1. This is an appeal preferred under sub-sec. (2) of s. 109 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as 'the Act') to challenge the legality of the order Dt. Aug. 30, 1976 passed by the Assistant Registrar of Trade Mark granting the application of the respondents for registration of a trade mark consisting of a rectangular label with the word 'SONY' appearing in the upper portion of the rectangle, letter 'M' in small circle in the middle portion of the rectangle and a device of a flower basket just above the rectangle, in respect of 'Nail Polish' in Class 3.
2. The respondents filed Application No. 257701-B under sub-sec, (1) of S. 18 of the Act for registration of the mark on June 27, 1969, in part 'A' of the Registrar. The petitioners filed their objection to the registration of the mark on the ground that the word 'SONY' constituting the leading feature of the mark submitted for registration is phonetically equivalent to a common surname 'SONI' and is not adapted to distinguish and is not registrable in Part 'A' of the Register, except on evidence of distinctiveness as required under sub-sec (2) of S. 9 of the Act. The Assistant Registrar heard the parties on this objection and thereafter the respondents converted the application for registration into Part 'B' of the Register and the goods were amended to read as 'Nail Polish for sale in the city of Greater Bombay'. The amended application was advertised before acceptance in the Trade Marks Journal No. 571 Dt. Mar. 16, 1973. On July 10, 1973, the petitioners, a Joint Stock Company of Japan, filed notice of opposition on various grounds. It was claimed that the petitioners carry on a large manufacture business in the East and produce electronic goods of various kinds. The petitioners claimed that the word 'SONY' was coined by the petitioners from the latin word 'SONUS' meaning sound and they were the first to use such word as a trade mark in relation to electronic goods and the mark has achieved world-wide popularity, and came to denote exclusively the property of the petitioners. The trade mark 'SONY' is the subject matter of 100 registrations in Japan covering all classes of goods and has also been registered in more than 160 countries all over the world in respect of electronic goods. The trade mark 'SONY' was first introduced in India in the year 1955 and it has been continuously used eve since that time in respect of radio apparatus with transistors and parts thereof. The mark was registered in class 9 initially in respect of 'radio apparatus with transistors, and parts thereof and later in respect of 'speakers, earphones, batteries etc, all being included in class 9'. The petitioners claim that the mark 'SONY' is extensively advertised throughout the world by means of various media of publicity and has come to be associated in the minds of countless persons all over the world, so much so, that any product bearing the trade name 'SONY' will invariably import to such products and the petitioners. The gravemen of the opposition was that the trade mark of the respondents, if registered, is likely to deceive or cause confusion in the minds of the customers.
3. The petitioners in support of the opposition filed affidavit Dt. July 29, 1974 of Mr. Mitsuo Takakashi, while on behalf of the respondents, affidavit Dt. June 9, 1975 of Shamroa Ramchandra Maskar, a partner of the respondent firm and an affidavit Dt. July 2, 1975 of Gopaldas Jivatram Lalwani were filed. The Assistant Registrar of Trade Marks, after giving hearing to both the parties, passed the impugned order overruling opposition and directing that the mark 'SONY' be registered in respect of specification of the goods 'Nail Polish for sale in the city of Greater Bombay' in Class 3 in Part 'B' of the Register. The Assistant Registrar came to the conclusion that the grievance of the petitioners that the marks is likely to cause deception or confusion in the minds of the customers is without any merit. The order of the Assistant Registrar is under challenge.
4. Shri Gandhi, learned counsel appearing on behalf of the petitioners, very strenuously urged that the conclusion recorded by the Assistant Registrar is erroneous and contrary to the evidence on record. The learned counsel urged that the word 'SONY' has acquired world-wide reputation and the electronic goods manufactured and marketed under the mark 'SONY' are easily available in India and therefore registration of trade mark 'SONY' for Nail Polish is likely to cause deception or confusion in the mind of the customers. The learned counsel placed strong reliance upon the decision of the Division Bench of this Court : AIR1969Bom24 Sunder Parmanand Lalwani v. Caltex (India) Ltd. in support of his submission, that by reason of extensive reputation enjoyed by the petitioners in respect of their mark, any person coming across the mark 'SONY' in respect of cosmetics including nail-polish would be deceived or confused into believing that the same emanated from the petitioners or in any event would be put in a state of wonderment as to the trade origin of the goods. It was urged that decision in Caltex case rules out the claim of respondent for registration of the mark. Shri Tulzapurkar, learned counsel for the respondents, on the other hand urged that the Assistance Registrar had marshalled the evidence and applying correct principles had recorded conclusion which could not be branded as perverse and therefore it is not necessary to disturb the finding of the Assistant Registrar while exercising powers under sub-sec (2) of S. 109 of the Act. Shri Tulzapurkar also submitted that the sole objection to the registration of the mark of the respondents, which survives for consideration in appeal, is one under S. 11(a) of the Act and if several relevant factors are taken into consideration, then it is obvious that the objection cannot be sustained. The learned counsel further urged that reliance on the decision in Caltex case was inappropriate because the observations made therein are based on evidence lad in that case and cannot have universal application. In view of these rival submissions, the short question which falls for determination is, whether the Assistant Registrar was in error in recording a finding that the registration of the mark of the respondents is not likely to deceive or cause confusion in the minds of the customers.
5. Section 11(a) of the Act provides that a mark, the use of which would be likely to deceive or cause confusion, shall not be registered as a trade mark. The contention urged on behalf of the petitioners is that the mark 'SONY' has acquired world-wide reputation and any product bearing the identical mark is likely to cause deception or confusion in the mind of the customers that the product has association with the manufacture of electronic goods of the Japanese Company. Now, it cannot be gainsaid that the word 'SONY' has acquired reputation in respect of the electronic goods, but the question whether the use of the mark in respect of Nail Polish is likely to deceive or cause confusion amongst the customers is required to be determined by taking into consideration several circumstances. Section 11(a) requires the Court to ascertain not only whether the mark has actually deceived or caused confusion but also whether it is likely to deceive or cause confusion. The question as to whether any deception or confusion. The question as to whether any deception or confusion would be caused has to be determined with reference to the facts of each case, and it is necessary to take into consideration the totality of the facts and the surrounding circumstances. The factors creating confusion would be the nature of the mark itself, the class of customers, the extend of the reputation, the trade channel, the existence of any connection in the course of trade, but the list is not exhaustive and there will be several other circumstances which are required to be taken into consideration in combination before recording a conclusion as to whether there is a likelihood of deception or confusion by use of the mark. Shri Tulzapurkar urged that the nature of the goods to be sold under the trade channel through which the goods would be sold, while examining the order of the Assistant Registrar in the present case. It is true that ordinarily the simultaneous use of identical or similar marks in relation to goods which are different will not lead to any deception or confusion, but circumstances may exist where the mark is so well-known in the market that the use of the same in relation to different goods, may indicate to the public, that they are coming from the same trade source. The trade channel through which goods will be sold is certainly a vital factor, but no single factor is conclusive on the point. On this principle it is now necessary to examine various facets of the case in hand.
6. It is not in dispute that the goods sold by the petitioners under the mark 'SONY' are electronic goods like Television, Tape Recorders and Transistors, while the goods which the respondents desire to sell under the mark is nail polish, an item which is used by the women and artists. The electronic goods and nail polish are items poles apart, looking to the nature and purpose of their user. The nail polish is an item of cosmetics and the price being within the reach of common man, is sold on a large scale. The item is sold all over the town, in shops small and large. On the other hand, electronic goods manufactured by the petitioners are not easily available due to import restrictions. It is claimed that two-band transistors under the mark, 'SONY' are easily available in Bombay and even assuming it to be so, it cannot be overlooked that the trade channel for sale of the two items are entirely different. The electronic goods and nail polish are not sold under one roof and there will not be any confusion in the mind of customer that both the items come from the petitioners house in Japan. There is also no common field of activity in course of trade of the two items, and the classes of customers who would purchase the two items are distinct and different. The petitioners had led no evidence whatsoever before the Assistant Registrar in the shape of affidavit of any dealer or consumer to indicate that the use of the mark by the respondents is likely to cause deception or confusion. Again the respondents, are not using the mark 'SONY' pure and simple, but the word 'SONY' is written in a rectangular label appearing in the upper portion of the rectangle, letter 'M' appears in the small circle in the middle portion of the rectangle and a device of a flower basket just above the rectangle. In my judgment, in these circumstances, the finding recorded by the Assistant Registrar that registration of mark sought by the respondents is not likely to cause confusion or deception in the minds of the customers is correct and deserves to be accepted.
7. It is now necessary to examine the decision of the Division Bench in 'Caltex case' : AIR1969Bom24 as strong reliance was placed on the decision to urge that the facts of that case and the case in hand are identical. In the 'case' an application for registration of mark in respect of class 14 and confined to 'Horological and other chronometric instruments and parts thereof, was filed by one Lalwani before the Registrar. Caltex India) Ltd. Opposed the application inter alia on the ground that there was danger of confusion because the opponents are using the mark on a very large scale since year 1937 and had spent a large sum on advertisement and the mark Caltex was used all over the world for marketing petroleum, kerosene and lubricants like greases and oils and has acquired reputation. The opponents claimed that registration of the same mark by applicant for his goods, mainly watches is likely to cause deception or confusion. The Assistant Registrar held that competing marks were identical but competing goods were entirely different in character, there was no connection in the course of trade between the competing goods, the trade channels were entirely different and therefore despite the reputation of the opponents mark, the use of the identical mark by applicant is not likely to cause deception or confusion. The Assistant Registrar also turned down the contention that the application had been actuated by dishonest intention and motive in selecting the mark. In an appeal preferred by the opponents, the learned single Judge upheld the finding that there is no likelihood of deception or confusion but came to conclusion that applicant dishonestly selected the mark and thereupon allowed the appeal and dismissed the application for registration.
The Divisional Bench while considering the appeal preferred by the applicant, observed in para 49 of the judgment :
'In this case, the goods are totally different. There is no trade connection between them. There is no connection in the course of trade nor any common trade channels. These are factors against holding that there would be any danger of deception or confusion. But we must consider the factors which tend to show that there is a likelihood of creating deception or confusion. The opponents have been using their mark on a very large scale since 1937. Their sales in 1956 exceeded Rs. 30 crores. Their publicity is widespread and large. In 1956 they spent over a million rupees on advertisements. The goods in respect of which they use the trade mark 'Caltex' are mainly petroleum, kerosene and lubricants like greases and oils etc. The goods in respect of which the applicant seeks registration are mainly watches. The class of goods in respect of which the applicant seek registration is wider than watches and watches can be both costly and cheap. It cannot go without notice that the goods in respect of which the applicant in fact used the mark before he applied for registration were very cheap watches. The goods of the opponents are used by persons all over India, in cities and in villages, in different walks of life, rich or poor, literate or illiterate. The goods of the applicant are different in nature. But they are watches. They can be cheap watches. The potential market for them is, therefore, similar to that of the existing market of the opponents, in the sense that the goods of both the parties are not special goods. They are goods which would be purchased by the common man. Now, so far as the word 'Caltex' is concerned. It is common to the opponent's mark as also to the opponent's name. To mention the mark 'Caltex' is also to mention the name of the owner. The mark is unlike the Lion or the 'Stag' mark where there would be no direct connection between the mark and the name of its owner. The opponents are a large company known by many as having large resources, and therefore, capable of starting any new industry or trade. Because of that reason, there is a greater probability of the public believing that any goods with the mark 'Caltex' on them would be the goods of the opponents. This is in our opinion, sufficiently established by the 36 affidavits referred to above. The deponents of these 36 affidavits are from different parts of India, and from different vocations.
After considering the evidence in the shape of affidavits and observing that there is no affidavit to the contrary on behalf of the applicant, the Division Bench concluded the issue against the applicant in the following passage (at p. 37) :
'On the facts of this case, we have no hesitation in holding that a large number of persons, if they see or hear about the mark 'Caltex' in connection with watches, would be led to think that the watches were in some way connected with the opponents, or they would at least wonder whether they ware in any way connected with the opponents. Persons seeing the mark attached to watches, which is a new class of goods, would assume, or are most likely to assume, that they originated from the proprietor of the mark namely, the opponents.
We are therefore, of the opinion that if the application for registration is granted and the mark is used in connection with the goods in respect of which the application is made, it is likely to cause deception and confusion.'
8. It was urged that decision in Caltex case squarely applies to the facts of the present case as mark 'SONY' has acquired reputation and in spite of finding that goods sold by petitioners and respondents are entirely different, there is no connection in the course of trade and the trade channels are entirely different, the mark of the applicant should not be registered in accordance with S. 11(a) of the Act, due to likelihood of deception or confusion. The decision in Caltex case was recorded on the evidence produced in that case and it is not possible to reach the same conclusion as in Caltex case, merely because in both the cases the opposition to registration is by a company having world-wide reputation. The decision in each case depends on evidence produced by the parties and this principle is highlighted by Division Bench in Caltex Case by observing :
'What has to be decided in a case, is whether on the totality of the facts of that case, it is likely that there would be deception or confusion. It would, therefore, be totally misleading to rely only on some individual fact or facts from decided case and put emphasis on them without taking into account other facts in combination with which that particular fact was looked upon as yielding any principle '.
As mentioned hereinabove in Caltex case, the Division Bench felt that opposition was by a large company having large resources and capable of starting new industry or trade and therefore there was greater probability of confusion in the mind of public. The likelihood of confusion was found established on evidence by the Division Bench, with reference to the 36 affidavits and absence of any affidavit to contrary by applicant. It is, therefore, obvious that the finding was based purely on evidence in that case. In the present case there is not a single affidavit filed by any trader or consumer of the goods of Nail Polish to indicate that there is likelihood of any confusion. Shri Gandhi relied upon the affidavit of Shri Afzal Curim, the proprietor of Stereo Sound Corporation carrying on business at Tardeo Air-conditioning Market, but on perusal of the affidavit he had to concede that there is not one word to indicate the likelihood of confusion or deception by the use of the mark. In absence of any evidence to hold that there is a likelihood of confusion or deception, it is impossible to conclude that the order of the Assistant Registrar suffers from any infirmity. In my judgment, the conclusion recorded by the Assistant Registrar, on the facts and circumstances of the case, is in accordance with law and is not required to be disturbed.
9. Accordingly, petition fails and is dismissed with costs.
10. Petition dismissed.