JUDGMENT
S.N. Kapoor, J.
1. Heard.
2. During the course of argument, learned Counsel for the respondent. Mr. Ajay Sahni stated that the respondent had applied for registration of trademark ‘Chetak’ with star, having a monogram BIC in the central bid for only two goods, namely, ink and gum paste and it is restricted to the State of Haryana.
3. Learned Counsel for the petitioner, Mr. Chetan Sharma, in response to the statement of Mr. Ajay Sahni, stated that the petitioner had got a registration in class 16 of trademark ‘Chetak’ for exercise books, office files and mathematical instruments on all India basis, learned Counsel for the petitioner further stated that in case the respondent confines himself to the use of trademark on goods as permitted by the Registrar of trademark and continues their trade to Haryana, the appellant would not press this application.
4. It learned Counsel for the respondent, Mr. Ajay Sahni, is not ready to make any statement that the respondent would not supply goods beyond the boundaries of State of Haryana.
5. Consequently, the matter is required to be decided on merits and cannot be decided on the basis of statements.
6. During the course of arguments, certain undisputed facts have been noticed. Chetak is not a word which could be said to be composite word or a word which could be said to have been invented by the petitioner. The petitioner has been using the trademark ‘Chetak’ simplicitor in respect of exercise books, file covers and mathematical instruments in disputedly since the date of registration. There is also no dispute about the fact that the petitioner has been producing gum paint and ink. The respondent filed an application for registration of trademark Chetak in 1983 but that was withdrawn. Later on another application was filed on 23rd May, 1988 for registration of trademark ‘Chetak’ with star and BIC in centre of the star.
7. Class 16 of Schedule 4 of Trade & Merchandise Marks Rules, 1959 reads as under :-
“16. Paper and paper articles, cardboard and cardboard articles ; printed matter ; newspapers and periodicals, books; book-binding material ; photographs; stationery adhesive material (stationery) ; artists materials ; print brushes ; typewriters and office requisites other than furniture; instructional and teaching material (other than apparatus) ; playing cards ; (printers) type and cliches (stereotype).”
8. It is apparent that products of both the parties fall in Class 16 of Schedule 4 of the Rules. Now, the question which requires consideration is “Whether same Trade Mark of the word ‘Chetak’ (excepting with the addition of Star with BIC in the centre of the monogram) could be used by both the parties, as has been held by the Assistant Registrar of Trade Marks?”
9. It is submitted by the learned counsel for the petitioner that the impugned mark is prohibited under Section 12(1) read with Section 11(a) of the Act. Section 11(a) and Section 12(1) reads as under:-
“12. Prohibition of registration of identical or deceptively similar trade marks — (1) Save as provided in Sub-section (3), no trade marie 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 a different proprietor in respect of the same goods or description of goods.
10. As regards Section 11(a), since the petitioners are not producing ink and stationery adhesive, there could neither be any cause for deception or confusion. It is not a case of passing off. Even in passing off, one has to keep in mind that trade mark should be either composite or invented word in case of different kinds of goods. Here the word Chetak could not be monopolised, for it is a common name. It is neither composite nor invented word. Nor there can be any reason to assume that the respondent could pass of ink or adhesive as goods of the petitioner. In so far as Section 12(1) is concerned, in the trade mark ‘Chetak’ the petitioner could not claim proprietorship in the word ‘Chetak’, for it is neither composite nor invented word. Section 12(1) is not attracted, for the goods are neither the same nor of same description. The fact that they belong to the same Class would not make gum paste either exercise books or office files or mathematical instruments to bring the description “in respect of the same goods or description of goods.” Therefore, prohibition under Section 12(1) read with Section 11(a) is not attracted.
11. Now, let us see the evidence, in addition to admitted or undisputed facts. The photocopies of numerous bills and letters/postcards filed by the respondent, indicate that they have been using trademark ‘Chetak’ since 1984. Learned Counsel or the petitioner pointed out that they could not use the trade mark, for there was no sales tax registration and consequently the bills have been fabricated. One could not be oblivious to the delays which normally occur in getting sales tax registration No. It is also submitted by the learned Counsel for the respondent, Mr. Ajay Sahni, that so long as sales do not exceed the certain amount, there was no need of registration. These facts coupled with the fact that the respondent applied for registration in 1983, trade mark mentioning in the application that the respondent was using the trade mark since 24th October, 1983, it would not establish that the respondent could not do business using their trade mark. Even if one takes into consideration the date of sales tax registration, it was registered on 28th September, 1984. The first bill which is produced is of 30th September, 1984. There are two letters for placing order for the gum paste in July and August, 1989. Therefore, in the light of the documents and the circumstances, it is established that the respondent had been using ‘Chetak’ with Star and monogram BIC in centre thereof for gum paste as well as ink.
12. In the light of the above facts, the learned Assistant Registrar appears to be justified in holding that the word ‘Chetak’ is not a composite word nor invented word and adding the star thereto with a monogram, its identification has become totally distinct. Secondly, articles of goods of the appellant and the respondent though belong to same class, yet they are different. The appellant have not produced gum paste and ink so far. The respondent is thus bona fide using the trade mark Chetak ih respect of gum paste and ink.
13. However, there cannot be any dispute about the fact that all the articles produced by the petitioner as well as the respondent are being sold through one channel of stationery shops and they belong to class 16. But this by itself is not sufficient. In case of takes into consideration period of bona fide user of the trademark Chetak with star and monogram BIC in centre of the Star for 13 to 16 years in respect of gum paste and ink, the matter would not be covered by Section 12(1), even if it is taken that the trademark is identical or similar in respect of the same or similar goods. Here, the goods are neither same nor similar. They are different.
14. In the afore-mentioned circumstances, it appears that the matter is covered by the following observations of this Court in Hindustan Pencils Pvt. Ltd. and Anr. v. Universal Trading Company, 2000 PTC 561 (DB)(574) :-
“We also agree with the learned Single Judge that there are special circumstances which may permit the registration (or for that matter continuation of the registration in favor of the respondent) in respect of geometrical boxes of the respondent. The learned Single Judge stated the following circumstances:
(a) There are separate registrations under the same trade mark in respect of exercise books and rubber bands with the knowledge and concurrence of the petitioner and this created a bona fide impression on other trades that the petitioner’s mark and user was confined only to pencils and the like ;
(b) The application of the respondent in respect of geometry boxes was sought to be opposed by the petitioner but it was unable to substantiate the opposition and the opposition had to be eventually abandoned; (c) The respondent has been using the trade mark thereafter in respect of geometry boxes till 1982 with no protest or objection from anybody, much less the petitioner itself; (d) The petitioner, though registered as early as 1964 had continued the use of its trade mark only to pencils and allied articles and never used it in respect of instrument boxes." 15. For the foregoing reasons, I feel that there is no force in this petition to justify any interference with the impugned order passed by the Registrar of Trademarks. 16. The petitioner is dismissed with no order as to costs.