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HIGH COURT OF DELHI
C.O. (COMM.IPD-TM) 39/2021 RAJ KUMAR SHARMA ..... Plaintiff
Through: Mr. Nikhil Sonker, Adv.
Through: Ms. Garima Sachdeva, Adv. for R-1.
Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat and Mr.Alexander Mathai
Paikaday, Advs. for R-2.
JUDGMENT
30.01.2023
1. The petitioner, in this petition preferred under Section 571 of the Trade Marks Act, 1999, has sought rectification of the Register of Trade Marks by removal, therefrom, of Registration No. 4842932 dated 5th July 2021, whereby the word mark “PIZZA GALLERIA”, was registered in favour of Respondent 1 under Class 30 of the Alphabetical Index of classification of goods published by the of the Trade Marks
57. Power to cancel or vary registration and to rectify the register. – (1) On application made in the prescribed manner to the High Court or to the Registrar by any person aggrieved, the Registrar or the High Court, as the case may be, may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. (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.
7. Classification of goods and services. – (1) The Registrar shall classify goods and services, as far as may be, in accordance with the International classification of goods and services for the purposes of registration of trade marks. (2) Any question arising as to the class within which any goods or services falls shall be determined by the Registrar whose decision shall be final.
8. Publication of alphabetical index. – Act read with Rule 20(2)3 of the Trade Marks Rules, 2017. Class 30 covers “flour and preparations made from cereals; bread, pizza, pastry and confectionery”.
2. Mr. Nikhil Sonker, learned Counsel for the petitioner, submitted that the petitioner was contesting the right of Respondent 1 to use the “PIZZA GALLERIA” mark in the city of Rewari. The challenge in this appeal is, therefore, restricted to said use. The petitioner does not begrudge the respondent the right to use the “PIZZA GALLERIA” in any other part of the country.
3. Interestingly, the petitioner and Respondent 1 are both running eating outlets under the name “PIZZA GALLERIA”. The petitioner‟s outlets are situated in Rewari, whereas Respondent 1‟s outlets are situated outside Rewari. In these circumstances, quite frankly, I am unable to understand why this Court should even trouble itself with deciding this dispute, as the petitioner has no objection to the Respondent 1 using the “PIZZA GALLERIA” mark outside Rewari. However, Ms. Sachdeva, learned Counsel for Respondent 1 submits that her client is unwilling to surrender the Rewari market. She also submits that, on an earlier occasion, this issue had arisen, but that her client was not agreeable to a disclaimer restricting the use, by it, of the (1) The Registrar may publish in the prescribed manner an alphabetical index of classification of goods and services referred to in Section 7. (2) Where any goods or services are not specified in the alphabetical index of goods and services published under sub-section (1), the classification of goods or services shall be determined by the Registrar in accordance with sub-section (2) of Section 7.
20. Classification of goods and service. – (1) Classification of goods and service for the purpose of registration of trade mark, the goods and services shall be classified as per current edition of “the International Classification of goods and services (NICE classification)” published by the World Intellectual Property Organisation (WIPO). (2) The Registrar shall publish a class wise and an alphabetical index of such goods and services, including goods and services of Indian origin. contested “PIZZA GALLERIA” mark only to areas outside Rewari. As such, the Court is constrained to decide the dispute.
4. According to Mr. Sonker, a Memorandum of Understanding (MoU) had been executed between the petitioner and Respondent 1 on 9th June 2021, in terms of which the petitioner was entitled to use the “PIZZA GALLERIA” mark in the city of Rewari, whereas Respondent 1 was entitled to use the said mark anywhere else in the country. A copy of the MoU has been placed on record. Respondent 1, however, disputes the MoU and alleges that it is fabricated.
5. Respondent 1, on the other hand, contends that the petitioner was a franchisee of Respondent 1 and that a franchise agreement dated 25th March 2018 had been executed between them. She, however submits that her client has misplaced the original franchise agreement and is only in possession of a draft franchise agreement which was emailed by Respondent 1 to the petitioner. The said draft franchise agreement has been placed on record. However, as it is an unsigned and undated document, the Court cannot take cognizance thereof.
6. In any event, as the recital hereinafter would reveal, it is not necessary for this Court, in order to decide the present petition, to advert either to the MoU or the franchise agreement.
7. After a considerably lengthy hearing, the matter has narrowed down to a short point, on the basis of which this petition can be decided. The impugned registration dated 5th July 2021, of the “PIZZA GALLERIA” word mark in favour of Respondent 1 was granted consequent to an application made by Respondent 1 on 1st February 2021. Undisputedly, prior thereto, on 31st August 2020, the petitioner had applied for registration of the device mark under Class 35 which covers “Retail Shop or Online Retail Shop of Food Items, Mobile Retail Food Store Services”.
8. There is, therefore, no dispute about the fact that the application filed by the petitioner for registration of the device mark under Class 35 was prior in point of time to the application dated 1st February 2021, filed by Respondent 1 for the “PIZZA GALLERIA” word mark.
9. Relying on Section 11(1)4 of the Trade Marks Act read with Clause (a) of the Explanation[5] to the said section, Mr. Sonker submits that the mark is, if not identical, at least, similar to the “PIZZA GALLERIA” word mark of Respondent 1, as the pictorial representation in the former mark is of a pizza. He submits that, therefore, there is a likelihood of confusion between the
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. Explanation. – For the purposes of this section, earlier trade mark means – (a) a registered trade mark or an application under Section 18 bearing an earlier date of filing or an international registration referred to in Section 36-E or convention application referred to in Section 154 which has a date of application earlier than that of the trade mark in question, taking account, where appropriate, of the priorities claimed in respect of the trade marks; (b) a trade mark which, on the date of the application for registration of the trade mark in question, or where appropriate, of the priority claimed in respect of the application, was entitled to protection as a well-known trade mark. device mark and the “PIZZA GALLERIA” word mark. In these circumstances, he submits, Respondent 1 could not have been granted registration in respect of the “PIZZA GALLERIA” word mark, as grant of such registration would infract Section 11(1) of the Trademarks Act.
10. As there appears to be substance in this contention, it is not necessary to examine any of the other contentions urged at the bar by both sides.
11. Clauses (a) and (b) of Section 11(1) envisage independent circumstances in which a trade mark is ineligible for registration. Of these, where the mark for which registration has been applied is identical to an earlier trademark, Clause (a) would apply, whereas, where the applicant‟s mark is similar to an earlier trademark, Clause (b) would apply. In either case, likelihood of confusion on the part of the public must be shown to exist, in order for the later mark to be ineligible for registration.
12. The expression “earlier trademark” has been defined in the Explanation to the Section. Clause (a) of the explanation includes, within the meaning of the expression “earlier trademark”, “an application under Section 186 bearing an earlier date of filing”. As such, Section 11(1)(b) read with Clause (a) of the explanation to Section 11, would prohibit the registration of a trademark where, because of (i) its similarity with a mark, for which an application, filed earlier, was pending, coupled with (ii) identity or similarity of the Section 18 allows a person to apply for registration of a trade mark. goods or services covered by the two marks, there exists a likelihood of confusion.
13. Can, then, the device mark of the petitioner, and the “PIZZA GALLERIA” word mark of the respondent, be regarded as “similar”, as would result in a likelihood of confusion?
14. After some cogitation, I feel the answer has to be in the affirmative.
15. The expression “similar” is not defined in the Trade Marks Act. Section 2(1)(h), however, declares, in an admirably circular fashion, that “a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles the other mark as to be likely to deceive or cause confusion”. Thus, Section 2(1)(h) embraces, within the broad parentheses of “deceptive similarity”, both “confusing” and “deceptive” similarity. Likelihood of deception or confusion, in any event, remains the pervading mantra.
16. The petitioner‟s mark contains a pictorial depiction of a pizza, with the word “Galleria” alongside it. A mental connect beween the pizza and “Galleria” is, however, immediately made by an average consumer who sees the mark. The impugned mark of the respondent is “PIZZA GALLERIA”. In the mark “PIZZA GALLERIA”, there can be no manner of doubt that “Galleria” is the dominant part, as “pizza” is publici juris, used by nearly every eatery which specializes in pizzas. “Galleria” may be a term more often associated with art; it certainly is not a term of common usage for restaurants or eating joints. An unwary consumer would not, therefore, readily imagine that and “PIZZA GALLERIA” are two different establishments, run by two different persons. He is much more likely to regard the former device mark as a pictorial manifestation of the latter word mark. Likelihood of confusion, in presuming both establishments to belong to one administration is, therefore, in my opinion, inevitable.
17. Mr. Sonker has, moreover, pointed out that, in invoices issued by the petitioner, the petitioner was actually referred to as “PIZZA GALLERIA”.
18. The nature of services provided by the petitioner and Respondent 1 are identical, as both are providing restaurant services. Though the petitioner‟s application, dated 31st August 2020, for registration of the device mark, and the respondent‟s application dated 1st February 2021 for registration of the „PIZZA GALLERIA‟ word mark were for different classes, that cannot make any difference, as the applicability of Section 11(1) is not dependent on the class in respect of which the marks are registered, or registration of the marks is sought. Even otherwise, the nature of goods and services covered by Classes 30 and 35 are allied, the former relating to “flour and preparations made from cereals; bread, pizza, pastry and confectionery” and the latter to “Retail Shop or Online Retail Shop of Food Items, Mobile Retail Food Store Services”. Where the goods and services to which the competing marks relate are allied, the chance of confusion or deception stands enhanced, as held in Mex Switchgears Pvt. Ltd. v. Omex Cables Industries[7] and Natures Essence Private Limited v. Protogreen Retail Solutions Private Limited[8],
19. There is, therefore, substance in the contention of Mr. Sonker that the petitioner‟s device mark is similar to the “PIZZA GALLERIA” word mark of Respondent 1, and is used in respect of goods or services which are not only similar but identical. Equally, in these circumstances, the possibility of likelihood of confusion among persons who wished to visit the eating outlets cannot be gainsaid.
20. The petitioner‟s application for registration of device mark, having been made on 31st August 2020, is prior in point of time to the application of Respondent 1 for registration of the „PIZZA GALLERIA‟ word mark, which was on 1st February 2021. As such, the application dated 31st August 2020 of the petitoner itself amounted to an “earlier trademark” within the meaning of Section 11(1)(b) of the Trade Marks Act, in view of Clause (a) of the explanation to the Section.
21. Ms. Sachdeva, learned Counsel for Respondent 1 fairly acknowledged that the petitioner‟s application for registration of the device mark was indeed prior in point of time to the application dated 1st February 2021 of Respondent 1, consequent on which the impugned “PIZZA GALLERIA” word mark was registered (2017) 71 PTC 465 (Del) (2021) 86 PTC 225 (Del) in Respondent 1‟s favour. However, she submits that the present petition is centred entirely on the MoU dated 9th June 2021 executed between the petitioner and Respondent 1 which, according to her, is the main ground on which the petitioner has questioned the entitlement, of Respondent 1, to registration of the impugned mark.
22. It is correct that the petition is predicated, to a large extent, on the MoU dated 9th June 2020. However, in para 13 of the grounds of challenge in the present petition, the petitioner has stated that the petitioner‟s earlier application was for a mark similar to the impugned mark of Respondent 1 and that, therefore, grant of registration to the impugned mark infracted Section 11(1) of the Trademarks Act. As such, it cannot be said that the submission of Mr. Sonker is entirely divorced from the pleadings.
23. Section 57(2) of the Trademarks Act permits the making of an application for making, expunging or varying any entry in the Trade Marks Register, where the applicant alleges that (i) the entry is made without sufficient cause or (ii) is wrongly remaining on the register or
(iii) suffers from any error or defect. Mr. Sonker submits that circumstance (ii) applies to the present case. As such, he submits, in view of Section 11(1)(b) of the Trade Marks Act, the impugned registration of the word mark “PIZZA GALLERIA” granted to the petitioner on 5th July 2021, could not be allowed to remain on the register.
24. As I have already held that the grant of registration to Respondent 1 of the impugned “PIZZA GALLERIA” word mark on 5th July 2021 is violative of Section 11(1)(b) of the Trademarks Act, the said word mark is liable to be removed from the register. However, as Mr Sonker has restricted his challenge, in the present petition, to the use, by the defendant, of the impugned “PIZZA GALLERIA” mark in the city of Rewari, I direct the rectification of Registration No. 4842932 granted to Respondent 1 for the word mark “PIZZA GALLERIA” on 5th July 2021 to be rectified by inserting, therein, a disclaimer disallowing the use of the said mark, by the defendant, in the city of Rewari, while retaining the right of the defendant to use the mark elsewhere in the country.
25. This petition stands disposed of in the aforesaid terms. A Postscript
26. A somewhat quixotic statutory position has come to my notice while correcting this judgement. Earlier, classification of goods and services, for the purposes of registration of trade marks, was contained in the Fourth Schedule to the Trade Marks Rules, 2002 (“the 2002 TM Rules”). The 2002 TM Rules were, subsequently, superseded by the Trade Marks Rules, 2017 (“the 2017 TM Rules”). Rule 185 of the 2017 TM Rules repeals the 2002 Rules “without prejudice to anything done under such rules before the coming into force of” the 2017 TM Rules. New Registrations have, therefore, to be as per the 2017 TM Rules, and cannot abide by the 2002 TM Rules. I am informed, however, that, even as on date, a registrant seeking to register a trade mark has to classify the mark as per the 2002 TM Rules. This appears to be erroneous, in view of Rule 185 of the 2017 TM Rules supra.
27. That apart, Section 7(1) of the Trade Marks Act requires the be, in accordance with the International classification of goods and services (the NICE Classification) for the purposes of registration of trade marks. Section 7(2) makes the decision of any question as to the class within which any goods or services falls, by the Registrar, final. Section 8(1) requires the Registrar to publish, in the prescribed manner, an alphabetical list of classification of goods and services for the purpose of registration of trade marks. These provisions, therefore, require the Registrar to classify the goods or services, for the purpose of registration, in accordance with the NICE classification, only as far as may be. Rule 20(1) of the 2017 TM Rules, however, departs, somewhat, from Section 7(1) of the TM Act, as it makes classification of goods and services, for the purpose of registration of trade marks, to be mandatorily “as per current edition of „the international Classification of goods and services (NICE classification)‟ published by the WIPO. Thus, where Section 7(1) makes the NICE classification applicable for classification of goods and services under the TM Act only as far as may be, Rule 20(1) makes it mandatory for the classification of goods and services to abide by the NICE classification. There is, therefore, an apparent discrepancy between Section 7(1) of the TM Act and Rule 20(1) of the TM Rules. This may need statutory correction.
28. The Registrar of Trade Marks is requested to examine this aspect.
C.HARI SHANKAR, J JANUARY 30, 2023