JUDGMENT
Raghbir Singh, Vice-Chairman
1. TMA S.R. No. 85193 of 1997 was filed in the High Court of Judicature at Madras and has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TA/288.
2. Respondent No. 2, M/s Fathima Tiles filed application No. 370874 for registration of trade mark ‘Device of an Umbrella’ in respect of “tiles and bricks” (non metallic) included in class 19 of Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The same was advertised in the Trade Marks Journal No. 833 dated 16.2.84 at page 1453. Appellant M/s Sudarsan Trading Company Limited gave notice of their intention to oppose the mark on 24.3.1984 on the grounds that they are the proprietors of the trade mark consisting of ‘device of an umbrella’ for bricks and tiles, roofing tiles, ceiling tiles, ventilators, skylights under No. 2763 in class 19. It was also stated that they have acquired a great and valuable goodwill by reason of long and extensive use of the said mark. The impugned mark is deceptively and confusingly similar to the opponent’s trade mark and the goods thereto for which the impugned application has been made are of the same description. The mark fails to quality under Sections 9,11,12(1) and 18 of the Act. The appellant denied the user of the mark by respondent No. 2. Respondent No. 2 filed counter statement on 2.7.1984 generally denying the allegations made by the appellant. They claimed honest adoption and continuous use of the mark.
3. Learned Assistant Registrar heard the matter on 5.1.1995 and considered the registration of the impugned mark under Sections 11(a), 12(1) and 18(1) of the Act. His conclusion in the case was that in matter of Section 12(1) the mark does not qualify the tests laid down for Section 12(1). His findings were that the appellant is the registered proprietor of the trade mark ‘Umbrella’ in relation to bricks and tiles. The respondent No. 2 is also seeking registration of its mark in respect of tiles and bricks with a mark of ‘umbrella’ in respect of tiles and bricks. The goods and mark of the respondent No. 2 and the appellant are similar. In matter of his examination under Section 11(a) he laid the burden of proof on the appellant/opponent since it had invoked this section on the grounds of user and reputation of its mark. Learned Assistant Registrar was of the view that the appellant/opponent has simply filed an affidavit of its company’s general manager giving out turnover of the goods bearing their trade mark and the annual sales and promotional expenses which they have incurred. They have not filed any copies of bills, advertisement materials, etc., to support their averments in the affidavits. He also mentions about rectification application filed by respondent No. 2/ applicant being petition No. 368 of 1982 filed in the High Court of Judicature at Madras for removal of appellant/opponent’s mark from the Register on the basis of non-user. Learned Assistant Registrar has put reliance upon this pending rectification application and has mentioned in his order that the appellant/opponent has put reliance upon Section 11 (a) of the Act on the grounds of user and reputation of their mark and since their user has been questioned by respondent No. 2/applicant, the onus is on them to substantiate their claim of user by filing some supporting documents which they have failed to do. Further the appellant/opponent have not brought a single instance of confusion and deception to his notice. Thus, he concludes that in terms of Section 11(a) there is not cause for any confusion or deception in the minds of the purchasing public. In regard to proprietory rights claimed by respondent No. 2 applicant under Section 18(1) of the Act, the findings of the Assistant Registrar are that the user and reputation of the appellant/opponent’s mark is doubtful. He arrived at this conclusion on the basis of his findings under Section 11(a). Further umbrella being an ordinary article and used by the common man, the same might have been adopted honestly by respondent No. 2/ applicant for its goods. Having rejected the application under Section 12(1) and decided in favour of the appellant/opponent under Section 11(a), the learned Assistant Registrar made an examination thereof in terms of provisions of Section 12(3) of the Act having put reliance upon C.P. Jose, partner of respondent No. 2/applicant’s firm who has said in his affidavit that they are using ‘Umbrella’ as their mark since 1976 besides many other marks and that they have honestly adopted that mark for their products. Respondent No. 2/applicant have mentioned their sales turn over for the year 1976-1983 in the same affidavit. Besides, they have submitted 10 affidavits from various traders of bricks and tiles. He further relied upon his findings under Section 18(1) of the Act, wherein he had concluded that respondent No. 2/applicant had honestly adopted the trade mark and thus they are the proprietors of the trade mark of the same. He acknowledges that respondent No. 2/ applicant have not filed any supporting documents in the form of copies of bills, invoices etc., to support their claim, but he had placed reliance upon their trade declaration supporting their application for the user of their mark. Thus, he concluded that they were entitled for registration of the mark under Section 12(3) of the Act.
4. Appellant/opponent filed a review petition before the Assistant Registrar which was disallowed in terms of his order dated 29.9.1997. Appellant/opponent filed an appeal on the file to High Court of Judicature at Madras No. TMA/4/1997 against the order of the Assistant Registrar disallowing the review. The said appeal was transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and was numbered as TA/10/2003. The same was disallowed by order dated 16.1.2004 of the Board.
5. TMA/S.R. No. 85193 of 1997 filed in the High Court of Judicature at Madras on 24.11.1997 was transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and was numbered as TA/288/2004. The appellant had filed a petition for condoning the delay under Section 5 of the Limitation Act in relation to that appeal. The Board vide its order dated 28.5.2004 had allowed the condonation of delay and ordered to post the same for hearing. The appeal was posted for hearing on 7.8.2004.
6. Appeal in TA/288/04 was taken up for argument on 17.8.2004 at Chennai. Learned Counsel S/Shri Prakash and Herald Singh appeared for the appellant. Learned Counsel Shri Franco Lewis appeared for the second respondent.
7. Learned Counsel for the appellant submitted that originally the trade mark ‘Umbrella’ was used in tiles and the same was registered in the name of M/s Madura Company Ltd., and later in the name of Feroke Tile Works, Calicut under No. 2763 in Part A on 27.9.1942 in class 19 in respect of tiles, bricks, roofing tiles, ceiling tiles, ventilators, sky tiles etc. Appellant purchased the entire rights of Madura Company Limited including the trade mark and registered themselves as proprietor on 23.4.1967. From the said date the appellant had been using the trade mark continuously and uninterruptedly. Even if we go by the submission of the second respondent, at the best his user can be from January, 1976, though they have failed to file any evidence in support of their claim. Learned Assistant Registrar, having held that the mark is not qualified under Section 12(1) of the Act has reached the conclusion that it is not confusingly and deceptively similar in terms of Section 11(a), has done so in total negation of the interpretation of the provisions of law. His conclusion that the second respondent is entitled for the honest and concurrent user in terms of Section 12(3) of the Act is ex facie illegal and untenable in law and unsustainable on the facts since the claim of the concurrent user implies simultaneous and contemporaneous use. Here the appellant is a user since 1942 and the respondent claims his use since 1976.
8. Learned Counsel for the second respondent put his reliance upon the impugned order wherein the Assistant Registrar has on the basis of the evidence allowed the honest concurrent user. Second respondent filed additional evidence wherein he has submitted that the appellant has leased its manufacturing division under the name and style of Feroke Tile Works to M/s Eastern Clay Works Ltd., a subsidiary. The appellant had made a newspaper advertisement in Mathrubhumi, a Malayalam daily dated 18.2.1999 for sale of their factory at Calicut.
9. We have gone through the submissions of the appellant and the second respondent very carefully and the documents submitted by them. The question under appeal before us is as to the entitlement of the second respondent under Section 12(3) of the Act. The legal principles in relation to the availability of Section 12(3) are well settled and any exercise of the power by the Registrar for granting honest concurrent use under Section 12(3) is to be given in exceptional cases where honest and concurrent use has been proved by the applicant to the hilt. Here there is a position of “triple identity”, namely, same goods, identical or substantially identical mark, and same area of use. However, the principles of law as contained in Section 12(3) is an exception to the general principles of trade mark law as explained above. The following propositions have been laid down in various cases for entitlement of honest and concurrent use:
i. The honesty of adoption and use;
ii. The quantum of concurrent user shown by the applicant having regard to duration, area and volume of trade;
iii. The degree of confusion likely to follow from the resemblance of the applicant’s and opponent’s marks, which is a measure of the public inconvenience;
iv. Whether any concrete instances of confusion have in fact been proved; and
v. The relative inconvenience which would be caused to the parties and the extent of inconvenience which would result to the public if the applicant’s mark is registered.
Spiller’s Appln. (1952) 69 RFC 327
10. Second respondent has submitted various authorities in support of his claim. For eg.
(a)’ Lyle and Kinahan Ltd.’s Application, (1907) 24 RFC 37., 249 C.A.
(b) Alex Pirie and Sons Ltd’s Appln. (1932) 49 R.P.C. 195 CH.D., C.A.
(c) Amritdhara Pharmacy v. Satya Deo Gupta,
(d) London Rubber Co. Ltd. v. Durex Products Inc. and Anr.,
(e) Buler T.M., (1975) R.P.C. 275 CH.D
(f) Gopal Hosiery v. Dy. Registrar of Trade Marks and Ors.,
The most relevant case in the Indian context and much relied upon in this area is the London Rubber Co. v. Durex Products. The contextual parameters of the said case cannot be depended upon in the instant case. In London Rubber both the companies started importing different rubber goods at the same time. For these different rubber products they filed trade mark applications almost in close proximity in matter of time to each other for the same trade mark. In view of that, the Supreme Court held that there is a fit case of honest concurrent use and entitlement thereof. Thus, the registration of the same trade mark was allowed to two different proprietors for different goods, though of the rubber manufacturer. In the present matter the appellant has stepped into the shoes of Madura Company Limited who are the original proprietors of the trade mark which dates back to 1942. The second respondent, even if we take that their user dates back to 1976, are much late in time vis-a-vis the appellant. Their products are the same which are liable to cause confusion and deception. Moreover, the rectification proceedings initiated by the second respondent in the High Court of Judicature at Madras against the appellant also ended in favour of the appellant. The rectification OP was dismissed by the learned single Judge and the same was confirmed by the Division Bench also. In view of this, the respondent does not have any claim for the entitlement of the trade mark and we feel that the Assistant Registrar has erroneously reached the conclusion for allowing the registration of the impugned trade mark under Section 12(3) of the Act.
11. In view of the above, appeal is allowed and the order of the Assistant Registrar is set aside. Consequently, the application No. 370874 of the second respondent stands rejected. No order as to costs.