K. Gnanaprakasam, J.
1. This is an Appeal filed by the appellant under Section 109(2) of the Trade and Merchandise Marks Act, 1958. Challenging the order of the Assistant Registrar Trade Marks at Chennai in Opposition No. MAS 3251 dated 24.3.1998 to the Trade Mark Application No. 479278.
2. The respondent (Application) filed an application No. 479278 dated 1.10.1987 for the Registration of the Trade Mark containing the picture of goddess Laxmi and God Ganesh in a sitting posture with the words 'Laxmi Ganesh Beedi' in respect of the product Beedi. The appellant (Opponent) herein entered into the notice of opposition for the registration of the above said trade mark on the ground that they are the registered proprietors of three trade marks viz.,
(1) A rectangular label on which the device of Goddess Lakshmi Standing on the lotus.
(2) The device of Goddess Lakshmi in a standing pose on a lotus flower with the words 'Lakshmi Chhap'
(3) An oval shape with a flower and the words 'Phool Chhap'
and the same were registered under Numbers 2749, 2751 and 2750 respectively in respect of beedies in the year 1945 itself-
3. The appellant's objections are that the trade mark sought to be registered by the respondent are a colurable imitation and the same is prohibited under Section 9 of the Trade and Merchandise Marks Act, 1958 (hereinafter called as 'the Act') and the registration of the said trade mark would be contrary to the provisions of Sections 9, 11 (a), 12(1) and 18(1) of the Act, The respondent herein opposed the notice of the opposition of the appellant on the ground that the registration of the trade mark sought for by the respondent has been used extensively and consciously since the year 1984 and the users have come to associate with the said trade mark and it would not at all cause any deception of confusion in the minds of the users. The respondent is an honest and concurrent user is entitled to the benefits of Section 12(3) of the Act and the registration sought for by him would not at all violate any of the provisions of the Act.
4. The Assistant Registrar of Trade Marks at Chennai, after having taken into consideration the notice of opposition and the counter statement given by the respondent herein and also the materials placed before him, came to the conclusion that the Trade marks sought to be registered by the respondent are not at all deceptive and similar and it would not cause any manner of conclusion in the minds of the users and the trade marks of the appellant and the rival marks of the respondent are totally different and the respondent herein had honestly adopt his trade marks and rejected the opposition and allowed the application of the respondent for the registration of the same. Aggrieved by the same, the appellant has preferred the present appeal.
5. The appellants are the registered trade mark Nos.2749 dated 29.7.1942 wherein the trade mark is the Goddess Laxmi in the standing posture with four hands, over a lotus flower, Trade Mark No. 2751 dated 29.7.1942 is in respect of the Trade mark of the Goddess Laxmi in a standing posture with four hands over a lotus and the said figure appears bigger than the earlier one and the same is also in the vertical shape.
6. The trade Marks sought to be registered by the respondent is that the portrait of a man in the top in vertical position and underneath the Goddess Laxmi is in a sitting posture over a lotus encircled by an oval and God Ganesh is also in a sitting posture encircled by oval. It is undoubtedly a composite trade mark.
7. The learned Advocate for the appellant has submitted that the Trade mark sought to be registered by the respondent is prohibited under Sections 9, 11 (a) 12(1) and 18(1) of the Act. Section 9 of the Act deals with necessary particulars to be furnished by the parties seeking for the registration either in Part A or Part B of the Register. It states,
A name, signature or words other than such as fall within the descriptions in Clauses (a), (b), (c) and (d) of Sub-section (1) shall not be registrable in Part A of the Register except upon evidence of it is its distinctiveness. The expression 'Distinctive in relation to the goods in respect of which a trade mark is proposed to be registered.' means adapted to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists either gainfully or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration. A trade mark shall not be registered in Part B of the register unless trade mark in relation to the goods in respect which it is proposed to be registered is distinctive or is not distinctive but is capable of distinguishing goods with which the proprietor of a trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use 'within the extent of the registration.
This section generally deals with general particulars to be furnished and the only condition imposed is, that the expression must be distinctive in relation to the goods, in respect of which a trade mark is proposed to be registered. In our case, the appellant obtained the trade mark for the products beedi and the' respondent also seeking registration of trade mark for beedi. Beedi is the product, widely known in all parts of India and as such, it is a general product easily identifiable and as such, the respondent does not fall within any of the inhibition set out in the section.
8. Section 11 of the Act deals with prohibition of registration of certain marks. Section 12 deals with prohibition of registration of identical or deceptively similar trade marks. The learned advocate for the appellant submitted that the use of the trade mark by the respondent would fall under Section 11(a) which states 'A mark, the use of which would be likely to deceive or cause confusion' and also fall under Section 12(1) of the Act which states,
Save as provided in Sub-section (3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods.
It is the contention of the learned advocate for the appellant that the registration of trade mark sought for by respondent is identical to the trade mark already obtained by the appellant and it is also deceptively similar to the trade mark, which is being used by the appellant, it is pointed out that the appellant had already having the trade mark of the Goddess Laxmi and now, the respondent is trying to use the very same trade mark, viz., the goddess of Lakshmi, which would not only be identical, but also deceptively similar. The appellant also submitted that the registration sought by the respondent is opposed to the provisions adumbrated in Section 18 of the Act.
9. Per contra, the learned advocate for the respondent has submitted that the trade mark sought for by the respondent is completely dissimilar, distinctive and easily identifiable in all respects. Except the fact that the Goddess Lakshmi is one and the same is also distinguishable in the sense that the Goddess used by the appellant is in the standing posture and the goodness used by the respondent is in the sitting posture. It is further submitted that the respondent is also adopting another God Ganesh which is also in the sitting posture and both the Goddess Lakshmi and God Ganesh are placed side by side in an oval shape, over and above these pictures, a portrait of a man in a vertical shape, which is that of the proprietor of the respondent, is also figuring. The trade mark sought for by the respondent is completely different from that of the trade mark for which registration had already been obtained by the appellant and both of them are easily distinguishable and it would not at all cause any deception in the minds of the users. It is further submitted that the respondent has also been using this trade mark from the year 1984 and there is no material to show that it has caused any confusion in the minds of the users of the beedies and in the absence of the same, it cannot be contended that the trade mark sought for by the respondent would cause confusion in the minds of the users.
10. Heard both sides.
11. Appellants contention that their trade mark and the trade mark sought for by the respondent are not distinguishable as both related to one and the same goods. It would also likely to deceive or cause confusion in the minds of the users and therefore, the same is prohibited under Section 11(a) of the Act. It is further pointed out that the trade mark sought to be registered is identical or deceptively similar to the trade mark of the appellant and that therefore, it is prohibited under Section 12(1) of the Act. No doubt, the goods to which the appellant had already obtained trade mark and the trade mark sought for by the respondent is one and the same viz., Beedi. But, now the question is as to whether the trade mark sought for by the respondent with Goddess Lakshmi and God Ganesh in the standing posture and also the portrait of a man in the top would deceptively similar to cause confusion in the minds of the users. The word 'deceptively similar' is defined under Section 2(d) of the Act which states 'A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.'.
12. To support and substantiate his contention, the learned advocate for the appellant relied upon he case of Prem Nath Mayer sRegistrar of Trade Marks and Anr. : AIR1972Cal261 , wherein it has been held that:
A question of confusion of deception cannot be decided by comparting the two marks by keeping them side by side and nothing the similarities and differences between the two marks. Such a question is to be decided by the court itself by the impression which is to be gathered by looking at the two marks, and it is the duty of the court to find out what impression, what association of ideas and what significant feature the purchaser of the object bearing the registered trade mark would carry in his mind.
13. In the case of Hiralal Prabhudas v. Ganesh Trading Company and Ors. : AIR1984Bom218 , it has been- held,
In deciding the question of similarity of two marks, the following well established principles are to be observed: (i) marks remembered by general impressions or by some significant detail rathan than by a photographic recollection of the whole, (ii) overall similarity is the touchstone, (iii) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (iv) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (v) the purchaser must not be put in a state of wonderment, the marks must be compared as a whole microscopic examination being impermissible, (vi) the broad and salient features must be considered for which the marks not be placed side by side to find out differences in design. In addition, the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances must also be taken into consideration.
14. The learned advocate for the appellant also relied upon the decision dated June, 18th and July, 10th 1896 rendered by the High Court of Justice Chancery Division in the matter of Currie And Company's Application For a Trade Mark (Reports of Patent, Design and Trade Marks Cases (Vol. XIII No. 40 page 681) wherein both marks contained the devise of a fighting cock and the words 'cock O' the North', but in most other respects were dissimilar. It was held that the mark applied for was calculated to deceive an unwary purchaser and the registration was refused.
15. The learned advocate for the respondent has submitted that the trade marks applied for by the respondent is easily distinguishable with that of the appellant even by an ordinary person and it would not at all cause any manner of deception in the mind of the users.
16. I have carefully considered the rival submissions of both the learned advocates for the appellant and also the respondent.
17. It is true the appellant product and the respondent product is one and the same. But, the appellants trade mark bear the figure of Goddess Lakshmi in the standing posture, but where case the trade mark sought for by the respondent is the goddess of Lakshmi in a sitting posture along with the god Ganesh in sitting posture over which the portrait of a man in the top, which the easily distinguishable than that of the appellant, even by an ordinary man. Even a person who is having minimum capacity or capability or an average intelligence and imperfect recollection would. In my opinion, easily distinguish and differentiate the trade marks of the appellant and the respondents.
18. In the said vide of the matter, I am unable to agree with the submissions made by the appellant that the trade marks sought for by the respondent would be deceptively similar and would cause confusion in the mind of the user. In the above said circumstances, I do not find any good or valid reasons to interfere with the order passed by the Assistant Registrar of Trade Marks as Chennai and therefore, the appeal deserves to be dismissed and the same is hereby dismissed.
19. In the result, the appeal is dismissed. No costs.