BRIDGESTONE COMPANY PRIVATE LIMITED Vs. BRIDGESTONE TYRE COMPANY LTD

JUDGEMENT

(1.) This is an appeal under section 109 of the Trade and Merchandise Marks Act, 1958, against the order dated 9th July, 1963, passed by Assistant Registrar of Trade Marks.

(2.) On 27th July, 1960 Bridgestone Company (Private) Ltd. New Delhi (hereinafter referred to as the appellant-company) made an application No. 197143 B for registration of a trade mark in para "A" of the Register in clause (12) in respect of a specification of goods which when subsequently amended read as 'Bicycles and parts thereof included in clause (12), but not including rubber tyres and tubes'. The mark consisted of the word 'bridgestone'. The appellant-company claimed to have used the mark since 1st July 1960. On the examination of the application in the Trade Mark Registry, an objection was taken that the mark was not registerable in para 'A' of the Register. Subsequently at the request of the appellant-company the application was converted to one for registration in part 'B' of the Register. It was thereafter advertised as such in the Trade Marks Journal dated 1st May 1961. On 24th July 1961 M/s. Bridgestone Tyre Company Ltd. of Tokyo, Japan filed a notice of opposition. The Assistant Registrar, Trade Marks after observing that the only issue requiring decision in the case was whether section 11 (a) was not a bar to the registration of the mark of the appellant-company, upheld the objection and refused the application of the appellant-company. The principle question for consideration is whether the appellant-company was entitled to registration of the mark in view of section 11 (a) of the Trade and Merchandise Mark Act 1958. The sole criteria requiring determination for decision on this question is the likelihood of deception or confusion. The test generally adopted is whether, having regard to the use made of the objector's mark and the inference to be drawn from its use, confusion is likely. Confusion may arise (1) as to the marks themselves, visual or phonetic or (2) as to the origin of the goods. Confusion as to the trade source may arise where the two marks are identical even though the goods on which they are used are not the same but only closely related. For instance, a use of similar trade mark with respect to spirits on the one hand and wine on the other may lead to a confusion because the public might be induced to believe that the commodities have a common origin. A similar situation may arise where the goods are identical and the marks have points of similarity. In the present case the opposition by the respondent was based on the ground that they had acquired reputation with respect to mark 'Bridgestone' on rubber tyres and tubes and if the appellant-company's mark is registered with respect to 'bicycle and parts thereof not including rubber tyres and tubes', there is every likelihood of ordinary persons entertaining reasonable doubt that the goods of the appellant-company owe their origin to the respondent-company. It is true that it is not necessary, in order to find that a mark offends against section 11, to prove that there is an actual probability of deception lending to a passing off. It is sufficient if the result of user of the mark be that a number of persons are caused to wonder whether it might not be the case that the two products come from the same source.

(3.) It is, therefore, necessary to consider whether the respondent- company has established their reputation with respect to their goods. If it be held to have established a reputation with respect to heavy duty tyres and tubes it may not be sufficient, in my view, to carry them through. The Court has to be satisfied not merely that there is a possibility of confusion but that there is a real tangible danger of confusion by registering a mark sought to be registered. Establishing trade reputation with respect to heavy duty tyres and tubes would not, in my opinion, be sufficient because bicycle parts other than tyres and tubes can neither be said to have trade link with, nor termed as goods of the same description as heavy vehicle tyres and tubes. In re: Ladislas Jallinek's application, the applicant made an application to register the device of a 'Panda' together with the word 'Panda' in clause (3) for shoe polish. The application was opposed by a proprietor of a similar 'Panda' mark registered in respect of shoes. The objectors contended that having regard to their own registration it would be in contravention of sections Hand 12 (1) if the applicant's mark was allowed to be registered. They alleged that shoe polish was within the same description of goods as 'boots and shoes', that a number of shoe manufacturers marketed shoes and shoe polish under the same mark and that if the applicant was allowed to register his mark, his shoe polish would be believed by the public to be the manufacture or merchandise of the objectors. Romer J: held that the shoes and shoe polish were not the goods of the same description and would not offend section 12 (1) and there was no likelihood of confusion within the meaning of section 11 because the objectors had failed to establish reputation amongst the public for shoes under their mark. In Corn Products Refining Company v. Shangrila Food. Products Limited, the respondent a manufacturer of biscuits made an application for registration of the mark 'Gluvita' in respect of the goods specified in clause (30). The appellant a corporation registered in the United States had registered the mark 'Glucovita' under the Act in clause (3) in respect of 'Dextrose (D. Glucose power mixed with vitamins), a substance used as food or as an ingredient in food'. The appellant, therefore, opposed the respondent's application. The learned Judges of the appellate Bench of the Bombay High Court took the view that there was no evidence that the appellant Company's mark had acquired any reputation among the public. On the other hund, the evidence showed that it had acquired reputation only among the trades' people, who were discerning and not likely to be confused. In the result, the learned Judges decided that the mark of the respondent company was not likely to confuse or deceive anyone. The appellant company went up in appeal to the Supreme Court. Their Lordships of the Supreme Court held that the reputation should attach to the trade mark and it should appear that the public associated that trade mark with certain goods. The criteria was the reputation of the trade mark and not of the maker of the goods bearing that trade mark. Dealing with the contention that the goods were not of the same description, Sarkar J. said- "But there is evidence that glucose is used in the manufacture of biscuits. That would establish a trade connection between the two commodities, namely, glucose manufactured by the appellant and the biscuits produced by the respondent. An average purchaser would, therefore, be likely to think that the respondent's 'Gluvita biscutis' were made with the appellant's 'Glucovita' glucose. This was the kind of trade connection between different goods which in the 'Black Magic case (In re: an Application by Edward Hack) was taken into consideration in arriving at the conclusion that there was likelihood of confusion of deception........."