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Jugmug Electric and Radio Co. Vs. Telerad Pvt. Ltd. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtDelhi High Court
Decided On
Case NumberFirst Appeal Nos 126 of 1970
Judge
Reported inAIR1977Delhi252; ILR1977Delhi295; 1977RLR131
ActsTrade & Merchandise Marks Act, 1958 - Sections 11
AppellantJugmug Electric and Radio Co.
RespondentTelerad Pvt. Ltd.
Advocates: Anoop Singh and;N.K. Anan
Cases ReferredSunder Parmanand Lalwani v. Caltex
Excerpt:
.....of confusion as to origin, though different in description--whether ground for removal of trade mark from register--failure to file opposition in time - whether deprives objector to trade mark of locus standi to oppose.; the appellants assailed the order of the assistant registrar of trade marks calling upon them to remove their trade mark, 'telerad', on the ground that the order was opposed to sections 11 and 18 of the trade and merchandize marks act, 1958. the trade mark was already in use by the respondents. the appellants contended that, if the goods are different, similarity in the trade mark does not warrant refusal of registration. but the court pointed out that the refusal to register was not because of the mere identity of the mark. the assistant registrar was satisfied..........of the assistant registrar, dated 26th august, 1970, by which he has ordered the removal of the trade mark of the appellants (no. 217016b) dated 7th august, 1963, on the grounds that it offends sections 11 and 18 of the act. (2) the material facts of the case are that the appellants, namely, jugmug electric & radio company claiming to be manufacturers of electric heaters, immersion heaters (electrical), hot plates for cooking, electric toasters, table lamps, heating apparatus and parts of the aforesaid goods, applied for registration of their trade mark 'telerad', which was granted by the impugned mark mentioned above. the respondents, who are telerad private limited had their own trade mark registered under no. 181813 and 195883 in respect of radio and television as 'telerad',.....
Judgment:

B.C. Misra, J.

(1) This first appeal under section 109(6) of the Trade and Merchandise Marks Act, 43 of 1958, (hereinafter referred to as 'the Act') has been filed by the appellants against the order of the Assistant Registrar, dated 26th August, 1970, by which he has ordered the removal of the trade mark of the appellants (No. 217016B) dated 7th August, 1963, on the grounds that it offends sections 11 and 18 of the Act.

(2) The material facts of the case are that the appellants, namely, Jugmug Electric & Radio Company claiming to be manufacturers of electric heaters, immersion heaters (electrical), hot plates for cooking, electric toasters, table lamps, heating apparatus and parts of the aforesaid goods, applied for registration of their trade mark 'TELERAD', which was granted by the impugned mark mentioned above. The respondents, who are Telerad Private Limited had their own trade mark registered under No. 181813 and 195883 in respect of Radio and television as 'TELERAD', opposed the registration of the mark, but failing to file the opposition in time, the respondents applied in October, 1964 for rectification of the register and removal of the impugned trade mark of the appellants. The respondents contended that the impugned trade mark contravened sections 11, 12 and 18 of the Act and so must be removed from the register. The Assistant Registrar by the impugned order found that the respondents before me were the persons aggrieved. He also found that the nature and characteristics of the respective sets of goods were totally different and their manufacturers were also different and so the goods were of a different description. He repelled the contention of the respondents that the registered trade mark contravened section 12(1) of the Act. He, however, concluded that the same contravened sections 11 and 18 of the Act and the appellants were not entitled to concurrent registration under section 12(3) of the Act. So he exercised the discretion and ordered the removal of the mark.

(3) Mr. Anoop Singh appearing to assail the order has contended that the respondents had no locus standi to file the petition for rectification, since they had failed to file the opposition in time and that the Assistant Registrar had erred in recording his finding regarding 11 of the Act after he had held that the goods were different.

(4) Mr. Anoop Singh, counsel for the appellants has cited a large number of authorities to show that if the goods were different, similarity in the trade mark does not call for refusal of registration. In Darnell (J) & Son Ld's application for a Trade Mark, (1957) Rpc 177, the trade mark of 'boots, shoes and slippers' was held not contravening similar trade mark of 'stocking and socks'. In the Matter of an Application by Ladislas Jellinek for the Registration of a Trade Mark, (1946) 63 R.P.C. 59, the trade mark of shoes was found as not contravening the trade mark for shoe polish. In Thomas Bear & Sons (India) Ld. v. Prayag Narain & Jagennath, (1941) 58 R.P.C. 25, the trade mark of chewing tobacco was found as not contravening the trade mark for cigarettes. In the matter of an Application by J. & J. Colman, Ld. to Register a Trade Mark. (1929) 46 R.P.C. 126, semolina and mustard were found to be different goods. In Lifeguard Milk Products Proprietary Ld's case, 1957 R.P.C. 79, tea and milk and milk products were found to be different. In Lever Brothers, Port Sunlight Ld. v. Sunniwite Products Ld. (1949) 66 R.P.C. 84, Sunlight and Sunniwite were found to be different. In Nekumar K. Porwal v. M/s. Mohanlal Hargovindas, : AIR1963Bom246 , it was found that the grievance of the party aggrieved must be substantial and not sentimental. In London Rubber Co. Ltd. v. Durex Products Incorporated, : [1964]2SCR211 , the registration of contraceptives for men were found as not similar to the registration of contraceptives for women.

(5) I have carefully considered these authorities. They do not touch the question of law that has been raised before me. In the instant case, it is nobodys case, at least at the stage of appeal, that radios and television sets produced by the respondents are the same goods as electrical goods like electric heaters, table lamp, etc. which are manufactured by the appellants. The Assistant Registrar has himself recorded the finding in favor of the appellants on section 12 of the Act. Section 12 deals with the prohibition of registration of identical or deceptively similar trade marks. Had the attack of the respondents been confined to the grounds stated in section 12. there is no doubt that their objection would, in view of the finding of the Assistant Registrar, have to be dismissed. The question, however, for consideration arises on the construction of section 11 of the Act and its application to the facts of the case. Section 11 of the Act reads as follows : 'II. A mark- a) the use of which would be likely to deceive or cause confusion; or (b) the use of which would be contrary to any law for the time being in force ; or (e) which comprises or contains scandalous or obscene matter ; or (d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India ; or (e) which would otherwise be disentitled to protection in a court; shall not be registered as a trade mark.' A perusal of the aforesaid section shows that the prohibitions contained in clauses (a) and (e) above do not have a marked reference to the similarity of the goods. The prohibition is directed against per se registration of the trade mark which contravenes any of the aforesaid clauses.

(6) In Eastman Photographic Materials Co. Ld. v. John Griffith Cycle Corporation Ld. and the Kodak Cycle Company Ld. (1898) 15 R.P.C. 105, the court found that the Eastman Company had invented and had for some years used the word 'Kodak' in connection with their goods and especially for cameras and the word occurred in all their registered Trade Marks. The Company had made a speciality of cameras suitable for bicyclists and the appliances for fixing the same to bicycles and had largely advertised 'Bicycle Kodaks'. The opponent company had applied for and obtained registration of the word 'Kodak' for bicycles. The Eastman Company and The Kodak Company Ld. applied for an injunction to restrain the defendants from carrying on the business under the name of Kodak Cycle Company Ld. and from passing off their goods as the goods of the plaintiffs. The court held that the word 'Kodak' had become identified with the Eastman Company and with their goods, that the evidence showed a close connection between the bicycle and photographic trades, that registration had been obtained by an untrue statement to the Registrar, that the defendants were trying to get the benefit of the reputation of the Eastman Company, and that the Trade Mark must be expunged as being calculated to deceive.

(7) In the Matter of an Application by Edward Hack for the Registration of a Trade Mark, (1941) 58 R.P.C. 91. the application was for registration of the words 'Black Magic' in respect of laxa-axatives, which was opposed by the proprietors of the mark 'Black Magic' in respect of 'Chocolate & Chocolates'. The court held that there was a risk of confusion in that some persons would be likely to think that the two 'Black Magic' preparations were made by the same manufacturers, and others to wonder if this might be the case. As a result, the registration was refused. Same view has been taken by a Division Bench of the Bombay High Court in Sunder Parmanand Lalwani v. Caltex (India) Ltd., : AIR1969Bom24 , where the case was of petroleum products produced by Caltex (India) Ltd., as competing with Caltex Watches. The court applied the principles of section 11 of the Act and refused the registration. In that decision the court examined Kodak Cycle's case 15 Rpc 105, In the matter of Dunn's Trade Mark (1890) 7 Rpc 311, In the matter of an application by Ferodo Ltd. (1945) 62 Rpc 111, Edward Hack Case, (1942) 58 Rpc 91. In Dunn's Trade Mark (1890) 7 Rpc 311, the court had dealt with the question of 'Fruit-Salt Baking Powder' as opposed to 'Eno Fruit Salt'. The House of Lords held that Dunn's use of the words 'Fruit-Salt' would have the effect of deceiving the people as there would be a suspicious connection between the two articles in the minds of many persons. After examining the cases, the Bombay High Court observed that a large number of persons, if they saw or heard about the mark 'Caltex' in connection with the applicant's watches, would be led to think that the watches were in some way connected with the opponents who were dealing in petrol and various oil products with the Caltex Mark, or they were in any way connected with opponents. In this view of the matter, the registration was refused.

(8) In G. E. Trade Mark, (1973) Rpc 297, Lord Diplock B observed as follows :

'THEessence of a trade mark is the association that it bears in the mind of a potential buyer of the goods to which it is applied. I can see no reason for differentiating between cases where the confusion arises because the trade mark is associated with the name of a manufacturer to which some other manufacturer's name is similar, and causes the association with a design or with descriptive words and the confusion arises because some other manufacturer uses a similar design or similar descriptive words to indicate the origin of his goods. In my view, section 11 is wide enough to embrace 'confusion' resulting from any of these kinds of association.'

(9) In the instant case, the Assistant Registrar found that Telerad was not a common dictionary word, but a coined word, consisting of 'TELE' and abbreviation of Radio 'RAD'. The Assistant Registrar was satisfied on the evidence on record that the respondents before me had established substantial user and reputation in respect of their mark and that in some cases at least the rival goods were displayed and sold in the same shop or over the same counter and passed through same trade channels. He also found the evidence from traders and purchasers to the effect that they would think that the goods have originated from the respondents if they see the same mark applied to domestic electric appliances. After recording these findings of fact, the Assistant Registrar held that though the rival goods were not of , same description, still there was likelihood of confusion as to trade origin if the respective goods were sold under the 'TELERAD' mark in the same shop, over the same counter, and if the public were not actually deceived, they might still wonder as to whether the rival goods have a common trade origin. As such, he upheld the objection of the respondents.

(10) In view of the findings of fact recorded by the Assistant Registrar, which there is no reason to differ from, I agree that the Assistant Registrar has answered the question of law correctly. In my opinion he has written a very considered judgment and has appreciated the principles of law correctly. There is no doubt that the respondents, who have coined the word 'TELERAD' and extensively used it and acquired reputation for their products are entitled to the protection of their trade name against its unauthorised use. The use of the expression 'TELERAD' by the appellants is clearly not bona fide. No appreciable reason has been shown by the appellants or their counsel for use of the respondents' registered trade mark in relation to their goods, except with the intention to cause confusion. The goods which the. appellants wish to trade are electrical appliances, but the trade name they have selected has nothing to do with the electrical appliances. Their obvious intention is to pass off their goods as originated from the respondents manufacture or at least as a collaborator of them. It would be very interesting to observe that during the course of arguments, Mr. Anand for the respondents suggested that the appellants may adopt any name excepting the word 'TELERAD' and so a number of suggestions were given including the word 'TELEMUG'. But the appellants stoutly refused to accept any expression excepting the word 'TELERAD' without a break in it, though they were prepared to add 'JUGMUG' or other words either before or after the same. This only shows that the appellants whose name is Jugmug Electric & Radio CO. and who produce electrical-goods do not depend upon their name or the description or the quality of their goods, except by using the registered trade mark of the respondents.

(11) As a result, I hold that the Assistant Registrar has correctly recorded the finding that the use of the trade mark 'TELERAD' by the appellants is likely to deceive or cause confusion and, thereforee, its registration is prohibited by clause (a) of section 11 of the Act. I have no hesitation in endorsing the said finding.

(12) Mr. Anoop Singh has next submitted that the respondents had no locus standi to challenge the registration. There is no substance in the submission. Nekumar K. Poswal v. M/s. Mohanlal Hargovindas, : AIR1963Bom246 , provides an answer to this. Moreover, the person aggrieved is the person who is actually aggrieved by the registration of the: trade mark and it is the respondents who are suffering commercially on account of the adoption of the impugned trade mark by the appellants. They have, thereforee, every locus standi to complain of the same and file the petition giving rise to this appeal.

(13) Mr. Anoop Singh has also contended that the respondents are estopped from filing the application for rectification, as they had failed to file the opposition in time. But the respondents certainly had a right under sections 56 and 11 of the Act to apply to the Registrar for cancellation of the registration and the mere fact that they did not file the opposition in time does not legally debar them from agitating the question. The grievance of the appellants is not that the respondents filed an opposition, and having obtained a finding against them. seek to reagitate the question in removal application at a subsequent stage. The grievance is that the respondents did not file opposition despite opportunity to file opposition in time, but there is no rule or principle of law to debar the respondents from filing the application. The contention has no force and is rejected.

(14) As a result, the appeal is dismissed with costs.


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