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JUDGMENT
Ramji Lal, ARTM
1. On 31st October, 1990 M/s Rudi Roller Flour Mills (P) Ltd., Oden Padaria Road, Mainpuri, (U.P.) filed an application for registration of a trade mark SHIV SHAKTI with the device of Trishool and Damroo in class 30 in respect of atta, maida, suzi. The application was numbered as TM-1 application No. 539247 in class 30 wherein the user of the impugned mark was claimed since 6th March, 1990. In due course the application was allowed to be advertised before acceptance and accordingly it was advertised in the Trade Marks Journal No. 1115 dated 16.11.1995 at its page 2412.
2. On 20th December, 1995 Kewal Krishnan Kumar having his address at 112-A, Samay Pur, Delhi-110042 (hereinafter referred to as the opponent) gave a notice of his intention to oppose the registration of the trade mark advertised as aforesaid on the following grounds :-
(1) That the opponent is well known and well established in the business of manufacturing and marketing inter alia of flour, gram flour, maida, sooji, bran, pulses, rice cereals for the past several years.
(2) That the opponent is the true owner and the lawful proprietor of the trade mark SHAKTI BHOG in relation to the aforesaid products.
(3) That the opponent is the registered proprietor of the mark SHAKTI
BHOG under registered trade mark No. 391844 in class 30. The said
registered trade mark has been renewed and the same is still valid and
subsisting on the register.
(4) That the said trade mark SHAKTI BHOG has been used continuously and extensively since the year 1975 in relation to the aforementioned goods. The opponent further submitted that he has advertised his mark through various Medias of advertisement and publicity such as radio, television, newspaper etc.
(5) The opponent submitted that he has spent substantial money on popularising the said trade mark SHAKTI BHOG and in fact SHAKTI BHOG has become a household name for the consumers.
(6) The trade and public have come to associate and identify the above mentioned goods with the trade mark SHAKTI BHOG of the opponent only and none else.
(7) The opponent stated that he has acquired statutory rights to the exclusive use of the trade mark SHAKTI BHOG in relation to the aforementioned goods.
(8) The opponent further submitted that the mark applied for is identical and/or deceptively similar to his aforesaid registered trade mark SHAKTI BHOG. The leading feature of the mark applied for is the word SHAKTI. The mark applied for having the word SHAKTI is confusingly similar to his said trade mark.
(9) The goods for which the applicants are seeking registration are the same and are of the same description, therefore, the mark applied for is hit under Section 12(1) of the Act.
(10) The opponent submitted that inevitable confusion is likely to result from the use of the impugned mark during the course of trade. The consumer will assume that the goods covered under the impugned mark are coming from the opponent.
(11) The opponent further submitted that the mark applied for is neither adapted to distinguish nor it is capable of distinguishing the goods of the applicants during the course of trade.
(12) The adoption of the mark applied for by the applicants is absolutely dishonest and mala-fide. As such the applicants are not and cannot claim to be the proprietor of the impugned mark. Therefore, its registration in the name of the applicants will be contrary to the provisions of Section 18(1) of the Act.
(13) The mark applied for by the applicants is even otherwise disentitled to protection in a Court of Law and as such it is prohibited for registration under Section 11(e) of the Act.
3. Finally the opponent submitted that the registration of the impugned mark is prohibited under the provisions of sections 9, 11(a), 11(e), 12(1), 12(3), 18(1) and 18(4) of the Trade and Merchandise Marks Act, 1958. The opponent submitted that in view of the grounds taken by him in the aforementioned paragraphs the impugned application be refused registration and his notice of opposition be allowed with cost.
4. On 2nd April, 1998 the applicants filed their counter statement in the matter generally denying all the material allegations as contained the in notice of opposition. In support of their application the applicants submitted that the trade mark as applied for by them under the impugned application consisting of the words SHIV SHAKTI with the device of Trishool and device of Damroo refer to articles used by the Lord Shiva which also indicate the powers of Lord Shiva. The applicants submitted that the applicants started using the same in March, 1990 and the same is being used since then openly, continuously, extensively without any interruption from any corner whatsoever. The applicants further submitted that the mark applied for by them has no relevance with the words SHAKTI BHOG of the opponents.
5. Finally the applicant submitted that the notice of opposition is frivolous and fictitious, therefore, it should be dismissed and their application so accepted be allowed to proceed to registration and the costs of these proceedings be awarded to them.
6. The opponent filed evidence in support of opposition by way of an affidavit dated 3rd November, 1998 duly deposed by Mr. Kewal Krishan Kumar, sole proprietor of the opponent firm together with some exhibits marked as A-1 to A-6, B-1 to B-119 and C-1 to C-37. The applicants filed their evidence in support of their application by way of an affidavit dated 11th August 2000 duly deposed by Mr. Anil Agarwal, Director of the applicant’s company together with some annexures as mentioned therein.
7. The opponents also filed evidence in reply by way of an affidavit dated 28th November, 2001 duly deposed by the same person Mr. Kewal Krishan Kumar, sole proprietor of the opponent firm.
8. After completion of all the formalities as referred to above the matter was set down for hearing which ultimately came up for hearing before me on 18th February, 2002 when Shri M.K. Miglani, advocate appeared for the opponent and Shri H.P. Singh, advocate with Shri Sonal Joshi, advocate, instructed by Shri P.K. Arora, advocate, appeared for the applicants. Both the parties notified their intention on prescribed form TM-7 to attend the hearing. The matter was argued and concluded on the same day. On that date both the parties were instructed by this Tribunal to bring their original documents for the perusal of this Tribunal on 28.8.2002 and ultimately both the parties showed their original documents to this Tribunal on 15.4.2002.
9. At the outset Shri Miglani, the Ld. counsel for the opponent submitted that the opponent is the registered proprietor of the mark SHAKTT BHOG under registered trade mark 391844 in class 30 in respect of flour, gram flour, maida, sooji, bran, pulses, rice, besan and other preparations made from cereals and also the opponent is registered proprietor of the same trade mark in class 29 under registered
Trade Mark No. 473275 in respect of preserved dried and cooked fruits and the jellies, jams, eggs edible oils, fats and pickles. Shri Miglani submitted that, the goods covered under the registered trade mark of the opponents in class 30 are of the same description as those for which the impugned application has been filed by the applicants. The word SHAKTI as applied for by the applicants under the impugned application is deceptively and confusingly similar to the registered trade mark of the opponents. Therefore, its registration in the name of the applicants would be contrary to the provisions of Section 12(1) of the Act. Shri Miglani further submitted that the opponent has got injunction against the word SHAKTI alongwith the device of Trishool against some parties by the Additional District Judge, Delhi. In view of this the impugned application be refused registration.
10. Shri Miglani further submitted that the applicants herein are not the genuine and lawful proprietor of the mark applied for within the ambit of Section 18(1) of the Act as they have copied the word SHAKTI from the registered trade mark of the opponent.
11. Shri Miglani drew my attention to the sales statement made by the opponent during the year of 1990-91 in his affidavit filed under Rule 53 and submitted that these are handsome sales.
12. Shri Miglani further submitted that if the mark applied for is granted registration in favour of the applicants there will business injury to the opponent famous trade mark SHAKTI BHOG. Finally Shri Miglani submitted that the impugned application be refused and the notice of opposition be allowed with costs.
13. On other side, the Ld. counsel for the applicants Shri H.P. Singh submitted that the mark applied for is totally different from the registered trade mark of the opponent. The mark applied for consisting of the device of Damroo and device of Trishool with the words SHIV SHAKTI is distinctive of the goods of the applicants. Every Hindu is entitled to use such trade mark. Words SHIV SHAKTI is a dictionary word and is having distinct meaning as per Hindu mythology. Shri Singh further submitted that the opponent having registration for the word SHAKTI cannot slop the applicants from using the trade mark as applied for. Therefore, opponents contention that the trade mark as applied for would cause confusion and deception during the course of trade cannot be accepted and the mark as applied for is neither hit under Section 12(1) of the Act as the two marks are different from each other. Shri Singh further submitted that the applicants are the real and genuine proprietor of the mark applied for within the ambit of Section 18(1) of the Act. Finally, Shri Singh prayed that the impugned application be allowed to proceed registration and the notice of opposition be dismissed and the costs of these proceedings be awarded to the applicants.
14. I have heard both the counsels and I have also perused the material available on the record of these proceedings any my findings are as under :-
15. The concurrent user under Section 12(3) of the Act, does not mean continuous and uninterrupted user or user of great magnitude. It only means consistent use of the mark in a commercial sense. Variation in the quantum of manufacturer and sale product or interruption of business for a variety of reasons are not material if the user in the course of trade is resumed after interruption. (AIR 1977 DELHI 1).
“Kerly at page 235 of the 7th Edition on Trade Marks quotes RE : Lyle and Kinahan Ltd’s application, (1907) 24 RPC 249 and other cases for the proposition that it is not necessary for the applicant’s trade mark to be larger than that of the opponent. My own opinion is that the use has to be a business use. It has to be a commercial use. Trade mark is a kind of property and is entitled to protection under the law, irrespective of its value in money so long as it has some business or commercial value.”
16. On the materials on the record I am satisfied that the use of the mark applied for has been substantial as stated in the affidavit of Mr. Anil Aggarwal, Director of the applicants company. I am also of the opinion that there has been a commercial use of the mark of the applicants. Their sales run into crores of rupees per annum. In view of the above, the applicants are entitled for registration under Section 12(3) of the Act by virtue of concurrent user of their mark.
17. It is also established on record that the applicants have been using the mark applied for since the year 1990 continuously without any interruption from any corner whatsoever. Right from the year 1990 till date there has been no complaint of confusion and deception against the applicants by the opponent. In my considered view, the opponent contention that the mark of the applicant’s will cause confusion or/and deception during the course of trade cannot be accepted, hence opponents objection under Section 11 (a) and 11(e) cannot be sustained.
18. A trader acquires a right of property in a distinctive mark merely by using it upon in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such mark is entitled to protection directly the article having assumed and vendible character is launched upon the market. Registration under the statute does not confer any new right to the mark claimed or any greater right then what already existed a common law and at equity without registration. It does however, facilitate a remedy may be enforced and obtained throughout the state and it established the record of facts effecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute, but the anterior use by a person of a trade mark is protected under law. The common law rule was that a mark did not become a trade mark until it has been publically used as such by its proprietor and that such public use was the only means by which title to a trade mark could be acquired by the first proprietor of it.
(Reference may be had to C.M. (Main) 67 of 1974 and F.A.O. 113 of 1975). As per 1982 PTC 437, Laxmi Dhoop Factory v. Prabha Darshan Dhoop Industries, Moonak, Punjab States. The Ld. Deputy Registrar of trade marks in his order dated 20th May, 1982 :- “Held that though the goods of the rival parties are the same, yet the Applicant’s mark ‘PRABHU DARSHAN’ is not deceptively similar to the opponent’s mark ‘HARI DARSHAN’ as there is no resemblance between the ideas conveyed by the two marks so as to cause likelihood of confusion and deception if the said marks are used by two different proprietors in respect of the same goods and as such the registration of the mark applied for is not prohibited Under Section 12(1) of the Act. The opponents’ objection Under Section 11(a) being based on the alleged similarity of the applicants’ mark to the Opponents’ mark and its prior use and reputation also fails as, if the marks have no resemblance, the most extensive reputation in relation to one cannot create confusion in the use of the other and accordingly, the opposition is disallowed.”
In the case referred to above, the Ld. counsel for the applicants argued that Hari is a name of one of the several goods worshipped by Hindus and that Hindus would be aware of the names of other gods. He further argued that if the ideas conveyed by the words ‘HARI DARSHAN’ and ‘PRABHU DARSHAN’ are considered as the same, the applicants would object to several other marks such as ‘RAMA DARSHAN’, ‘LAXMAN DARSHAN’, ‘NARAYAN DARSHAN’ and ‘HANUMAN DARSHAN’. Similarly in case No. 7996 (37) DRJ 97 : 1996 PTC 196 Amar Singh Chawalwala v. Shree Wardhman Rice & General Mills : The Hon’ble Justice Mr. R.C. Lahoti and held that “allegation of an infringement of trade mark “GOLDEN QILLA” with the device of a fort in the background the device do not appear to be replica of any well known fort use of trade mark “NEELA QILLA” without any device alongwith no visual similarity on record …….injunction refused.”
19. In view of the above, the mark consisting of the words ‘SHIV SHAKTI’ with the device of Trishool and Damroo as applied for by the applicants conveys a different meaning than that of the words “SHAKTI BHOG” of the opponents. The mark of the applicant’s applied for is more distinct because of the words ‘SHIV SHAKTI’ with the device of Trishool and Damroo. The device of Trishool and Damroo pertain to Hindus god Shiv only and non-else. Therefore, the opponent’s contention that the mark applied for is deceptively similar to his registered trade mark “SHAKTI BHOG” cannot be accepted. In view of the above, the rival marks are different from each other. Therefore, opponents objection under Section 12(1) cannot be sustained.
20. With regard to the injunction-obtained by the opponents herein against some parties by the Additional Judge Delhi, in this connection the observations made by the Hon’ble Justice Dr. M.K. Sharma of Delhi High Court in Suit No. 2784/94 (MA. D.C.M. Ltd. v. Shri Surinder Gupta and Anr.) is as under :-
“The aforesaid proceedings pending before the Assistant Registrar with regard to the registration of trade mark appears to be an independent proceedings and has no immediate relation and/or connection with the Suit pending in this Giurt. Accordingly, it is clarified that pendency of the suit and/or the application seeking for interim injunction and/or passing an or ex-pane ad interim injunction against the defendants would not be treated as a bar in the way of the Assistant Registrar, deciding the matter relating to the registration of the trade mark DCM in respect of DCM products, pending before him at the instance of the defendants.”
In other case, (Suit No. 2102/90 IA No. 7469/90) Hon’ble Mr. Justice Arun Kumar held that “The injunction order dated 16th July, 1990 does not in any way affect or hinder the Trade Marks Registry at Bombay from dealing with the application of the defendant for registration of his trade mark. Though such a clarification is not necessary ; yet counsel for applicant says that the Trade Marks Registry at Bombay is finding some difficulty in this behalf. Therefore, it is clarified that the injunction order passed in this case does not prevent the trade mark Registry at Bombay from dealing with the application of the defendant.”
In view of the above two case laws, the opponents contentions that he has obtained injunction against some parties even in respect of devices of Trishool and Damroo cannot be applied herein this matter.
In my considered view words SHIV SHAKTI pertain to the Hindu god Shiv and every Hindu has a right to use such words. Merely the opponents is the registered proprietor of the word SHAKTI cannot stop the applicants herein from using the religious and pious words “SHIV SHAKTI” with the device of Damroo and Trishool. In my considered view the applicants are the true proprietor of the mark applied for within the ambit of Section 18(1) of the Act.
21. I am of the opinion that two marks are different from each other and there has been a commercial use of the mark applied for by the applicants.
22. In view of the explanation given by me in the foregoing paragraph the Opposition No. DEL-9828 is dismissed and application No. 539247 in class 30 shall proceed to registration. There is no order as to the costs of these proceedings. Both the parties are left to bear their own cost of these proceedings.