V.RAVI,TECHNICAL MEMBER - (1.) THE appellant are aggrieved by the order of the Dy. Registrar of Trade Marks, New Delhi dated 3rd December, 1997 refusing application no 447061 in Class 9 in respect of the trade mark SHARP filed on 18.12.1985 and pray for the quashing of the same. The brief facts of the case is stated below: - a) The said application was advertised in the Trade Marks Journal and opposed by two parties. One opposition was filed by the present respondent herein under no Del -8439. The other opposition was filed by M/s Associated Electronics and Electrical (Bangalore) PVT. Ltd. under no Del.8306. b) The appellant contested both the oppositions. Opposition no. 8439 decided on 3rd December, 1997 was allowed which is the impugned order in these proceedings. The appellant had earlier filed an appeal before Hon'ble Delhi High Court challenging this ruling but did not seek stay of the impugned order and no order of interim nature was passed by the Hon'ble Court. After the Trade Marks Act, 1999 came into force in 2003 the matter was transferred to the Board. c) The applicant submit that it is the established practice of the trade marks registry that whenever there are two oppositions to one application published in the TM Journal, both the oppositions are normally taken up together. However, in case, one opposition is decided earlier, the fate of the other depends on the outcome of the earlier opposition. If the application is abandoned, withdrawn or refused in one opposition then in the other pending opposition a formal order to that effect is passed. If, however, the application is allowed and the opposition dismissed or withdrawn the second opposition is taken up for disposal on merits. d) The applicant state that the impugned application was refused on 3rd December, 1997 and since they did not pray for the stay of the order and therefore nothing subsisted before the Registrar for consideration. e) In the aforesaid circumstances, the order of the Deputy Registrar dated 30th January, 2004 in the second opposition is redundant, meaningless and void, ab -initio. By his order dated 30th January, 2004, the Deputy Registrar had abandoned the application for want of prosecution six years after the above mentioned earlier order. The appellant therefore submit that the order of the Deputy Registrar dated 30th January, 2004 is wholly without any jurisdiction and is a nullity in law and cannot preclude the Board to proceed with the present appeal and therefore pray that the impugned application be heard and decided on merit.
(2.) ON merit, the case of the appellant is summarized below: a. The appellant are engaged in the business of manufacturing and marketing TV Booster, antenna for TV, two in one and converters for the last many years. In 1974, they honestly and bonafidely adopted a dictionary word SHARP in order to distinguish it from goods of others. The logo /script (writing style) of the trade mark SHARP was specially prepared by an artist and the writing style is original as also unique and exclusively associated with the appellant. In view of the particular manner of use of the impugned trade mark it is exclusively associated with appellant's goods. The appellant have incurred and invested large sum of money, skill, labour, time and energy to popularize their trade mark SHARP which has now acquired factual distinctiveness. To acquire statutory rights they filed an application under no.447061 in Class 9 on 18th December, 1985 which is the impugned mark. b. The registrar ordered the publication of the impugned mark after scrutiny of evidence of use and it was published in Journal No.1067 of TM Journal dated 16.11.1993. The respondent herein filed a notice of opposition. After the completion of evidence by both parties the matter was heard by the Deputy Registrar of Trade Marks on 10th November, 1997 and by his order dated 3rd December, 1997 he allowed the opposition of the respondent herein and refused the registration of the trade mark SHARP of the appellant. Being aggrieved by the said order, the appellant have preferred the present appeal on the following brief grounds: - i) the impugned order is not sustainable either in law or on facts of the case. The Deputy Registrar has failed to mention the arguments advanced by the counsel at the time of hearing. Contrary to the provision of rule 51 of the Trade and Merchandise Rule, 1958 the respondent/opponent did not furnish complete details of registration of his mark for the goods in respect of which it was registered. The respondent had relied on the registered trade mark 358541 in Class 9 but failed to mention the goods for which it was registered. Instead the respondent/opponent chose to state that it was for "Various goods included in Class 9". Even at the evidence stage before the Registrar the respondent/ opponent did not spell out the goods for which the mark was registered. Strangely, the Registrar ignored this major lacuna and in his speaking order stated that the mark is registered for goods "MENTIONED" in the notice of opposition. Thus, the order of the Deputy Registrar is completely reckless, hasty, in contravention of the mandatory provision of law and contrary to the pleadings of the parties and their evidence. The Deputy Registrar had grievously erred in law and failed to appreciate the motive of the respondent. Further, the order of the Deputy Registrar did not give a finding on whether the competing goods are the same or for goods of the same description. It is well settled that totally different goods may be categorized in the same class under the International Classification of Goods and Services. ii) The appellant further submit that the Deputy Registrar failed to take into account that on the date of application, the respondent/opponent had failed to prove any use of the trade mark SHARP. The impugned order is based on assumptions and presumptions. The Deputy Registrar had assumed that the adoption of the impugned mark by the appellant was dishonest which is a perverse finding. The impugned order did not consider the writing style of the trade mark SHARP is totally different and distinct from that of the respondent. In fact, the respondent had never alleged nor claimed that the appellant have used the impugned mark in the same manner and writing style as the opponent/respondent. Therefore the findings of the Deputy Registrar are completely contrary to the record. iii) Further, the findings of the Deputy Registrar that the appellant did not produce the original bills is false and untrue. The appellant had produced the original document at the time of hearing and the same was scrutinized and returned to the appellant. In fact, the Deputy Registrar adopted different yardsticks to support his conclusions. While alleging that the appellant did not produce the original document, the impugned order is silent about production of the original by the respondent/opponent. iv) The Deputy Registrar further erred in law while commenting that bills of the appellant are signed by the same person (which is normally the case in trade practice). It does not mean they are not trustworthy. On the contrary he failed to note that the documents filed by the respondent's were not even signed which raises doubts on the fairness of the findings of the Deputy Registrar. v) The finding that the respondent/opponent are the prior adopter and user of the trade mark SHARP in other countries since 1912 onwards is absolutely beyond record. It is obvious that the Deputy Registrar is swayed by the averments of the respondent/opponent as it is a big corporation and he did not care to consider the pleadings or appreciate the contentions of the appellant in his speaking order. The appellants state that there is no monopoly in ordinary dictionary word like SHARP and he had cited Privy Council decisions on the point which were not discussed in his speaking order. vi) In view of the foregoing, the order of the Deputy Registrar of the Trade Mark dated 3.12.1997 in respect of opposition no Del 8439 to application 447061 in Class 9 may be set aside/quashed and the impugned mark SHARP be directed to be registered.
(3.) THE case of the answering respondent is summarized below: - a) The respondent company was founded way back in 1912. One Mr. Tokuji Hayakawa, invented a mechanical pencil named EVER -SHARP pencil. The trade mark SHARP is derived from this. In 1929, the respondent began to make and sell radio receiving set using the trade mark SHARP. They have also been carrying on the business of manufacture and sale of household and cosmetic equipments in particular radio tape recorder, television, VCR, Video Cameras, amplifier, telephone, facsimile machine, calculator, plain paper copier and electronic component such as integrated circuit and liquid Crystal Display (LCD ) units under the trade mark SHARP. The respondent is a leading International Corporation and is well known all over the world including India. The word SHARP has been and continues to be the essential part of its corporate name as also its business and trading style and is its most valuable House Mark. The said mark has been registered in many countries including India. The trade mark SHARP has been used in respect of the aforesaid goods throughout the world including India through its subsidiary. The respondents have 66 manufacturing units in 32 countries including India. They have entered into the financial and technical collaboration within India with KALYANI SHARP India Ltd holding 51% of the issued, subscribed and paid -up equity share capital. The sales turn over of the respondent's products under the trade mark SHARP is US $ 17 Billion per annum. The respondents has service centers in over 18 countries and their trade marks is widely advertised even in India and as such the SHARP has become a very famous trade mark. ii. The respondents are the proprietors of the trade mark SHARP under no. 358541 in Class 9 in respect of 'Scientific, nautical, surveying electrical apparatus and instruments (excluding radio receiving sets, radio amplifies and inter communication apparatus) photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision) life saving and teaching apparatus and instruments, coin or counter -freed apparatus, talking machines, cash registers, calculating machines, fire extinguishing apparatus". The said registration is still valid and subsisting. The respondents are also the registered proprietor of the trade mark SHARP under no.206181 in Class 9; 363251; 325653; 325654 and 383795 all falling in Class 9. They are also the registered proprietor of the said mark SHARP under 423530 in Class 14. iii. All the above registration was originally in the name of Associated Electronic and Electrical Industries (Bangalore) Pvt. Ltd., (AEEI) which was later assigned in favour of the respondent and the assignment was duly recorded by the Registrar of Trade Marks as subsequent proprietors. iv. The Indian subsidiary of the applicant M/s KALYANI SHARP INDIA LIMITED has obtained Government approval to manufacture TV, VCR and VCP , TV receivers , audio products etc. The annual turnover of KALYANI SHARP bearing the trade mark SHARP in 1995 -96 was approximately Rs. 127 crores. v. The appellant claim the use of the identical trade mark SHARP in respect of TV booster, antenna, two -in -one and convertors but their adoption is dishonest and void ab -initio. Both the competing goods are similar and sold over the same counter to the same class of purchasers and there is bound to be confusion. The Deputy Registrar has given a detailed order of refusal with reasons and case law to support his findings. He was correct in refusing the registration of the impugned mark under No. 447061. The appellants have made unwanted allegations against the respondent. vi. The respondent also denies the statements, allegations and submissions made in the grounds of appeal. The Deputy Registrar's order is in accordance with the law and facts of the case. Section 12(1) of the Trade and Merchandise Mark Acts, 1958 prohibits the registration of an identical mark which is already registered in respect of the similar description of the goods. The respondent's mark SHARP is already registered in India in respect of a wide range of goods falling in Class 9. Therefore the Deputy Registrar is correct in refusing application No 447061 in class 9. In fact the respondent had annexed the affidavit of Mr. Masuru Umeda dated 10TH March, 1997 as evidence in reply before the Registrar and relied on it in respect of other registered trade marks of the respondent. In fact, the trade mark SHARP has been registered under No 363251 in the name of the respondent in respect of television sets, parts and fittings thereof, TV antenna, television booster and parts and fitting thereof. Similarly, two -in one in respect of which the appellants are seeking registration is also included under registration No. 373875 in Class 9. The appellant's goods moreover have to be used in conjunction with television sets. Customers and traders are well acquainted with the respondent's TV sets bearing the trade mark SHARP upon seeing the appellants booster, TV antenna and convertors are bound to be confused and wonder whether the appellant's goods emanates from that of respondent. The use of the trade mark SHARP by the appellant amounts to an infringement and is an offence under Section 78, 79 of Trade and Merchandise Marks Act, 1958. The appellant's have made false claim of use and have failed to substantiate it with sufficient documentary evidence. They have also failed to explain why they adopted the trade mark SHARP in the field of electrical and electronics goods. The respondent submit that the impugned mark has been copied with dishonest intention and ulterior motives. The respondent therefore prays that the Board may be pleased to confirm the order of the Deputy Registrar allowing Del 8439 and refusing application No.447061 in Class 9. The respondent had also filed a Letters Patent Appeal (LPA 872/2010) challenging the order of the Single Judge of Hon'ble Delhi High Court dated 6th October, 2010 dismissing the Writ Petition No.184 of 2008 filed by them. The issue relates to the registration of trade mark SHARP in respect of "TV Boosters, two -in -one, TV antenna and convertors." The appellant and the respondent had filed written submission as directed by the Board and the Deputy Registrar of Trade Marks also submitted a written note on the issue of abandonment of the appellant's application. The Board passed an order dated 16th August, 2007 in TA/2007/138/2003/TM/Del stating that the order passed by the Deputy Registrar in DEL 8306 is not directly connected with or any issues thereto are involved in the pending appeal and they do not have any jurisdiction to pass any order in relation thereto. On 15th October, 2007 the respondent filed a MP.No.121 of 2007 in TA/138/2003/TM/DEL seeking directions of the Board to dispose of the appeal in view of the abandonment of the application. The Board by its order dated 12th December, 2007 refused to hear the MP in view of its order dated 16th August, 2007 aforementioned. The Board however, made it clear that parties are free to raise all contention in the main hearing. Writ Petition 184/2008 relates to this. Notice was issued to appellant and His Lordship stayed the proceedings before the Board. However, by an order dated 6th October, 2010 the Writ Petition was dismissed. On further appeal the Division Bench found no merit in it and directed that both the appellant and the respondent are at liberty to canvass the respective contentions before the Board in the main appeal.;