V.RAVI,TECHNICAL MEMBER - (1.) THE appellant herein are seeking the quashing/setting aside of the order of the Deputy Registrar of Trade Marks, New Delhi dated 20.7.2012 in respect of DEL -191170 to Application No.893326 in Class 11. The facts giving rise to this appeal are summarized below: - a)The appellant is engaged in the business of manufacturing electrical goods including electrical switches; switch gears etc for the last many years. They have been continuously using the trade mark MEX since 1960. They are also the registered proprietor of this mark under No.211055 in Class 9; 230466 also in Class 9; 351897 in class 9 (for ignition switches, electrical capacitators, plugs, distribution switch boards, electric meters and electric circuit breakers). They also hold registration of the trade mark MEX in Class 7 under No.495452 in respect of starting devices for electrical motors (not for land vehicles). The appellant further holds registration in respect of the trade mark CLIMEX for radio receiving apparatus, transistors, electrical fuses, and electrical kettles under No.234906 in Class 9. This mark is also registered under No.234904 in Class 11 for electrical refrigerators, hot plates, electrical stove etc. The Hindi version of the trade mark MEX is also registered in Class 11 under 463732 for electrical fans, electrical eating appliances etc. The appellant also owns many other registration for the trade mark MEX and CLIMEX. b)The goods manufactured and sold by the appellant under the trade mark MEX have been tested and approved by various Government Departments. By virtue of long and continuous use the trade marks MEX is exclusively associated with the goods of the appellants. c)The appellants have successfully contested various litigations including opposition filed before the Registrar of Trade Marks in numerous cases. In many matters the case was decided in favour of the appellant/opponent on merits and in others the Registrar abandoned the application under Section 21(2) of the Act for failure to file the counter statement within the stipulated time. d)The respondent herein filed an application for the registration of the trade marks HOTMAX on 21st December, 1999 and was numbered 893326 in Class 11. This was opposed by the appellant herein. The appellant/opponent led evidence in support of the opposition. The respondent/applicant did not file any evidence under Rule 51 of Trade Marks Rules. The appellant thereafter filed written submission. The Deputy Registrar heard the matter and dismissed the opposition. Being aggrieved, the appellant have filed this appeal on the following grounds: - i) The impugned order of the Deputy Registrar is against facts and law. The Deputy Registrar did not deal with the case set up by the appellant who had filed written arguments and this is contrary to Rule 56 (8) which reads: - "The Registrar shall take on record written arguments by a party to the proceeding". ii) The Deputy Registrar has not dealt with the various cases cited by the appellant. There is not even a whisper about the written submissions made by the appellant/opponent. Not a single judgment cited by the appellant both in oral and written submissions have been dealt with. Hence the order of the Deputy Registrar ex facie is an error apparent on the face of the record. The order and decision is devoid of proper reasoning and exhibits total non -application of mind. The Deputy Registrar failed to appreciate that the prefix HOT of the impugned trade mark HOTMAX is totally descriptive and if at all it is put on the register it should be subject to disclaimer of the prefix HOT which is hit by Section 9 (1) (a), (b) and (c) of the Trade Marks Act, 1999. iii) The ruling of the Deputy Registrar dismissing objection based on Section 11 is also wrong on point of law. He failed to appreciate the ratio laid down by the Hon'ble Supreme Court in Amridhara Pharmacy Vs. Satya Deo Gupta(AIR 1963 SC 449). Subsequently, the Hon'ble Supreme Court in Parle Products Vs. J.P. and Co., (AIR 1972 SC 1359) had observed as follows: "According to Kerly's Law of Trade Marks and Trade (9th edition paragraph 838): "Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade -marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own." 9. It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the color scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word "Gluco Biscuits" in one and "Glucose Biscuits" on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs' goods, he might easily mistake the defendants' wrapper for the plaintiffs' if shown to him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendants' wrapper is deceptively similar to the plaintiffs' which was registered. We do not think it necessary to refer to the decisions referred to at the Bar as in our view each case will have to be, judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it." iv) The above decision of the Hon'ble Supreme Court is squarely applicable to the facts of this case. Similarly, the ruling in the Ambal Vs. Andal's case (AIR 1970 SC 146) which held the trade mark to be deceptively similar will also apply to the facts of this case. The same applicant in that case then sought registration of the trade mark Radha's Sri Andal Mark snuff which the Hon'ble Division Bench of the Madras High Court held to be deceptively similar to the trade mark Ambal holding that mere addition ofthe word "Radha" would not make any difference. In short, the appellant submits that the mere addition of a laudatory word makes no difference in comparison of mark. The findings of the Deputy Registrar are contrary to law. The appellant have relied on the following decisions in support of his case: a) In Uniroyal Inc. Vs. Max Pharma (1984 IPLR 161) - (Vitamax held similar to Vitavax); b) In Amridhara Pharmacy Vs. Satya Deo Gupta (AIR 1963 Supreme Court 449) - (Lakshmandhara held similar to Amritdhara); c) In Ruston and Hornby Ltd., Vs. Zamindara Engineering Company) (AIR 1970 Supreme Court 1649) - (Rustam India held similar to Ruston); d) In Atlas Cycle Industries Limited, Sonapet Vs. Surjit Singh and Brothers, Bombay (1986 PTC 163) - (Shine Star held similar to Eastern Star) and e) In M/s. Pidilite Industries Private Limited Vs. M/s. Mittees Cororation and another (1989 PTC 151) - (Trevicol held similar to Fevicol). v) The Deputy Registrar failed to follow the principles laid down in the above cases. He also failed to follow the decision (Full Bench) of the Hon'ble Supreme Court in Cadila Health Care Limited Vs. Cadila Pharmaceuticals Ltd. (AIR 2001 Supreme Court, 1952), wherein it was observed at paragraph 17: - "Our attention was drawn to a recent judgment of this court in S.M.Dyechem Ltd. Vs. Cadbury (India) Ltd. (2000) 5 SCC 573: (2000 AIR SCW 2172 : AIR 2000 SC 2114 ; 2000 CLC 1338) where in a passing off action, the plaintiff, which was carrying on the business under the mark of "PIKNIK", filed a suit for injunction against the defendant which was using the mark of "PICNIC" for some other chocolates sold by it. On the allegation that the defendant's mark was deceptively similar, the trial court had issued an injunction which was reversed by the High Court. On appeal, the decision of the High Court was affirmed. One of the questions, which this Court considered, was that for grant of temporary injunction, should the Court go by the principle of prima facie case, apart from balance of convenience, or comparative strength of the case of either parties or by finding out if the plaintiff has raised a "triable issue". While considering various decisions on the point in issue, this Court rightly concluded at page 591 (of SCC) : (at page 2181 of AIR SCW: 2121 of AIR and 1348 of CLC ( para 21) as follows: Therefore, in trade mark matters, it is now necessary to go into the question of "comparable strength" of the cases of either party, apart from balance of convenience." On merits of the case, this Court took note of some English decisions and observed in Dyechems case (supra) at page 594 (of SCC) : (at page 2183 of AIR SCW: 2123 of AIR and 1350 of CLC (para 31) that "where common marks are included in the rival trade marks, more regard is to be paid to the parts not common and the proper course is to look at the marks as a whole, but at the same time not to disregard the parts which are common." This Court sought to apply the principle that dissimilarity in essential features in devices and composite marks are more important than some similarity. This Court, after considering various decisions referred to hereinabove, observed in Dyechems case (supra) at page 596 (of SCC) ; (at pages 2184 -85 of AIR SCW, 2124 of AIR and 1351 of CLC) (para 34) as follows: "Broadly, under our law as seen above, it can be said that stress is laid down on common features rather than on differences in essential features, except for a passing reference to a limited extent in one case." Notwithstanding the aforesaid observations this Court in Dyechems case (2000 AIR SCW 2172 : AIR 2000 SC 2114 : 2000 CLC 1338) (para 35) (supra) proceeded to observe as follows: "It appears to us that this Court did not have occasion to decide, as far as we are able to see, an issue where there were also differences in essential features nor to consider the extent to which the differences are to be given importance over similarities. Such a question has arisen in the present case and that is why we have referred to the principles of English Law relating to differences in essential features which principles, in our opinion, are equally applicable in our country. " 18. We are unable to agree with the aforesaid observations in Dyechems case (supra). As far as this Court is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of a passing off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. This is evident from the decisions of this Court in the cases of National Sewing Thread Co. Ltd.s case (AIR 1953 SC 357) (supra), Corn Products Refining Company's case (AIR 1960 142) (supra), Amritdhara Pharmacys case (AIR 1963 SC 449) (supra), Durga Dutt Sharma's (AIR 1965 SC 980) case (supra), Hoffmann -La Roche and Co. Ltd.s case (AIR 1970 SC 2062) (supra). Having come to the conclusion, in our opinion incorrectly, that the difference in essential features is relevant, this Court in Dyechem's case (supra) sought to examine the difference in the two marks "Piknic" and "Picnic". It applied three tests, they being 1) is there any special aspect of the common feature which has been copied ? 2) mode in which the parts are put together differently i.e. whether dissimilarity of the part or parts is enough to make the whole thing dissimilar and 3) whether when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the common parts ?. In examining the marks, keeping the aforesaid three tests in mind, it came to the conclusion, seeing the manner in which the two words were written and the peculiarity of the script and concluded "that the above three dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word PICNIC for PIKNIK". 19. With respect, we are unable to agree that the principle of phonetic similarity has to be jettisoned when the manner in which the competing words are written is different and the conclusion so arrived at is clearly contrary to the binding precedent of this Court in Amritdhara's case (AIR 1963 SC 449) (supra) where the phonetic similarity was applied by judging the two competing marks. Similarly, in Durga Dutt Sharma's case (AIR 1965 SC 980)' (supra), it was observed that "in an action for infringement, the plaintiff must, no doubt, make out that the use of the defendants mark is likely to deceive, but where the similarity between the plaintiffs and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiffs rights are violated." vi) The findings of the Deputy Registrar ignoring the well settled legal proposition mentioned above have set a wrong precedent which would perpetuate an infringer to escape the law by merely adding a descriptive element to the infringing label. vii) The Deputy Registrar has allowed concurrent registration of the impugned mark with just 14 months user prior to the date of filing which cannot by any stretch of imagination overcome objection raised under Sections 9, 11 and 18 of the Trade Marks Act, 1999. He also failed to appreciate that the onus to justify registration of a trade mark is always on the applicant and this onus can never shift. The impugned order suffers from error of law and facts and it is liable to be set aside.
(2.) THE case of the respondent is summarized as follows: - An application for registration of the trade mark HOTMAX in respect of heating elements was made by the respondent on 21st December, 1999 claiming user of the impugned mark from 1st September, 1998. The said application was advertised before acceptance in the Trade Marks Journal and opposed by the appellant herein. The respondent/applicant had filed their counter statement denying all the allegations made by the appellant raised in the notice of opposition. The respondent had filed evidence of use of the mark at the pre -advertisement stage by way of an affidavit of Sri Sanjay Biswas along with statement of sales figure to prove distinctiveness of the impugned mark. The counter statement was served on the opponent who in turn filed evidence in support of the opposition. The respondent/applicant state that they have not been served with copy of the evidence in support of the opposition. On the contrary, the respondent had written several letters to the Registrar to abandon the opposition under Rule 50 of the Trade Marks Rules. The respondent states that they have not filed any evidence in support of the application because there has been no due service as they have not received evidence filed in support of the opposition before the Registrar.
(3.) THE matter came up before the Deputy Registrar when the respondent/applicant petitioned that the notice of Opposition filed by the appellant/opponent should be treated as being deemed to be abandoned under Rule 50 (2). At the hearing before the Deputy Registrar the counsel appearing for the opponent informed him that she did not have any information regarding service of evidence in support of the opposition on the applicant. Nevertheless, the Deputy Registrar has observed in his order dated 20th July, 2012 that he "examined written arguments submitted by the opponent and judgments relied by them" and he gave his rulings on the objection relating to Sections 9, 11 and 18 of the Trade Marks Act, 1999. The respondent's case is that the instant appeal is not maintainable and is a clear abuse of process of law. The appeal has been filed by an incompetent and unauthorized person and therefore cannot be entertained. The present appeal suffers from delay, laches and acquiescence. The appellant has approached this Board to correct his own wrong as he has not complied with the requirements of Rule 50 (1) before the Deputy Registrar. The evidence as well as the documents filed by the appellant along with a present appeal is not part of the record before the learned Deputy Registrar and therefore it cannot be relied on in these proceedings. The present appeal is defective as it is neither in accordance with law nor as per the provisions of IPAB Rules and therefore cannot be entertained by the Board.;