SURJIT SINGH Vs. ALEMBIC GLASS INDUSTRIES LIMITED

JUDGEMENT

(1.) The petitioner on 16th April, 1968 filed an application being Application No. 248584 with the Registrar of Trade Marks to register in Part A of the Register, a trade mark consisting of the word "YERA" in Class 3 in respect of perfumery, cosmetics and non-medicated toilet preparation. The application was duly advertised in the Trade Mark Journal No. 466 dated 1st November, 1968. The respondent -M/S. Alembic Glass Industries Limited who held registration in respect of the same trade trade mark "YERA" in respect of various goods falling Class 9, 10, 11, 14, 17, 19, 20 and 21 objected to the registration of the aforesaid <PG>185</PG> trade mark on 26th February, 1969 under Section 9, ll(a), ll(e), 12(1) and 18(1) of the Trade & Merchandise Act, 1958 (hereinafter referred to as the Act). By order dated 8th June 1973, Assistant Registrar of Trade Marks, New Delhi rejected the application of the petitioner for registration on the ground that the trade mark applied for, if allowed to be registered in Class 3 as prayed by the petitioner was liable to deceive or cause confusion and also that the petitioner not being the proprietor of the said trade mark was not entitled torotection in the court of law within the meaning of Section ll(e) of the Act. The petitioner has challenged this order of the Assistant Registrar of Trade Marks in this petition under Section 109 of the Act and Article 227 of the Constitution of India.

(2.) Learned counsel for the petitioner made a two fold challenge. Firstly, it was contended that unless there was a real tangible danger of causing confusion or possibility of deception, registration of a trade mark of goods which are not similar should not be refused. Learned counsel submitted that the petitioner had made the application for registration of the trade mark within three months of its commencement of the manufacture of the perfumery and though several years have passed since then, til] today no action has been taken by the respondent against the petitioner alleging either for passing off or infringement of the trade mark, the balance of convenience is, therefore, in favour of the petitioner and considerable hardship would be caused if the trade mark applied for by the petitioner is not registered. Learned counsel further submitted that since there is no trade connection between the petitioner and the respondent and there is no similarity in the goods, Section ll(a) of the Act will not be attracted in the present case. Learned counsel submitted that the reputation is attached to the goods and the goods manufactured by the respondent are distinctly not similar to the goods manufactured by the petitioner. Learned counsel relied on Bridgestone Co. (P) Ltd. v. Bridgestone Tyre Co. Ltd., Tokyo, Japan, (2) D.L.T. 1966 p. 143 and Nestle's Product Limited & Others v. Mis. Milkmade Corporation & Others, AIR 1974 (Delhi) 40 in support of this contention. Secondly, it was contended that petitioner's application could not be rejected on the ground that the petitioner would be disentitled to protection in the court of law because once it is held that the goods are not of the similar description and are different, no case for passing off can be filed by the respondent and, therefore. Sub-section (e) of Section 11 of the Act would not be attracted.

(3.) On behalf of the respondent, reliance was placed on M/s. Jugmug Electric & Radio Co. v. M/s. Telerad Pvt. Ltd. & Another, 1978 (1) I.L.R. 667 The Eastman Photographic Materials Co-operative Limited & Another v. The John Griffiths Cycle Corporation Ltd. & Others, 15 R.P.C. (1898) 105. In the Matter of an Application by Edward Hack for registration of a trademark 58 R.P.C. 91, Sunder Parmanand Lalwani & Others v. Caltex (India) Limited' AIR 1969 (Bombay) 24 and M/s. Cibs Limited Basle Switzerland v. M. Ramalingum & Others, AIR 1958 (Bombay) 56 in support of the contention that once it is found that the trade mark is distinctive inasmuch as the word is coined, rare, exclusive and not an ordinary dictionary word, the Registrar of Trade Marks has to consider whether the reputation of the opponent already using the trade mark is such that if registration of the same mark is allowed it was likely to deceive or cause confusion in the minds of the ordinary public' It was submitted that in the present case, the respondent was manufacturing glassware including jars and bottles and had adopted the word "YERA" as a house mark to connote and denote the special character and quality of the products sold thereunder and the respondent had acquired the registration of <PG>186</PG> the trade mark "YERA." in different classes as far back as in the year 1953. It was submitted that the sales of the respondent in respect of its goods bearing the trade mark "YERA" between the periods 1958 to 1968 run into lacs. The respondent had spent several lacs of rupees on publicity and had acquired a reputation in the trade and public and, therefore, though the petitioner did not manufacture goods of the same description if his application for registration of the same trade mark is permitted it was likely to deceive or cause confusion in the minds of the general public. It was further submitted that the petitioner had not given any valid reason as to why he was wanting to adopt this trade mark and the respondent being prior user and responsible for coining this word, was justified in objecting to the registration of the said trade mark by the petitioner, though in another case. Learned counsel also opposed the registration for the petitioner staling that since the petitioner was not the proprietor of the said trade mark he would not be entitled to any protection in a court of law. Learned counsel further submitted that the burden of proving that the registration of the said trade mark was not likely to deceive or cause confusion in the minds of the public, was on the petitioner and the petitioner had not led any evidence and had not discharged the burden in any manner whereas the respondent had produced affidavits of several parties to show that the reputation was very wide and the registration of the trade mark was likely to cause confusion in the minds of the general public who was likely to buy the products manufactured both by the petitioner as well as by the respondent. Learned counsel submitted that the perfumery manufactured by the petitioner is sold in glass containers and such glass containers manufactured by the respondent were supplied to other manufacturers of perfumery which was likely to cause confusion. Moreover, the public at large may be led to believe that it is the respondent-company who was manufacturing the said perfumery and cosmetics.