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HIGH COURT OF DELHI
C.O. (COMM.IPD-TM) 10/2021 & I.A. 12679/2021 FYBROS ELECTRIC PVT LTD .... Petitioner
Through: Mr. Ajay Amitabh Suman, Adv.
Through: None
JUDGMENT
18.05.2023
1. This is a petition under Section 57(2)1 of the Trademarks Act 1999, seeking rectification of the register of Trademarks by removal, therefrom, of the mark registered in favour of Respondent 1 under No. 4643936 in class 11 w.e.f. 7th September 2020.
2. Notice was issued in this petition on 29th September 2021, and accepted by learned Counsel on behalf of both respondents.
3. Respondent 2 is merely a pro forma respondent.
4. There was no appearance on behalf of Respondent 1 on 25th
57. Power to cancel or vary registration and to rectify the register. – ***** (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the Registrar, and the Registrar or the High Court, as the case may be, may make such order for making, expunging or varying the entry as it may think fit. April 2023 and the matter was re-notified for the day before yesterday i.e., 16th May 2023. There was no appearance on behalf of Respondent 1 on 16th May 2023 either, and the matter was re-notified for today. Today, again, the matter has been called out twice there isa no appearance on behalf of either of the respondents.
5. I have heard Mr. Ajay Amitabh Suman, learned Counsel for the petitioner at some length and proceed, on the basis of the submissions made and the material on record, to dispose of this petition.
6. The petitioner is aggrieved by certificate of registration NO. 4643936 dated 20th March 2021 granted to Respondent 1, registering the mark in Class 11 w.e.f. 7th September 2020 for “apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes”.
7. The petitioner is the proprietor of the device mark, registered on 2nd March 2012 w.e.f. 10th December 2008 in Class 11, covering “apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes”.
8. As such, clearly, the rival marks are registered in favour of the petitioner and Respondent 1 not only for goods in the same class but, in fact, for identical goods.
9. Mr. Ajay Amitabh Suman invokes Section 11(1)(b)2 of the Trade Marks Act, to contend that the impugned mark of Respondent 1 was not entitled to registration as, owing to its similarity with the petitioner’s mark, and the fact that the marks were registered in respect of identical goods, there was a likelihood of confusion on the part of the public.
10. Mr. Suman submits that the marks and are deceptively and phonetically similar. He relies, for this purpose, on the judgment of the Supreme Court in Amritdhara Pharmacy v. Satyadeo Gupta[3] and K.R. Chinna Krishna Chettiar v. Shri Ambal & Co.[4]
11. Mr. Suman submits that, was registered in favour of the petitioner on a proposed to be used basis, and the petitioner had furnished documents evidencing user since 2011. He has drawn my attention to invoices, placed on record, which indicate user of the mark by the petitioner from 2011 to 2018. He has also drawn my attention to an agreement dated 21st May 2019, executed between a sister concern of the petitioner, Ms. Shruti Haasan and M/s
11. Relative grounds for refusal of registration. – (1) Save as provided in Section 12, a trade mark shall not be registered if, because of – (a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or (b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. AIR 1963 SC 449 MANU/SC/0303/1969 Pab Entertainment Solutions. The covennants of the agreement are of no relevance; suffice it to state that the term “product” is thus defined in the said agreement” “They shall mean and include electrical products, including with limitation, wires & cables, switch-gears, LED lights, and modular switches & accessories, and perticularly exctuding any electronic goods, chandeliers, and white goods (as is commonly understood), manufactured, marketed, distributed and sold by the Company, under the brand “Fybros” which brand may also be marketed as “Fybros by Kundan Cab" in any part of the Territory during the Term.
12. Mr. Suman submits that, inasmuch as the application seeking registration of the impugned mark had been filed by Respondent 1 on 7th September 2020 on proposed to be used basis, the user of the impugned mark, by Respondent 1, could not be earlier than 7th September 2020.
13. The petitioner has, therefore, both priority of user and priority of registration, vis-à-vis Respondent 1.
14. As the marks are deceptively similar, Mr. Suman, invoking Section 11(1)(b) read with Section 57 of the Trade Marks Act, seeks rectification of the register by removal, therefrom, of the impugned mark therefrom.
15. Though there was no appearance from Respondent 1, a reply, by Respondent 1, to the present petition is on record, which I have perused.
16. Respondent 1 has, in order to contest the present petition, averred that
(i) the petitioner had failed to challenge the application seeking registration of the impugned mark at the time when it was advertised, which had resulted in the impugned mark being granted registration,
(ii) the marks of the petitioner and Respondent 1 are phonetically, textually, visually, structurally, and design-wise, entirely distinct and different,
(iii) the petitioner and Respondent 1 operate their businesses in different spheres and in different markets,
(iv) there was nothing, in the petition, to indicate that, by registration of the impugned mark, the petitioner had suffered any damage, and
(v) there was no possibility of any confusion in the minds of the public, owing to any similarity between the impugned mark and the petitioner mark.
17. Mr. Suman also submits that the registration of the impugned mark was malafide, as Respondent 1 was engaged in dealing with precious metals, and was not involved in the activities in respect of which it had obtained registration of the impugned mark.
18. Having heard Mr. Suman and gone through the material on record, while I am unable to agree with Mr. Suman regarding the allegation of malafides, I am of the opinion that a case for grant of relief to the petitioner undoubtedly exists under Section 11(1)(b) of the Trade Marks Act.
19. The plea of malafides, if raised, requires solid and concrete material to support it. The mere fact that the Respondent 1 may not have been engaged in the sphere of activities in respect of which it had obtained registration of the impugned mark, in my view, is insufficient to make out a case of malafides, as the registration of the mark had been obtained on a proposed to be used basis.
20. The plea of malafides is, therefore, rejected.
21. Adverting to Section 11(1)(b), it is clear that the marks and are phonetically similar. The definitive test that applies in the matter of phonetic similarity is the Pianotist test, postulated by Parker, J., in Pianotist Co Application[5]: “You 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 trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.”
22. Applying the Pianotist test to the marks “Amritdhara” and “Lakshmandhara”, the Supreme Court, in Amritdhara Pharmacy[3], held thus: “7. Let us apply these tests to the facts of the case under our consideration. It is not disputed before us that the two names “Amritdhara” and “Lakshman-dhara” are in use in respect of the same description of goods, namely a medicinal preparation for the alleviation of various ailments. Such medicinal preparation will be purchased mostly by people who instead of going to a doctor wish (1906) 23 RPC 774 to purchase a medicine for the quick alleviation of their suffering, both villagers and townsfolk, literate as well as illiterate. As we said in Corn Products Refining Co. v. Shangrila Food Products Ltd.[6] the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity-of the two names “Amritdhara” and “Lakshmandhara” is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words “Amritdhara” and “Lakshmandhara”. We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as “current of nectar” or “current of Lakshman”. He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between “current of nectar” and “current of Lakshman”. “Current of Lakshman” in a literal sense has no meaning; to give it meaning one must further make the inference that the “current or stream” is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsman will perhaps know Lakshman, the story of the Ramayana being familiar to him; but we doubt if he would etymologise to the extent of seeing the so-called ideological difference between “Amritdhara” and “Lakshmandhara”. He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments.
8. We agree that the use of the word “dhara” which literally means “current or stream” is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words, having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description. We are aware that the admission of a mark is not to be refused, because unusually stupid people, “fools or idiots”, may be deceived. A critical comparison of the two names may disclose some points of difference, but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection 1960 (1) SCR 968 that he had purchased a similar medicine on a previous occasion with a similar name. The trade mark is the whole thing-the whole word has to be considered. In the case of the application to register “Erectiks” (opposed by the proprietors of the trade mark “Erector”) Farwell, J., said in William Bailey (Birmingham) Ltd. Application[7]: “I do not think it is right to take a part of the word and compare it with a part of the other word; one word must be considered as a whole and compared with the other word as a whole…. I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word.” *****
12. On a consideration of all the circumstances, we have come to the conclusion that the overall similarity between the two names in respect of the same description of goods was likely to cause deception or confusion within the meaning of Section 10(1) of the Act and the Registrar was right in the view he expressed. The High Court was in error in taking a contrary view.”
23. In K.R. Krishna Chettiar[4], the appellant (“Chettiar”, hereinafter) filed an application for registration of a device mark consisting of the words “Sri Andal Madras Snuff” with certain accompanying pictorial material. The application was opposed by the respondent Shri Ambal & Co. (“SAC”, hereinafter), who held registrations for the device mark “Sri Andal Madras Snuff”, again with accompanying pictorial material. Seen as whole device marks, the two marks were not similar at all. Even so, the Supreme Court held the marks to be deceptively similar essentially owing to the phonetic similarity between “Ambal” and “Andal”, reasoning thus:
9. The name Andal does not cease to be deceptively similar because it is used in conjunction with a pictorial device. The case of De Cordova v. Vick Chemical Co.[9] is instructive. From the appendix printed at p. 270 of the same volume it appears that Vick Chemical Company were the proprietors of the registered trade mark consisting of the word “Vaporub” and another registered trade mark consisting of a design of which the words “Vicks Vaporub Salve” formed a part. The appendix at p. 226 shows that the defendants advertised their ointment as “Karsote Vapour Rub”. It was held that the defendants had infringed the registered marks. Lord Radcliffe said: “... a mark is infringed by another trader if, even without using the whole of it upon or in connection with his goods, he uses one or more of its essential features”.
24. Extrapolating the said reasoning to the present case, it is clear that the marks and are, phonetically, deceptively similar, especially when they are used in respect of identical goods in the same class.
25. In view of the law laid down in K.R. Krishna Chettiar[4], the mere fact that the device marks may be different in appearance, cannot, by itself, mitigate the effect of phonetic similarity between the two marks. (1950) 57 RPC 209, 214 1951 (68) RPC 103
26. The contentions advanced by Respondent 1 in its reply to the present petition fail to impress. The fact that the petitioner and Respondent 1 may be engaged in different fields of activities, is of no relevance as Respondent 1 has, with its eyes open, obtained registration of the impugned mark for the very same goods and in the same class in which the mark stands registered in favour of the petitioner.
27. Similarly, the inaction, on the part of the petitioner, in opposing the application filed by Respondent 1 for registering the impugned mark, cannot divest the petitioner of its right to seek rectification of the register and removal of the impugned mark therefrom, under Section 57 of the Trade Marks Act.
28. Equally, for a challenge under Section 57 to succeed, the petitioner is not required to show that it has suffered any damage as a result of the registration of the impugned mark. Section 57 envisages, as one of the grounds for seeking cancellation of a mark from the register and consequent rectification of the register, the continuance of the mark on the register without due justification. A mark which is not entitled to be registered, ipso facto, continues on the register without due justification.
29. Inasmuch as the impugned mark of Respondent 1 was not entitled to be registered in the very first place, as the phonetic similarity between the impugned mark and the petitioner’s mark, seen in the backdrop of the fact that both marks were registered in respect of identical goods in the same class, was likely to result in confusion in the minds of the public.
30. For the aforesaid reasons, applying Section 11(1)(b) read with Section 57(2) of the Trade Marks Act, I am of the opinion that the impugned mark cannot continue to remain on the register of trade marks. The petitioner is, therefore, entitled to seek rectification of the register by removal, therefrom, of the impugned mark.
31. The Registry of Trade Marks is accordingly directed to remove from the register of trade marks, the impugned mark registered in favour of Respondent 1 under certificate of registration No. 4643936 dated 20th March 2021 w.e.f. 7th September 2020. The register of Trade Marks shall be rectified accordingly.
32. The petition is allowed.
33. Let a copy of this order be communicated to the Registry of Trade Marks in order to ensure due compliance.
C. HARI SHANKAR, J.