V.S. Deshpande, J.
(1) The sole question for decision in this appeal is whether the Assistant Registrar (Trade Marks) in his order dated August 26, 1970 and the learned Single Judge in the first appeal disposed of on the 19th October 1976 were right in cancelling the registration of the appellant's trade mark 'Telerad' on the ground that the said registration had been made in contravention of section 11(a) of the Trade and Merchandise Marks Act, 1958 (hereinafter called the Act). The facts constituting the alleged contravention of section 11(a) of the Act are as follows :-
(2) The respondent used the trade mark 'TELERAD' in respect of 'radio receiving sets and component parts thereof' being goods included in class 9 of the Fourth Schedule of the Rules made under the Act since 1-10-1957 and got the said trade mark registered under No. 181813 on 14th October 1957. It also got registered the said word 'TELERAD' together with a device of a diamond in respect of 'radio receiving sets and component parts thereof' being goods included in class 9 on the 19th May 1960 under No. 195853. The respondent averred that its trade marks so registered were well known in respect of the goods manufactured by the respondent namely, (television and) radio receiving sets.
(3) The grievance of the respondent is that the appellant also got registered the same trade mark 'TELERAD' on 7-8-1964 in respect of domestic electrical appliances which did not include television or radio receiving sets and which fell under class Ii while the goods manufactured by the respondent were covered by class 9. According to section 11(a), a trade mark the use of which is likely to deceive or cause confusion shall not be registred as a trade mark. According to the respondent the use of the trade mark 'TELERAD' by the appellant was likely to deceive or cause confusion in the minds of the customers. For, they were likely to think that the domestic electrical appliances made by the appellant were either made by the respondent or had some connection with the respondent. The (television and) radio sets made by the respondent had a high reputation on the date on which the trade mark 'TELERAD' was registered in favor of the appellant and this reputation was likely to be adversely affected by the likely deceit or confusion which may be caused by the use of the trade mark 'TELE RAD' by the appellant in respect of their own goods. For, the trade channel of the goods of the appellant as also of the respondent was common. Not only many companies in India manufacture television and radio sets along' with domestic electrical appliances but very frequently these two types of goods are sold in the same shops. The customers are, thereforee, likely to think either that the domestic electrical appliances made by the appellant were manufactured by the respondent or had some connection with the respondent or that they had some connection with the respondent when they were sold in the same shops in which the goods manufactured by the respondent were sold. In view of this great probability of deceit or confusion being caused within the meaning of section 11(a) of the Act, the trade mark 'TELERAD' ought not to have been registered in, favor of the appellant. It was thereforee, prayed by the respondent in an application under section 56(1) of the Act that- the registration of the said trade mark in favor of the appellant be cancelled.
(4) The defense of the appellant was that the likelihood of decen or confusion within the meaning of section 11(a) was totally absent because the goods made by the appellant were totally different and fell in clause Ii as contrasted, with the goods made by the respondent which fell in clause 9. While the appellant did not manufacture any (television or) radio receiving sets, the respondent did not manufacture any domestic electrical appliances. The two types of goods were so different from each other that the customers would not associate the two with each other and could not, thereforee, think that the domestic electrical appliances made by the appellant had anything to do with the respondent. It was also pointed out that the notice of the application for registration made by the appellant had been given to the respondent but the respondent did not prefer any objection and, thereforee, the registration was granted to the appellant. However, on 16-11-1964 the application was made by the respondent under section 56(1) of the Act for the rectification of the register of trade marks by the cancellation of the trade mark registered in favor of the appellant. Had the respondent been really concerned that the registration of the trade mark in favor of the appellant was likely to deceive or cause confusion within the meaning of section 11(a) the respondent would have objected to its registration. The very fact that it did not prefer any objections shows that it did not believe that there was any likelihood of deceit or confusion. The respondent has, however, given some kind of Explanationn why it failed to raise any objection to the registration and why the objection was preferred later in November 1964.
(5) The application under section 56(1) of the Act was allowed by the Assistant Registrar (Trade Marks) and the appeal against the order of the Assistant Registrar (Trade Marks) was dismissed by a learned Single Judge of this Court. Hence this second appeal Section 11(a) reads as follows :-
(A)the use of which would be likely to deceive or cau(r)e con- fusion. .... ....shall not be registered as a trade mark'.
'UPONthe evidence which I have before me, what is the test which I have to apply in considering whether deception confusion within the meaning of section 11 is likely to occur?
Mr. Burrell, on behalf of the Opponents, submitted to me the following propositions with regard to this section : (1) In all applications for registration of a trade mark the onus is on the applicant to satisfy the Registrar (of the Court) that there is no reasonable probability of confu- sion. (2) It is not necessary, in order to find that a mark offends against the section, to prove that there is an actual probability of deception leading to a passing-off. It is sufficient if the result of the user 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. (3) In considering the probability of deception, all the surrounding circumstances have to be taken into consideration.
'(4)In applications for registration, the rights of the parties are to be determined as at the date of the application,. (5) The onus must be discharged by the applicant in respect of all goods coming within the specification applied for, and not only in respect of those goods on which he is proposing to use it immediately, nor is the onus discharged by proof only mat any particular method of user will not give rise to confusion; the test is : What can the applicant do ?
Ithink that these propositions are, in substance, well founded, and I would merely add, with regard to the second of them, the following extract from the judgment of the late Farwell, J., in Bailey's case, reported in 52 R.P.C. 136 'I think that the Court has to be satisfied not merely that there is a possibility of contusion; I think the Court 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.'
(6) Section 8(a) of the Indian Trade Marks Act since then repealcd by the present Act was also similar. In construing it, the Supreme Court has followed the same line,of reasoning in .
(7) Let us apply the tests enunciated above to the facts of our case. Initially, the burden of proof was on the appellant to satisfy the Registrar or this Court that there is no reasonable probability of confusion. It has not been able to satisfy the Assistant Registrar and the learned Single Judge on this score. 'The reason is that there is a real tangible danger of confusion if the trade mark of the appellant is continued to remain on the Register. The circumstances relevant in considering the possibility of deception may now be analysed.
(8) Firstly, the affidavit of Mr. Todi filed in favor of the respondent shows that many well known firms like Gec, TELEFUN- Ken, Philips, Siemens, Hgec, National, Ge and Remco manufacture not only radios but other domestic appliances like heaters, irons, toasters, etc. This fact is so well known over the years that even judicial notice can be taken of them. There is absolutely no rebuttal of it by the appellant. It is true that the respondent has not extended its manufacturing activity beyond the radios and television sets to include domestic appliances. But the respondent is also a well known firm of Sarabhais. If the above-mentioned well known firms could manufacture both the radios as well as domestic appliances, the impression carded by customers would be that such big firms are capable of manufacturing both the kinds of goods. The respondent being such a firm, the customers can have the same impression about it as they have about the above-mentioned firms. The first source of confusion or deception which is, thereforee, not only likely but very probable springs from the fact that manufacture of both these types of goods is often done by the same firms. The reason is obvious. They both involve electrical engineering and technology. It is true that the wireless is one branch of the said technology while the domestic appliances which use electric wires is another branch of it. Such theoretical difference, however, it not shown to be material by the very fact that in practice most it the reputed electrical manufacturers in Indiat have chosen to manufacture both kinds of goods. Obviously, the theoretical difference between the two types of goods is no barrier for one firm to manufacture both of them. On the contrary, there must be similarities and other economies and conveniences which have persuaded these firms to manufacture both the kinds of goods instead of sticking only to one kind of them.
(9) Secondly, the same affidavit of Mr. Todi states that many of the distributors of the respondent are also agents and/or distributors for electrically operated domestic appliances. Exhibit B which is an annexure to the affidavit gives a list of 570 dealers selling the goods manufactured by the respondent. According to para 14 of the affidavit many of them deal not only in radios but also in other electrical appliances. This fact also is of common knowledge. We do know that many electrical goods shops sell not only radios but also domestic electrical appliances. The manufacture of the goods at one end and the sale of the goods at the other end are the two ends of what may be called a trade channel. The confusion or deception in the minds of the customers is caused because the goods of the appellant and those of the respondent have the same trade channel, namely, both of them are often manufactured by the same manufacturer and both of them are often sold in the same shops. The proximity of the goods of the appellant and the respondent is in respect of the trade channel. For the purpose of section 11(a) this is sufficient. These circumstances create a great probability that the customers visiting electrical goods shops may think that the domestic electrical appliances are connected with the respondent firm either at the stage of the manufacture or at the stage of the sale indicating that either they are manufactured by the respondent or marketed by it. The reputation attached to the manufacture and/or the marketing of goods of the respondent would, thereforee, tend to be attached to the goods of the appellant.
(10) Another very important consideration in judging the applicability of section 11(a) is the nature of the trade mark. If a trade mark is an invented word, then the first user of such a trade mark obviously intends to have a monopoly of it and he will make every attempt to satisfy the authorities acting under 'the Trade and Merchandise Marks Act to protect his monopoly of the same. The intention to monopolise the word may not be so obvious when the word constituting a trade mark is not an invented or a coined word but is a common dictionary word. The respondent coined the word 'TELE- RAD' appropriately because it manufactured radio sets indicated by the combination of the word 'Tele' with the word 'Rad'. When a person comes as his own trade mark a word previously invented by another person, suspicion immediately arises why the Copyist is trying to imitate the person who has a priority in the trade. The appellant in the preseat case has not been able to give any satisfactoly answer as to why it chose the name 'TELERAD' as its trade mark and why it called itself 'Jugmug Electric and Radio Company' when it knew it was not making radios and when it also knew that the word 'TELERAD' was previously being used and was registered as a trade mark by the respondent appropriately because the respondent manufactured radios. It is difficult to remove the impression from the mind of the aluthorities acting under the Trade and Merchandise Marks Act as also from the mind of the Court that the appellant deliberately copied the trade mark of the respondent to obtain illegitimate advantage of the reputation of the respondent attaching to the said trade mark. It was argued for the appellant that reputation is attached to goods and not to the trade mark as such. This very argument recoils on the appellant. It is because the goods of the appellant are in the same trade channel as the goods of the respondent that the probability of the appellant exploiting the reputation of the respondent arises. What the customers know is that the respondent manufactures radios. The reputation of the respondent certainly attaches to those radios. Bat the customers are also likely to think that the respondent also manufactures and/or sells domestic electrical appliances firstly because it is common practice for one firm to matnufacture both these types of goods and for shops to sell both these types of goods and secondly because both these types of goods are sold under the same trademark 'TELERAD'. What more assurance is needed to a customer to think that a 'TELERAD' domestic electrical appliance is made by the maker of 'TELERAD' radio than the common name 'TELERAD' under which both of them are sold
(11) It is here that the difference in the nature of the goods becomes material. If one trade mark is used to. dedote two articles which are not in a common trade channel then even a common trader mark is not likely to create an impression in the minds of the customers that they are made by the same maker. An illustration is provided by Rustom Ali Molla v. Bata Shoe Co. Ltd., : AIR1957Cal120 , where it was held that the Bata Shoe Company cannot be taken by anyone to manufacture loin cloths (Lungis) because one cannot just imagine a sophisticated manufacturer of footwear which is quite costly taking his head to manufacture lungis which are worn mostly by poor people and which are quite inexpensive. The trade channel of the two is also not the same as shoes and longis are neither usually manufactured by the same firms nor are they usually sold in the same shops.
(12) The same remarks would apply to the difference between. heavy duty rubber tyres and tubes on the one hand and bicycle parts other than rubber tyres and tubes on the other hand. These two types of goods also do not generally have the same trade channel. The Bridgetone Company (P) Ltd. v. The Bridgestone Tyre Company Ltd., 1966 D.L.T. 143. This was why the use of the same trade mark 'BRIDGESTONE' already enjoyed by the respondent in. that case could be copied by the appellant successfully.
(13) On the other hand, in the 'Panda'' case, referred to above shoes and shoe-polish were held to have a trade connection between them and this might lead to confusion or deception in the minds of the customers even though the goods were different. The application for registration by the manufacturers of the shoes was, however, refused on the ground that they had not established a reputation for their trade mark among the public in respect of their shoes. They could not, thereforee, object to the use- of the same trade mark by their opponent for the shoe-polish.
(14) In fact, the question of trade connection or trade channel arises only when the description of the two types of goods concerned are different . As observed by the Supreme Court therein, there is no reason why the test of trade connection between different goods should not apply where the competing marks closely resemble each other just as much as it allies, as held in the 'Black Magic' and 'Panda' cases where the competing marks were identical. In the 'Black Magic' case (1940) 58 R.P.C. 91, the same trade mark 'Black Magic' was used for chocolates and laxatives. Though the goods were different, it was recognised that there was likelihood of confusion or deception because laxatives are often made with chocolate coatings. The emphasis by the learned counsel for the appellant that the descriptions of the goods of the appellant and the respondent were very different from each other does. not, thereforee, answer the main point against the appellant, namely, the existence of a common trade channel for both the types of goods even though their descriptions are different. The difference in the descriptions of the goods and the different classes in which they are categorised would have been material under section 12(1) but is of no consequence under section 11(a).
(15) The argument that the respondent did not object to the registration of the trade mark in favor of the appellant in response to a notice does not advance the case of the appellant. Firstly, the respondent has given an Explanationn why it did not object to it in the same proceeding but did so soon after the conclusion of the proceeding and secondly such failure to object or small delay in making an application under section 56 for the cancellation of a trade mark after its registration is not fatal to the success of an application under section 56.
(16) A great deal of. needless argument was addressed on behalf of the appellant before us as also before the learned Single Judge and the Assistant Registrar as to the strength of the appellant's case under section 12. It was long ago clear that the application made by the respondent under section 56 was to succeed, if at all, on the ground of contravention of section 11(a) and not of section 12. No amount of strength displayed by the appellant's case in respect of section 12, however, could help it to overcome its weakness in respect of section 11(a).
(17) The distinction between sections 11(a) and 12(1) of the Act has been succinctly brought out by Vimadalal, J. in M/s. R. T. Engineering and Electronics Company's case Air 1972 Bom 157 , in paragraph 6, in the following words :-
'THEdistinction between Sections 11(a) and 12(1) of the Act, thereforee, is (1) whereas, under Section 11, Actual user must be taken into account including the mode of user or the fact that the goods are known in the market by a particular name for the purpose of considering the possibility of deception or confusion, under section 12. the court has only to take into account, what may tersely be called, notional fair user on the basis of the similarity of the two marks, though it must no doubt consider not only visual or phonetic similarity, but also the possibility of contextual confusion or confusion or deception as to trade 'origin, as well as the other surrounding circumstances such as the nature of the goods and the kind of customers who would be likely to buy those goods, (2) whereas Section 12 comes into play only when the opponent's mark is a registered trade mark, there is no such limitation in regard to the applicability of Section 11; and (3) whereas Section 12 applies only when the mark applied for is identical with or deceptively similar to a registered trade mark, there is no such limitation in regard to the nature of the goods in a case under Section 11. In either case, however, the Court has to consider the position from the point of view of an unwary purchaser who is a man of average intelligence and of an imperfect recollection.'
(18) We need not, thereforee, consider section 12 any further in the present appeal. We would, however, like to refer to an extremely good summary of the factors to be taken into account in assessing the degree of likelihood of deception or confusion under section 11(a) found in Sunder Parmanand Lalwani.v. Caltex (India) Ltd., : AIR1969Bom24 . It runs as follows :-
'BROADLYspeaking, factors creating confusion would be, for example, the nature of the mark itself, the class of customers, the extent of the reputation, the trade channels, the existence of any connection in the course of trade, and several others- Of course, it need not be stated 'that it would not be that all such factors would exist in each and every case.'
WEhave considered the strong relevance of the nature of the trade marks in the relevant case. The class of customers are ordinary people who are not well worsed in the specific information as to what is manufactured by the respondent and what is not manufactured by it. These customers go by the general impression that electrical manufacturers often manufacture both the types of goods and dealers sell both of them together. This leads to the impression which is formed by the customers by a confusion or deception taking place in their minds. We have also considered the trade channel and how it is common to both these types of goods. We have shown that the connection between the two is both at the manufacturing and at the marketing stages. Almost all the factors which are relevant for consideration under section 11(a) are, thereforee, present in this case.
(19) For these reasons, we uphold the decisions of the Assistant Registrar (Trade Marks) and the learned Single Judge and dismiss the second appeal with no order as to costs.