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Tata Engineering And Locomotive v. Deputy Registrar Of Trade Marks & Others
Factual and Procedural Background
The appellant, M/s. Tata Engineering and Locomotive Company Limited, filed a notice of opposition against the registration application No. 452037 by M/s. Super Cassettes Industries Limited (second respondent) for the trade mark consisting of a letter "T" in a circle with the word "SERIES" for goods in class 9 under the Trade and Merchandise Marks Act, 1958. The appellant claimed prior registration of the letter "T" mark in classes 6, 7, 9, and 12 and asserted goodwill and reputation in the mark, opposing the registration on grounds of Sections 9, 11(a), 12(1), and 18(1) of the Act.
The Deputy Registrar of Trade Marks, New Delhi, disallowed the appellant's opposition, holding that the goods of the parties were different and that the appellant could not monopolize the letter "T". The appellant appealed this decision to the Delhi High Court, which was subsequently transferred to the Trade Marks Board under the amended Trade Marks Act, 1999, and assigned TA/117/2003/TM/DEL.
Legal Issues Presented
- Whether the second respondent's mark consisting of the letter "T" within a circle and the word "SERIES" is deceptively similar to the appellant's registered letter "T" mark, thereby causing confusion or deception among the public.
- Whether the appellant can prevent registration of the impugned mark on the grounds of prior registration, goodwill, and reputation under Sections 9, 11(a), 12(1), and 18(1) of the Trade and Merchandise Marks Act, 1958.
- Whether the appellant is entitled to monopolize the letter "T" and prevent the use of a circle device around it by the second respondent.
Arguments of the Parties
Appellant's Arguments
- The letter "T" in a circle is the registered house mark of the Tata Group Industries, extensively used across diverse product categories, thus acquiring goodwill and reputation.
- Registration of the impugned mark by the second respondent would create confusion in the public's mind as the mark is similar and includes the letter "T" within a circle, which the appellant identifies as its logo.
- The Deputy Registrar erred by permitting registration on the basis that the circle device was not part of the second respondent's mark, while TV advertisements by the second respondent included the circle.
- The appellant is not seeking to monopolize the letter "T" alone but objects to the use of the letter "T" within a circle, which is distinctive of its mark.
Second Respondent's Arguments
- The second respondent's mark "T SERIES" is distinct from the appellant's mark, and there is no likelihood of confusion or deception.
- The goods of the second respondent are entirely different from those of the appellant, reducing any chance of confusion.
- The second respondent has a history of registrations for various "T-Series" marks in different classes, evidencing established use and distinctiveness.
- The Deputy Registrar correctly found the opposition to be without merit.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Air 1994 Delhi 239, Daimler Benz Aktiegesellschaft v. Hybo Hindustan (Benz case) | Use of a well-known mark in unrelated goods can be prevented to protect reputation and prevent deception. | The court referred to this precedent to support the principle that reputation and protection of a mark extend beyond similar goods to prevent confusion and protect goodwill. |
Court's Reasoning and Analysis
The court analyzed the facts by comparing the marks and the goods involved. It noted that although the goods of the parties differ, the appellant's mark "T" within a circle is a registered house mark with established goodwill and reputation. The court found that the second respondent's adoption of a similar mark including the letter "T" within a circle and the word "SERIES" in a rectangle lacks bona fides, especially since the second respondent already holds registrations for "T-Series" marks in different forms.
The court rejected the Deputy Registrar's conclusion that the circle device was not part of the second respondent's mark, citing evidence such as TV advertisements showing the circle. It reasoned that the appellant is not seeking to monopolize the letter "T" alone but specifically the combination of the letter "T" within a circle, which is distinctive of the appellant's logo.
Relying on the principle established in the Daimler Benz case, the court emphasized the need to protect the appellant's reputation and prevent confusion, even if the goods differ. The court thus found merit in the appellant's contention that the second respondent should not be permitted to register the mark with the letter "T" enclosed within a circle.
Holding and Implications
The appeal is partly allowed.
The court modified the impugned order of the Deputy Registrar by directing the second respondent to remove the circle around the letter "T" in the mark and to proceed with registration only for the mark "T-Series" with the letter "T" and the word "Series" in a rectangle. This decision prevents the second respondent from using a mark confusingly similar to the appellant's registered house mark while allowing registration of a distinct "T-Series" mark without the circle device.
No order as to costs was made. The decision directly affects the parties by restricting the second respondent's mark design but does not establish a new broader precedent beyond the principles applied.
S. Jagadeesan, Chairman:— The appellant has filed this appeal challenging the order of the Deputy Registrar of Trade Marks, New Delhi, dated 7.4.1995, wherein the opposition of the appellant was disallowed.
2. M/s. Super Cassettes Industries Limited, the second respondent herein, filed an application No. 452037 for registration of a letter trade mark T in a circle with the word SERIES in respect of electric and electronic apparatus and instruments, radio and T.V transmitting and receiving sets, electric and electronic communication devices, audio and video recording, transmitting and reproducing equipment, electronic and electrical controlling equipments, etc., in class 9 of the Trade and Merchandise Marks Act, 1958, (hereinafter referred to as the Act). The said application was advertised in the Trade Marks Journal No. 1005 dated 16.4.1991 at page 106. The appellant M/s. Tata Engineering and Locomotive Company Limited, filed their notice of opposition No. DEL-7265 on 20.6.1991, opposing the registration of the impugned mark on the ground that they are the registered proprietors of the trade mark letter T in respect of goods falling under classes 6, 7, 9 and 12 of the said Act and that their registered mark has attained goodwill and reputation in the market. As such, the impugned mark cannot be registered. Further, the registration of the impugned mark would offend the provisions of Sections 9, 11(a), 12(1) and 18(1) of the said Act.
3. The second respondent filed its counter statement refuting the material averments contained in the notice of opposition and further contended that they have been carrying on the business as manufacturers and dealers in electric and electronic apparatus and instruments particularly, audio and video cassettes, records and tapes, etc. since 1979 and that by virtue of long, continuous and extensive use and wide publicity, their trade mark ‘T SERIES’ has become distinctive and is exclusively identified with their goods. Both the parties filed their evidence and after completion of the formalities, the matter was heard by the Deputy Registrar of Trade Marks, Delhi. The Deputy Registrar, under the impugned order, disallowed the opposition No. DEL-7265 filed by the appellant and directed the application No. 452037 to be proceeded for registration finding that the goods of the appellant and the second respondent are totally different and further the appellant cannot monopolize the letter T. Aggrieved by the same, the appellant preferred an appeal in CM(M) 344/1995 on the file of the Delhi High Court. After the new amended Trade Marks Act, 1999, came into force, pursuant to Section 100 of the new Act, the appeal was transferred to this Board and numbered as TA/117/2003/TM/DEL.
4. We have heard the arguments of Shri Mahaveer, the learned counsel for the appellant and Shri N.K Anand, the learned counsel for the second respondent.
5. The learned counsel for the appellant contended that the letter T in a circle is the registered house mark of the Tata Group Industries. The said mark is available on every product of the Tata Group Industries. They are engaging themselves in various fields suchs, automobiles, consumer goods, chemicals, metal materials, etc. The said mark has obtained a goodwill and reputation and it is clearly identified with the products of the Tata Group Industries. The adoption of the same mark by the second respondent is respect of their goods would create a confusion in the mind of the public and as such, the registration of the impugned mark in the name of the second respondent cannot be permitted. The Deputy Registrar has mainly permitted the registration of the impugned mark on the ground that the characteristic feature of the second respondent's mark is ‘T’ and not the device of circle and therefore, there is no likelihood of deception or confusion. The design and style of the second respondent's mark is somewhat different from those of the appellant. The Deputy Registrar further stated that at present, the rival devices or presentation of the rival marks are not likelihood to cause confusion and deception amongst the purchasers and the letter T cannot be monopolized. The learned counsel for the appellant further contended that none of the reasons given by the Deputy Registrar will hold good because the second respondent has applied for registration of the mark ‘T SERIES’, a letter ‘T’ within a circle and below the circle the word SERIES and all within a rectangle. The letter T within a circle is being identified with the appellant. He will be satisfied if the circle is removed. In fact, the TV advertisements by the second respondent includes the circle, whereas, the Deputy Registrar proceeded on the basis that the circle has been removed which is not correct.
6. The learned counsel for the second respondent contended that though the second respondent is seeking registration of the trade mark ‘T SERIES’, of which the letter T within a circle, the trade mark of the second respondent and that of the appellant are distinct by themselves. When that be so, there cannot be any confusion or deception. Apart from that, the goods manufactured by the second respondent are nothing to do with the goods manufactured or dealt with by the appellant. Hence, the Deputy Registrar has rightly concluded that the opposition is of no merit.
7. The second respondent had applied for registration in application No. 501305 for the trade mark ‘T-series’. In fact, the second respondent itself has furnished the various trade marks registered under different classes in its favour which are as follows:
No. Applications Trademark Class Status 1. 415159 T-Series 9 Registered 2. 518388 T-Series 32 Registered 3. 537819 T-Series HF-60 9 Registered 4. 537818 T-Series HF-90 9 Registered 5. 518384 T-Series 28 Registered 6. 518387 T-Series 33 Registered 7. 518389 T-Series 31 Registered 8. 518386 T-Series 34 Registered
9. 518382 T-Series 23 Registered 10. 452038 T-Series SNC Loco 9 Registered 11. 518368 T-Series 8 Registered 12. 518366 T-Series 5 Registered 13. 518381 T-Series 24 Registered 14. 530565 T-Series 3 Detergent Cake Registered 15. 501305 T-Series 3 Registered 16. 518374 T-Series 14 Registered 17. 518373 Series 12 Registered
8. When the second respondent has obtained the registration of ‘T-Series’ in a particular fashion or a particular type, then, why should they change the pattern of the trade mark now? There is absolutely no reason for the second respondent as to why the new impugned mark is being adopted. That too, with the same name T-Series. Hence, the adoption of the impugned mark with the letter T within a circle and the words SERIES lower down, cannot be said to be with any bona fides. When the appellant seeks the removal of the circle alone from the impugned mark, it is clear that they do not want to monopolize the letter ‘T’ But, they are particular that the letter ‘T’ should not be used within a circle in the same fashion as that of the appellant, as it is a logo of the appellant.
9. Though the appellant and the second respondent are engaged themselves in different goods, it has become necessary in the recent days that one has to safeguard his own mark not only to prevent any confusion or deception, but also their reputation. It is unnecessary for us to add the precedents by giving a list of cases except mentioning the case reported in AIR 1994 Delhi 239, Daimler Benz Aktiegesellschaft v. Hybo Hindustan, popularly known as Benz case, where the use of the name of Benz which is associated with the automobile cars of the plaintiff was prevented in respect of the use for under garments.
10. Considering all the circumstances, we are of the view that the second respondent cannot be permitted to have the trade mark with the letter ‘T’ within a circle. Hence, we modify the impugned order of the Deputy Registrar by directing the second respondent to remove the circle around the letter ‘T’ and get the registration in respect of the mark T-Series with letter ‘T’ and below that the word ‘Series’ in a rectangle. Accordingly, the appeal is partly allowed. There will be no order as to costs.
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