Honble Shri Sanjeev Kumar Chaswal Member Technical (Trademark) Brief case of the Applicant
1. The applicant is engaged in the hospitality business running chain of hotels, offering food and drinks, catering services, boarding and lodging services and other like hospitality services since the year 2007 under the name and style of MANGO SUITES and MANGO HOTELS. The applicant is also engaged in the ecommerce business of aggregating, marketing and operating their own hotels and other third party independent hotels under the name STAYMANGO. The applicant states that the leading, essential and prominent feature in the names MANGO SUITES, MANGO HOTELS and STAYMANGO is the word MANGO and the trade and the public refer to the applicant's hotel in common parlance as MANGO only.
2. The applicant states that in and around 2007, it honestly and independently has conceived and adopted the name MANGO, being adopted from the name of a fruit viz. Mango. The word Mango in Hindi language means and refers to the word "aam" which word signifies and is synonymous with the words "common people" in English. The applicant chose to adopt the word MANGO HOTELS/SUITES for its hospitality services with the intent of signifying to the trade, their clients and the general masses as being a Hotel for the common people. The applicant aptly chosen to focus on its core business proposition in the hospitality industry viz. to provide boutique hotels which are big on service and offerings at the same time are budget friendly and affordable to the common man.
3. The applicant submits that the construction of its first hotel was undertaken at Udupi, Karnataka and the applicant commenced commercial operations of its said hotel business in a phased manner from September 2009 under the trade mark MANGO SUITES. The applicant much prior to it starting commercial operations of its said hotel, obtained registration of its domain name and website www.mangosuites.com on the World Wide Web in the year 2007. The applicant submits that it has also got registered an additional domain name and website www.staymango.com on the internet.
4. The applicant is presently running and operating 13 hotels on a pan India level under the name MANGO SUITES/HOTELS across 'India are operational. The applicant submits that the names MANGO SUITES, MANGO HOTELS and STAYMANGO have been used by it as the names of its hotels and by virtue of such use, the said name has lost its primary significance and has attained the requisite attributes necessary to distinguish it as a trade mark associated and Identified with the applicant. The hotel name and trade mark MANGO has become very well-known and popular and has acquired tremendous reputation..
5. The applicant is also the registered proprietor of the trade mark MANGO SUITES under the provisions of the Trade Marks Act 1999, under the following numbers, the Registered trade mark No. 1711650 dated 18.07.2008 for MANGO SUITES (word) in respect of goods and services in class 16 & 42 and another registered trade mark No. 1711651 dated 18.07.2008 for MANGO SUITES (label) in respect of goods and services in class
16 & 42. Owing to such continuous use thereof, the said nark has acquired a distinct connotation and has come to be exclusively associated with the applicant's services and its merchandise in the minds of the purchasing public and in the trade.
6. The applicant has done substantial business under the said hotel name and mark and the applicant's MANGO hotels have received and welcomed guests who have stayed at the applicant is MANGO hotels and have availed of the applicant's boarding, lodging, catering and hospitality services. That the reputation and goodwill of the hotel name and trade mark extends far and wide and beyond the scope of the actual services offered by the applicants and the very mention of the word MANGO in the hospitality business would normally be co-related with the applicant's hotels and the services offered by the applicant and none else.
7. Sometime in August 2015, the applicant got a search done from the records of the Trade Marks Registry and were shocked to see the impugned registration, under No. 1835922 in class 42 for the mark MANGO, having been granted in favour of the respondent No.
1 with a user claimed as of April 2008, Ongoing through the better particulars of the impugned registration, the applicant found that the impugned, mark was advertised in the Trade Marks Journal No. 1488 dated 13.06.2011. The marks of the applicant and the respondent no 1 is shown as under:
8. As the applicant had reasons to doubt the credibility of the user purportedly claimed by the respondent No. 1, it started conducting Investigations with the Registrar of Companies and it learnt that shockingly the said respondent No.1 company was incorporated only on 3rd November 2008 which date is much later than the date of use of April 2008 as purportedly claimed by the respondent No.1 in its registration, the respondent No, l's Annual Report for the year 2008-09, the respondent No, 1 has mentioned therein under the heading "Operation & Financial Results" that the respondent No. 1 wants to start business of hotel & resorts and therefore the respondent No.1 has purchased land at Ranthambhor, Sawai Madhavpur. The report of the Auditors have commented that there have been NIL profit / loss of the respondent No...1's company during the said period viz. 2008-2009, Same is the case in the Annual Reports for the years 2009-10 and 2010 - 2011; wherein it is observed that under the heading "Operation & Financial Results" it is mentioned by the respondent No. 1 therein that its company has not conducted any business activities during the said financial years.
9. The respondent No.1 has in support of its registration of the impugned; mark MANGO, filed a user affidavit at the pre-advertisement stage, wherein, it has provided sales figures for use of the impugned mark for the years 2008 - 2009, 2009 2010 & 2010 - 2011 and has further stated that it has been using the mark MANGO continuously since April 2008. Obviously the said claim made before the Registrar of Trade Marks during its registration proceedings is fallacious, bogus and imaginary and has been made with the motive of misleading the Registrar of Trade Marks. It is apparent that the respondent No.
1 had never used the trade mark MANGO In relation to its hospitality business and as the name of its hotel up to 2011 or even thereafter.
10. The very adoption of the Impugned mark and the filing of application seeking proprietary rights therein by the respondent No: 1 with a false claim of use is per se dishonest, fraudulent and appears to have been undertaken in utter bad faith. The applicant submits that they are the rightful owners and the lawful proprietors of the trade mark MANGO, which trade mark is in continuous use at least since the year 2009. The subsequent adoption and the subsequent use of the impugned mark by the respondent No. 1 is thus completely dishonest.
11. The said trade mark MANGO is highly distinctive off the services offered by the applicant and none else by virtue of such continuous use. The impugned mark MANGO of the respondent No. 1 is Identical/deceptively similar to the applicant's trade mark MANGO and its registration is sought in respect of identical services. There is confusing similarity of the rival marks, any use of the impugned mark by the respondent No. 1 would result in the likelihood of confusion and deception being caused in the minds of the customers and guests who are familiar with the applicant's name and mark and they would be misled, confused and associate the impugned mark as being that of the applicant or having a nexus with the applicant, when it is not so. Thus the impugned mark being similar to the applicant's mark is totally devoid of any distinctive character and consequently the registration of the impugned trade mark offends the provisions of Sections 9(1) (a), 9(2) (a), 11(1) (b), 11(3) (a) of the Act.
12. The impugned mark has been dishonestly adopted with complete knowledge of the applicant's trade mark, thus the impugned mark is not registered in good faith and no material information as to proprietorship thereof had been disclosed to the Registrar nor had there been any use thereof undertaken by the registered proprietors either in good faith or even now nor has there been any concurrent use, therefore the registered proprietors cannot seek shelter of the provisions of Sections 11(11) and 12 of the Act respectively. Even otherwise the applicant's trade mark being a well-known trade mark is statutorily required to be protected having regard to the provisions of Section 11(10) and section 18 of the Act.
13. The impugned mark was registered without any bonafide intention on the part of the registered proprietor that it should be used in relation to the services covered under the said registration and infact there has been no bonafide use undertaken of the said trade mark by the registered proprietor in relation to the said services for which the said trade mark stands registered. Under the circumstances the registration the impugned Mark offends the provisions of section 47(1) (a) of the Act. The registered proprietors are guilty of making a false claim of use and thereby have played a fraud upon the Ld. Registrar. The registration of the impugned mark offends the provisions of Section 57(2) of the Act.
14. As per registry record the respondent did not file any counter statement nor did documents to justify the adoption of a Mango label mark. Thus the Respondent has failed to set up his case, by bringing any materials / documents to justify the adoption of a label mark that is identical to the applicant trademark and similar artistic representation as of the Applicant. The Registered proprietor has not been able to justify as to how it hit upon an identical mark as an imitation of the trademark of the Applicant.
15. As per the documents placed before us by the applicant. who has obtained registrations for label mark showing logo MANGO SUITES in class 16 & 42 much prior to the respondent no 1herein. In our considerable opinion, firstly both the applicant label mark and Respondent no 1 label mark are phonetically and visually similar, as such there is deceptive similarity between the two label marks shown below: The Applicant The respondent No 1
16. We have gone through the pleadings as well as oral orguments submitted by the counsel for the applicant, there are two issues to be discussed while deciding this case firstly the impugned label mark of the respondent is deceptively similar to the mark of the applicant secondly submission nof the false user date in trademark registry, as the counsel for the applicant has invited our attention to the falsification of date of use by the respondent no. 1 herein, wherein the respondent No.1 company was incorporated only on 3rd November 2008, which date is much later than the date of use of April 2008, as such the registration obtained by the respondent on the basis of false date of claim before the registration, as such the registration so obtained in tainted, hence, required to be removed on this ground alone, the applicant counsel has made the reference to the case of M/S. Shiva Tobacco Company Vs. Md. Zaheeruddin, and Another in ORA 159 of 2010/TM/CH wherein the Appellate Board has held that The respondents have obtained registration by playing fraud. The registration has been obtained by the wrongful proprietor by giving false date of user. The impugned trade mark is not distinctive on the date of application for registration or on the date of registration nor on the date of application for rectification
17. In our opinion, though the respondent has failed to present his case before this Appellate Board but that non-representation can not preclude the Appellate Board bench to decide the present matter on merit. As in the present case there is no doubt that the respondent no 1 has adopted the trademark label MANGOto just to take the advantage of the good will of the applicant. As was observed by Parker, J., in Re Pianotist Co.'s Application, (1906) 23 RPC 774, which was also a case of the comparison of two words one must take the two words. You must judge them, both by their look and by their sound. You consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trade mark for the goods of the respective owners of the marks. (p. 777) For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection. In the other matter of Gold Star Co. Ltd. v. Gold Star Industries & Ors 1995 PTC 15 18, The plaintiff has an international market and is a registered trade mark proprietor in about 100 countries. Because of the quality of its goods it has acquired an international reputation and goodwill. Therefore, prima facie if the defendants are allowed to use the trade mark of the plaintiff it would adversely affect the business of the plaintiff, internationally as well as in India. In fact the Gold Star is a household word for quality products all over the world and associated with the plaintiff. In the words of Relying on the another decision of Supreme Court in the case of Power Control Appliances & Ors. v. Sumeet Machines Put. Ltd. JT 1994 (2) SC 70, it can be said that there can be only one trade mark, one source and one proprietor. It cannot have two origins. Hence on the basis of admitted facts that the plaintiff is the registered proprietor of the trade mark Gold Star for its products falling in class 7 to 11 inclusive of the washing machines, the defendant cannot be permitted to use the same trade name for its electric products.
18. After going through the documents extensively submitted by the applicant, in our considerable opinion, the said trademark was registered by the Respondent in bad faith and by falsely claiming itself to be the proprietor. The said registration is thus an outcome due to fraud played by the Respondent on the Registrar of Trade Marks. During the course of hearing arguments of both parties, the Respondent has not been able to prove the use of the impugned registered trademark in India; as such the impugned trademark deserves to be rectified on the falsification of date of user and on ground of non-use also.
19. Keeping in view of the extensive submissions made herein above by the respective counsels, we are of the considered opinion that the registration of the impugned trademark MANGO having registered label trade mark MANGO No. 1835922 in class
42 is granted contrary to the provisions of Sections 9, 11, 12, 18, 47 & 57 under the Trade Marks Act, 1999, as such the present original rectification application deserves to be allowed thereby directing the Registrar of Trademarks to rectify the registered label trade mark MANGO No. 1835922 in class 42 from the Trademark Register in order to maintain the purity of the Trademark Register.
20. The copy of the order is sent to the Registrar of Trademarks in order initiate necessary steps for removal of the label trade mark MANGO having registered trademark no. No. 1835922 in class 42 within 15 days of the receipt of this order. Order as n costs -Sd- -Sd- (SANJEEV KUMAR CHASWAL) (JUSTICE MANMOHAN SINGH) TECHNICAL MEMBER CHAIRMAN