JUDGMENT
S. Jagadeesan, Chairman
1. The appellants have filed this appeal against the order of the Deputy Registrar of Trade Marks, Delhi dated 18.4.1995.
2. The appellants filed application No. 488236 on 29.3.1988 seeking the registration of the trademark ‘TANU’ with the logo of containing two letter ‘T’ in respect of their hosiery goods, socks, panties and brassieres included in class 25, claiming the user since March 1985. The appellants also claimed that the above trademark is associated with application No. 441024. The said mark was advertised in the Trade Marks Journal No. 1033 dated 16.6.1992 at page 343. The second respondent herein M/S. T.T. Industries have filed notice of opposition opposing the registration of the impugned mark on the following grounds:-
1. The second respondents have been carrying on their business of manufacturing and marketing of goods of hosiery such as ganjis, jangias, bra, socks, panties, etc., in the name and style ‘T.T. Industries’, which is their initial of trading style since 1968. The letter T.T. is the house mark of the second respondent and they also obtained copyright of the registration in various forms, designs and get up.
2. The Second respondents are also the proprietors of the following marks:-
(a) Trade Mark No. 334423 as of 13.3.1978 advertised in the Trade Marks Journal No. 728 at page 826.
(b) Trade Mark No. 266085 as of 3.8.1970 advertised in the Trade Marks Journal No. 674 at page 213.
(c) Trade Mark No. 277801 as of 20.1.1972 advertised in the Trade Marks Journal No. 671 at page 125.
(d) Trade Mark No. 334422 as of 13.3.1978 advertised in the Trade Marks Journal No. 740 at page 35, and
(e) Trade Mark No. 432270 advertised in the Trade Marks Journal No. 994 at page 893. The abovesaid trade marks are registered, valid and subsisting.
3. In addition to the abovesaid trademarks, the second respondent is also the sole proprietor of the trademark containing the letters
and that the impugned mark is identical and/or deceptively similar to that of the second respondent and therefore, the same is not registrable under the provisions of Section 9, 11(a), 11(e), 12(1) and 18 of the Trade and Merchandise Marks Act, 1958.
3. The appellants filed their counter refuting the averments made by the second respondent and further stated that they adopted the trademark ‘TANU’ with the device of a logo, from their corporate name, in the month of March 1985 and that the impugned mark has become distinctive and associated with the goods of the appellant and the appellant has no connection with the trademark ‘T.T.’ of the second respondent and the same is not used by the appellant. Further, the mark applied for is not deceptively similar to that of the second respondent. The second respondent filed their evidence by way of an affidavit of one Mr. Rikhab Chand Jain. The appellants also filed the evidence of user and reputation by way of an affidavit by one Mrs. Harjeet Kaur, accompanied with Photostat copies of the Bills. The matter was heard by the Deputy Registrar of Trade Marks on 28.2.1995. After hearing both the counsels, under the impugned order, the Deputy Registrar allowed the opposition DEL 7802 of the second respondent and refused the application of the appellants for registration on the ground that the impugned mark closely resembles or is identical with that of the second respondent’s trademark ‘T.T.’ and as such, the same cannot be registered as per Section 11(a) of the said Act. The Deputy Registrar also upheld the objection of the second respondent under Sections 11(e) and 9 of the said Act. The Deputy Registrar further held that the bar under Section 12(1) of the Act is also attracted and sustained the objection under Section 18(1) also. As against the said order, the appellant has filed appeal No. CM(M) 351 of 1995 on the file of the Hon’ble High Court of Delhi and the same was transferred to this Appellate Board pursuant to Section 100 of the Trade Marks Act, 1999.
4. We have heard the arguments of Mr. V.P. Ghiraiya, on behalf of the appellants and Mr. Rajiv Bansal, on behalf of the second, respondent, during our circuit bench sitting at Delhi. The learned counsel for the appellants Mr. V.P. Ghiraiya contented that the appellants are carrying on the business under the name and style ‘TANU Textiles’ since 1985 and for the first time adopted the trademark ‘TANU’ from the corporate name with a device logo. The second respondent’s mark is ‘T.T.’, which has its own distinctiveness and is not similar or identical to that of the appellants. The Deputy Registrar erroneously ordered that the trademark ‘TANU’ has no importance and only the logo
is significant and if the logo is taken into consideration, the same is identical with the trademark of the second respondent. The learned counsel further contented that even assuming that the logo of the appellants had some significance, still the letters ‘T.T.’ in the logo of the appellants are not similar to the trademark of the second respondent and consequently, the reasoning of the Deputy Registrar to reject the appellant’s application cannot be sustained. On the contrary, the learned counsel for the second respondent Mr. Rajiv Bansal contented that the impugned mark is similar to that of their mark.
and when the goods are of the same or same description, there is every possibility of confusion or deception in the trade. The public may mistake ‘TANU’ with ‘T.T.’ and will think that the appellant’s products are also manufactured from the second respondent’s factory. Further, the second respondent initiated criminal proceedings against the appellants before the Additional Chief Metropolitan Magistrate of Kolkata and the appellants have given an undertaking in July 1985 by way of an affidavit that they will not use any of the trademark and copy righted work with the name ‘T.T’. or ‘T.Tex’/or any other deceptively or confusingly similar mark or marks. Having given such an undertaking in the Court of Law, it is not open to the appellants to seek for registration of the impugned mark.
5. We carefully considered the above contentions of both the counsels. Before entering into any discussion, we would like to have the marks for comparison. The appellant’s mark is as follows:-
Similarly, the second respondent’s various marks are as follows:-
The marks of the second respondent are annexed as Annexure ‘B-1’ and ‘B-2’ in respect of application Nos. 454953 and 432274-B. They have also filed other application Nos. 432269, 432273-B and 432272-B in respect of certain leather goods, apart from the hosieries. Those trademarks are also similar to the ‘T.T.’ mark. If we take the impugned trademark of the appellants for comparison with the trademark of the second respondent, at a glance, one can come to the conclusion that both are not identical. The appellant sought for the registration of the trademark ‘TANU’ with the logo. In fact, in all their Bills, the name ‘TANU textiles’ is mentioned and in a corner, a logo has been printed, as marked above. The word and the logo became the composite mark identifying the manufacturer in respect of their goods; neither word per se nor logo can be separated. The Deputy Registrar while considering the impugned mark for comparison has mentioned that the prefix logo ‘T.T’ within a circle is given greater importance than the suffix word ‘TANU’ and as such, the impugned mark is deceptively similar to that of the second respondent’s trademark. We are unable to agree with the view taken by the Deputy Registrar.
6. It is a well laid principle that when the conflicting marks are compared, the same should be placed side by side to find out whether they are similar. There should not be any minute or microscopical scrutiny to find out the dissimilarity. Just for the mere outlook whether any ordinary prudent individual would be mislead by the similarity of the marks. If this principle is applied and the marks on hand are compared, we are of the clear view that both the marks cannot said to be identical or similar. The second respondent’s trademark is only two letters ‘T.T’. Though the appellants are using the logo ‘T.T.’ in a different and distinctive manner, still the logo alone is the trademark of the appellants. As the Deputy Registrar himself pointed out that the logo alongwith the word mark TANU’ forms composite mark of the appellants. When a trademark is a composite one, the same cannot be separated by prefix and suffix to find out the similarity and dissimilarity. It has to be taken in totality to find out the similarity. The impugned mark even for a look of it, is totally different and distinct from the trademark of the second respondent. Hence, the impugned order of the Deputy Registrar cannot be sustained.
7. So far as the question of the undertaking given by the appellants concerned, the impugned order of the Deputy Registrar is silent, which means that the issue was not argued before the Deputy Registrar. Now that the same was raised before us and the same being question of law, as to whether the undertaking given before the Court of Law can be disobeyed by way of breach, we decided to go into the same. We perused the affidavit filed by the appellant and her husband on 25th July 1985. The affidavit seems to have been filed in the proceedings taken against the appellant for infringement of the trademark and copy right title ‘T.T.’ in respect of hosiery products. The appellant and her husband have stated that they would give up with the use of the ‘T.Tex’ Brand, the subject matter of the case and gave an undertaking that they shall never by themselves individually and/or jointly and/or through anybody else use any of the trademark or trademarks and copyright mark or marks with the name ‘T.T.’ or ‘T.Tex’ and/or any other deceptively and confusingly similar mark or marks, brand or brands, work or works, whatsoever in respect of any goods being hosiery products and/or allied thereto. From the above undertaking, it is clear that the dispute in the criminal proceeding is in respect of the trademark ‘T.Tex’, which is clear from para 4 of the affidavit, where the appellants and the second respondent had further promised an assurance and undertaking not to use ‘T.Tex’ or any of the trademark or copy right works mentioned in the proceedings. Apart from ‘T.Tex’, the ‘T.T.’ is the one mentioned. Hence, it is clear that the appellant had given an undertaking not to use the trademark ‘T.Tex’ or ‘T.T.’ or any other mark of the second respondent. As already stated, the impugned mark being totally different and distinct from that of the second respondent’s mark, the appellant cannot be said to have committed any breach of undertaking given by her before the court.
8. For the reasons stated above, we are of the view that the impugned mark is not similar to that of the second respondent and as such, there may not be any confusion and deception. Even otherwise, the second respondent failed to produce any evidence of confusion even though the appellant is using the impugned mark since 1985. Consequently, the impugned order of the Deputy Registrar cannot be sustained and the same is set aside. The appeal is allowed with a cost of Rs. 10,000. We direct the Deputy Registrar to proceed with the registration of the application No. 488236 of the appellants for registration. The opposition No. DEL 7802 filed by the second respondent stands disallowed.