V.RAVI,TECHNICAL MEMBER - (1.) THIS appeal is preferred against the order and decision passed by the Deputy Registrar of Trade Marks, Kolkatta dated 05.03.2012 allowing application No.1214071 in Class 34 to proceed to registration and dismissing the opposition filed by the Appellant/Opponent herein under opposition No. KOL l97585.
(2.) THE facts giving rise to this appeal are concisely stated below: - A. The appellant is a partnership firm carrying on business of Chewing tobacco and other tobacco preparations including Khiani at Sanhoula, Bhagalpur District, Bihar for the last four decades. The respondent herein also hails from thesame place and from the same locality and are purportedly carrying on the business in the same product Khaini. B. Sometime in 1975 the appellants adopted trade mark MUNNA KHAINI and started using the same in relation to chewing tobacco. To acquire statutory right they applied for its registration in January, 1986 under No.448733 in Class 34 which was duly registered. Subsequently in the course of their business the appellant also adopted other composite trade marks with various artistic features, colour combination and get up with the name MUNNA KHAINI used as wrappers/poly pouches of small packing and also obtained copyright registration for the artistic work for the label MUNNA KHAINI under Registration Nos.A -60193/2001 and A -60559/2002. The appellant also are the registered proprietor of MUNNA KHAINI in Bengali and Hindi languages as per details given below: Trade Mark Trade Mark No Class Goods Status ASAL MUNNA KHAINI (In Bengali) 937342 As of 07.07.2000 34 Khaini (Chewing Tobacco Included in Class 34) Registered Renewed ASAL MUNNA KHAINI (In Hindi) 937344 As of 07.07.2000 34 Khaini (Chewing Tobacco Included in Class 34) Registered Renewed MUNNA (Per se) 937343 As of 07.07.2000 34 Khaini (Chewing Tobacco Included in Class 34) Registered Renewed C. To promote the trade mark Munna Khaini they have advertised it in newspapers; issued trade marks Caution Notices from time to time in leading newspapers from Bengal and Bihar. In the year 2000 the appellant came to know that the respondent was pushing khaini products into the market with an imitated trade mark MUNNA RAJA and immediately issued a cease and desist Notice on 28.11.2000. A reply was received to which a suitable counter reply was also sent to the respondent on 02.05.2001. It is inconceivable that how the respondent could have adopted the trade mark MUNNA RAJA KHAINI hailing from the same place and same locality in the light of uninterrupted sale of MUNNA KHAINI since the year 1975 -76 by the appellant. D. The mala fide of the respondent is straightaway evident by a mere look of the two labels reproduced below. "Image" In view of the glaring similarity between the two labels, it is inexplicable how the respondent hit upon the impugned mark as he hails from the samelocality and doing business in the same goods. Therefore ex facie the very adoption of the impugned mark is totally dishonest. Not only that, the respondents had blatantly copied all the salient features, artistic design, colour combination, placement of descriptive matters and even the lettering in the composite trade mark which are essential parts of the appellant's reputed mark MUNNA KHAINI . E. Being placed in a serious predicament, the appellant initiated legal proceedings and filed a civil suit being O.S.No.1 of 2001 in the Court of Additional District Judge, Bhagalpur. In the meanwhile, the respondent surreptitiously applied for registration of MUNNA RAJA KHINI under No.1214071 on 14th July, 2003 almost two years after filing of the suit. The respondents have purposely concocted the claim of user of the impugned trade mark as of 10th January, 1990. F. The impugned mark was advertised in the Trade Marks Journal and duly opposed by the appellant under opposition No.KOL -197585. On completion of evidence by both parties, the matter was set down for hearing before the Deputy Registrar of Trade Marks who initially refused an application for stay of the proceedings before him by the respondent which was carried in appeal to the Board which also refused to grant an order of interim stay prayed for vide M.P.85 of 2006 in OA/40/2006/TM/KOL. Thereafter the main appeal itself was taken up by the Board, which dismissed it with a direction to the Registrar to hear and decide the matter and dispose of it within a period of six months. Pursuant thereto by an order dated 6.3.2012, the Deputy Registrar Trade Marks, Kolkata dismissed opposition No. KOL -197585 and ordered application No.124071 in Class 34 to proceed to registration. Being aggrieved by this order, the appellant have preferred the instant appeal on the following specific grounds: - (i) The Deputy Registrar had completely misdirected himself by disregarding the absolute ground for refusal under Section 9 by blindly believing and trusting sham and fabricated documents furnished by the respondents' viz. hand written photocopies of handwritten invoices as evidence with fictitious claim of use of the impugned mark since 10th January, 1990. (ii) He further failed to appreciate Central Excise Registration Certificate does not establish the use of the impugned mark and failed to evaluate the factum of the case and evidence produced by the appellant/opponent by improperly brushing aside the use of the trade mark MUNNA KHAINI of the appellants since 1976 with a casual remark that the opponents evidence is only from 1990 -91. (iii) The Deputy Registrar arrived at an erroneous conclusion by his irrational comment "when we compare between the two marks then we find that the impugned mark as a whole is distinctive under Section 9 and it is not a bar to its registration.' He also disregarded the objection raised on relative ground under Section 11 without any rhyme or reason. Further, he unilaterally and in a biased manner formed an opinion that the word "MUNNA" is a common dictionary word and nobody can claim proprietary right over such name. This conclusion amounts to a grave error of judgment as it is against the basic principles of trade marks Law. To compound his folly he took into consideration extraneous matters that the word MUNNA is already registered in class 34 by other proprietors without any material documents to support such conclusion in the opposition proceedings. Even otherwise, by such faulty reasoning the Deputy Registrar went beyond his authority in seeking to dilute the proprietorship right of the appellant/opponent in the trade mark "MUNNA KHAINI". All this has resulted in palpable miscarriage of justice and impugned order is totally tilted in favour of the respondent disregarding the submissions and authority made by the appellant in the opposition proceedings and without assigning any reason therefor. To add to the atrocious and unsustainable inferences, the Deputy Registrar further held that the respondent are the proprietors of the impugned mark under Section 18 (l) ignoring the fact that it is practically a replica of the appellants earlier trade mark MUNNA KHAINI. (iv) The Deputy Registrar further gratuitously and suo motu invoked the provisions of Section 12 to confer concurrent protection to the respondent despite the fact respondent himself did not raise such a plea either in the pleadings or the evidence. Most amazingly, he commented that the applicants are using the impugned mark for the last 22 years ignoring the basic trade marks principle that the rights of the parties in opposition proceedings are to be determined as on the date of application and he cannot look into and travel beyond such period. The conclusion of the Deputy Registrar is unreasonable and illogical and the language used in his order is totally arbitrary making non -issues as issues and ignoring material issues in the opposition proceedings. The order of the Deputy Registrar is self -contradictory not supported by evidence on record and based on irrelevant considerations which ipso facto areinconsistent with the facts of the case and the records. (v) The respondents have surreptitiously filed the impugned application on 14th July, 2003 and obtained registration to improve his prospects in the suit pending in the Bhagalpur, District Court. (vi) The Deputy Registrar further turned a blind eye to the impugned trade mark MUNNA RAJA KHAINI bearing extraordinary similarity to the overall get up, colour combination, style of writing, placement of word and even in the photograph of the label, which is proof of complete mala fide on the part of the respondents and is a flagrant imitation of the appellants prior adopted trade mark MUNNA KHAINI. The absurdity of his rulings can be judged by the simple fact that no artist can prepare such a label of the respondent without keeping the appellants' trade mark label by his side. He ignored the fact that the impugned mark is a blatant colourable imitation and disregarded the settled norms and principles of trade mark laws that when the matter is in dubio and hit by Section 11 (1) such registration SHALL BE REFUSED by the Registrar in exercise of his discretion under Section 18 (4) of the Act. The shocking ruling that the dictionary words cannot be owned as a trade mark by any one exhibits complete lack of understanding of basic principles of trade marks law. The impugned order has occasioned in complete failure of justice and resulted in grave and serious prejudice to the appellant. The Deputy Registrar has ignored the cardinal rules laid down by superior courts on the provisions of the trade marks law and the appellants pray that the impugned order be set aside/quashed and application No. 1214071 in Class 34 be refused.
(3.) THE case of the respondents is summarized as follows: (a) The respondents adopted the impugned trade mark MUNNA RAJA from his nick name Munna. The impugned mark consists of the word MUNNA RAJA with the bust of a photo of a man and the device of fish. The respondents state that the word Munna is a common Hindi word meaning a small boy which cannot be monopolized by any one particular trader. It consists of a composite label and is inherently distinctive and is not identical or deceptively similar to the appellant's trade mark when considered as a whole. The appellants cannot claim right over the colour on their label because colour is not protected. The impugned mark MUNNA is a term of endearment and in Hindi it denotes "dear one", "beloved", "darling" etc., Further computer generated Search Report indicates that the trade mark MUNNA has already been registered in the name of several other proprietors and therefore the appellant's claim of first adopter and user of Munna trade mark is false. There is, therefore, no dishonesty on the part of the respondents. When the competing mark is compared as a whole it is totally different. The appellants has also not adduced any documentary evidence that they are selling goods under the trade mark Munna since 1975 whereas they have just enclosed one copy of gate -pass of removable excisable goods from the Customs and Central Excise, Bhagalpur dated 17th December, 1991 but there is no proof of use since 1975. On the other hand, the respondents have adduced cogent documentary evidence to support their case of the use of the trade mark MUNNA RAJA KHAINI since 1991. (b) There is no substance in the allegations of the appellant that the impugned mark Munna has acquired secondary meaning and is associated with the goods of the appellant exclusively. In fact, Munna is common to the trade and colour schemes in the label cannot be protected. Therefore, the respondents are honest adopter and user of the mark Munna Raja Khaini since 1991. (c) The respondent also submits that the fact the appellant have applied for registration of the trade mark MUNNA KHAINI ten years after its alleged first use is unnatural. Further, the appellants chewing tobacco under the trade mark Munna khaini have been sold very sporadically and they cannot be considered proprietor on the basis of meager turn over. (d) The respondent denied that the appellant is the originator or the first user of the composite label containing the word MUNNA KHAINI as alleged or at all. In fact, the copyright registration was obtained in 2001 and their publication date mentioned as "1976" is of doubtful veracity as it has been secured so belatedly. (e) The respondent denies the allegations of concocted claim of user and appellants have failed to prove its alleged user since 1975 -76. The Deputy Registrar of Trade Marks has passed the order on the materials available on record, evidences, pleadings and authorities cited. The respondent also denies allegations of fictitious claim of use and states that Central Excise Registration certificate is an authentic document showing adoption and use of the name MUNNA RAJA KHAINI and the label thereof. The respondent also states that the findings of the Registrar under Sections 9 and 11 were in order and the impugned mark is not a statutory bar for its registration. The rest of the counter statement is a blunt denial of all the allegations made in the appeal petition. The respondent prays that the instant appeal should be dismissed and costs awarded to them. The matter was listed for hearing on 10th June, 2013. We have heard the arguments of both the learned counsel, gone through the materials on record and the pleadings.;