K.K. Electro Appliances Pvt Ltd v. Shree Vardhman Engg. and Anr.

1. The present petition has been filed seeking cancellation of registration of the trademark bearing registration no. 3924750, in Class-11, registered in favour of respondent no.1, in respect of cooler and fans.

2. The facts, as necessary for adjudication of the present case, are as follows: 2.[1] The petitioner claims to be carrying on the business of manufacturing, marketing and exporting inter alia electric fans of all kinds, room heaters, table lamps, electric heaters, geysers, etc. in Class-11; washing machine, mixer juicers, etc., in Class-7 and electric iron, electric switches, socket, etc. in Class-9. 2.[2] The petitioner company is engaged in its business of the concerned goods covered in Classes 7, 9, 11 and 35 of the Trade Marks Act, 1999. 2.[3] The petitioner company and/or their predecessor in interest, are stated to have openly, continuously, regularly, extensively and exclusively been using the trademark device in India since the year 1982, in respect of the goods in which it carries out business, without any interruption from any one in India. 2.[4] The respondent no.1 is engaged in the same/similar/allied/cognate business as that of the petitioner’s goods and business, i.e., ‘cooler and fans’, included in Class 11 and using similar/same trademark, i.e.. 2.[5] Thus, the present petition has been filed seeking cancellation/rectification of the respondent no.1’s trademark on the ground that the adoption and use of the trademark in respect of ‘cooler and fans’ included in Class-11 by respondent no.1, amounts to infringement of the petitioner’s registered trademarks.

3. On behalf of the petitioner, the following submissions have been made: 3.[1] The petitioner company is the true owner and registered proprietor of the trademarks, in respect of various goods, and the same are renewed from time to time. The details of the trademarks in favour of the petitioner, are as follows: 3.[2] The petitioner company’s trademark/label, is an artistic work specifically designed, and the same is registered under no. A-99544/2013, under the Copyright Act, 1957. 3.[3] The trademarks, have been adopted with a bonafide and honest intent by the petitioner with a view to distinguish its products from similar products of other manufacturers. The said marks of the petitioner are entirely distinctive of the goods manufactured/sold by the petitioner. 3.[4] Goods of the petitioner company are widely sought after by the members of the trade as well as by the purchasing public at large, throughout the country and even overseas. The petitioner’s annual sales of the aforesaid products run into several crores of rupees every year. The details of the petitioner’s turnover for the last few years, is as under: 3.[5] The respondent could not have claimed any ownership over the impugned trademark, as respondent is neither the owner of the impugned trademark, nor is the originator of the said trademark. 3.[6] The petitioner is the owner and proprietor of the said trademarks in relation to the goods in question, on account of prior honest adoption and continuous commercial user since the year 1982, through its predecessor upto the present times. 3.[7] The registered proprietor has not used the impugned trademark, as the user claim is ‘proposed to be used’. Further, the alleged use of the impugned trademark is much later than that of the petitioner.

4. None appears for the respondent when the matter is called out. Perusal of previous order sheets show that the respondent no.1 stands served, including through the Trademark Attorney, who is responsible for registration of the impugned mark. Accordingly, this Court has proceeded with the matter.

5. I have heard learned counsel for the petitioner and perused the record.

6. At the outset, this Court notes that the petitioner is the prior user of the mark ‘INDO’, having been registered on 22nd January, 1990 in various Classes. Further, the device has been registered in favour of the petitioner, with the use of the mark being shown since 01st April, 1982. The documents on record show that the said trademarks and device in favour of the petitioner have been renewed from time to time in favour of the petitioner, and are subsisting as on date. Further, the petitioner also has copyright registration over the artistic work for the label. The petitioner has also placed on record invoices showing the sale of its products continuously, and for a long time.

7. On the other hand, the registration in favour of the respondent dated 23rd August, 2018, shows the user detail as ‘proposed to be used’.

8. The aforesaid facts, clearly bring forth that the mark of the petitioner, i.e., and mark of the respondent are both registered in Class-11 for similar goods, i.e., cooler and fans.

9. The prominent and dominant feature of the petitioner’s mark is ‘INDO’. Thus, it is clear that the adoption of the mark ‘INDO AIR’ by the respondent for the same class of goods, is not honest and bonafide. The impugned trademark in relation to the same class of goods would deceive and cause confusion, as the goods in question are same/allied/cognate. Further, there is deceptive similarity between the petitioner’s trademark and the mark of the respondent.

10. Holding that confusion is likely to occur, if one mark triggers a confused recollection of another mark, and gives the same general impression, Division Bench of this Court in the case of M/s South India Beverages Pvt. Ltd. Versus 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.