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INTELLECTUAL PROPERTY APPELLATE BOARD Where a registered trade mark has acquired a goodwill and reputation, such use cannot be permitted to be used by another person as it would cause confusion and deception. This was the view of the Delhi High Court in Benz case which had been followed in a number of cases. In the instant case, the appellant’s trade mark had acquired a goodwill and reputation among the public for garments and textiles goods over several decades. The respondent’s application for registration without any use for the good for which the application was made cannot be permitted. 24. Sub Section (3) of Section 11 prevents registration of a trade mark, the use of which is liable to be prevented by virtue of any law – law of passing off and the copyright law. In Toshiba’s case 2002 (24) PTC 654 it was held that the opponents trade mark Toshiba was well known to the public and as such the use of the mark “Toshiba” by the applicants would definitely create confusion or deception. 25. Further the adoption by the respondent is only to trade upon and earn the profits upon the appellant’s reputation. This will only amount to passing of their goods as that of the other. The appellant’s objection under Section 11(3) is therefore upheld. 26. The onus is always on the appellant to prove their case that the registration of the impugned trade mark would not cause confusion among the trade and public. The respondent ie. the applicant has not satisfied as there is no use of the trade mark in relation to the goods for which registration has been applied for. The appellants goods has acquired goodwill and reputation in the market and the use by the respondent would lead the public to think that they are the appellants goods. 27. We do not agree with the finding of the Registrar that “though the trade mark is a well known mark no harm will be caused to the appellant as they have not applied for registration in class 9 & 16.” The Registrar has relied on the observation of the Supreme Court in Toshiba Case and has come to this conclusion, but has not stated as to how the balancing act between the user of registered trade marks and non use should be tested. The case relied on by the Assistant Registrar, is not applicable to this case on hand in our view. That case was one under rectification proceedings where the registration granted was to continue on the register whereas the instant case is an opposition proceedings to decide whether registration ought to be granted or not. 28. For the above mentioned reasons, we allow the appeals and the registration of the trade mark “Raymond James” under Nos.1058742 and 1058745 in class 9 & 16 respectively is refused. Accordingly, the appeals are allowed with costs of Rs.10,000/- each.

INTELLECTUAL PROPERTY APPELLATE BOARD

Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018

English: Raymond James Stadium, Tampa, Florida

Image via Wikipedia

 

OA/16-17/2010/TM/CH

FRIDAY, THIS THE  6TH DAY OF JANUARY, 2012

 

Hon’ble Smt. Justice Prabha Sridevan                   …  Chairman

Hon’ble Ms. S. Usha                                                     …  Vice-Chairman

 

M/s. Raymond Limited,

Plot No.156/HISSA No.2,

Village Zadgaon,

Ratangiri – 415 612,

Maharastra.                                                                           … Appellant

 

(Represented by Ms. Gladys Daniel)

 

Vs

1.         M/s. Raymond Financial Inc.,

800 Carillon Parkway,

St. Petesburg,

Florida 33733-2749, USA

and having address for service in India is

Depenning and Depenning,

10, Government Place East,

Kolkata – 700 069.

 

2.         The Assistant Registrar of Trade Marks,

Trade Marks Registry,

Intellectual Property Building,

G.S.T. Road, Guindy,

Chennai – 600 032.                                                  … Respondents

 

(Represented by – Ms. Shobana Komal)

ORDER (No.7 of 2012)

 

Hon’ble Ms. S. Usha, Vice-Chairman:

 

1.         The above two appeals arise out of the order dated 02.09.2009 passed by the Assistant Registrar of Trade Marks dismissing the opposition Nos. MAS-174124 & MAS-174125 and allowing application Nos.1058742 in class 9 & 1058745 in class 16 to proceed to registration under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

 

2.         The respondent No.1 herein filed applications for registration of the trade mark “Raymond James” under Nos.1058742 in class 9 and 1058745 in class 16 on 12.11.2001.  Both the applications were proposed to be used.  The applications were advertised in the Trade Marks Journal No. MEGA 5 dated 14.11.2003.

 

3.         The appellant herein filed their notice of opposition objecting to the registration of the trade mark “Raymond James”.  The appellants contention was that they adopted the mark “Raymond” 75 years ago and are using the same continuously and extensively.  They are using the trade mark “Raymond” not only in India but all over the world.  They have diversified their business in artificial silver jewellery, textiles, readymade garments, engineering prophylactics, aviation, toiletries, designer wear etc.  The appellants have obtained registration of the trade mark in all classes.  They have applied for registration in several countries.  They have spent several crores of rupees towards advertisement expenses.  The trade marks “Raymond” is exclusively associated and identified only with the appellant and with none else.  The rival marks being identical and the goods being similar, the registration is likely to cause confusion and deception during the course of trade and is prohibited under Section 11(1) (2) & (3) of the Act.

 

4.         The appellant’s objection was also that their trade mark had acquired the status of a well known mark.  The respondent’s mark was “proposed to be used” on the date of application and therefore the respondent cannot claim to be the proprietor of the mark under Section 18(1) of the Act.  The respondent has adopted the trade mark only to trade upon the goodwill and reputation earned by the appellant.

 

5.         The respondent herein filed their counter statement stating that they are the proprietors of the trade mark “Raymond James” and have obtained registration in several other countries.  They further stated that they started using the trade mark since the year 1964.

 

6.         On completion of the pleadings, the Assistant Registrar heard the matter and passed the impugned order.  The Registrar held that the appellants had not used the trade mark for the goods which is for registration and that there was no case of confusion among the general trade and public due to the user of the mark by the respondents.  The Registrar went further, held that the appellant’s trade mark is a well known trade mark.  The Registrar further one step ahead and held that though the appellant’s trade mark is a well known trade mark, no harm would be caused to the appellant if the registration is granted as the appellants are not registered proprietors of the trade mark in class 9 and 16 goods.  In the interest of justice, the Registrar allowed the registrations of the trade mark and dismissed the oppositions.

 

7.         Being aggrieved by the said order, the appellants are before us on appeal.  The main grievance of the appellant is that even though the Registrar was convinced that the trade mark was a well known trade mark did not protect the appellant’s trade mark.

 

8.         We have heard Ms. Gladys Daniel, counsel for the appellant and Ms. Shobana Komal, counsel for the respondent on 1st November of 2001.

 

9.         The learned counsel for the appellant submitted they had adopted and used the trade mark Raymond since 1925 and are registered proprietors of the trade mark.  The trade mark Raymond is their prominent feature in various classes for which they have obtained registration.  They have obtained registration in several countries like Bahrain, Bangladesh, Canada, China, U.K., U.S.A etc.  The impugned trade mark  is “Raymond James”.  In the counter statement the respondents have stated that they had been using the trade mark Raymond James since the year 1964.  The use in India since 1964 has not been proved by the respondents.  The plea of honest and concurrent user cannot be considered as it was only a proposed to be used mark as on the date of application ie. on 12.11.2001.  The counsel took us through the impugned application for registration and submitted that the application was made only a “proposed to be used” marks.

 

10.       The appellant’s counsel further submitted that the balance of convenience was in favour of the appellants as the trade mark Raymond was in use for more than several decades and thus the mark had acquired distinctiveness.  The impugned trade mark “Raymond James” was neither distinctive nor capable of being distinctive.  The reputation earned and the registration obtained outside India will not help the respondent to secure registration in India.  The mark was applied for registration in the year 2001 as a “proposed to be used” mark and till date ie. even in the year 2011 the mark is still proposed to be used and there is no use.

 

11.       The counsel then relied on the provisions of Sections 11(3), 11(10), 18(1), 18(4) & 9 of the Act.  The counsel submitted that the registration would be against the law of passing off and against the law of copyright.  The Registrar had held that the appellants trade mark is a well known trade mark and therefore ought to have protected the trade mark against any identical or similar trade mark as per section 11(10) of the Act.  The respondent is not the proprietor of the trade mark as it was not used by the respondents.  As per section 9 of the Act, the mark was not distinctive and if there is a likelihood of confusion or deception, the mark shall not be granted registration.

 

12.       The counsel then relied on few judgments:

a)         AIR 1970 SC 1649 – Ruston & Hornby Ltd. Vs. Zamindra Engineering Co. – that the word “India” is added to the respondents trade mark is of no consequence (Ruston Vs. Rustam India)

 

b)         1994(2) SCC 448 – Power Control Appliances and Ors. Vs. Sumeed Machines Pvt. Ltd. with Sumeet Research and Holdings – there can be only one mark, one source and one proprietor.  It cannot have two origins.

 

c)         1997(2) Arb. LR 118 – M. Mahendra Shah of Annapurna Enterprises Vs. Hindustan Lever Ltd. and Anr. – the prior use is of the trade mark and it does not matter with what commodity or stuff the same was first used.  The person who user the trade mark first becomes the proprietor of such a trade name or trade mark.

 

d)         AIR 1994 Delhi 239 – Daimler Benz Aktiegesellschaft and anr. vs. Hybo Hindustan –  None should be continued tobe allowed to use a world famous name to goods which have no connection with the type of goods which have generated the world wide reputation.

 

e)         1988 PTC (8) 1 – Kamal Trading Co. Bombay and ors. Vs. Gillette U.K. Limited – when the goods were not sold in India no goodwill on reputation and therefore dishonest conduct.

 

f)          AIR 1983 Punjab and Haryana 418 – M/s. Banga Watch Company Vs. M/s. N.V. Phillips – the defendants had not given any reason for the adoption of the trade mark when they were aware of the plaintiffs use.

 

g)         AIR 1988 Bombay 167 – Bajaj Electricals Limited Vs. Metals & Allied Products Bombay and anr. – the defendant use of the plaintiffs trading style as a trade mark is not permissible.

 

h)         1997 IPLR – Caterpiller Inc. Vs. Jorange and K.K. Panduranga – the defendants were aware of the plaintiffs trade mark and the use by them is not permissible.

 

i)                    2002(24) PTC 646 – Needle Industries (India) Limited Vs. Sanjay Jaiswal & Ors. – No reason for the adoption of the trade mark by the defendant and therefore intention cannot be said to be bonafide.

 

13.       The learned counsel for the respondent submitted that their company was a US based company carrying on financial services.  They adopted and had been using the trade mark “Raymond James”  since 1964 outside India and in India since 1994 through a joint venture company ASK Raymond James Securities in India.  The printouts from websites and brochures and research were distributed to customers in India.  The brochures contained their investment approach and philosophy.  The respondent drew our attention to the certificate of incorporation dated 18.03.94.

 

14.       The respondent submitted that they had been recognized for their achievements by several institutions worldwide and have received several awards in recognition of their services.  There are various others who have obtained registration for the goods for which the appellants are not dealing.  The appellants are only dealing with textile goods and not otherwise.  The respondent admitted that there were no documents filed by them in support of their use in classes 9 & 16.  The provisions of Section 11 (2) of the Act were relied on.  The interim orders relied on by the appellants will not support their case.  The trade channels being different the question of confusion and deception does not arise.

 

15.       The counsel then distinguished the judgments relied on by the appellants.  In Ruston case, the goods were same and so was not applicable to this case as well in Sumeet Case.  In Pony and Phillips case and Bajaj Case – dishonest adoption.  Benz Case- No honest concurrent user which were not applicable to this case or hand.

16.       The respondent then relied on a few judgments

1.         IA No.9600/2008 in CS(OS) No.1607/2008 – Warner Bros. Entertainment Inc. Vs. Harinder Kohli and Ors. – the marks were HARI PUTTAR and HARRY POTTER where there was no injunction granted for there was a long delay in initiating action and also that the defendant had spent huge amount towards the production and the restrainment would cause unnecessary delay and loss.

 

2.         AIR 1985 BOM 327 – Sony Kabushiki Kaisha Vs. Shamroa Maskar and Ors.– goods different and hence no possibility of confusion a deception.

 

3.         2006 SCC 22 and 2006 SCC 23 – Mattel Inc. Vs. 3894207 Canada Inc., and Veuve Clicquot Ponsardin Vs. Boutiques Cliquot Ltee, and Ors. –  were relied by the respondent where it was held that no documents were filed to prove confusion and hence dismissed.

 

17.       In reply, the counsel for appellant submitted that there was no plea of acquiescence and now cannot be raised in the appeal stage.  The sales in the year 2004 for some other goods will not help the respondent.  The respondent has not used the trade mark for the goods falling in classes 9 and 16.  The respondent has no bonafide intention to use even up to date.  They are only in financial services and not into business falling in classes 9 & 16.  The respondents goods bearing the trade mark has not acquired any reputation, goodwill as there has been no use.

 

18.       We have heard and considered the arguments of both and have gone through the pleadings and documents.

 

19.       The main issue would be to ascertain whether the mark has acquired distinctiveness and if no, that would be an absolute ground to refuse registration.  The impugned trade mark has been applied for in the year 2001 claiming to be a proposed to be used mark.  The respondent admitted that the trade mark was not put to use in relation to the goods for which registration was applied for.  The mark was proposed to be used.  The respondents use in financial services was outside India.  The use of the mark outside India or registration outside India cannot make the trade mark distinctive of the respondents goods.  The respondents have not produced any document in proof of their use even as on date or is there any evidence placed before us to show their bonafide intention to use the mark.  There is no evidence of correspondence or steps in support of the same.  The mark cannot be said to be distinctive of the respondent’s goods as it has not been used in India either for the goods for which the impugned applications are filed or used in relation to some other goods.

 

20.       The issue of confusion and deception under section 9 (2) (a) is concerned it is in the interest of rival parties.  The appellants have established their business under the trade mark “Raymond” for a long time.  The mark has thus acquired the status of a well known mark.  In cases where the appellant’s trade mark has gained goodwill and reputation there is a possibility of confusion and deception if any other trader uses an identical or similar trade mark.  As has been held by the Supreme Court in Ruston case just an addition of the word “James” to Raymond will not help the respondents to say that there will be no confusion or deception among the public.  The public would be misled to think that the respondents goods bearing the trade mark “Raymond James” would be that of the appellants.

 

21.       The provisions of section 11(2) is whether the impugned trade mark is identical or similar  to the earlier trade mark and whether the registration applied for in respect of goods which are not similar to those of the earlier registered trade mark, whether the earlier trade mark is a well known trade mark in India and the use of the latter mark without due cause would take unfair advantage and be-detrimental to the distinctive character or repute of the earlier trade mark.

 

22.       The trade mark “Raymond” is deceptively similar to the respondent trade mark “Raymond James”.  The appellant’s trade mark has been considered to be a well known trade mark by the Assistant Registrar in the impugned order.  The use of the respondent’s trade mark would be detrimental to the appellant’s reputation as the appellant’s use has been prior to that of the respondents.  We therefore  are of the opinion that the registration of the impugned trade mark would be in contravention of the provisions of Section 11 (2) of the Act.

 

23.       Where a registered trade mark has acquired a goodwill and reputation, such use cannot be permitted to be used by another person as it would cause confusion and deception.  This was the view of the Delhi High Court in Benz case which had been followed in a number of cases.  In the instant case, the appellant’s trade mark had acquired a goodwill and reputation among the public for garments and textiles goods over several decades.  The respondent’s application for registration without any use for the good for which the application was made cannot be permitted.

 

24.       Sub Section (3) of Section 11 prevents registration of a trade mark, the use of which is liable to be prevented by virtue of any law –  law of passing off and the copyright law.  In Toshiba’s case 2002 (24) PTC 654 it was held that the opponents trade mark Toshiba was well known to the public and as such the use of the mark “Toshiba” by the applicants would definitely create confusion or deception.

 

25.       Further the adoption by the respondent is only to trade upon and earn the profits upon the appellant’s reputation.  This will only amount to passing of their goods as that of the other.  The appellant’s objection under Section 11(3) is therefore upheld.

 

26.       The onus is always on the appellant to prove their case that the registration of the impugned trade mark would not cause confusion among the trade and public.  The respondent ie. the applicant has not satisfied as there is no use of the trade mark in relation to the goods for which registration has been applied for.  The appellants goods has acquired goodwill and reputation in the market and the use by the respondent would lead the public to think that they are the appellants goods.

27.       We do not agree with the finding of the Registrar that “though the trade mark is a well known mark no harm will be caused to the appellant as they have not applied for registration in class 9 & 16.”  The Registrar has relied on the observation of the Supreme Court in Toshiba Case and has come to this conclusion, but has not stated as to how the balancing act between the user of registered trade marks and non use should be tested.  The case relied on by the Assistant Registrar, is not applicable to this case on hand in our view.  That case was one under rectification proceedings where the registration granted was to continue on the register whereas the instant case is an opposition proceedings to decide whether registration ought to be granted or not.

 

28.       For the above mentioned reasons, we allow the appeals and the registration of the trade mark “Raymond James” under Nos.1058742 and 1058745 in class 9 & 16 respectively is refused.  Accordingly, the appeals are allowed with costs of Rs.10,000/- each.

 

 

 

(S. Usha)                                                                                            (Justice Prabha Sridevan)

Vice-Chairman                                                                                 Chairman

 

 

 

 

 

 

 

(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)

 

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