Prabir Kumar Majumdar, J.:— This appeal is from the order of the Registrar of Trade Mark dated 22nd February, 1985 whereby the Registrar allowed the application of the respondent M/s. Joseph E. Seagram & Sons Inc. for registration of trade mark under its application No. 286662.
2. On 14th March, 1973 the respondent Joseph E. Seargram & Sons Inc. 375, Park, Avenue, City and State of New York, U.S.A filed an application being 286662 dated 14th March, 1973 for registration of a trade mark label consisting of the word “ANTIQUE” and device in class 38 in respect of the wines, spirits (Beverages) and Liquors. The application was duly advertised in the Trade Mark Journal No. 635 dated 16th November, 1975. A notice of opposition to the aforesaid application of the respondent was filed by the appellant J. & W. Hardie Ltd. (a Scotish Company 27, the Loan, South Queensfery, West Lothian, Scotland.
3. The grounds of opposition taken by the appellant before the Registrar of Trade Marks were as follows:
(i) The appellants were the firm of blenders and exporters of Scotch Whisky and the appellant had been and were still actively exporting their products to India;
(ii) The appellants were the proprietors in India of the trade mark “THE ANTIQUARY” under which the appellant's product was imported into and sold in India;
(iii) The appellant made an application for registration of the said trade mark under application No. 249, 209 in class 3 in respect of Wines, Spirits and Liquors included in Class 3 on 13th May, 1968;
(iv) The appellant's said application was accepted for registration and advertised in the Trade Marks Journal No. 474 dated 1st March, 1969. The mark was subsequently registered and the registration was still in force.
(v) The respondent's aforesaid application being application No. 286662 dated 14th March, 1973 was for registration of the word “ANTIQUE” and a device in class 33 in respect of the Wines, Spirits (Beverages) and Liquors (spirituous);
(vi) The respondent claimed use of their mark since the year 1969;
(vii) The respondent's mark was deceptively similar to the appellant's aforesaid registered trade mark and was in respect of the same description of goods;—
(viii) That the use by the respondent of their trade marks ‘ANTIQUE’ which was deceptively similar to the appellant's registered trade mark “THE ANTIQUARY” would be likely to deceive or cause confusion.
4. The appellant opposing the said application of the respondent contended before the Registrar of Trade Marks that the registration of the mark applied for by the respondent would be contrary to the provisions of Section 11(a) and 12(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the said Act.) The appellant also contended that in any event this has been a fit case for the Registrar to exercise its discretion against the respondent and refuse the registration of a mark which was deceptively similar to the appellant's Registered Trade Mark.
5. The respondent filed a counter statement denying the allegation of the appellants and claimed that the respondent's mark was first used in India in 1967 and that in any event, the respondent was entitled to a concurrent registration under Section 12(3) of the said Act. The respondent filed an affidavit in support of their application before the Registrar which is dated 10th August, 1978. The appellant also filed their affidavit in support of its opposition.
6. The learned Registrar observed that the opposition of the appellant was based on Sections 11 and 12(1) of the said Act.
7. The learned Registrar has found that the respondents' trade mark consists of the word “ANTIQUE” and a brand landscape device but it is also found by the learned Registrar that the memorable feature in the label is the word “ANTIQUE”. The Registrar, however, has no doubt that the word “ANTIQUE” as used is deceptively similar to the appellant's registered trade mark consisting of the word “THE ANTIQUARY”. According to the Registrar, there is also no dispute that the goods covered by the appellant's registered trade mark are of the same description and he has held that Section 12(1) of the said Act is a clear bar to the registration of the respondent's said trade mark. The learned Registrar, therefore, has upheld the appellant's objection based on Section 12(1) of the Act.
8. The learned Registrar has found that the respondent claimed registration of the trade mark also in terms of the provision contained in Section 12(3) of the Act. The learned Registrar has observed, therefore, that for consideration of an application under Section 12(3) of the said Act, the factors which would arise are:
1. The honesty of concurrent user.
2. The quantum of concurrent user shown by the applicant.
3. The degree of likely confusion.
4. Whether any instance of confusion has in fact been proved; and
5. The balance of convenience.
9. Considering the affidavit of the respondent filed in the proceedings before the Registrar, the learned Registrar has found that the word “ANTIQUE” brand landscape device was first used in India in the year 1967. The respondent submitted a chart before the learned Registrar showing the following
Financial
Year
Volume (In standard case) Wholesale Value
1967
20
Rs. 1881.60
1969
39
Rs. 3669.12
1973
23
(U.S) 310.00
1974
11
(U.S) 150.00
1975
20
(U.S) 270.00
1977
20
(U.S) 270.00
10. The evidence adduced by the Appellant before the learned Registrar was that “THE ANTIQUARY” brand whisky had been sold in India since at least 1948, and the appellant's turnover of “THE ANTIQUARY” brand whisky in India for each of the last financial years was as follows
March/April
1971/1972
100 cases
1972/1973
237 cases
1973/1974
161 cases
1974/1975
60 cases
1975/1976
60 cases
Total
618 cases
11. The learned Registrar, however, found that no documentary evidence or any trade declaration had been filed to support the claim of the sale of the appellants whisky in India since 1948 and he further found that the sales figures given in the affidavit were only from 1971, and that again was also not supported by any documentary proof.
12. The learned Registrar, however, found that the respondent's evidence substantiating user of their trade mark in relation to their goods in India since 1967 was left unrebutted by the appellant and he further found that the concurrent user of the respondent's trade mark for a period at least 6 years on the date of application was established.
13. The learned Registrar in consideration of the evidence of the respective parties has found and held that when a buyer in India buys a non-Indian alcoholic beverage in an established importers' shop, he or she would not take home the liquor unless it is the specific brand of liquor he or she wants and is upto his or her satisfaction. According to the learned Registrar, his factor further reduces any chance of confusion in the market place between the appellant's goods and the respondent's goods in India under the respective trade marks.
14. Accordingly the learned Registrar also held in favour of the respondent regarding their claim for registration of trade mark under Section 12(3) of the Act.
15. Finally, the learned Registrar has found that in view of his finding about the respondent's entitlement to the registration of the said Act, the appellant's objection based on Section 11 is not sustained.
16. In the result the learned Registrar has allowed the application of the respondent and dismissed the opposition of the appellant.
17. The learned Counsel for the appellant has argued that the respondent's user could not be and should not be construed as “honest concurrent user” as provided in Section 12(3) of the said Act.
18. The next submission of the learned counsel for the appellant was that the respondent's goods were not commercially used and any sale for diplomatic purpose could not be taken as commercial use.
19. On the question of respondents entitlement to registration under Section 12(3) of the said Act, the learned counsel for the appellant has submitted that the Registrar should have taken into consideration the facts upto 14th March, 1973 when the respondent applied for registration. The learned counsel submits that under Section 12(3) of the said Act “honest concurrent user” should be on the day of the application and before. The learned counsel, therefore, submits that the learned Registrar's finding that the concurrent user for a period of six years on the date of the application has been established cannot be sustained.
20. It has also been contended by the learned Counsel for the appellant that the respondent's quantum of sale was practically for two years i.e, 1969 and 1973 and in consideration of such volume of sale the learned Registrar should not have allowed the respondent's prayer for concurrent user as contemplated in Section 12(3) of the said Act.
21. The learned Counsel for the respondent has argued that the respondent's marks were entirely different and, therefore, there was no chance for deception.
22. The learned Counsel for the respondent has also pointed out that looking at the chart placed before the learned Registrar it would be found that the respondent's user was for several years since 1967 and that should be taken as a considerable period of user. It has also been contended by the learned Counsel for the respondent that the volume of sale is not an important factor but the test is whether it is of commercial use. The learned Counsel has also submitted that it is no doubt that the respondent's product was sold in India and simply because it was sold to the diplomatic personnel that should not mean that it was not for commercial use. The learned Counsel submits that the commercial use really means the use in the course of trade.
23. On the question of similarity which the Registrar found against the respondent, the learned Counsel for the respondent submits that phonetically word “ANTIQUE” and the word “THE ANTIQUARY” were not similar and also from appearance, sense and sounds of the word, “ANTIQUE” is not similar to the word “THE ANTIQUARY” and further there is also a difference in meaning: one is a thing and the other is a person. According to the learned counsel for the respondent it cannot be said that the appellant's mark was identical with or deceptively similar to the mark of the respondent.
24. The learned Counsel has, however, submitted that the sale need not be continuous but the volume of sale should be such as to give an idea that the person claiming commercial use could ably compete with the sale of other products.
25. The learned Counsel for the appellant has submitted that there are two ingredients for the consideration in case under Section 12(3) of the Act, namely, (1) commercial use and (ii) volume of quantity in use. In this connection, the learned counsel has cited a decision of this court reported in AIR 1959 Calcutta 56, a decision of Supreme Court reported in AIR 1963 S.C 1882 and a decision reported in 57 RPC 248 and a decision in 33 RPC 77.
26. It will appear from the order under appeal that the learned Registrar has found that the word “ANTIQUARY” was deceptively similar to the other trade mark “THE ANTIQUE” and accordingly the learned Registrar has sustained the objection of the appellant based on Section 12(1) of the Act.
27. Now on the question of “honest concurrent user” as contemplated in Section 12(3) of the Act, the learned Registrar has found that the respondents had been using the mark for a number of years and there is sufficient commercial use, without evidence of any instance of confusion.
28. The question whether the user has been concurrent and also honest depends upon the facts of the particular case. In the present case, the learned Registrar considering the quantum of sale during a certain period of time has found that there has been honest concurrent user and the learned Registrar has also further found that there has been no evidence on behalf of the appellant that their use had been in India since 1945. The learned Registrar has found that the sale figures given in the appellant's affidavit before the Registrar were only from 1971 and that again was also not supported by any documentary proof.
29. I do not see any reason to interfere with such finding of the learned Registrar. The learned Registrar has found a case of ‘honest concurrent use’ on the basis of evidence adduced by the applicant, the respondent herein.
30. The learned Registrar has also found that sale figures given by the respondent before the Registrar had been supported by the documentary evidence in the form of invoice dated 6th December, 1969 pertaining to shipment of goods to the Empire Stores, New Delhi and the evidence along with other evidence before the Registrar supported the respondent's claim for use of their mark in India at least from 1969, if not from 1967. But so far as the appellant's sale figure is concerned, the Registrar, referring to the affidavit of the appellant before him found that the appellants' claim that their products were in use in India at least from 1948 was not supported by any documentary evidence.
31. The learned Counsel for the appellant has, however, cited several decisions which are referred to above, and has placed reliance particularly on the decision reported in AIR 1959 Calcutta 56 and the decision of the Supreme Court in AIR 1963 S.C 1882 where it has been held that the question of volume of use was always a relevant question in considering the question of ‘honest concurrent user’. There may not be any quarrel on this observation or proposition laid down as above. As I have already indicated above, whether there has been any ‘honest concurrent use’ or not is purely a question of fact to be decided on the basis of the evidence adduced before the authority concerned and further, it is a discretionary relief and the Registrar should use his discretion taking into consideration the extent of the concurrent user and also the extent of such use. As it will appear from the impugned order, the Registrar has considered the respective cases of the parties and has come to the conclusion on the basis of the evidence that the respondent could claim ‘honest concurrent use’ as contemplated under Section 12(3) of the Act.
32. It has also been found by the learned Registrar that there has been no evidence before the Registrar nor is there any evidence on record that the appellant's mark was in use in India. Therefore, I feel that the learned Registrar has properly exercised his discretion in allowing the respondent's entitlement to registration under Section 12(3) of the Act.
33. Regarding the use of the mark in the commercial sense, it has been contended by the learned counsel for the appellant that restricted use of sale particularly to the Embassy or in a closed market does not make it a commercial use of the product.
34. The learned Counsel for the respondent, however, has cited an unreported decision in the Appeal No. 65 of 1976 arising out of Matter No. 106 of 1976, Lowenbren Munchen v. Mohan Meakin Brewerries Ltd.) The learned Judge in the said matter has held that the sale taking place in Embassy in India should be taken as sales in India as well. In this connection, it may be noted that the learned Registrar referring to the vouchers disclosed before him has held that the use of the respondent's mark was in India and the shipment of the goods was to the Empire Stores, New Delhi.
35. The learned Counsel has also cited another decision reported in (1986) 3 SCC 552 : AIR 1986 S.C 1760 where the fact is that the appellants in that case used to supply the goods imported as stores to foreign going vessels and other diplomatic personnel and the Supreme Court held that the sales in question were within this country. It is not in dispute that the sale of the respondent's product was in India from 1969, if not from 1967 as held by the learned Registrar and I do not feel that any restricted sale does not amount to sale in the commercial sense. I do not find any infirmity in the order under Appeal. I also find that the conclusion as arrived at by the learned Registrar was duly supported by evidence which does not call for any interference from this court.
36. For the reasons aforesaid, this appeal fails and is hereby dismissed. The order being Order No. 17 at page 93 of the paper book dated 28th February, 1985 is hereby sustained. There will, however, be no order as to costs.