marks are not likely to deceive or cause confusion for the purposes of Section 11(a) of the Act. Shulton Inc are the registered proprietor of mark ‘OLD SPICE’. The goods covered under those registrations are being manufactured and marketed in India. There is complete identity of marks for the same description of goods leading to deception and causing of confusion. We arc not in agreement with the Deputy Registrar in TA/89 in clearing the impugned mark under Section 12(3) of the Act. The impugned application had been made on 17.3.79 and the user of the mark as noticed by the Deputy Registrar is since 1972 which we believe is not an enough period for entitlement under Section 12(3) of the Act besides the other elements for eligibility as a honest concurrent user. Learned counsel for M/s Bhagwant Lal Chaman Lal raised the issue of disclaimer of the word ‘OLD SPICE’. Disclaimer of the word has been made in relation to two numbers only, that is, 229254 and 211048. There is no disclaimer insofar as No. 259664 is concerned. Both the cases have been decided in relation to this number wherein there is no disclaimer of the words ‘OLD SPICE’ as referred to by the Assistant Registrar in his order dated 4.9.78.
12. Accordingly, we allow the appeal in TA/89/2003 and dismiss the appeal in TA/290/2004 with no orders as to costs.