KORES INDIA LIMITED Vs. KHODAY ESHWARSA AND SON

JUDGEMENT

(1.) This is an appeal preferred under sub section (2) of section 109 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the "Act") to challenge the legality of the order dated January 1, 1977 passed by the Assistant Registrar of Trade Marks refusing registration of mark of the petitioners by upholding the objections raised on behalf of the respondents. The fact giving rise to the filing of this appeal are as follows.

(2.) On October 13, 1969, the petitioners-M/s. Kores (India) Limited preferred an application being Application No. 259975 in respect of Carbon papers, typewriting ribbons, stencils for duplicating machine, duplicating ink, ink tablets, drawing ink, stamp pad fluid, stamp pads glue (office), etc. in Class 16 for a trade mark consisting of device of a typist girl at the typewriter. An objection was raised to the registration of the mark under section 9 of the Act as an identical device of a typist girl and word "khoday" was registered under Application No. 91882 on January 28, 1944 in respect of typewriting ribbons in Class 16 in the name of the respondents. The application which was then converted for registration under Part B, amending the specification of goods, sets out in the application to read as "Carbon papers, typewriter ribbons, stencils for duplicating machines and duplicating ink". The application so amended was advertised before acceptance subject to disclaimer of a device of a woman typing on a typewriter. On July 18, 1973, Shri K. Lashmansa, K. Krishnasa, K.L. Swamy and others trading as Khoday Eshwarsa & Sons and also as Khoday R.C. Industries, Bangalore filed a notice of Opposition to the registration of the trade mark. The grounds of Opposition, inter alia, were that the respondents are the Proprietors of a trade mark consisting of the device of a lady in typing position on a typewriter and the word "KHODAY" and the mark is used continuously, extensively, widely and openly in respect of articles such as carbon papers, typewriter ribbons, stencils for duplicating machines, duplicating ink, etc. since about the year 1937-38 onwards. It is claimed that by virtue of continuous long and extensive user, the respondents trade mark has acquired distinctiveness and great reputation, so much so that the stationary articles bearing the said trade mark have been associated in the minds of the public as goods manufactured by the respondents. The respondents, in order to safeguard the interest in the trade mark of the respondents have diligently taken all possible legal steps against infringement of the mark. The mark was deposited with the Registrar of trade marks under section 85 of the Trade Marks Act, 1940. The trade mark was duly registered under Application No. 91882 on January 28, 1944. The respondents also claimed that the proposed mark of the petitioners is identical and was deceptively similar in respect of the same goods or of the same description and, in fact, there is a triple identity between both the trade marks, which if allowed to continue, is bound to put the public into great inconvenience, uncertainty and confusion leading also to deception. The respondents denied that the petitioners used the mark since the year 1959 and claimed that the user of the mark by the petitioners cannot be honest and is not entitled to registration under section 12(3) of the Act. On September 28, 1973, the petitioners filed a counter statement denying various allegations made in the notice of Opposition and claiming that the petitioners have used the trade mark extensively since the year 1959 and the mark has secured goodwill by reason of long, continuous and extensive user. The petitioners also claimed that the use of the mark is original, artistic and honest and, therefore, the petitioners are entitled to claim registration under sub-section (3) of section 12 of the Act.

(3.) The respondents in support of their Opposition filed affidavits and the petitioners also filed large number of affidavits in support of their claim and the main affidavit filed on behalf of the petitioners is sworn by Shri S.R. Bhattacharjee, the General Sales Manager of the petitioner Company and is sworn on April 7, 1975. It is not necessary, at this stage, to recite the contents of this affidavit. The Assistant Registrar heard the Counsel of both the sides at length and ultimately by the impugned order dated January 1, 1977 upheld the Opposition and refused the registration. The Assistant Registrar came to the conclusion that the respondents established that the registered mark was used by them on an extensive scale right from the year 1937-38 onwards and the respondents have acquired reputation by virtue of such user and certain amount of goodwill. The Assistant Registrar further held that the mark proposed to be registered by the petitioners is similar to that of the respondents and confusion will inevitably result from simultaneous sue of the identical marks and would calculate to deceive purchasers or other persons with whom the respondents have business relations. The Assistant Registrar further held that the objection under section 12(1) of the Act is also valid as the two marks both of which consist the device of a typist girl would lead to confusion. The Assistant Registrar recorded a finding that the petitioners failed to establish the honest concurrent user from the year 1959 onwards to enable the petitioners to claim advantage of concurrent registration under sub-section (3) of section 12 of the Act. The Assistant Registrar found that the petitioners have copied the mark of the respondents and the petitioners have also not used the mark in the form in which the registration is sought and have not claimed any exclusive right to the device of typist girl. The Assistant Registrar gave about 9 reasons for declining to exercise discretion under sub-section (3) of section 12 of the Act in favour of the petitioners. In view of this conclusion, the application for registration was refused and that order is under challenge.