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  • section 109 (6) of the Trade and Merchandize Marks Act, 43 of 1958, (hereinafter referred to as the Act)
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  • section 109 (6) of the Trade and Merchandize Marks Act, 43 of 1958, (hereinafter referred to as the Act)
Smart Summary

Judgment Summary — First Appeal under section 109(6) of the Trade and Merchandise Marks Act, 1958

Factual and Procedural Background

The appellants, Jugmug Electric & Radio Company, manufacturers of electrical goods (electric heaters, immersion heaters, hot plates, toasters, table lamps, heating apparatus and parts), applied for registration of the trade mark "TELERAD" and obtained registration (No. 217016B) dated 7 August 1963. The respondents, Telerad Private Limited, already had registered trade marks for "TELERAD" (Nos. 181813 and 195883) in respect of radios and televisions.

The respondents failed to file a timely opposition to the appellants' registration. In October 1964 they applied for rectification of the register and removal of the appellants' mark on the ground that it contravened sections 11, 12 and 18 of the Trade and Merchandise Marks Act, 1958. The Assistant Registrar, by order dated 26 August 1970, found that the respondents were persons aggrieved and concluded that, although the goods were different, the appellants' registration contravened sections 11 and 18 and should be removed; he rejected the contention under section 12(1) that registration should be refused because the goods were identical or deceptively similar. The appellants appealed to the court under section 109(6) of the Act.

Legal Issues Presented

  1. Whether the Assistant Registrar erred in ordering removal of the appellants' trade mark on the basis of section 11 of the Act despite having found the goods to be of different descriptions (i.e., whether section 11 applies when goods are different but the mark may cause confusion).
  2. Whether the respondents had locus standi (standing) to apply for rectification/removal after having failed to file a timely opposition.
  3. Whether the respondents were estopped from seeking rectification because they did not oppose earlier proceedings in time.

Arguments of the Parties

Appellants' Arguments (as recorded)

  • The respondents had no locus standi to seek rectification/removal because they failed to file opposition in time.
  • The Assistant Registrar erred in invoking section 11 after finding that the respective goods of the parties were different — if goods are different, similarity of trade mark should not call for refusal of registration (reliance on multiple precedents where different goods bearing similar marks were allowed).
  • Suggested that similarity of mark does not necessarily warrant refusal when goods are of different kinds (counsel cited many authorities to this effect).

Respondents' Arguments (as recorded)

  • The appellants' registration contravened sections 11, 12 and 18 of the Act and should be removed.
  • The respondents asserted that the appellants' use of "TELERAD" would cause confusion or deception in the market and that the respondents had acquired reputation and substantial user in the mark for radios/televisions.

Table of Precedents Cited

Precedent Rule or Principle Cited For Application by the Court
Darnell (J) & Son Ld's application for a Trade Mark, (1957) RPC 177 Illustration that a mark for "boots, shoes and slippers" did not contravene a similar mark for "stocking and socks" (i.e., different goods may not cause refusal). The court observed this and similar authorities were cited by appellants but held they did not directly touch the legal question before the court (section 11 issue) in this case.
Application by Ladislas Jellinek, (1946) 63 R.P.C 59 Example where a trade mark for shoes did not contravene a mark for shoe polish. Referenced by appellants; the court stated this authority did not address the specific section 11 issue in the present facts.
Thomas Bear & Sons (India) Ld. v. Prayag Narain & Jagennath, (1941) 58 R.P.C 25 Trade mark for chewing tobacco held not to contravene trade mark for cigarettes. Cited by appellants; court found it not directly dispositive of section 11 question here.
J. & J. Colman Ld. to Register a Trade Mark, (1929) 46 R.P.C 126 Semolina and mustard were held to be different goods for trademark purposes. Cited by appellants; court noted it does not address the specific confusion/association issue under section 11 raised in this appeal.
Lifeguard Milk Products Proprietary Ld., (1957) R.P.C 79 Tea and milk/milk products were held to be different goods. Cited by appellants; court recorded it but considered it not directly relevant to the section 11 construction required here.
Lever Brothers, Port Sunlight Ld. v. Sunniwite Products Ld., (1949) 66 R.P.C 84 Held Sunlight and Sunniwite to be different marks/products in context. Cited by appellants; court said these authorities do not address the precise point of law under section 11 raised in the instant case.
Nekumar K. Porwal v. M/s. Mohanlal Hargovindas, AIR 1963 Bombay 246 Authority for the proposition that the grievance of a party aggrieved must be substantial and not merely sentimental; also cited regarding locus standi (person aggrieved). Cited by both sides; the court relied on it in rejecting the appellants' locus standi argument and to support that respondents were persons aggrieved.
London Rubber Co. Ltd. v. Durex Products Inc., AIR 1963 SC 1882 Registration of contraceptives for men held not similar to registration of contraceptives for women (example of different markets/products). Cited by appellants; court observed it but maintained such authorities did not resolve the present section 11 association/confusion issue.
Eastman Photographic Materials Co. Ld. v. John Griffith Cycle Corporation Ld. & Kodak Cycle Company Ld., (1898) 15 R.P.C 105 Held "Kodak" had become identified with Eastman; registration by another for bicycles would deceive because of connection between trades and attempted benefit from reputation. The court relied on this as an illustrative precedent applying principles of section 11: a coined word identified with one trader can not be registered by another to obtain benefit of the established reputation.
In the Matter of an Application by Edward Hack, (1941) 58 R.P.C 91 Refused registration of "Black Magic" for laxatives where mark "Black Magic" was already registered for chocolates because of risk of confusion/association of common source. Cited as authority applying section 11 principles; the court used it to show that different goods may still cause public to think a common origin exists, supporting the Assistant Registrar's approach.
Sunder Parmanand Lalwani v. Caltex (India) Ltd., AIR 1969 Bombay 24 Applied section 11 principles: Caltex mark on watches was refused registration because it could cause people to think watches were connected with Caltex petroleum products. Relied on by the court as a local decision applying the same principles (including examination of Kodak case) and supporting the view that association/confusion can arise across different goods.
Dunn's Trade Mark, (1890) 7 R.P.C 311 House of Lords held use of "Fruit-Salt" could deceive people into thinking a suspicious connection with "Eno Fruit Salt" existed (association across products). Cited as historic authority illustrating confusion/association; the court and Assistant Registrar treated it as supportive of section 11 analysis.
In the Matter of an Application by Ferodo Ltd., (1945) 62 R.P.C 111 Cited among authorities dealing with confusion/association under section 11 jurisprudence. Referenced in the discussion of authorities; used to support the broader proposition that section 11 reaches associations likely to deceive even across different goods/markets.
G.E. Trade Mark, (1973) R.P.C 297 (Lord Diplock) Lord Diplock: essence of a trade mark is the association it bears in the mind of a potential buyer; section 11 is wide enough to embrace confusion from various associations. The court quoted Lord Diplock's observation and treated it as supportive of a wide construction of section 11 that embraces confusion arising from association of origin across dissimilar goods.

Court's Reasoning and Analysis

The court proceeded by examining the Assistant Registrar's factual findings and the legal construction of section 11 of the Trade and Merchandise Marks Act, 1958.

Key analytical steps recorded in the opinion:

  1. The Assistant Registrar had found as a fact that the respondents had coined the word "TELERAD" (comprised of "TELE" + abbreviation "RAD"), had established substantial user and reputation in that mark in respect of radios and televisions, and that in some instances rival goods (respondents' goods and appellants' electrical appliances) were displayed and sold in the same shop or over the same counter and passed through the same trade channels.
  2. The Assistant Registrar also found trader and purchaser evidence indicating that purchasers would think goods bearing the same mark originated from the respondents if they saw "TELERAD" applied to domestic electrical appliances; even if actual deception did not occur, consumers might wonder whether there was a common trade origin.
  3. The court observed that section 12 (prohibition of registration of identical or deceptively similar marks) has a specific reference to similarity of goods; in this case the Assistant Registrar had found the goods to be of different descriptions and therefore rejected the section 12 attack. However, the court emphasized that section 11 contains a broader, per se prohibition grounded in deception/confusion or other disqualifying features of a mark irrespective of identity of goods.
  4. The court reviewed authorities (including Kodak, Edward Hack, Dunn's Trade Mark and Sunder Parmanand Lalwani) that demonstrate that a coined mark identified with one trader and extensively used can be protected against registration or use by another even for different goods when association/confusion as to trade origin is likely.
  5. Applying those principles to the Assistant Registrar's findings of reputation, user, overlapping trade channels and buyers' evidence, the court agreed that the appellants' use was not bona fide and that the appellants' persistence in using "TELERAD" (refusing to adopt alternatives) supported an inference of intention to cause confusion or to obtain benefit of respondents' reputation.
  6. The court further addressed the appellants' submission about locus standi and estoppel: it held that respondents were persons aggrieved commercially and had locus to apply for rectification; failure to file an opposition in time did not legally debar them from applying under the Act (sections 56 and 11 were mentioned as enabling rights to apply to the Registrar for cancellation), and therefore the estoppel contention was rejected.
  7. Given the factual findings by the Assistant Registrar (which the court saw no reason to disturb) and the correct legal approach to section 11, the court endorsed the Assistant Registrar's conclusion that registration of the mark by the appellants was prohibited by clause (a) of section 11 because the use was likely to deceive or cause confusion.

Holding and Implications

Holding: The appeal is dismissed and the Assistant Registrar's order removing the appellants' trade mark "TELERAD" was upheld. (Appeal dismissed with costs.)

Implications and direct effects:

  • The appellants' registered trade mark (No. 217016B for "TELERAD") was ordered removed in exercise of the Registrar's discretion as upheld by the court.
  • The respondents, who had coined and extensively used "TELERAD" for radios and televisions and acquired reputation, are entitled to protection of that trade name against the appellants' unauthorised use on electrical domestic appliances in circumstances where the facts show likelihood of deception or confusion.
  • No broader novel legal principle was formulated by the court beyond applying established authorities and a wide construction of section 11; the decision's direct effect is the removal of the appellants' registration and vindication of the respondents' protection under section 11 of the Act.

This summary is confined to the matters expressly recorded in the judgment text provided and does not add information beyond that opinion.

    Messrs Jugmug Electric & Radio Co. v. Messrs Telerad Pvt. Ltd. S

    B.C Misra, J.:— This first appeal under section 109 (6) of the Trade and Merchandize Marks Act, 43 of 1958, (hereinafter referred to as ‘the Act’) has been filed by the appellants against the order of the Assistant Registrar, dated 26th August, 1970, by which he has ordered the removal of the trade mark of the appellants (No. 217016B) dated 7th August, 1963, on the grounds that it offends sections 11 and 18 of the Act.

    2. The material facts of the case are that the appellants, namely, Jugmug Electric & Radio Company claiming to be manufacturers of electric heaters, immersion heaters (electrical), hot plates for cooking, electric toasters, table lamps, heating apparatus and parts of the aforesaid goods, applied for registration of their trade mark “TELERAD”, which was granted by the impugned mark mentioned above. The respondents, who are Telerad Private Limited had their own trade mark registered under No. 181813 and 195883 in respect of Radio and television as “TELERAD”, opposed the registration of the mark, but failing to file the opposition in time, the respondents applied in October, 1964 for rectification of the register and removal of the impugned trade mark of the appellants. The respondents contended that the impugned trade mark contravened sections 11, 12 and 18 of the Act and so must be removed from the register. The Assistant Registrar by the impugned order found that the respondents before me were the persons aggrieved. He also found that the nature and characteristics of the respective sets of goods were totally different and their manufacturers were also different and so the goods were of a different description. He repelled the contention of the respondents that the registered trade mark contravened section 12 (1) of the Act. He, however, concluded that the same contravened sections 11 and 18 of the Act and the appellants were not entitled to concurrent registration under section 12 (3) of the Act. So he exercised the discretion and ordered the removal of the mark.
    3. Mr. Anoop Singh appearing to assail the order has contended that the respondents had no locus standi to file the petition for rectification, since they had failed to file the opposition in time and that the Assistant Registrar had erred in recording his finding regarding s. 11 of the Act after he had held that the goods were different.
    4. Mr. Anoop Singh, counsel for the appellants has cited a large number of authorities to show that if the goods were different, similarity in the trade mark does not call for refusal of registration. In Darnell (J) & Son Ld's application for a Trade Mark, (1957) RPC 177 (1), the trade mark of “boots, shoes and slippers” was held not contravening similar trade mark of “stocking and socks”. In the Matter of an Application by Ladislas Jellinek for the Registration of a Trade Mark, (1946) 63 R.P.C 59 (2), the trade mark of shoes was found as not contravening the trade mark for shoe polish. In Thomas Bear & Sons (India) Ld. v. Prayag Narain & Jagennath, (1941) 58 R.P.C 25 (3), the trade mark of chewing tobacco was found as not contravening the trade mark for cigarettes. In the matter of an Application by J. & J. Colman, Ld. to Register a Trade Mark. (1929) 46 R.P.C 126 (4), semolina and mustard were found to be different goods. In Lifeguard Milk Products Proprietary Ld's case, 1957 R.P.C 79 (5), tea and milk and milk products were found to be different. In Lever Brothers, Port Sunlight Ld. v. Sunniwite Products Ld. (1949) 66 R.P.C 84 (6), Sunlight and Sunniwite were found to be different. In Nekumar K. Porwal v. M/s. Mohanlal Hargovindas, AIR 1963 Bombay 246 (7), it was found that the grievance of the party aggrieved must be substantial and not sentimental. In London Rubber Co. Ltd. v. Durex Products Incorporated, AIR 1963 SC 1882, at 1885 (8), the registration of contraceptives for men were found as not similar to the registration of contraceptives for women.
    5. I have carefully considered these authorities. They do not touch the question of law that has been raised before me. In the instant case, it is nobodys case, at least at the stage of appeal, that radios and television sets produced by the respondents are the same goods as electrical goods like electric heaters, table lamp, etc. which are manufactured by the appellants. The Assistant Registrar has himself recorded the finding in favour of the appellants on section 12 of the Act. Section 12 deals with the prohibition of registration of identical or deceptively similar trade marks. Had the attack of the respondents been confined to the grounds stated in section 12, there is no doubt that their objection would, in view of the finding of the Assistant Registrar, have to be dismissed. The question, however, for consideration arises on the construction of section 11 of the Act and its application to the facts of the case. Section 11 of the Act reads as follows:
    “11. A mark —
    (a) the use of which would be likely to deceive or cause confusion; or
    (b) the use of which would be contrary to any law for the time being in force; or
    (c) which comprises or contains scandalous or obscene matter; or
    (d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or
    (e) which would otherwise be disentitled to protection in a court;
    shall not be registered as a trade mark.”
    A perusal of the aforesaid section shows that the prohibitions contained in clauses (a) and (e) above do not have a marked reference to the similarity of the goods. The prohibition is directed against per se registration of the trade mark which contravenes any of the aforesaid clauses.
    6. In Eastman Photographic Materials Co. Ld. v. John Griffith Cycle Corporation Ld. and the Kodak Cycle Company Ld. (1898) 15 R.P.C 105 (9), the court found that the Eastman Company had invented and had for some years used the word “Kodak” in connection with their goods and especially for cameras and the word occurred in all their registered Trade Marks. The Company had made a speciality of cameras suitable for bicyclists and the appliances for fixing the same to bicycles and had largely advertised “Bicycle Kodaks”. The opponent company had applied for and obtained registration of the word “Kodak” for bicycles. The Eastman Company and The Kodak Company Ld. applied for an injunction to restrain the defendants from carrying on the business under the name of Kodak Cycle Company Ld. and from passing off their goods as the goods of the plaintiffs. The court held that the word “Kodak” had become identified with the Eastman Company and with their goods, that the evidence showed a close connection between the bicycle and photographic trades, that registration had been obtained by an untrue statement to the Registrar, that the defendants were trying to get the benefit of the reputation of the Eastman Company, and that the Trade Mark must be expunged as being calculated to deceive.
    7. In the Matter of an Application by Edward Hack for the Registration of a Trade Mark, (1941) 58 R.P.C 91 (10), the application was for registration of the words “Black Magic” in respect of laxatives, which was opposed by the proprietors of the mark “Black Magic” in respect of “Chocolate & Chocolates”. The court held that there was a risk of confusion in that some persons would be likely to think that the two “Black Magic” preparations were made by the same manufacturers, and others to wonder if this might be the case. As a result, the registration was refused. Same view has been taken by a Division Bench of the Bombay High Court in Sunder Parmanand Lalwani v. Caltex (India) Ltd., AIR 1969 Bombay 24 (11), where the case was of petroleum products produced by Caltex (India) Ltd., as competing with Caltex Watches. The court applied the principles of section 11 of the Act and refused the registration. In that decision the court examined Kodak Cycle's case (15 RPC 105). In the matter of Dunn's Trade Mark (1890) 7 RPC 311 (12). In the matter of an application by Ferodo Ltd. (1945) 62 RPC 111 (13), Edward Hack Case, (1942) 58 RPC 91 (10). In Dunn's Trade Mark (1890) 7 RPC 311, the court had dealt with the question of “Fruit-Salt Baking Powder” as opposed to “Eno Fruit Salt”. The House of Lords held that Dunn's use of the words “Fruit-Salt” would have the effect of deceiving the people as there would be a suspicious connection between the two articles in the minds of many persons. After examining the cases, the Bombay High Court observed that a large number of persons, if they saw or heard about the mark “Caltex” in connection with the applicant's watches, would be led to think that the watches were in some way connected with the opponents who were dealing in petrol and various oil products with the Caltex Mark, or they were in any way connected with opponents. In this view of the matter, the registration was refused.
    8. In G.E Trade Mark, (1973) RPC 297 (14), Lord Diplock observed as follows:
    “The essence of a trade mark is the association that it bears in the mind of a potential buyer of the goods to which it is applied. I can see no reason for differentiating between cases where the confusion arises because the trade mark is associated with the name of a manufacturer to which some other manufacturer's name is similar, and causes the association with a design or with descriptive words and the confusion arises because some other manufacturer uses a similar design or similar descriptive words to indicate the origin of his goods. In my view, section 11 is wide enough to embrace ‘confusion’ resulting from any of these kinds of association.”
    9. In the instant case, the Assistant Registrar found that Telerad was not a common dictionary word, but a coined word, consisting of “TELE” and abbreviation of Radio “RAD”. The Assistant Registrar was satisfied on the evidence on record that the respondents before me had established substantial user and reputation in respect of their mark and that in some, cases at least the rival goods were displayed and sold in the same shop or over the same counter and passed through same trade channels. He also found the evidence from traders and purchasers to the effect that they would think that the goods have originated from the respondents if they see the same mark applied to domestic electric appliances. After recording these findings of fact, the Assistant Registrar held that though the rival goods were not of the same description, still there was likelihood of confusion as to trade origin if the respective goods were sold under the “TELERAD” mark in the same shop, over the same counter, and if the public were not actually deceived, they might still wonder as to whether the rival goods have a common trade origin. As such, he upheld the objection of the respondents.
    10. In view of the findings of fact recorded by the Assistant Registrar, which there is no reason to differ from, I agree that the Assistant Registrar has answered the question of law correctly. In my opinion he has written a very considered judgment and has appreciated the principles of law correctly. There is no doubt that the respondents, who have coined the word “TELERAD” and extensively used it and acquired reputation for their products are entitled to the protection of their trade name against its unauthorised use. The use of the expression “TELERAD” by the appellants is clearly not bona fide. No appreciable reason has been shown by the appellants or their counsel for use of the respondents' registered trade mark in relation to their goods, except with the intention to cause confusion. The goods which the appellants wish to trade are electrical appliances, but the trade name they have selected has nothing to do with the electrical appliances. Their obvious intention is to pass off their goods as originated from the respondents manufacture or at least as a collaborator of them. It would be very interesting to observe that during the course of arguments, Mr. Anand for the respondents suggested that the appellants may adopt any name excepting the word “TELERAD” and so a number of suggestions were given including the word “TELEMUG”. But the appellants stoutly refused to accept any expression excepting the word “TELERAD” without a break in it, though they were prepared to add “JUGMUG” or other words cither before or after the same. This only shows that the appellants whose name is JUGMUG ELECTRIC & RADIO CO. and who produce electrical-goods do not depend upon their name or the description or the quality of their goods, except by using the registered trade mark of the respondents.
    11. As a result, I hold that the Assistant Registrar has correctly recorded the finding that the use of the trade mark “TELERAD” by the appellants is likely to deceive or cause confusion and, therefore, its registration is prohibited by clause (a) of section 11 of the Act. I have no hesitation in endorsing the said finding.
    12. Mr. Anoop Singh has next submitted that the respondents had no locus standi to challenge the registration. There is no substance in the submission. Nekumar K. Poswal v. M/s. Mohanlal Hargovindas, AIR 1963 Bom 246 (7), provides an answer to this. Moreover, the person aggrieved is the person who is actually aggrieved by the registration of the trade mark and it is the respondents who are suffering commercially on account of the adoption of the impugned trade mark by the appellants. They have, therefore, every locus standi to complain of the same and file the petition giving rise to this appeal.
    13. Mr. Anoop Singh has also contended that the respondents are estopped from filing the application for rectification, as they had failed to file the opposition in time. But the respondents certainly had a right under sections 56 and 11 of the Act to apply to the Registrar for cancellation of the registration and the mere fact that they did not file the opposition in time does not legally debar them from agitating the question. The grievance of the appellants is not that the respondents filed an opposition, and having obtained a finding against them, seek to reagitate the question in removal application at a subsequent stage. The grievance is that the respondents did not file opposition despite opportunity to file opposition in time, but there is no rule or principle of law to debar the respondents from filing the application. The contention has no force and is rejected.
    14. As a result, the appeal is dismissed with costs.
    Appeal dismissed.
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    Comments

    Messrs Jugmug Electric & Radio Co. v. Messrs Telerad Pvt. Ltd. S
    (Oct 19, 1976)