|Case Name||Bhim Sain & Others v/s Janta Naswar Factory|
|Case Number||Civil Miscellaneous Appeal No 17 of 1976|
|Court||Delhi High Court|
|Bench||Justice SN Kapoor|
|Decided On||27 March 1997|
|Relevant Act/Sections||Trade & Merchandise Act,1958 – Section 17, 18, 109|
|Author of the case brief||Praher Vaidya|
This appeal under Section 109 of the Trade and Merchandise Act, 1958 (the Act) is directed against an order of the Assistant Registrar rejecting an application of the appellant for registration of their Trade Mark. The appellant firm applied for registration of the trademark “AATH Photo MARK” snuff in Class 34 claiming to be its user since 1972. After preliminary scrutiny and on the ground of conflict with the application of the opponents, this mark was accepted subject to a disclaimer in terms of Section 17 read with Section 18(i) of the Act, of the digit “8” and the words “AATH Photo MARK”. It was advertised in the Trade Mark Journal. On 19th September, 1973, the respondent entered into opposition on three grounds that: (i) they are proprietors for the trademark label containing, inter alias eight photographs, the expressions “JANTA Mail SNUFF”, the numeral “8” and the “AATH Photo MARK”, (ii) they have been using it and earning goodwill from the same since 1963; and (iii) its registration would be in violation of Sections 11(a) and 18(1) of the Act. By the impugned order, the opposition was upheld and application of the appellant firm was rejected. Feeling aggrieved by the aforesaid order, the appellants have preferred this appeal inter alias on the ground that there was neither any resemblance between the trademark labels of the two parties, nor there was any similarity.
- In order to determine the proprietor for the purpose of registration of a trademark in respect of a particular class of goods under Section 18(i), the relevant points of consideration are prolonged use, geographical area, sale proceeds and distinctiveness of the goods or trademark.
What is the meaning of “deception” and “confusion”?
- Deception would mean, “Knowingly and willingly making a fake statement or representation, express or implied, pertaining to a present or past existing fact”. The term “deceptively similar” should, therefore, mean a phonetic or visual or otherwise made false representation made willingly and knowingly so as to make such a similar presentation of one’s own products that his products should be sold in the market as products of another well-established trader. In this respect, it must be kept in mind that a mark shall be deemed to deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion in terms of Section 2(i)(d) of the Act. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark or goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection there is distinction between causing deception and causing confusion in English Law. But Section 2(i)(d) of the Act, by its deeming provision, has obliterated that distinction as far as Indian Law is concerned.
- The following principles should be considered to judge whether there is a deceptive resemblance between the two labels or whether the registration of the trademark would cause confusion:
- It is a question of the first impression and it is for the Court to decide that question.
- The marks have to be considered as a whole, and not by splitting numerals, expressions, designs and color scheme used in the trademarks.
- The test of the commonness of the idea between the two marks could be applied in deciding the question of similarity between them. In deciding the question of similarity or dissimilarity, one must consider the nature and kind of customers who are likely to buy those goods and approach it from the point of view of a man of average intelligence and of imperfect recollection.
- The absolute identity of two competing marks or their close resemblance is only one of the tests and a comparison has to be made out from a glance and not with strenuous effort to find the similarity.
- Trade connection between different goods is another such test. Ex- hypothesis, this test applies only when the goods are different. It also applies where the competing marks closely resemble each other, just as much as it applies where the competing marks are identical.
- A composite word having acquired worldwide reputation on account of expensive multi-media advertisement, coupled with some prior user of the trademark in India, could not be used or sought to be registered in the name of another person though dealing in different goods.
- All of the above tests are totally independent tests.
- In absence of criteria for determining what is likely to deceive or cause confusion within meaning of Section 8, Section 10 (or Section 11), every case must depend on its own particular facts and the value of authorities lies not so much in the actual decision as in the test applied for determining what is likely to deceive or cause confusion. What degree of resemblance is necessary to deceive or cause confusion must in the nature of things be incapable of definition a priority.
- In the case of commonly used words in trade, descriptive of the nature or colour or laudatory of the quality of the goods or words of generic terms cannot be permitted to be monopolised, excepting when two or more such words are used as a composite word in circumstances mentioned hereinafter and not being a geographical name or a surname or a personal name or any common abbreviation thereof or the name of set, caste or tribe in India. But invented words and composite words stand on different footing. An invented word means a word coined by using the first letter and the letters of different commonly used and known words having no meaning or no obvious meaning until one has been assigned to it. A composite word is coined by using several commonly used and known words or parts thereof. When the invented or composite words are to be compared for determining whether they are likely to deceive or cause confusion, they must be judged by their look and visual impression and by their sound without splitting words or letters and considering their etymological or ideological meaning of the invented or composite words what we have to consider here is the overall similarity of the invented or composite words having regard to all the surrounding circumstances that the goods are bearing the two names were or were not of the same kind and same description.
- Both the parties are trading in “Snuff” (Naswar). Striking and essential features in both the marks are comprised of the bust portrait with the turban in the centre and seven similar portraits placed in satellite position around the main bust portrait and expression “AATH Photo Mark” with the numeral “8”. One of the contentions raised in the appeal is that there were a scroll and words “JANTA Mail NASWAR” in Hindi script. In the third panel, there were photos appearing to be bust of a person looking like a Muslim gentleman with a beard, Kullah and turban, and a buttoned-up coat. The fourth panel has the words “JANTA Mail NASWAR” in Gurmukhi and Gujarati scripts, and one may not find a single literate person who may be able to read each of these four scripts. The illiterate purchasers of Naswar would go only by the mark of seven photos around the main photo on the label. It may again be difficult to ascertain whether it is a bust of a Muslim or a Sikh. These labels which are to be used in the line of the same trade, coupled with this kind of dominantly identical features are bound to cause confusion for they create an identical commercial impression. Purchasers of Naswar who are generally illiterate and poor would not be able to examine the labels on the “Naswar” offered for sale by the two parties. Despite the writings in Hindi, Gurmukhi and Gujrati on the label, the two labels would remain Aath Photo Mark or Eight Photo Mark, there is an exact same phonetic resemblance in the expression that its registration is certainly likely to lead to deceptive resemblance and cause confusion.
- The appellants have not even consented or agreed to disclaim any right to the exclusive use of the mark ‘AATH Photo Mark’ and the numeral ‘8’. And in view of the foregoing, it is not possible to register without a disclaimer in terms of Section 17 read with Section 18(i) of the Act. In view of very close resemblance leading to confusion between the two marks, prolonged prior use and reputation of the opponents mark coupled with the recent adoption by the applicants of the trademark an irresistible inference is that applicants must have copied the opponent’s mark. The appellants could not be regarded as the proprietors of the mark under Section 18(i) of the Act to permit its registration. Appeal dismissed.