V.RAVI,TECHNICAL MEMBER - (1.) THE present appeals are preferred against the Order of Deputy Registrar, Registrar of Trade Marks, Delhi dated 17.09.2007 who refused application No. 832338 in Class 1 and also another order passed by the Assistant Registrar of Trade Mark New Delhi rejecting application No. 832339 in Class 7 dated 30th May 2005. For convenience sake we are reproducing the two refused marks below. Appln. no. 832338 Appln. no.832339 In Class 1 in Class 7 "Image"
(2.) THE substantial grounds of appeal in both cases are largely the same and accordingly we are passing a common order on the matter. The rival parties in both cases are identical and the matter was argued by the respective counsels together. The main grounds on which the appellant are aggrieved are summarized below: - a) The appellant is one of the worlds fastest growing innovative company acknowledged for cutting edge products world wide. More than 60% of the products offered to customers are less than three years old. The appellant is head quartered in the city of TAEGU, South Korea from where it gets its name Taegu Tec. The appellants also possess State of Art manufacturing facilities. The city name Taegu has since been changed to Daegu by the Government. b) The appellants own and use the trade mark TT (LOGO) in a circle device along with the word TAEGU Tec which is registered in about 19 countries and used in over 25 countries since September 1998. In India, the appellants subsidiary company Tageu Tec India Limited have been using this logo since May, 2000. c) On 15th December, 1998, the appellant applied for the registration of a composite trade mark TT Tageu Tec under No. 832338 in respect of "Carbide Powders" in Class -1. This application was published in the TM journal as Advertised before Acceptance and opposed by the respondent herein. After completion of the pleading, a hearing was appointed on 6th July, 2007 and by his order dated 17th September, 2007, the learned Deputy Registrar refused application No. 832338. A second application under no.832339 in Class 7 in respect of "cutting, grooving, turning, parting, milling and drilling tools and thereof for use in powder operated machine" was also filed on the same day which was also refused. Being aggrieved by the said orders, the appellant have preferred the present appeal. d) Both the learned Registrars have disposed of the matter with non -speaking orders which reveals non -application of judicial mind and without giving reasons for their conclusion which is sufficient grounds for invoking indulgence of this Board for setting aside the impugned orders. e) The competing marks and goods are absolutely different. f) The ruling of the Registrar in application No.832338 that the Trade mark TT Tageu Tec connotes geographical significance is totally perverse and against settled principles of trade marks law. The Registrar failed to appreciate that geographical significance to a mark is attached only when the mark is suggestive and descriptive of the origin of the product from that particular region. The trade mark TT Tageu Tec is a coined word and conveys no geographical significance whatsoever. g) The adoption of both the impugned marks (which includes the logo TT under 832339) is totally bonafide as it is derived from the word Tageu Tec. The Registrar was wrong in splitting the trade mark TT Tageu Tec into two pieces holding that the logo TT is a letter mark which is an incorrect inference and against the principles of the trade marks law. The settled law is that mark has to be seen as a whole and not broken into parts. The overall representation of the rival marks are totally different. The appellants trade mark is presented in a very special and particular manner and is clearly a composite label. h) Both the learned Registrars had failed to appreciate that the respondent herein are mainly marketing and selling products in the nature of hosiery goods like Jhangies, banians under the trade mark TT and its reputation as such is confined to such products only and the respondents have never used TT in respect of the Carbide powders or for products falling in Class 7 Including cutting tools etc. i) The orders of both the Registrar is perverse as they have not even considered a single argument or an of authorities cited by the appellant during the course of the separate proceedings and further the respondent have not produced even a single document evidencing use of the trade mark TT in respect of the goods falling either in Class 1 or Class 7. j) Both the Registrar has failed to give any reason why the appellant's case cannot be protected under Section 12 on grounds of special circumstances' mentioned therein, given that the appellants are registered owner of the trade mark in more than 19 countries and have been using the said mark in India since 2000. k)The order of the Registrar is contrary to the ruling of the Hon'ble Supreme Court in Vishnudas Trading Co. Vs Vazir Sultan Tobacco Company Ltd. wherein (AIR 1996 SC 2275) the Apex Court had held that by merely obtaining a registration of a trade mark for certain goods one cannot monopolise the entire class under the IVth Schedule of the TM Rules. One cannot stop bonafide traders from registering their trade mark solely on the basis of prior registration by someone else for totally unrelated goods. l) There is also no order or decision to the effect that the respondent's trade mark is a well known mark. The respondents claim that their trade mark TT is a well known mark is completely bizarre and amusing in as much as such goodwill as it enjoys rest only in respect of hosiery products. The assertion that the trade mark TT is a well known mark of the respondent is riddled with self perpetuation and is ex -facie redundant. m) Both the Registrar also failed to consider the balance of convenience which was clearly in favour of the appellant. n) Both the Registrar committed serious error of judgement in not considering the fact that the appellant's goods are not available in the retail market and the procedure for procuring these goods by ordinary customers are difficult. There is no trade connection whatsoever between the competing products and as the trade channels are completely different there is no likelihood of confusion and deception. o) The respondents have filed a suit for injunction against the Indian affiliate of the appellant company but no stay has been imposed in connection with the use of the trade mark TT Tageu Tec. p) In view of the foregoing, the appellant pray that the order and decision of both the learned Registrar dated 17.09.2007 and 30.05.2005 respectively be quashed and set aside and the appellant's trade mark be directed to proceed to registration.
(3.) THE respondent's case is set out below: - a) It is a proprietary firm carrying on business under the trade mark TT since 1968. By reasons of voluminous, long standing and continuous use TT has acquired a secondary meaning and is only associated with respondents' goods. b) The respondent started his business for clothings and under clothings, garments and under garments for men, women and children but progressively has expanded the area of business and it now includes such goods as sarees, textile piece goods, textiles, yarns etc. They also propose to diversify their business for marketing various consumer durable goods including edible food items, sweets and confectionary, financial and monetary affairs, advertisement etc. under the umbrella brand of their established trade mark TT. The respondents have made every effort to protect their house mark and the primary trade mark TT in as much as they have applied for and obtained registration for 60 trade marks in almost all classes falling under Schedule IV of the Trade Marks Rule. In addition, the trade mark TT is registered in Pakistan, Sri Lanka, Bangladesh and Nepal by the respondent. Enormous publicity and advertisement have been made over the last four decades to promote the trade mark TT. So robust has been their business that sales turnover of approximately Rs. 2000 crores has been achieved and advertisement expenses of Rs. 30 crores incurred since last four decades. Thus, trade mark TT has acquired international reputation and recognition by virtue of exports under that brand to many countries including Pakistan, Bangladesh, Sri Lanka, Singapore, Israel, South Africa, Japan, Korea, China, Germany, Brazil and various other European and Latin American countries. The respondent have also got 25 copyright registration on the artistic work with the title TT. c) To safeguard its trade mark rights, the respondent have filed many opposition and rectification petitions and cases and passing off suits in various criminal and civil forums in the country and have successfully enforced their intellectual property rights on the said trade mark. Further, they have been periodically issuing Caution Notice in daily newspapers to protect their trade mark rights. d) In view of the foregoing TT exclusively connotes the business of the respondents and it has achieved the status of a well known mark within the meaning of Section 2(1) (zg) read with section 11 of the Act. e) The appellants are fully aware of the prior adoption, registration of the respondent's trade mark and have dishonestly applied for the registration of both the impugned marks. The sole motive is to confuse the public and take undue advantage of the reputation and goodwill of the trade mark TT of the respondent. f) The appellant have never manufactured or marketed any of its products under the impugned mark comprising of the expression TT and TT Tegue Tec in India on the date of application and thereafter also and so their claim of proprietorship of the mark is false and frivolous. g) The respondent state any purported use by the appellant of the trade mark TT and Tegu Tech in India is totally unauthorized and is an infringement of statutory rights of the respondent. The order of both the Registrar are undoubtedly speaking orders as various legal provisions are discussed in their perspective and therefore no case for setting aside the impugned orders has been made out. h) The claim that the competing marks are dissimilar is emphatically denied and disputed and it is completely untenable. i) Both the instant appeals are based on frivolous and whimsical contentions. There are specific findings of both the Learned Registrar that the impugned marks was not honestly adopted by the appellant and it is deceptive and confusingly similar to that of the respondent. j) Both the learned Registrar had come to the correct conclusion that the appellant's have not proved honest adoption of the trade mark TT Tegeu Tec and TT(logo) under Section 18 and therefore, the appellant's plea of improper rejection of its two trade marks are highly objectionable, capricious and motivated. The appellant had made no efforts to ascertain from the Register regarding availability of the impugned mark by a proper search. The impugned mark is barred under section 9,11, 12 and 18 of the Act. k) No case has also been made out to sustain the registration of the appellant's two mark under Section 12 of the Act on the purported ground that both the marks are completely different from that of the respondent which plea is totally illogical, unacceptable, completely denied as hollow, invalid, fallacious and unsustainable in law. The appellant have filed a rejoinder to the counter statement filed by the respondent wherein the following points have been highlighted. a. The appellant's trade mark TT and TT Tegue Tec has acquired secondary meaning. b. The respondent's use of the trade mark TT is mainly confined to class 24 and 25 of the IVth Schedule to the TM rules and none others. Registration in all Class is just to extract undue monopoly and prevent legitimate trade and commerce. c. The appellants specifically deny that the respondents are dealing in variety of consumer durable products which are based on bogus claims not supported by a single iota of evidence. d. The appellant reiterate that TT Tegeu Tec and TT (logo) is an international brand and is in use in more than 25 countries and it been using the said mark in India since 2000. These are special circumstances which protect and entitle the appellant who seek its registration under section 12 of the Act. e. In view of the foregoing, the appellant state that the order of both the learned Registrar refusing the trade mark Tegeu Tec and TT (logo) should be set aside and the appellant's trade mark under No.832328 in Class 1 and 832329 in Class 7 should be ordered to proceed for registration. ;