Aktiebolaget Skf v. Rajesh Engineering Corporation

1. Admit.

2. This is an appeal against the order of the Deputy Registrar, Trade marks dated June 20, 1994, whereby the opposition of the appellant to the registration of the trade mark applied for by the respondent has been dismissed. The facts giving rise to this appeal are as under:— On September 29, 1986 the respondent filed an application for registration of trade mark SKI in respect of ball bearings, being parts of machines, included in class 7. On February 16, 1991 the mark was advertised in Trade mark Journal. Thereafter on April 1, 1991 the appellant filed notice of opposition to the application of the respondent for registration of the trade mark wherein it was averred to the effect that the appellant was registered proprietor of trade mark SKF under registration No. 5984 dated September 30, 1942 in class 7 in respect of ball and roller bearings, plummer blocks & pulleys etc; that the appellant also owns several registrations in respect of trade mark SKF in clauses 6, 7, 8, 9 and 12 and that the goods of the appellant and that of the respondent will be said from the same outlets and to the same customers who are likely to assume the respondent's goods as that of the appellant and that the respondent has deliberately and with mala fide motives selected trade mark SKI, which is deceptively similar to the appellant's trade mark SKF.

3. In reply to the notice of opposition, the respondent, on July 20, 1992, filed a counter-statement wherein it was primarily stated that the trade mark SKI was being continuously used by the respondent from May 4, 1971 and it had been honestly using the same without any interruption or interference from any quarter. Besides it was averred that the trade mark SKI had become distinctive and associated with the goods of the respondents and was not deceptively similar to the trade mark of the appellant.

4. The parties filed affidavits by way of evidence in support of their respective stands. While the appellant filed joint affidavits of Mr. Krister Foil and Mr. Lars Moller affirmed on January 25, 1993 and March 31, 1994 and affidavit of Shri Dara Sarkari affirmed on February 5, 1993, the respondents filed an affidavit of Mr. S.K Prabhkar affirmed on September 30, 1993. In the affidavits filed on behalf of the appellant, it is, inter alia, stated that the appellant's trade mark SKF by virtue of the world wide use and publicity, has gained recognition, valuable reputation and goodwill and the said trade mark has become distinctive of and is exclusively identified with the goods of the appellants company. It is also averred that the trade mark SKF was adopted in the year 1934 and has been continuously used world wide in the course of trade. That apart, it was stated that the trade mark SKF stands registered in India. In Dara Sarkari's affidavit sale figures of the appellant's product under the trade name SKF during the period 1972 to 1991-92 have been given. On the other hand in the affidavit of Shri S.K Prabhakar it is averred that the respondents firm was doing business under the name and style of M/s. Shri Krishna Industries. It is also stated that the trade mark SKI was being used in respect of ball bearings, being parts of machines by the predecessor of the appellant, M/s. Rajesh Engineering Corporation, since May 4, 1971 and the said trade mark has been assigned to the respondent firm by an assignment deed dated July 27, 1993. The said affidavit also gives sale figures of the goods sold under the trade mark SKI from the years 1971-72 to 1979-80 and 1989-90 to 1992- 93. It is also denied therein that the trade mark SKI is identical or deceptively similar to the trade mark SKF of the appellant. The affiant says that the trade mark SKI has become distinctive of and identifiable with the goods of the respondent.

5. The learned Deputy Registrar by its order dated June 20, 1994 dismissed the opposition of the appellant and permitted the registration of the trade mark applied for by the respondent. In doing so, it overruled the opposition of the appellant based on Sections 9, 11(a), 11(e) and 12(1) of the Act. It also held that the respondent was entitled to registration of the trade mark under Section 12(3) of the Act as the respondent had honestly adopted the same by taking first three letters of their trading style and had been using the mark since 1971.

6. The appellant being aggrieved of the above said order of the Deputy Registrar has questioned the same in the present appeal.

7. I have heard the learned counsel for the parties.

8. At this stage it will be appropriate to juxtapose below the trade marks of the parties:

SKF - Appellant's registered trade mark in respect of goods falling in Class 7.

SKI - Trade mark sought to be registered by the respondent in respect of goods falling in class 7.

9. As is manifest from, the two trade marks the first two letters thereof are common. Only the last letters in the two marks are different. Since the first two letters of the competing marks are identical they bear a close similarity. There is a possibility and likelihood of mistake being committed by an average man of ordinary prudence and intelligence in identifying the trade mark SKI with the goods of the appellant. The trade mark, therefore, is likely to cause deception and confusion in the minds of the customers. Such a possibility is sufficient to disentitle the respondent from getting the mark registered. It cannot be disputed that both the trade marks cover goods of the same description as the appellant's trade mark SKF is in respect of the goods which fall in class 7 and the respondent's trade mark SKI which is sought to be registered is also in regard to goods falling in the same class. Both the parties deal in ball bearings. Therefore the trade channels for the out flow of the goods to the customers are also the same.

10. Even if the appellant had not launched its offensive against the registration of the trade mark SKI under Sections 9, 11(a) and 11(e) of the Act, its objection under section 12(1) thereof to the registration of the Trade mark SKI could not have been overruled. According to section 12(1) a trade mark will not be registered if the mark applied for is identical or deceptively similar to a trade mark already registered in the name of another proprietor and the goods in respect of which registration is sought are the same or of the same description as those for which the other mark stands registered. As already seen the trade mark of the ‘respondent attracts both the aforesaid conditions due to which the trade mark SKI proposed to be registered in respect of the goods of the respondent does not qualify for registration. The Deputy Registrar was also not right in granting benefit of Section 12(3) of the Act to the respondent on the ground of honest concurrent user of the trade mark since the year 1971 onwards. On this aspect learned counsel for the respondent submitted that the trade mark SKI was being used in respect of ball bearings, being parts of the machines, since 1971. He also stated that trade mark SKI is being used as the respondent is doing business under the firm name Sri Krishna Industries and first letter of each of the three words constituting the firm name has been taken to coin the same. He also submitted that S.K Parbhkar is one of the partners and the trade mark SKI takes after his name.

11. I have considered the submissions of the learned counsel but I am not impressed by the same.

12. It is not disputed that Sri Krishna Industries came into existence in the year 1993 and therefore the trade mark SKI could not have been coined for that reason as according to the respondent itself the same was being used since 1971. Respondent is the successor of M/s. Rajesh Engineering Corporation. SKI is not the abbreviation of the trading name of the predecessor of the respondent. Therefore SKI cannot be considered to have been derived either from the initials of Sri Krishna Industries or Rajesh Engineering Corporation. In so far as the argument of the learned counsel for the respondent that the trade mark SKI has been derived from the name of Mr. S.K Prabhakar, who is the partner of the firm, it needs to be noticed that this argument of the learned counsel for the respondent does not find mention in the order of the Deputy Registrar. Therefore it appears that the respondent did not argue the said point before the Deputy Registrar at the time of hearing. In any event if the trade mark was derived from the name of the partner then it would have corresponded to his initials, which are SKP and not SKI. Different explanations of the respondent for using the said trade mark does not strengthen its case but detracts from the truthfulness of the explanation. The use of the trade mark SKI by the respondent, therefore, is not bona fide, and is a colourable imitation of the appellant's trade mark SKF. Since the adoption of the mark SKI was dishonest, the alleged use of the same from 1971 to 1980 and 1989 onwards will be of on consequence.

13. Having regard to the aforesaid discussion, this appeal succeeds and the order of the Deputy Registrar of Trade Marks dated June 20, 1994 is set aside. Parties will bear their own costs.