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Date of Decision: 17.09.2024 C.O. (COMM.IPD-TM) 375/2021
KOTESHWAR CHEMFOOD INDUSTRIES PVT.
LTD. .....Petitioner
Through: Mr. Bhav Arora and Ms. Samanyu Bhatnagar, Advs.
M: 9873160216 Email: delhi@yjtrivedi.com
AND ANR. .....Respondents
Through: Mr. Harish Vaidyanathan Shankar, CGSC,
Mr. Sagar Mehlawat, Advs.
JUDGMENT
1. The present petition has been filed under Section 46, 47, 56, 57 and 125 of the Trade Marks Act, 1999 seeking rectification/cancellation of the trademark PRIME bearing registration no. 1258793, registered in the name of respondent no.1 in Class-30, as being deceptively similar and identical to the trademark of the petitioner, i.e., PRIME.
2. Facts as canvassed in the petition, are as follows: i. The petitioner has been engaged in the business of manufacturing and marketing iodized salt, included in Class-30, since 1995. The petitioner adopted the trademark PRIME and has been using the same openly, extensively and continuously, since 1995. Thus, the trademark „PRIME‟ has acquired immense goodwill and reputation. ii. The respondent no.1 sought registration of the mark PRIME vide application no. 1258793, on 01st April, 2004, claiming user since 01st August, 1979 for goods falling in Class-30. iii. However, due to inadvertent error, the application of respondent no.1 remained unopposed and thus, got registered in the year 2006. iv. It is the case of the petitioner that the respondent no.1 is not using the impugned mark in respect of goods falling in Class-30, except for rice.
3. None appears for respondent no.1 when the matter is called out.
4. This Court notes that despite various efforts by this Court for effecting service on respondent no.1, the service report of respondent no.1 has remained awaited. The order dated 29th May, 2024, passed in this regard, reads as under: “The service reports of respondent no. 1 are once again awaited. There have been few other cases of the same respondent no. 1 pending before this Court as well, wherein also the service reports are likewise awaited or not received back, despite repeated and diligent efforts. The respondent no.2 is a formal party. List the matter before the Hon'ble Court on the date already fixed i.e. 30.05.2024.”
5. This Court notes that the present petition was initially filed in the year 2013 before the Intellectual Property Appellate Board (“IPAB”) and was subsequently transferred before this Court in the year 2021. The respondent no.1 had filed its counter statement before the IPAB. However, despite various efforts for service of Court notice to respondent no.1, the service report has always remained awaited.
6. Considering the fact that the respondent no.1 had already filed the counter statement before the IPAB, the respondent no.1 is expected to know about the present proceedings, i.e., transfer of the present petition from IPAB to this Court, after abolition of the IPAB. Therefore, non-appearance of respondent no.1, is not justifiable.
7. Accordingly, this Court has proceeded to hear the present matter.
8. As per the counter statement filed on behalf of respondent no.1 before the IPAB, the respondent no.1 has been engaged in the business of processing, selling, marketing and exporting various kinds of rice and other allied goods for more than four decades. The respondent no.1 is stated to be using the trademark PRIME for rice and other allied goods, since the year 1979, continuously, extensively and uninterruptedly.
9. The respondent no.1 claims to be the first and prior adopter of the mark PRIME, in respect of all kinds of rice, vide registration no. 404233.
10. Learned counsel appearing for the petitioner, on the other hand, has handed over a copy of the registration in favour of respondent no.1, which was valid/renewed up to 01st January, 2024. He, thus, submits that the aforesaid registration for the trademark PRIME in favour of respondent no.1, has expired on 01st January, 2024, and the same has not been renewed, till date.
11. He further submits that the petitioner has obtained registration for Refined Free Flow Iodized Salt for the PRIME Salt (label), in the year 2017.
12. Mr. Harish Vaidyanathan Shankar, learned counsel appearing for respondent no.2, submits that the petitioner is only aggrieved by the nonuser of the trademark PRIME by the respondent no.1 for the product salt, as the petitioner is primarily engaged in the business of manufacturing, and marketing salt. He, thus, submits that as far as the other registrations are concerned, the petitioner would not be concerned with the same.
13. I have heard learned counsels for the parties and have perused the record.
14. At the outset, this Court notes that the petitioner has various copyright registrations for the label/mark PRIME in his favour for salt, which is a good falling in Class-30.
15. The copyright registration for the mark PRIME Iodized Salt, with device or design, in favour of the petitioner, is reproduced as under:
16. Further, the copyright registration in favour of the petitioner for „PRIME Iodized Salt‟ with device of plate of vegetables, is reproduced as under:
17. This Court takes note of the fact that trademark registration for the PRIME Salt (label) has been obtained by the petitioner in the year 2017 in Class-30 for Refined Free Flow Iodized Salt, which is reproduced, as under:
18. This Court also notes the various invoices of the product of the petitioner, showing the sale of salt under the label PRIME, since the year
1995. Attention of this Court has been drawn to the affidavit dated 23rd March, 2011, of one Mr. Anil Khurana, who designed the artistic label for the petitioner, bearing the trademark PRIME Iodised Salt, with device of Plate of Vegetables.
19. This Court further notes the application made by the respondent seeking registration of the trademark PRIME in its favour, which reads as under:
20. Perusal of the aforesaid application shows that respondent no. 1, had stated that it had been using the trademark PRIME in respect of rice, since 01st August, 1979, whereas, for remaining goods falling under Class-30, the same was only on „proposed-to-be-used‟ basis.
21. This Court notes the submission made by learned counsel appearing for the petitioner that the respondent no.1 has never used the impugned mark, i.e., PRIME, for salt. The submissions made by the petitioner in this regard, as given in the petition, are as follows: “xxx xxx xxx d. That the impugned registration was wrongly granted to Respondent no. 1 in respect of all the goods in class 30 under the user claim of 1979, which is erroneous as Respondent no. 1 applied for other goods in class 30 except rice under the status of "Propose to be used". In fact, no use has been made till today and the impugned mark has not gained any distinctiveness subject to non use of other goods in class 30 except rice. Moreover, impugned registration granted to Respondent no. 1 is in contravention of law in force as the said impugned registered mark is not used for the iodized salt wherein the presentApplicant is the prior user and prior in application for the iodized salt and the label is different than the mark used by the Applicant. Thus, the said mark needs to be removed from the Trade Mark Register as it is obtained by committing fraud and misrepresenting and suppressing the material facts at the time of application for the registration of the impugned mark. xxx xxx xxx”
22. This Court further records the submission made by learned counsel appearing for the petitioner that the mark PRIME registered in favour of respondent no.1 had its validity only till 01st January, 2024, and that the same has not been renewed, thereafter. The status of the mark PRIME, registered in favour of respondent no.1, as on 16th September, 2024, is reproduced as under:
23. Perusal of the aforesaid document clearly shows that the mark PRIME was registered in favour of respondent no.1 only till 01st January, 2024 and the same has not been renewed, thereafter.
24. This Court notes the submission made by learned counsel appearing for the petitioner that the respondent no.1 has never used the impugned mark PRIME for goods other than rice, and in particular, has not used the same for salt, which is the goods, in which the petitioner deals, qua which, the petitioner has obtained various copyright and trademark registrations.
25. This Court also notes the fact that in their application, respondent no.1 itself had stated that it was using the mark PRIME only for the product of rice, while for other products, the said mark was only registered, on „proposed-to-be-used‟ basis.
26. The respondent no.1 has not entered appearance before this Court and the submissions made by learned counsel appearing for the petitioner with respect to non-user of the impugned mark PRIME for salt in Class-30, remains un-rebutted.
27. The aforesaid facts, clearly bring forth that the mark of the petitioner, i.e., PRIME and mark of the respondent no.1, i.e., „PRIME‟, are registered in Class-30 for similar goods, i.e., salt. Thus, the impugned trademark in relation to the same Class of goods, would deceive and cause confusion, as the goods in question are the same. Further, there is deceptive similarity between the mark of the petitioner and the respondent no.1.
28. Holding that confusion is likely to occur, if one mark triggers a confused recollection of another mark, and gives the same general impression, the Division Bench of this Court in the case of M/s South Indian Beverages Pvt. Ltd. Vs. General Mills Marketing Inc. and Anr., 2014 SCC OnLine Del 1953, has held as follows: “xxx xxx xxx
49. Since time immemorial the Supreme Court has consistently sounded a note of caution that the competing marks have to be compared keeping in mind an unwary purchaser of average intelligence and imperfect recollection. [AIR 1963 SC 449 Amritdhara Pharmacy v. Satyadeo Gupta]
50. Consumers of any product do not deliberately memorize marks. They only retain a general, indefinite, vague, or even hazy impression of a mark and so may be confused upon encountering a similar mark. Consumers may equate a new mark or experience with one that they have long experienced without making an effort to ascertain whether or not they are the same marks. The consideration therefore is whether one mark may trigger a confused recollection of another mark. Thus, if the marks give the same general impression confusion is likely to occur.
51. With a view to further foster our understanding of the concept of similarity and likelihood of confusion arising in trademark jurisprudence, we may profitably take cue from the analogous principle of „observability‟ which is applied in the context of copyright laws.
52. The ‘ordinary observer’ test is applied to determine if two works are substantially similar. The Court will look to the response of an ‘average lay observer’ to ascertain whether a copyright holder's original expression is identifiable in the allegedly infringing work 274 F.2d 487 (2nd Cir. 1960) Peter Pan Fabrics Inc. v. Martin Weiner Corp. Since it is employed to determine qualitative and quantitative similarity in visual copyright work, the said test can also be usefully applied in the domain of trademark law as well.
53. The Courts have reiterated that the test for substantial similarity involves viewing the product in question through the eyes of the layman. A layman is not expected to have the same „hair-splitting‟ skills as an expert. A punctilious analysis is not necessary. A layman is presumed to have the cognition and experiences of a reasonable man. Therefore, if a reasonable observer is likely to get confused between the two products then a copyright violation is said to take place.
54. Transposing the said principles in the context of trademark infringement, one may venture to assess similarity and likelihood of confusion between rival marks on the touchstone of the impression gathered by a reasonable observer, who is a layman as opposed to a connoisseur. xxx xxx xxx” (Emphasis Supplied)
29. Accordingly, it is directed that the trademark registration for the mark PRIME, in favour of respondent no.1, bearing application no. 1258793, be rectified, in order to delete registration for salt and spices, in favour of respondent no.1.
30. The trademark registry is directed to carry out the necessary rectification, in this regard.
31. The Registry is directed to supply a copy of the present order to the Office of the Controller General of Patents, Designs and Trade Marks of India, on E-mail Id: llc-ipo@gov.in, for compliance.
32. With the aforesaid directions, the present petition is disposed of. MINI PUSHKARNA, J SEPTEMBER 17, 2024