TATA TEA LIMITED Vs. SURUCHI TEA COMPANY

JUDGEMENT

(1.) THIS appeal under section 109 of the Trade and Merchandise Marks Act, 1958 is directed against a decision rendered on 14th August, 2000 by the Deputy Registrar of Trade Marks. By the order impugned in these proceedings the Deputy Registrar of Trade Marks has allowed the application filed by the first respondent ("the respondent") for the registration of his trade mark in Class 30 of the Fourth Schedule to the rules framed under the Act. The respondent had applied for the registration of his trade mark in relation to tea, which has been allowed by the impugned order.

(2.) ON 20th October, 1989 the respondent applied to the Competent Authority under the Trade and Merchandise Marks Act, 1958 for the registration of a label mark "suruchi" (in part A of the register and under class 30 of the Fourth Schedule ). The respondent claimed user in respect of the mark for which registration was applied since 11th November, 1985. On 16th June, 1995, the application came to be advertised in the journal. The appellant on 12th September, 1995 filed a notice of opposition. In the notice of opposition, the appellant stated that it was an established and renowned producer of tea and one of its trade marks used in relation to tea comprises of a particular and distinct label in conjunction with the mark "tata TEA" which has been used for the past several decades. According to the appellant, its mark has a distinctive and predominantly green colour background with a particular get up of a circular concentric pattern and an oblique thick line on the upper left hand corner of the pouch. The appellant submitted that the design and particular get up of its mark can be broadly defined as comprising of a series of concentrically disposed curves on either side of a central core, thus creating an ornamental pattern of a distinctive nature. There also appeared, according to the appellant on its polypack a logo of the letters "f" and "f" with a pictorial representation of two leaves on a Twig. The appellant claimed that the design of its polypack pouch has been marketed and had acquired a considerable reputation which was associated by the public and those in the trade with the products of the appellant. The appellant stated that it was the proprietor of the marks TATA TEA and KANAN DEVAN TEA, and it had already applied for the registration of several of its marks. The design and get up adopted by the respondent, according to the appellant, was deceptively and confusingly similar to the get up of the appellant and an attempt was, therefore, being made by the respondent to trade upon the reputation and goodwill associated with the mark of the appellant. The appellant stated that it had no objection to the use of the Trademark SURUCHI by the respondent, but that what was objected to was the use of a get up on the tea pouches sold by the respondent, which was deceptively similar to the get up of the appellant.

(3.) THE respondent filed its counter statement on 18th March, 1997. In paragraph 6 of the counter statement, the respondent claimed that its trade mark comprised of the words or the expression "suruchi TEA" prominently displayed at the centre of the label with the logo "stc" placed in a triangle at the bottom of the label. The respondent accepted that there are concentric circles in its label, but claimed that these are unlike the concentrically disposed curves on either side of a central core as appeared in the mark of the appellant. The case of the respondent, therefore, was that the design and get up of the label of the appellant was different from that of the respondent and the tea that was being marketed by the appellant was demanded and referred to as "tata TEA", whereas the tea which was marketed by the respondent was commonly referred to as "suruchi TEA". According to the respondent the only common feature in the two labels was the colour green, which was described as the colour of tea leaves. The respondent claimed that there was, therefore, no deception or confusion. Apart from the aforesaid contention, the respondent claimed that he had independently and honestly adopted the trade mark and had used it concurrently for several years. The respondent accordingly relied upon the provisions of sections 12 (3) and 33 of the Act as justifying the application for registration.