Dr. Raghbir Singh, Vice Chairman - (1.) APPEAL filed as TMA/7/03 in the High Court of Judicature at Madras has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TA/48/2003/TM/CH.
(2.) Appellant filed application on 10.3.86 being application No. 450837 for registration of the trade mark consisting of the expressions 'CASTALOY 650' in respect of 'all kinds of welding electrodes, gas welding rods, fluxes, welding powder, equipments and accessories included in class 9. The appellant claims to have been using the trade mark from 13.09.1984 on the date of application. The first respondent filed opposition on 7.10.1991 that it is the proprietor of trade mark consisting of the word 'CASTOLIN' as well as other trade marks containing the words EUTALLOY, EUTECTIC CASTOLIN as an essential feature thereof in relation to a variety of goods and it is the registered proprietor of these trade marks in classes 1, 6, 7 and 9. Its trade mark 'CASTOLIN and EUTALLOY' are widely used all over the world including India and by virtue of long and continuous use in many countries of the world including India the trade mark 'CASTOLIN, EUTALLOY, EUTECTIC CASTOLIN' have become distinctive and exclusively identified with its products. It has developed great reputation and goodwill by virtue of extensive use, wide publicity and sales promotion work done by it. In view of this the proposed use of the applicant's mark will result in deception and confusion and thus the registration of the impugned mark would be contrary to the provisions of Section 11(a) of the Act. The impugned mark is visually, phonetically and deceptively similar to the opponent's trade mark 'CASTOLIN and EUTALLOY' and the goods for which the said trade mark is sought to be used are also the goods of same description for which the opponent holds the registered marks. Impugned mark is purely a descriptive one and is not adapted to distinguish or capable of distinguishing the goods of the applicant and thus it does not qualify for registration under Section 9 of the Act. The impugned mark also does not qualify the requirements of Section 18(1) of the Act. The appellant filed counter statement denying the allegations of the opponent and disputing the alleged similarities of the appellant's and opponent's mark. The appellant and the opponent filed their evidence before the Registrar. The Registrar held hearing on 6.3.2000 and arrived at the following conclusions. He found that the issues in those proceedings are mainly relatable to the provisions of Section 9, 11(a), 12(1) and 18(1) of the Trade and Merchandise Marks Act, 1958. The opponent submitted that the mark 'CASTALLOY' is too close to the two descriptive words 'CAST' and 'ALLOY' words with little or trifling variation to be regarded as a trade mark. The Registrar did not sustain the opponent's objection under Section 9 of the Act. The Registrar held that the impugned mark 'CASTALOY 650' is deceptively similar to the opponent's trade mark 'CASTOLIN' both visually and phonetically and thus the Registrar considered Section 12(1) as a clear bar to the registration of the appellant's mark. The Registrar also sustained the opponent's objections under Section 11 (a) of the Act. In view of the insufficient evidence adduced to support the opponent's objections under Section 18(1), the Registrar held it against the opponent. In conclusion, he decided that the impugned mark shall be refused registration. 5. The appellant in his appeal has claimed that 'CASTALOY 650' is not a descriptive word and the same is not deceptively similar to the first respondent's registered trade mark 'CASTOLIN'. The appellant claims to be entitled to the benefit of honest concurrent use. It has submitted that there are many other trade marks registered or are in the process of being registered in favour of the appellant having the suffix 'ALOY'. The appellant has submitted that the Registrar has erred by splitting the letters of the mark 'CASTALOY' and viewing the splitted portions separately rather than seeing the word as a whole in totality. The appellant has claimed that to view the two competing marks 'CASTOLIN' and 'CASTALOY 650' as deceptively similar is based upon wrong assumption. 6. The appeal was taken up for consideration on 11.6.04. Learned counsel Shri V. Gopalakrishna who appeared for the appellant argued that the Deputy Registrar having cleared the impugned trade mark from the angle of sections 9 and 18 of the Act had little scope left for him not to allow the registration under Section 12(1) of the Act. The scope of being identical with or deceptively similar to another trade mark contained in Section 12(1) is to be construed in the light of definition of "deceptively similar" given in Section 2(1)(d) of the Act. Similarity has to be of such a level that it bears a close resemblance to the other mark. 'CASTALOY 650' vis-a-vis 'CASTOLIN' has to be viewed from the standpoint of their place in the market and in that context there is no scope for causing confusion or deceptive similarity. The learned counsel contended that there are certain suffixes which are universally followed and the respondent cannot claim monopoly over it. 'ALLOY' is one of them. He claimed that in any case there cannot be any confusion whatsoever in differentiating words 'CASTALOY' either from 'EUTALLOY' or 'CASTOLIN' - visually, phonetically and even structurally, particularly in a specialised and competitive market where goods are identified by their sources. The appellant submitted the analogy of many trade marks registered in class 9 in its name like UNILOY 608, FIBRALOY 99, MACROLOY 812, UNILOY 624, IFFUSALOY 910, ABRALOY 300OD, etc., which contain a suffix 'ALOY'. The learned counsel submitted that the Deputy Registrar is not correct in concluding that 'CASTALOY' is purely descriptive word. If it be so the marks held by the respondent like 'EUTALLOY' and 'CASTOLIN' are also descriptive words. 7. Learned counsel for the respondent Ms. Gladys Daniel submitted that the impugned mark 'CASTALOY 650' is deceptively similar to 'CASTOLIN' registered in the name of respondent. The trade mark to qualify for registration has to undergo the scrutiny of Sections 9, 11, 12(1) and 18 of the Act independent of each other section. If the mark has been found not to be objectionable under Section 9, it does not lead to a conclusion that the same has not to muster the scrutiny under Section 12(1). Section 12(1) provides that no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods. First respondent holds registered trade marks 222144 and 297226 consisting of the word 'CASTOLIN' in class 9 'Electrodes for electric welding and electric arc welding apparatus and tools and apparatus for welding and soldering' respectively. The applicant's trade mark 'CASTALOY 650' is sought to be registered in respect of welding electrodes, gas welding rods, fluxes, welding powder, equipments and its accessories thereof. The goods covered under the first respondent's trade mark and the appellants' trade mark are the same. The only question which is to be examined is about the deceptive similarity of the impugned mark with the first respondent's mark 'CASTOLIN'. 8. Deputy Registrar has rightly dissected the composition of the word 'CASTALOY' having close proximity and nexus to the features and components of mark 'CASTOLIN' and 'EUTALOY' already on the register in the name of first respondent. There is similarity of prefix 'CAS' to the similar prefix used in 'CASTOLIN' and there is similarity of the suffix 'LOY', similar suffix having been used in 'EUTALOY' and the middle words 'TA' are confusingly similar to the middle word 'TO' used in 'CASTOLIN'. The goods and the description of goods in both the cases being the same, there is no scope to arrive at a different conclusion than what he has arrived at after the scrutiny under Section 12(1) of the Act. 9. Similarly in relation to Section 11(a) of the Act, the goods covered under the trade marks held by the first respondent and the impugned trade mark are the same. Further, the mark registered in the name of the first respondent has an established reputation in the market much prior to the applicant's adoption and use of its mark. 10. Supreme Court approvingly quoting the following from Karly's Law of Trade Marks and Trade Names (9th ed. Para 838) through J.G.K. Mitter in Parle Products (P) Ltd. v. I.P. & Co., PTC (Supp) (1) 346 ruled 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 delaying with one to accept the other if offered to him:- Karly: "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 the 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." 11. We do not have any doubt that use of the appellant's mark will cause confusion and deception amongst substantive number of persons. Accordingly, we do not find any need to change the conclusions arrived at by the Deputy Registrar in his order dated 10th June 2002. The appeal is dismissed with no order as to costs. ;