1. On the 25th July, 1974, Mrs. Raju B. Ahuja, Mrs. Meena V. Ahuja, Mrs. Kanta S. Ahuja and Gopal K. Ahuja, trading as Ahuja Enterprises, c/o. Ahuja Bros., 4th Road, Hari Market, Khar, Bombay 52 (hereinafter referred to as "the Applicants") made an application, being Application No. 297926, to register a trade mark consisting of the words "OLD TRAVELLER" in class 33 in respect of a specification of goods which after an amendment reads as "Wines, spirits (beverages) and liquors (spirituous) and whisky". It was stated in the application that the mark was proposed to be used. After preliminary scrutiny, objection was taken in the Trade Marks Registry to the application on the ground that the mark conflicted with certain trade marks already occurring in its records. The applicants made their submissions and in due course the application was advertised before acceptance in Trade Marks Journal No.626 dated 1st July, 1979 at page 374.
2. On 25th September, 1975, Shaw Wallace & Company, Limited, also trading as Shaw Wallace Bengal Distillaries and The Andhra Winery and Distillery, 4, Bankshall Street, Calcutta-1 (hereinafter referred to as "the Opponents") entered an opposition to the aforesaid application.
The grounds of opposition are as follows: That the opponents are the proprietors of a trade mark registered under No. 275688 B consisting of a label containing the words "OLD TAVERN" as its essential feature in Class 33 in respect of "liquors". In view of the use and registration of the said trade mark, the registration of the mark applied for would be contrary to Sections 12(1) and Section 11(a) of the Act. The Applicants are not the proprietors of the mark and hence are not qualified to apply under Section 18(1) of the Act and that the mark applied for is not adapted to distinguish the applicants' goods and is not registerable under Section 9 of the Act.
3. The Applicants filed a counterstatement on 29th December, 1975 in which they averred that they honestly adopted the mark and that their mark is not deceptively similar to the opponents aforesaid trade mark.
They stated that by virtue of honest adoption they are the proprietors of the mark applied for. The rest of the counterstatement is one of denial.
4. The Opponents filed evidence in support of the opposition by way of an affidavit of Kewal Krishan Sareen dated 1st August, 1977 with certain exhibits annexed thereto, supported by an affidavit of Homi Jail Balsasa dated 2nd August, 1977 and also an affidavit of Akhter Hussain dated 2nd August, 1977. The Applicants did not file evidence in support of their application.
5. First, I shall consider whether the provisions of Section 12(1) constitute a bar to the registration of the Applicants' mark. In considering this, two questions are involved, namely (i) whether the marks are identical or deceptively similar and (ii) whether the respective goods are the same or of the same description. Indeed, the latter question should be considered first.
6. The goods set out in the application are "wines, spirits (beverages) and liquors (spirituous) and whisky" and the goods in respect of the Opponents' mark is registered are "liquors". As per the ratio in Australian Wines Importers Trade Mark case, 6 R.P.C. 311, "wines" and "spirits" are goods of the same description. Lindley L.J. observed in the same case thus: "If you come to look at the classification, you will find the goods of the same description in one sense in different classes and you will find goods of different description in the same class". It is also stated in the same case that too narrow a construction should not be placed on the words "same description of goods" having regard to the very different methods by which wines and spirits are produced. The specification of goods set out in the application includes liquors in respect of which the Opponents' mark stands registered. The item "spirits" in the impugned specification covers also liquor as it is a variation thereof. Following this logic, I am of the view that the respective goods are goods of same description.
7. The Applicants' mark is not identical with the Opponents' registered trade mark. As regards the question whether the marks are deceptively similar, it is to be noted that the Applicants' mark consists of the words OLD TRAVELLER. No label has been produced, nor the manner of use of the mark been indicated. In this connection, normal and fair use of the mark has to be assumed. In the case of liquor generally a label is affixed to the bottle in which it is sold to the public. In such a case, the words OLD TRAVELLER should normally be expected to be written prominently on the label. The Opponents' Registered Mark No. 275688 comprises a device of a coat of arms and the words Haywards and OLD TAVERN represented in bold script. The words OLD TAVERN particularly form the dominant feature of the label. This is the feature that strikes the eye and fixes itself in the memory and therefore it ought to be regarded as the essential feature of the Opponents' mark for the purpose of comparison of the marks under Section 12(1) of the Act. The comparable features of the respective marks in these proceedings are thus "OLD TRAVELLER" of the Applicants and "OLD TAVERN" of the Opponents. Basically, therefore, what is to be considered is whether OLD TRAVELLER is deceptively similar to OLD TAVERN. In considering this question, the dictum of Lord Parker in Pianotist Co. Ltd.'s Application 23 R.P.C. 774 at page 777 is most pertinent. It is as follows : "You must take the two words. You must judge of them both by their look and by their sound. You must consider the goods' to which they are to be applied. You must consider the nature and the kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances, and you must further consider what is likely to happen if each of these trade marks is used in a normal way as a trade mark for the goods by the respective owners of the marks. If considering all these circumstances, you come to the conclusion that there will be a confusion that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but there will be a confusion in the mind of the public which will lead to confusion in the goods--then you must refuse the registration or rather you must refuse registration in that case." 8. According to the above dictum, it is necessary to consider whether phonetically, visually and structurally the competing marks are similar. It seems to me that unwary purchasers of average intelligence and imperfect recollection are likely to mistake the one mark for the other. The word "Old" appears as first part in each of the marks and I think that the sameness of this part in both the marks may itself give rise to identical mental impression. It is well settled that in the comparison of word marks the first syllable of a word is, as a rule, by far the most important part of it for the purpose of distinction (42 R.P.C. 264 at 279). When both the marks are referred to, the first part of the mark plays a very vital role, in identifying the marks. As regards the second portion of the marks viz. TRAVELLER and TAVERN, their initial portions TRAVE and TAVE sound alike and also look alike.
The endings thereof namely LLER and RN respectively are likely to be slurred in the course of speech and they have practically no visible impact on the totality of the marks. In their totality both the words in their ordinary structure look and sound alike. In this connection, the observations of the Privy Council in De Cordova v. Vick Chemical Co. 68 R.P.C. 103 at page 106 P.C. are pertinent. "The likelihood of confusion or deception in such cases is not disproved by placing of two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him, for orders are not placed or are often not placed under such conditions. It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail and that the marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole." The customers who are of different types and those who are accustomed to the Opponents" mark, when they come across the Applicants' mark, may quite easily mistake it for the Opponents' mark. Since both the products may not be available at the same time the possibilities of such mistakes are greater. In my opinion, con sidering all the circumstances, OLD TRAVELLER is deceptively similar to OLD TAVERN and hence the provisions of Section 12(1) of the Act constitute a bar to the registration of the Applicants' mark.
9. In considering the Applicants' mark under the provisions of Section 11(a) of the Act, the following observations of Lord Upjohn in Ball Trade Mark 1969 R.P.C. 472 at page 496 are relevant : "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 leading to a passing off or (I add) an infringement action. It is sufficient if the result of the registration of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt, but the court has to be satisfied not merely that there is a possibility of confusion, it must be satisfied that there is a real tangible danger of confusion if the mark which it is sought to register is put on the register." 10. The Opponents evidence consists of an affidavit by Kewal Krishan Sareen which sets out the sales figures from 1965 to 1976, which runs into crores of Rupees and a good deal of amount has been spent in publicity, throughout the country. This evidence is supported by documents filed along with the affidavit by Shri Homi Jall Balsara and also by Akhtar Hussain both dated 2nd August, 1977. Considering the dimensions of the sales and publicity made, I think that there has been substantial use of the mark.
11. It was contended on behalf of the opponents that in actual practice there was the possibility of OLD TAVERN and OLD TRAVELLER being abbreviated as O.T. In para 10 of the affidavit of Homi Jall Balsara it is stated as follows : "I have been in this trade for over 17 years and have no hesitation to state that a majority of customers in India refer and place orders for the product of Shaw Wallace & Company Limited bearing the trade mark "OLD TAVERN" by reference to the abbreviation of the mark namely "O.T." The same has been reiterated by Akhter Hussain in paragraph 6 of his affidavit. In the documents affixed to the affidavit of Shri Kewal Krishan Sareen viz. Sales Tax voucher dated 5-5-1977 there is an abbreviation O.T. indicating whisky. If OLD TAVERN will be abbreviated as "O.T." OLD TRAVELLER may also possibly be abbreviated as "O.T." and I think that this is a fact which I cannot overlook in deciding this case.
12. Considering the use and advertisement of the Opponents' mark I have reached the conclusion that the use of mark OLD TRAVELLER by the Applicants will cause confusion and deception of the public. I, therefore, hold that the registration of the Applicants' mark is barred by the provisions of Section 11 (a) of the Act.
13. As the Applicants' mark is proposed to be used on the date of the application there can be no question of invoking the provisions of Section 12(3) of the Act.
14. The Opponents objected to the application also under Section 9 of the Act Since, however, they did not substantiate this objection, I disallow the objection.
15. The Applicants did not file evidence in support of the application as required under Rule 54. There is no material before me to show how the Applicants came to adopt this mark. It is too difficult for me to assume that their adoption of the mark was honest in view of the prior evistence of the Opponents' mark. I am, therefore, unable to hold that the Applicants can claim to be the proprietors of the mark under Section 18(1) of the Act. In this context, the following dictum of Lloyd Jacob J. in Vitamin case 1956 R.P.C. 1 at page 12 may be referred to : "A proprietory right in the mark sought to be registered can be obtained in a number of ways. The mark can be originated by any person or can be acquired but in all cases it is necessary that the person putting forward the application should be in possession of some proprietory right which, if questioned, can be substantiated." 16. The Applicants have not made any efforts to substantiate their claim of ownership of the mark when challenged by the Opponents. I, therefore, hold that the Applicants cannot claim to be the proprietors of the mark under Section 18(1) of the Act.
17. As the mark offends against Sections 11(a) and 12(1) of the Act, the question of Registrar exercising his discretion does not arise.
18. In the result I refuse the application and direct the Applicants to pay a sum of Rs. 115/- (Rupees one hundred and fifteen only) as costs of these proceedings to the Opponents.