S.N Kapoor, J.:—
CMs 1001-1002/2002
2. Allowed subject to all just exceptions. Certified copies of the documents in question be filed within four weeks.
3. CMs stand disposed of.
CM (M) 549\2002 and CM 1100/2002
4. Heard learned counsel for the parties.
5. In this case, the petitioner is trading in Shakti Bhog Atta etc. and they have got the trademark registered in the name of Shakti Bhog effective from 16th June, 1982.
6. On the other hand, learned counsel for the respondent is using the trademark Shiv Shakti with a Trishul and Damru written in different form using this trademark for the purpose of Atta, Maida and Suji in class 30 since 6th March, 1990. They applied for registration on 30th October, 1990. The appellant filed an opposition to the application. The learned Assistant Registrar of Trademarks rejected the opposition and allowed registration of the trademark of the respondent Shiv Shakti with a device Trishul and Damru. Feeling aggrieved by the above order the appellant has filed the present appeal. The contention of the learned counsel for the appellant is three-fold. His first contention is that it is against the provisions of Section 9(d) of the Trade and Merchandise Marks Act, 1958 (hereinafter called ‘the Act’ for short), for the word Shiv Shakti has “no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a seat, caste or tribe in India.” Consequently, the trademark was not registrable. His second contention is that it is likely to lead to deception. His third contention is that the learned Assistant Registrar of Trademarks without considering evidence has taken it to be honest and concurrent user to register the same under Section 12(3) of the Act.
7. Having heard learned counsel for the parties, it appears that though there may be some substance in his third contention, but the appeal must fail, for there is no substance in respect to other two points as would be evident hereinafter.
8. In so far as the question of deception is concerned, learned counsel for the appellant refers to K.R Chinna Krishna Chettiar v. Sri Ambal & Co., (1969) 2 SCC 131 : AIR 1970 SC 146 : PTC (Suppl)(1) 258 (SC). In that case, the appellant sought registration of a mark consisted of a label containing three panels. The first and third panels contained in Tamil, Devanagri, Telgu and Kannada the equivalents of the word “Sri Andal Madras Snuff”. The centre panel contained the picture of goddess Sri Andal and the legend “Sri Andal”. The trademark No. 126808 of the respondent consisted of a label containing device of goddess Sri Ambal seated on a globe floating on water enclosed in a circular frame with the legend “Sri Ambal Parimala Snuff” at the top of the label, and the name and address “Sri Ambal and Co., Madras” at the bottom and there was no visual resemblance between the two marks, but ocular comparison was held not to be always a perfect test.
9. Paras 9 and 13 of that judgment are relevant to point out the factual distinction between that case and this case. They read as under:—
“9. The vital question in issue is whether, if the appellant's mark is used in a normal and fair manner in connection with the snuff and if similarly fair and normal user is assumed of the existing registered marks will there be such a likelihood of deception that the mark ought not to be allowed to be registered? (see In the matter of Broadhead's Application for registration of a trade mark, 1950 (67) RPC 209. It is for the Court to decide the question of a comparison of the competing marks as a whole and their distinctive and essential features. We have no doubt in our mind that if the proposed mark is used in a normal and fair manner the mark would come to be known by its distinguishing feature “Andal”. There is a striking similarity and affinity of sound between the words “Andal” and “Ambal”. Giving due weight to the judgment of the Registrar and bearing in mind the conclusions of the learned Single Judge and the Division Bench, we are satisfied that there is a real danger of confusion between the two marks.
13. The Hindus in the south of India may be well aware that the words Ambal and Andal represent the names of two distinct Goddesses. But the respondent's customers are not confined to Hindus alone. Many of their customers are Christians, Parsees, Muslims and persons of other religious denominations. Moreover, their business is not confined to south of India. The customers who are not Hindus or who do not belong to the south of India may not know the difference between the words Andal and Ambal. The words have no direct reference to the character and quality of snuff. The customers who use the respondent's goods will have a vague recollection of the portrait of a being Goddess used in connection with the mark. They are not likely to remember the fine distinctions between a Vaishnavite Goddess and a Shivaite deity.”
10. In this case, instead of phonetic similarity leading to confusion, there is a lot of phonetic difference between the words “Shakti” and “Shiv Shakti”. There could not be any confusion as it could be there on account of user of words “Andal” and “Ambal”. The words “Shiv” and “Shakti” could not be registered except upon evidence of distinctiveness. The question is:
“whether the word “Shiv” and “Shakti” in the present case have assumed distinctive character in the circumstances, particularly use of the device of Trishul and Damru or not and user since 6th March, 1990? It is not the case of the appellant that the respondents are not dealing with the same goods since 1990. According to the learned counsel for the appellant the appellant came to know about the application of the respondent in 1990 when advertisements was published on 16th November, 1995.
11. Learned counsel for the appellant also referred to K.R Chinnakrishna Chetty v. K. Venkatesa Mudaliar, AIR 1974 Madras 7. Dispute arose in the above said case by addition of words “Radha's Sri Andal”. The Supreme Court noted this fact in para 14 of the judgment in K.R Chinna Krishna Chettiar v. Sri Ambal & Co. (supra) and observed: “It was argued that there was no phonetic similarity between Sri Ambal and Radha's Sri Andal was not likely to lead to confusion. The Division Bench found force in this argument. But as the matter is sub judice we express no opinion on it.” The learned Judge of the Madras High Court in para 19 of the judgment in KR. Chinnakrishna Chetty v. K Venkatesa Mudaliar (supra) relies on the case of Vick Vaporub where the word ‘Karosote’ was sought to be added to the respondents ‘legend’ and word ‘India’ before ‘Rustam’. The word ‘Bulova’ was sough to be added to ‘the legend ‘Accutron’, which was held to infringe the respondent's trade mark ‘Accurist’. The facts and circumstances of that case were different for, there was no device at all and the words ‘Andal’ and ‘Ambal’ continued to cause confusion by adding the word ‘Radha's’. Things were not so distinct as to avoid deception. In the case in hand the device and addition to word had made a word of difference. The Division Bench of the Madras High Court, as has been observed, was inclined to accept he argument. Since the matter was pending before the Division Bench, the Supreme Court did not like to express any opinion. It may be mentioned that the customers who would be using the goods of the two parties here would no doubt find the word ‘Shakti’ same. But ‘Shiv Shakti’ alongwith the device would certainly make a difference, for there would be phonetic as well as ocular difference in the case in hand. Besides, the word “Bhog” is not being used and further it is very much apparent that the appellant is not using any device at all in Shakti Bhog for the registered trademark is only ‘Shakti Bhog’ without any device. In this case of the respondents are using device of Trishul and Damru alongwith the words ‘Shiv Shakti’ which would be phonetically as well as visually different.
12. One has to read clause (d) as well as (e) in the present context together and they cannot be read in isolation. Seeing the device of Damru, Trishul and the word ‘Shiv Shakti’, I feel, therefore, that there is virtually no substance except a hyper-technical one in this regard. Therefore, neither the question of deception nor the question of bar under Section 9(2)(d) would arise in the present for, the mark is composite as well as distinctive one, at least under Clause (e) of sub-sec. (i) of Section 9.
13. While dealing with the point of concurrent user, it would be appropriate here to reproduce Section 12(3) of the Act, which reads under:—
“12. Prohibition of registration of identical or deceptively similar trade marks:—
(1) XXX
(2) xxx
(3) In case of honest concurrent user or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods subject to such conditions and limitation, if any, as the Registrar may think fit to impose.”
Emphasis supplied
14. However, I think Section 12(3) of the Act would not be attracted for two reasons: firstly, that trade name is different; and secondly, that the respondents have started user only since 6th March, 1990, according to their own case.
15. They mentioned so in their application moved on 30th October, 1990. It may be mentioned that applicability of sub-section (3) of Section 12 arises only when the trademarks are identical. The trade mark of the two parties are neither identical nor it could be accepted that it is so.
16. Consequently, while accepting submission of learned counsel for the appellant on the applicability of sub-section (3) of Section 12, for the aforesaid reasons, I do not find any force in this appeal. It is dismissed accordingly alongwith the stay application.
17. Parties are left to bear their own costs.’