JUDGMENT
D.Y. Chandrachud, J.
1. This appeal under Section 109 of the Trade & Merchandise Marks Act, 1958 is directed against a decision rendered on 14th August, 2000 by the Deputy Registrar of Trade Marks. By the order impugned in these proceedings the Deputy Registrar of Trade Marks has allowed the application filed by the First Respondent (“the Respondent”) for the registration of his trade mark in Class 30 of the Fourth Schedule to the rules framed under the Act. The Respondent had applied for the registration of his trade mark in relation to tea, which has been allowed by the impugned order.
2. On 20th October, 1989 the Respondent applied to the Competent Authority under the Trade & Merchandise Marks Act, 1958 for the registration of a label mark “SURUCHI” (in Part A of the Register and under Class 30 of the Fourth Schedule). The Respondent claimed user in respect of the mark for which registration was applied since 11th November, 1985. On 16th June, 1995, the application came to be advertised in the Journal. The Appellant on 12th September, 1995 filed a notice of opposition. In the notice of opposition, the Appellant stated that it was an established and renowned producer of tea and one of its trade marks used in relation to tea comprises a particular and distinct label in conjunction with the mark “TATA TEA” which has been used for the past several decades. According to the Appellant, its mark has a distinctive and predominantly green colour background with a particular get-up of a circular concentric pattern and an oblique thick line on the upper left hand corner of the pouch. The Appellant submitted that the design and particular get-up of its mark can be broadly defined as comprising a series of concentrically disposed curves on either side of a central core, thus creating an ornamental pattern of a distinctive nature. There also appeared, according to the Appellant on its polypack a logo of the letters “T” and “T” with a pictorial representation of two leaves on a twig. 1 he Appellant claimed that the design of its polypack pouch has been marketed and had acquired a considerable reputation which was associated by the public and those, in the trade with the products of the Appellant. The Appellant stated that it was the proprietor of the marks TATA TEA and KANAN DEVAN TEA, and that it had already applied for the registration of several of its marks. The design and get-up adopted by the Respondent, according to the Appellant, was deceptively and confusingly similar to the get-up of the Appellant and an attempt was, therefore, being made by the Respondent to trade upon the reputation and goodwill associated with the mark of the Appellant. The Appellant stated that it had no objection to the use of the Trademark SURUCHI by the Respondent, but that what was objected to was the use of a get-up on the tea pouches sold by the Respondent, which was deceptively similar to the get-up of the Appellant.
3. The Respondent filed its counter-statement on 18th March, 1997. In paragraph 6 of the counter-statement, the Respondent claimed that its trade mark comprised of the words or the expression “SURUCHI TEA” prominently displayed at the centre of the label with the logo “STC” placed in a triangle at the bottom of the label. The Respondent accepted that there are concentric circles in its label, but claimed that these are unlike the concentrically disposed curves on either side of a central core as appeared in the mark of the Appellant. The case of the Respondent, therefore, was that the design and get-up of the label of the Appellant was different from that of the Respondent and the tea that was being marketed by the Appellant was demanded and referred to as “TATA TEA”, whereas the tea which was marketed by the Respondent was commonly referred to as “SURUCHI TEA”. According to the Respondent, the only common feature in the two labels was the colour green, which was described as the colour of tea leaves. The Respondent claimed that there was, therefore, no deception or confusion. Apart from the aforesaid contention, the Respondent claimed that he had independently and honestly adopted the trade mark and had used it concurrently for several years. The Respondent accordingly relied upon the provisions of Sections 12(3) and 33 of the Act as justifying the application for registration.
4. Evidence in support of the opposition was filed in the form of an affidavit on behalf of the Appellant on 21st January, 1998 and on 21st July, 1998 the Respondent filed evidence in support of his application. The evidence in reply was thereafter filed on behalf of the Appellant on 10th July, 1999. On 14th August, 2000 the Deputy Registrar of Trade Marks passed the impugned order dismissing the opposition which had been lodged by the Appellant and ordering that the mark be registered. The Appellant had sought an adjournment before the Registrar on the ground that its Counsel was unavailable. The adjournment was refused and the matter was disposed of by allowing the application of the Respondent for registration.
5. After this appeal was filed before the Court, on 20th April, 2001 an interim order has been passed by the learned Single Judge restraining the Registrar from acting on the order of registration and from issuing a Certificate of Registration. In the meantime, it has been stated on behalf of the Appellant, the mark of the Appellant has been registered on 14th August, 2002. Insofar as the Appellant is concerned, it had made an application for registration on 21st November, 1988 claiming that it had been using the mark since September, 1985. The registration of the mark of the Appellant, therefore, will date back to the application for registration which was filed on 21st November 1988.
6. Both the learned Counsel have relied upon the evidence which was adduced before the authority below and the affidavits and documents filed on behalf of the respective parties. A compilation consisting of all the pleadings and evidence has been filed and with the assistance of Counsel, I have perused the record of the case.
7. The issue which has been urged before the Court is as to whether the registration of the mark proposed by the Respondent falls within the prohibition of Section 11(a) of the Act. Section 11(a) provides that a mark, the use of which would be likely to deceive or cause confusion shall not be registered as a trade mark. The question then that would, therefore, arise in a case such as the present is whether the application which was moved by the Respondent for the registration of its mark should have been rejected on the ground that its use was likely to deceive or cause confusion. The settled position of law is that the burden lies on the Applicant to establish that the mark of which registration is sought is not likely to deceive or to cause confusion. In National Sewing Thread Co. Ltd. v. James Chadwich & Bros., . Mr. Justice S.K. Mahajan delivering the judgment of a Bench consisting of three learned Judges of the Supreme Court considered the provisions of Section 8 of the Trademarks Act, 1940 and laid down the principle in the following words:
“Under this section an application made to register a trade mark which is likely to deceive or to cause confusion has to be refused notwithstanding the fact that the mark might have no identity or close resemblance with any other trade mark. The Registrar has to come to a conclusion on this point independently of making any comparison of the mark with any other registered trade mark. What the Registrar has to see is whether looking at the circumstances of the case a particular trade mark is likely to deceive or to cause confusion. The principles of law applicable to such cases are well-settled. The burden of proving that the trademark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of Section 8 and therefore it should be registered. Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark with the goods which he would be purchasing”
8. A Division Bench of the Calcutta High Court in Prem Nath Mayer v. Registrar of Trade Marks, relying on the judgment of the Supreme Court in the National Sewing Thread case held that it is for the Applicant to prove that its goods when marketed with the mark proposed to be registered would not lead to deception or confusion amongst buyers. The Registrar must arrive at the satisfaction that the mark would not deceive or confuse and this satisfaction can be obtained only when the Applicant proves by such evidence as he can tender, that deception or confusion would not be the result of marketing the goods with the proposed registered trade mark. The Division Bench of the Calcutta High Court held that the burden of establishing that the mark if registered will not be likely to cause confusion or deception is one which continues to rest on the applicant for registration and it could not be contended that it would shift on the opponent, who raises an objection to the registration of the mark.
9. Section 11(a) as already noted prohibits the registration of a mark the use of which would be likely to deceive or cause confusion. Section 2(d) of the Act provides that a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely deceive or cause confusion. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, , the Supreme Court held that a question as to whether a mark was such as would be likely to deceive or cause confusion has “to be ascertained by a comparison of two marks-the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards”. The Court noted that “the persons who would be deceived are, purchasers of goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented” by the mark of a person who opposes registration. The judgment of the Supreme Court lays down that “the purpose of the comparison is for determining whether the essential features of the trade mark are to be found in the mark which is objected to.” The identification of the essential features of a mark is a question of fact and “depends upon the judgment of the Court based on the evidence led before it as regards the usage of the trade”. The object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff. (Para 29 at p. 990)
10. The question of deceptive similarity came up for consideration before the Supreme Court once again in the decision in Parle Products (P.) Ltd. v. J.P. and Co., Mysore, , Mr. Justice G.K. Mitter, delivering the judgment of a Bench of three learned Judges laid down the underlying principles thus:
“……In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other it would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.”
” On the facts of the case before the Supreme Court, the finding was as follows: “In this case we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word “Glucose Biscuits” in one and “Gluco Biscuits” on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs goods, he might easily mistake the Defendants wrapper if shown to him some time after he had seen the plaintiffs. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes.”
11. There are two Division Bench judgments of this Court which have also considered the issue. In Hiralal Prabhudas v. Ganesh Trading Company, . Mr. Justice Lentin speaking for a Division Bench adverted to the previous decisions of the Supreme Court on the subject and held that the Court must be guided by the following considerations:
“5. What emerges from these authorities is (a) what is the main idea or salient features, (b) marks are remembered by the general impressions or by some significant detail rather than by a photographic recollection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (e) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (i) the purchaser must not be put in a state of wonderment, (g) marks must be compared as a whole microscopic examination being impermissible, (h) the broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design, and (i) overall similarity is sufficient. In addition, indisputably the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances.”
12. Consistent with the view taken by the Division Bench, in the Hiralal Prabhudas case, is the judgment of another Division Bench of this Court in National Chemicals and Colour Co. v. Reckett and Colman of India Limited, . That was a case where the trade mark which was sought to be registered by the Appellant consisted of a picture of two birds sitting on a twig. One bird was partially hidden by the other bird. The words Bul Bul were written on either side of the two birds. As against this, the registered trade mark of the respondent consisted of the picture of a single bird sitting on a twig with the words Robin Ultra Marine Blue. The Division Bench was of the view that the picture of a bird-sitting on a twig which was the registered mark of the respondent was very similar to the picture of two birds sitting on a twig which was proposed to be registered as a trade mark by the Appellant. True enough the mark of the Appellant consisted of two birds whereas that of the respondent consisted only of one bird. The Division Bench held that this was not sufficient to hold that the two marks were not similar, since both the devices bore a close resemblance to each other. The Division Bench held that one cannot compare two trade marks by putting them side by side by trying to find out similarities and differences between them. What the Court has to consider is the overall impression which the trade mark gives, because, this is what members of the public carry in their minds. The Division Bench, therefore, concurred with the view taken by the learned Single Judge insofar as he had set aside the order of the Registrar allowing the registration.
13. In the present case, the trade mark of the Respondent and the trade marks of the Appellant are described by the Deputy Registrar in the impugned order. The order of the Deputy Registrar records that the Respondent applied for the registration of the label mark comprising the words “SURUCHI TEA” prominently displayed at the centre of the label with the logo STC placed in a triangle at the bottom of the label. The label is described thus:
“The said label is embossed in concentric green circles with oblique thick lines emanating from each circle creating an ornamental pattern.”
Insofar as the mark of the Appellant is concerned, the impugned order described it in the following words:
“The mark of the opponents consists of Tata Tea with predominant green colour background with a particular get-up of a circular, concentric pattern and an oblique thick line on the upper left hand corner of the design. The design and particular get-up is stated to comprise of series of concentrically shaped curves on either side of a central core, thus, creating an ornamental pattern of a distinctive nature. In addition the opponents mark in the polypack is stated to contain a logo of letters “T” and “T” with two leaves on a twig.”
14. The burden was upon the Respondent to establish that the mark of which registration was sought was such as was not likely to deceive or to cause confusion. A comparison of the two marks in the present case would reveal that insofar as the Appellant is concerned, the basic get-up and design of its mark consists of concentrically shaped curves around a central core which are shaded green upon which the words “TATA TEA” are impressed on the central core. On the left hand corner of the label mark there are oblique or diagonal green shaded parallel lines. The mark also contains a depiction of a leaf with a twig and the words “TATA TEA” thereon. The “TATA” logo appears immediately below the words “TATA TEA”. Counsel appearing on behalf of the Appellant urged before the Court that the use of the concentric curves upon which the words “TATA TEA” are impressed is part of the established design and get-up of the mark of the Appellant. In the case of the Appellant’s mark, there is between two curves a peculiar etching of thatched lines, much in the shade of thorns. The concentric curves, shaded green together with the peculiar etching between them is an essential feature and hallmark of the mark of the Appellant.
15. Insofar as the design which has been proposed by the Respondent is concerned, that design makes use of concentric circles. The concentric circles in the design of the Respondent are also shaded green and in the left hand corner of the label of the Respondent there are also two oblique lines within which the words “FRESH TEA” appear. The Respondents imprint upon the concentric circles the words “SURUCHI TEA”. The mere use of the words “SURUCHI TEA” as in the case of the mark of the Respondent and of the words ‘TATA TEA” by the Appellant would in a case such as the present, not be dispositive of the question as to whether the mark of the Respondent of which registration is sought is likely to deceive or cause confusion. The case of the Appellant is that the use of the concentric curves is indeed an essential part of its label mark. Reliance in this regard has been placed on the several advertisements which were appended to the affidavit of evidence filed on behalf of the Appellant. In those advertisement, there is for instance a figure of a dancing girl whose wings are purported to be in the nature of a butterfly. The concentric curves appear prominently on the wings. Similarly, in another label mark which is also annexed to the affidavit in evidence, the concentric curves appear prominently upon which the logo “ASLI TAAZGI” is imprinted. Each of the marks of the Appellant whether for TATA TEA or for KANAN DEVAN TEA, which is also marketed by the Appellant relies upon the visual effect of the concentric curves as the basic pattern of the logo. The visual impact or get-up of the Appellant’s mark is distinctive because of the concentric curves which form an essential feature of the mark.
16. Guided as I am by the principles of law which have been laid down in several judgments of the Supreme Court and of this Court, the effort of the Court has to be not to compare the two marks with a view to notice the differences between them, but to consider whether the overall impact that is conveyed by the mark of the Respondent of which registration is sought is one of visual similarity with the mark of the Appellant. The two marks can obviously not be identical. The test that is required to be considered under Section 11(a) is not whether the marks are identical, but whether they are such that the use of the mark which was sought to be registered would be likely to deceive or cause confusion. There is merit in the submission which has been urged on behalf of the Appellant that the use of the concentric circles in the label mark of the Respondent was likely to deceive or to cause confusion. The Court must have regard to the fact that the product in relation to which the mark of the Respondent is sought to be registered is tea, a commodity of mass consumption which is used almost universally by consumers in the country. Every individual is a consumer and the Court would not be wrong in assuming that the vast majority does regard tea as an item of day-to-day consumption. A consumer who goes to the market to purchase a polypack of tea marketed by the Appellant is likely to be deceived or confused when he sees or is offered a packet of tea marketed by the Respondent containing on its label a design similar to the concentric curves prominently used on the marks of the Appellant. The brand names may be different for, while the Appellant markets TATA TEA the Respondent sells its tea pouches under the brand name SURUCHI TEA. The difference in names, however, is not dispositive of the question of confusion or deceptive similarity. This principle has been considered in a judgment of the Chancery Division of the High Court of Justice in England.’ In Tavener Rutledge Ltd. v. Specters Ld., 1959 Reports of Patent, Design and Trade Marks Cases 83, the tins of hard boiled sweets sold by the Plaintiffs carried the brand name “Taveners Fruit Flavoured Drops” while the tins of the defendants carried their brand name which was “Specters Fruit Flavoured Drops”. Mr. Justice Danckwerts held that the difference in the two brand names was not material because the Court was dealing with the average consumer of imperfect recollection; the Court would save to allow for cases where the consumer did not have two tins side by side for careful comparison:
“In the end, it seems to me that the matter is one which I have to decide on the factual evidence provided by the tins themselves. If you take the two tins and put them side by side, you can, of course, at once see that they are not the same make of tin because the names are quite plain and it is quite simple to observe that one is “Specters” and one “Taveners”, that one has a mauve or purple ground and the other a black ground and that the shape of the panels is somewhat different and that therefore they are not exactly the same tin; but. I do not think that is the right way in which to Judge the matter. Nor again do I think it is an answer to say that anybody who knows the name will know that the Plaintiffs name is different from that of the defendants and that sweets are commonly ordered in the trade by name and in the case of retail customers are very often asked for by the name “so and so” sweets. It seems to me that one has to take into consideration people who have what is called imperfect recollection, as was pointed out in the case of Saville Perfumery Ld. v. June Perfect Ld., 1941 (58) RPC 147, (at pages 174-75) and one has to allow for cases where the person who has not got the two tins side by side perhaps does not remember the Plaintiffs name accurately, or does not know that there are two different traders in the same line of business, or many others for that matter and takes a casual glance at the tin and imagines that it is the kind of fruit drops that he wants, not entirely casually, but looking at it in the ordinary way that such a customer would go into a shop and see a pile of tins or something of that sort, Afterwards of course he may discover that they were not the ones he expected to get and he may raise objection, but it seems to me that it is a case of conclusion if customers are induced to buy by a recollection of the general get-up of the Plaintiffs tin so that they purchase a tin of the Defendants sweets by mistake, and, I am bound to say that I have come to the conclusion that such confusion is not only possible but is likely.”
17. The design or get-up which has been adopted by the Respondent produces a visual similarity of a striking resemblance to the product sold by the Appellant. As the Division Bench of the Court put it in Hiralal Praphudas’s case, purchaser must not be put in a state of wonderment. The overall similarity of the two marks has to be regarded with reference to the essential features. Thus, considered, I am of the view that the Respondent has clearly not been able to discharge the fundamental requirement of Section 11(a) of the Act. The Respondent has furnished no cogent explanation of how it came to adopt this particular design which has a striking resemblance to the mark of the Appellant. The concentric circles, the graphic use of the thatched etchings, the use of the parallel oblique lines on the left hand corner of the pouch and the overall impact created by the use of the same green coloured get-up in the mark of the Respondent is of a striking visual similarity with the mark of the Appellant. The Respondent has no cogent explanation of how it arrived at a design and get-up, the essential features of which bear such a striking resemblance to the essential aspects of the mark of the Appellant. The purity of the Register has to be preserved, which will not be the case by granting registration to the mark of the Respondent. The mark of the Respondent does not pass muster when it is assessed with reference to the statutory norms embodied in Section 11(a).
18. The Deputy Registrar while allowing the registration of the mark of the Respondent has formed the view that the get-up of the label of the Appellant is not the essential leading or distinctive feature of the mark of the Appellant. The Deputy Registrar held that those features are “neither remembered nor memorable to stick in the customer’s mind” and that the customer was most likely to ask for TATA TEA and not for the ornamental pattern described with reference to the mark of the Appellant. This is clearly to miss the essential point which is whether there is an overall similarity or resemblance between the mark of which registration is proposed and the mark of the Appellant. The Deputy Registrar was not justified in coming to the conclusion that a prospective purchaser of average intelligence would place no emphasis whatsoever on the design, logo or get-up of the product when he seeks to make a purchase in the market, The design of the mark of the Appellant which includes prominent features consisting of the concentric curves, the parallel oblique lines on the left hand corner, the thatched etchings and the dominant use of the colour green are intended to and do have the effect of producing in, the mind of the customer an overall association of the product of the Appellant with the use of the ornamental pattern. Though the product of the Appellant can be purchased with reference to the name of the brand under which it is sold, that would not deviate from the basic fact that in marketing its product the Appellant has used a reference to the aforesaid ornamental design of the concentric curves as a feature for distinguishing its product.
19. The burden was clearly on the Respondent to establish that there was no likelihood of deception of confusion. In the counter-statement which was filed by the Respondent before the Deputy Registrar, apart from asserting that the nature of the ornamental design was different, the Respondent had claimed an honest and concurrent user. Reliance was consequently placed on the provisions inter alia of Sections 12(3) and 33 of the Act. The Respondent had produced alongwith his affidavit in evidence before the Deputy Registrar advertisement bills for the period from 1990. None of the bills annexed to the affidavit of the Respondent contains any reference to the use of the particular logo in question by the Respondent. Not even a single advertisement has been relied upon by the Respondent to establish that there was an honest concurrent use of the mark by the Respondent together with the use of the mark of the Appellant as alleged. Similarly, various invoices were sought to be relied upon by the Respondent. None of the aforesaid invoices contains a reference to the label mark in dispute and in fact, as has been pointed out by Counsel for the Appellant, the only logo which has been used on some of those Invoices does not match the ornamental design with reference to which the label mark was sought to be registered. In some of the invoices pertaining to the year 1987 one finds the depiction of the words STC which have appeared on the label mark immediately below the words “SURUCHI TEA”. Apart from the use of the words “STC”, the Respondent has not been able to establish a case of honest or concurrent use of the ornamental design on the label mark. The Respondent has hence failed to discharge the burden which the law costs upon him.
20. Insofar as the evidence of the Appellant is concerned, the Appellant had relied upon an affidavit of its Company Secretary. In paragraph 5 of the affidavit, there was the following statement:
“My Company carries on an established business as merchants, manufacturers and marketing one of their Teas under the brand name TATA TEA since long. The said tea is packed in Polypack Pouches having a distinctive get-up predominantly in green colour background having a circular concentric pattern and an oblique thick line on the upper left hand corner of the pouch. The essential features of the get-up of Polypack Pouches bearing the trademark TATA TEA/RANAN DEVAN TEA consist of series of concentrically disposed curves on either side of a central core, thus creating an ornamental pattern. Apart from the logo consists of double letters “T” represented in a stylised format, having two tea leaves.”
21. In paragraph 6 of the affidavit tendered in evidence on behalf of the Appellant, a statement of the sales of tea packed in polypacks under the brand name TATA TEA for the period 1988 to 1997 was referred to and was annexed as Annexure A. At Annexure B to the affidavit was a statement showing the advertisement expenses which had been incurred between the years 1990 to 1997. At Annexures C was a statement of the sales of KANAN DEVAN TEA for the period 1990 to 1997. The Appellant has stated in the course of its affidavit that it was not concerned with the use of the word mark “SURUCHI TEA” by the Respondent, but only with the device of the label. The Appellant conceded that it had no objection if the Respondent agreed to delete the device or to change the label which was objected to on behalf of the Appellant. Therefore, the objection that was set up was to the use of the concentric circles and to other aspects of the design which produce a striking visual similarity to the mark of the Appellant and not to the use of the words “SURUCHI TEA”.
22. Counsel appearing on behalf of the Respondent has urged that the Appellant did not in the course of its opposition state the specific date with effect from which the user of the mark by the Appellant involving the concentric curves was adopted. Counsel also sought to urge before the court that the data in relation to the use of the label was furnished only from 1990 and not prior thereto. There is no merit in that submission. In the opposition to the registration of the trademark the Appellant has averred that the mark of the Appellant which comprised of a distinct label in conjunction with the words “TATA TEA” has been used for several decades. Then in the course of the affidavit which was filed in lieu of the examination-in-chief in evidence, it has been averred that the tea marketed by the Appellant is packed in polypack pouches with a distinctive get-up and the description of the label is thereafter furnished in paragraph 5 of the affidavit. The essential features of the get-up have been adverted to. Following this there is a statement that the sales of the tea packed in polypacks with the brand name of “TATA TEA” for the period 1988 to 1997 are tabulated in the statement at Annexure A. There can, therefore, be no manner of doubt that in paragraphs 5, 6 and 8 of the affidavit filed in the course of the evidence before the Deputy Registrar, the Appellant, has sufficiently established its used of the distinctive label mark from 1988 insofar as the brand “TATA TEA” is concerned and from 1990 insofar as “KANAN DEVAN TEA” is concerned. The Appellant has annexed invoices for the sale of KANAN DEVAN TEA respectively of 1984 and 1989 and of TATA TEA for 1997, in my view, the contention of the Respondent to the effect that the Appellant has failed to establish the use of the label mark cannot be accepted. But, above all, it would be necessary to emphasise that while I have dealt with and rejected the contention of the Respondent in regard to the deficiencies which the Respondent perceives in the evidence of the Appellant, these deficiencies even if they were to be shown would not entitle the Respondent to registration. The Respondent would be in a position to establish its case for registration only by discharging the burden cast upon him. That the Respondent has failed to do.
23. The Deputy Registrar of Trademarks has also held that the Appellant has “an established use for the trademark TATA TEA”. Insofar as the Respondent is concerned, the Deputy Registrar in the concluding part of his order has come to the conclusion that he has used the mark since 11th November, 1985. The only basis on which the Deputy Registrar has arrived at this conclusion is the statement made in the application of the Respondent to the effect that the mark had been continuously used since 11th November, 1985. Absolutely no material or evidence has been produced by the Respondent in support of that contention. The finding of the Deputy Registrar is based on no evidence at all. The Respondent has produced bills relating to advertising expenses since 1990 and invoices in relation to its products SURUCHI TEA from the year 1982 onwards. The dispute in the present case, however, is not in regard to the sale of SURUCHI TEA but whether the Respondent has established the use of the particular trademark of which he claims registration. Absolutely no material has been produced by the Respondent in support of the submission that he has used the mark of which registration was sought since November, 1985. The finding which has been recorded in that regard by the Deputy Registrar is without any basis of foundation. The Deputy Registrar has then adverted to the fact that the Respondent holds a registered mark in respect of the chewing tobacco marketed and sold by him. It is impossible to conclude from the circumstance that the Respondent is a proprietor of the mark SURUCHI in relation to chewing tobacco that the trademark of which registration was sought, had been used in relation to tea by the Respondent. As already noted, there is absolutely no material to show that the Respondent had utilised the label mark in dispute from November, 1985. At the cost of repetition, it must be emphasised that no material has been produced by the Respondent either in the form of actual advertisements or otherwise, to establish that the particular mark with the prominent get-up on the basis of the green coloured concentre circles has been in use by him since November 1985.
24. Thus, this is a case where the essential features of the label mark of the Appellant consist of an ornamental pattern on which the word “TATA TEA” or “KANAN DEVAN TEA” are printed. The use of the concentric curves shaded in green colour, with thatched edges form together with the features noted earlier a distinctive basis of identifying the marks of the Appellant. The Respondent has furnished no explanation whatsoever for the adoption of a label mark with a substantially similar get-up. The burden clearly was on the Respondent to establish that the label mark of which registration was sought was not likely to confuse or deceive and that burden has not been discharged by the Respondent. The mark of the Respondent cannot be registered consistent with the provisions of Section 11(a) which prohibits the registration of a mark the use of which is likely to deceive or cause confusion. The purity of the Register cannot be maintained by granting registration to the mark of the Respondent. The order passed by the Deputy Registrar of Trademarks is erroneous and requires the interference of this Court in the exercise of its appellate jurisdiction under Section 109 of the Act. The Deputy Registrar has failed to apply the settled tests laid down by the Supreme Court. However, as already noted earlier during the course of this judgment there is no dispute as regards the right of the respondent to use the word “SURUCHI” in connection with the sale and marketing of its goods. Therefore while the order of the Deputy Registrar granting the registration of the mark of the Respondent would have to be set aside, while doing so, it is expressly clarified that the order of this Court shall not be regarded as precluding the Respondent from applying for the registration of an appropriate mark with the use of the words “SURUCHI TEA”. While doing so, the Respondent shall, however, not utilize any visual representation deceptively similar to the ornamental pattern based on the concentric curves which is associated with the registered trademark of the Appellant or adopt any design similar thereto that is likely to deceive or to cause confusion. The Appeal is allowed in aforesaid terms.
Certified copy expedited.