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I.K Sons v. Prakash Brassware Industries And Anr.
Factual and Procedural Background
The appellant filed an application on 7.6.1985 for registration of the trademark ‘PARKO’ in respect of various electrical appliances. The application was advertised in the Trade Mark Journal in 1991. The first respondent opposed the registration, claiming prior use and registration of the trademark ‘PARKO’ since 1963 for sanitary wares under class 11. The opposition was based on grounds that the appellant’s mark was identical and likely to cause confusion, invoking Sections 9, 11(a), 11(b), 11(c), 12(1) and 18(1) of The Trade and Merchandise Marks Act, 1958. The appellant denied the allegations, claiming honest and bona fide use since 1984. After evidence and hearings, the Registrar rejected the appellant’s application, holding that there was no honest use by the appellant under Section 12(3) and that the trademarks were identical causing likely confusion. The appellant challenged this order by filing an appeal, which was transferred to the Appellate Board and numbered TA 105 of 2003.
Legal Issues Presented
- Whether the appellant is entitled to registration of the trademark ‘PARKO’ for electrical goods despite the first respondent’s prior registration for sanitary wares under the same mark.
- Whether the goods of the appellant and the first respondent are sufficiently different to avoid confusion or deception in the minds of the public.
- Whether the appellant is entitled to the benefit of Section 12(3) of The Trade and Merchandise Marks Act, 1958, permitting registration despite the existence of an earlier identical mark.
- Whether the appellant’s use of the mark was honest and bona fide or constituted mala fide adoption amounting to fraud.
Arguments of the Parties
Appellant's Arguments
- The appellant’s goods relate to electrical appliances, whereas the first respondent’s goods are sanitary wares, thus goods are not the same nor identical in description.
- Due to the difference in goods, there is no possibility of confusion or deception among consumers or traders.
- The appellant has been using the trademark ‘PARKO’ since 1984 honestly and bonafidely.
- The appellant should have been granted registration under Section 12(3) of the Act.
First Respondent's Arguments
- The appellant committed fraud by initially stating their goods were not included in other classes and later claiming registration under class 9, while some goods fall under class 7 and class 11, the same class as the respondent’s goods.
- Since some goods of the appellant fall within class 11, the goods are similar or similar in description, thus the appellant’s mark is not registrable.
- The appellant’s adoption of the mark identical to the respondent’s registered mark, which has been in use since 1963, was not bonafide but mala fide.
- The goodwill and reputation of the respondent’s mark cannot be shared by the appellant, as it would cause confusion that the respondent manufactures the appellant’s goods.
- Relied on the judgments of Daimler Benz Aktiegesellschaft v. Hybo Hindustan and Honda Motors Company Limited v. Charanjit Singh to support the claim that use of identical marks on different goods can cause confusion if the mark has acquired reputation and goodwill.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Daimler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994 Delhi 239 (‘Benz Case’) | Use of an identical trademark on dissimilar goods can cause confusion if the mark has acquired reputation and goodwill. | Applied to determine that use of ‘PARKO’ by appellant on electrical goods would cause confusion with respondent’s sanitary wares mark due to respondent’s prior reputation. |
| Honda Motors Company Limited v. Charanjit Singh, 2003 (26) PTC 1 (Del) | Trademark with established goodwill and reputation cannot be used by others on different goods if it causes public confusion. | Supported the court’s view that the appellant’s use of ‘PARKO’ would mislead the public to believe the goods originate from the respondent. |
| Corn Products Refining Company v. Shangrila Food Products Ltd., AIR 1960 SC 142 | This precedent was noted but not elaborately discussed in view of recent trends. | The court chose not to dwell on this precedent extensively, focusing instead on recent jurisprudence emphasizing goodwill and reputation. |
| Vishnu Das v. Vishnu Das Kishen Das (Charminar case), 1996 PTC 512 | This precedent was mentioned but not elaborated upon. | The court did not analyze this case in detail but acknowledged its existence. |
Court's Reasoning and Analysis
The court analyzed whether the appellant could register the trademark ‘PARKO’ despite the first respondent’s prior registration and use. It considered the nature of goods involved and the likelihood of confusion. The court noted that although the goods are different—electrical appliances versus sanitary wares—the first respondent’s mark had acquired well-established reputation and goodwill since 1963. The appellant adopted the identical mark 21 years later, which suggested mala fide intent to capitalize on the respondent’s goodwill.
The court relied on the principles from the Benz and Honda cases, where the use of identical marks on different goods was held to cause confusion if the mark had substantial goodwill. It concluded that the public might mistakenly believe the first respondent manufactured the appellant’s goods, causing deception.
Regarding Section 12(3) of the Trade Marks Act, which allows for concurrent registration under certain conditions, the court examined factors such as extent of concurrent use, honesty of use, and likelihood of confusion. The appellant had only used the mark for a short period (seven months) before filing the application and failed to prove honest concurrent use or significant business volume. Consequently, the appellant was not entitled to registration under this exception.
The court found no error in the Registrar’s order rejecting the appellant’s application and confirmed the decision, dismissing the appeal.
Holding and Implications
The court’s final decision is to confirm the order of the Registrar rejecting the appellant’s application for registration of the trademark ‘PARKO’ and to dismiss the appeal.
This decision means the appellant cannot register or use the trademark ‘PARKO’ for their electrical goods, as it infringes on the first respondent’s prior rights and goodwill established in the sanitary wares market. The ruling reinforces the principle that a trademark with established reputation cannot be adopted by a subsequent user, even on different goods, if it causes confusion or deception. No new precedent was established; the court applied existing principles from prior case law.
S. Jagadeesan, Chairman:— The appellant filed this appeal against the order of the second respondent dated 25.11.1994 rejecting the application of the appellants for registration of the trademark ‘PARKO’.
2. The appellants filed the application No. 438802 on 7.6.1985 for registration of the trademark ‘PARKO’ in respect of electric juicers, electric mixers, electric heat converters, electric grinders, electric elements and electric accessories and apparatus, not included in other classes.
3. The said application was advertised in the Trade Mark Journal No. 1011 dated 16.7.1991 at page 512. The first respondent herein, on 22.8.1991, filed their notice of opposition to oppose the registration on the ground that they have been marketing their goods under the trademark ‘PARKO’ for the last 25 years and that they are the registered proprietors of the trademark ‘PARKO’ under No. 222935 in class 11 and the same has been in use since 1963. Further, they have stated that the mark applied for by the appellants is identical with that of the first respondent's trademark and, therefore, it is not registrable under Sections 9, 11(a), 11(b), 11(c) 12(1) and 18(1) of The Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The appellants filed their counter statement denying all the material averments contained in the notice of opposition filed by the first respondent and further stated that the appellants are dealing in domestic electrical appliances and their goods are manufactured by third parties under the appellant's direct supervision and control and the appellants commenced sale of such items after stamping the same with their distinctive trademark ‘PARKO’ since 1984. This mark has been adopted honestly and bonafidely. The appellants filed evidence by way of affidavit and the first respondent also filed evidence of rebuttal. After the completion of the formalities, the matter was heard by the Registrar. Ultimately, under the impugned order, the Registrar rejected the application of the appellants herein for registration of the trademark ‘PARKO’ and allowed the opposition No. DEL 7366 of the first respondent on the ground that there is no honest use on the part of the appellants to get the benefit under Section 12(3) of the said Act and that both the trademarks are in every respect identical and as such, there will be confusion and deception in the minds of the public, consumers as well as the traders. Aggrieved by the said order, the appellants preferred an Appeal CM (M) 104 of 1995 on the file of High Court of Delhi, which was transferred to this Appellate Board and numbered as TA 105 of 2003.
4. We heard both the counsels. Mr. Ajay Sahni, learned counsel for the appellants contented that the appellant's goods are related to electrical appliances, whereas the first respondent's goods are sanitary wares and as such, the goods of the appellants and that of the first respondent are not the same nor the description is identical. When the goods of both the parties are totally different and distinct, there is absolutely no chance or possibility of any confusion or deception. Further, he contented that the appellants are using the impugned trademark since 1984 and as such, the Registrar ought to have granted registration under Section 12(3) of the Act.
5. On the contrary, Mr. Shailen Bhatia, the learned counsel for the first respondent vehemently contented that the appellants had committed fraud for the registration of the impugned trademark by stating that their goods were not included in any other classes and subsequently claimed the registration under class 9. In fact, the appellant's goods are specifically described as one falling under class 7 and class 11 as per the alphabetical index to the classification of goods issued by Government of India, Trade Mark Registry. The respondent's goods are in class 11. Hence, it cannot be said that all the goods of the appellants are of different description. When some of the goods of the appellants fall within the description of class 11, it has to be taken that the goods are similar or similar in description. In that case, the Registrar has rightly held that the appellant's mark is not registrable. He also contended that when the respondent's mark is a registered one and they are in the market since 1963, the appellant's adoption of the very same mark of the respondent cannot said to be bonafide. When the adoption itself is with mala fide intention, Section 12(3) is not applicable. Here again, the Registrar held rightly. It is also contented that even assuming the goods are of different kind, still, the reputation and goodwill built up by the first respondent all along cannot be permitted to be shared by the appellants by use of the same identical trademark. Allowing the use of the impugned trademark by the first respondent, would also cause confusion in the minds of the public as if the first respondents are manufacturing such goods that are being manufactured by the appellants. He also relied upon the judgment of the Delhi High Court in Daimler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994 Delhi 239, which was confirmed by the Supreme Court and another judgment of the Delhi High Court in the case of Honda Motors Company Limited v. Charanjit Singh, 2003 (26) PTC 1 (Del).
6. Though the learned counsel for the appellants drew our attention to the judgment in AIR 1960 SC 142, Corn Products Refining Company v. Shangrila Food Products Ltd., and Vishnu Das v. Vishnu Das Kishen Das, familiarly known as the Charminar case, reported in 1996 PTC 512, we are not inclined to discuss the same elaborately in view of the recent trend in the aspect of the well established reputation and goodwill which has been taken totally a different role even though the goods are not identical or not of same description.
7. There is no doubt that the respondents are using the trademark ‘PARKO’ for their sanitary wares since 1963. While so, the appellants had chosen to adopt the identical trademark for their electrical goods such as electrical juicers, electrical mixers, electrical heat-converters etc., in the year 1984. In their application filed on 7.6.1985, they claimed user of the impugned trademark since 1.10.1984 The main claim of the learned counsel for the appellants is that the goods being totally different kind, the registration of the appellants' mark will not cause any confusion or deception in the minds of the public and as such, the rejection of the application by the Registrar is unsustainable. The other ground contented by the learned counsel for the appellants is that the registration could have been granted under Section 12(3) of the said Act We will take up the first contention of the learned counsel for appellant and consider whether the appellants are entitled for registration of the impugned trademark on the ground that the goods of the appellants and the first respondents are different in nature. The learned counsel for the first respondent, however, contented that all the goods of the appellants are not different in nature and at least a few of the goods of the appellants fall under class 11, the same class under which the first respondent's mark have been registered. Either the goods are of same nature or of different nature; the question is whether the same trademark can be registered in the name of two different proprietors. That is the question arose for consideration in the famous Benz Case and Honda Case, which were relied on by the learned counsel for the respondent. In the Diamler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994 Delhi 239, familiarly known as the ‘Benz Case’, the Delhi High Court held that the Trademark ‘BENZ’ was extensively used with respect to automobiles produced by the plaintiffs and the plaintiffs therein have built up a well reputation and goodwill for their automobiles through the said trademark ‘BENZ’. In such circumstances, the use of such identical mark ‘BENZ’, by the respondents with respect to under garments will lead to confusion in the market, although the manufacturers of Mercedes Benz Cars were neither manufacturing nor selling garments nor underwear apparels. Similarly, in the Honda Motors Company Limited v. Charanjit Singh Case, 2003 (26) PTC 1 (Del), the Delhi High Court held that the plaintiffs mark ‘HONDA’ has acquired honour and goodwill and the said name is associated with the plaintiff, who are established manufacturer in the field of automobiles and power equipments and as such, the same trademark has acquired goodwill and reputation. The use of the same trademark by the defendants for their product viz., Pressure Cooker will mislead the public to believe that the defendant's business and goods are that of the plaintiffs.
8. If the principles laid down in the above cases are considered as already stated, the trend has been changing, especially in the registration of the trademark. In the changed circumstances, it is for us to consider whether the first respondent had built up a reputation and goodwill on their trademark and whether the use of the same by the appellants would cause confusion in the trade. The first respondent is using the trademark from 1963 and registered proprietor since 1964. The appellants adopted the same trademark nearly after 21 years. The appellants do not claim any ignorance of the said trademark of the first respondent. Hence it may be a case of deliberate adoption of the impugned trademark by the appellants in order to take advantage of the reputation and goodwill built up by the first respondent all the 21 years. When the trademark of the first respondent has the reputation and goodwill, definitely, the adoption of the same by the appellants do cause confusion in the minds of the public as the public may think that the first respondent is the manufacturer of electrical apparels that are being manufactured by the appellants. The well laid principles of the above referred Judgment would reiterate that such confusion in the trade cannot be permitted. As the impugned trademark is identical and similar to that of the appellant's registered trademark, we are of the view that merely because the goods of the appellant are different; the appellants cannot be permitted to have the registration of the impugned trademark on the basis of the principles laid down by the Delhi High Court in the Benz case and Honda case. Hence we do not find any infirmity in the order of the second respondent.
9. Coming to the next contention of the learned counsel for the appellants, as to whether the appellants are entitled for the benefit under Section 12(3), we are of the view that they are not entitled for such benefits. While considering the claim, under Section 12(3), the following are the relevant factors:—
1. The extent of concurrent use;
2. The quantity and the area of trade;
3. The degree of confusion likely to ensue from the resemblance of the mark, which is, to an extent, indicative of the measure of public inconvenience;
4. Honesty of the concurrent use;
5. Whether any incidence of confusion has been proved;
6. Relative inconvenience, which would be caused, if the mark was registered, specially, if necessary, to any conditions and limitations.
10. However, it is to be noted that the above are not the determinative criteria in every case. As said in Kerly's Law of Trademarks (12TH Edition) Paras 10 to 18:—
“The discretion of the Tribunal is un-fettered and concurrent registration may be allowed even when the probability of confusion is considerable. Each case has to be determined on its own particular merits and circumstances”.
11. It may be pertinent to note that Section 12(3) is an exception to sub-section (1) of Section 12, which totally prohibits the registration of identical or deceptively similar trademark. Hence, first of all, the conditions, to attract Section 12(1), are to be complied with, viz., the goods must be same or the description of goods must be identical. The contention of the learned counsel for the appellant is that the goods are not same kind. When that is so, Section 12(1) itself is not attracted. However, the learned counsel for the first respondent contented that few of the goods of the first respondent fall under class 11, the same class under which the first respondent's goods fall. Even if the goods are different, still to claim the registration, it is for the appellants to establish that they are the honest concurrent user, on the date of the application. The first respondent's claim to be the user from 1.10.1984 and filed the application for registration on 7.6.1985 On the date of the application, the appellant had used the impugned trademark only for seven months and did not file any evidence to establish their volume of business within the short spell of time. As already said, the claim of the appellant that they are the honest concurrent user cannot be sustained. We are of the view that the Registrar has not committed any error in finding that the appellant is not entitled for registration of the impugned trademark. Hence, we do not find any reason to differ from the view taken by the Registrar. Accordingly, the impugned order of the Registrar is confirmed and the appeal is dismissed. No costs.
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