//
you're reading...
legal issues

INTELLECTUAL PROPERTY APPELLATE BOARD The appellant’s case is that they are an established business dealing and manufacturing lime. They have been openly using the word Chamak and have applied for registration on 16.4.93 and the application is pending. The mark applied for by the appellant and the impugned mark are identical. The impugned mark is identical, it is neither adopted to distinguish nor is it capable of distinguishing the goods. Therefore they opposed the registration. 5. The learned counsel for the appellant submitted that the word Chamak was directly descriptive of the goods, and the respondent has not proved user. The appellant relied on AIR 1953 SC 357 – National Sewing Thread Co. Ltd., Chidambaram Vs. James Chadwick and Bros. Ltd. “The principles of law applicable to such cases are well settled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of Sec.8 and therefore it should be registered. Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing.”

Anna Salai in Chennai

Anna Salai in Chennai (Photo credit: Wikipedia)

INTELLECTUAL PROPERTY APPELLATEBOARD

 

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

(CIRCUIT BENCH SITTING AT AHMEDABAD)

 

 M.P. 65 OF 2010 IN TA/283/2004/TM/AMD  and  TA/283/2004/TM/AMD

 M.P. 66 OF 2010 IN TA/284/2004/TM/AMD    and  TA/284/2004/TM/AMD

FRIDAY, THIS THE 6TH DAY OF JANUARY, 2012

 

Hon’ble Smt. Justice Prabha Sridevan                                …Chairman      

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

 

Ashok Mirchumal Zehani,

Proprietor of Rajesh Lime Suppliers,

Soni Ki Chall,

Opposite B.O.C. Limited,

Rakhil Road,

Ahmedabad – 380 023.                                                           … Appellant

 

(By Advocate – Shri Y.J. Trivedi)

                                              

Vs.

 

1.         Ratilal Kalyanjibhai Patel

 

2.         Dilipkumar Ratilal Patel

            trading as M/s. Calcium Chemical Industries,

            1468, Mahavir Nagar,

Thakkarbapa Nagar Highway,

Ahmedabad – 382325,

 

3.         The Assistant Registrar of Trade Marks,

            Branch 15/27, National Chambers,

            First Floor, Ashram Road,

Ahmedabad – 380 009.                                               …Respondents

 

(By Advocate – Shri Akshay A. Vakil)

 

ORDER  (No. 9 of 2012)

Hon’ble Smt. Justice Prabha Sridevan, Chairman:

 

 

          This appeal has been filed against the order passed by the Assistant Registrar in the matter of application no 432117 in class 19 in respect of the trademark Chamak, and the opposition No AMD 53731, by which the opposition was dismissed and the mark was directed to proceed to registration.

 

2.         The appellant’s case is that they are an established business dealing and manufacturing lime. They have been openly using the word Chamak and have applied for registration on 16.4.93 and the application is pending.  The mark applied for by the appellant and the impugned mark are identical. The impugned mark is identical, it is neither adopted to distinguish nor is it capable of distinguishing the goods. Therefore they opposed the registration.

 

3.         The respondent’s case is that they are doing business in lime for several years under the trademark Chamak. They are the first and original adopter of the mark and have been using the same since 1981.  The Hon’ble Gujarat High Court has held that Chamak is not descriptive.  The mark deserves registration.

 

4.         The appellants did not file any evidence under Rule 53. The respondents filed exhibits A to G.  Though opportunity was given to the appellants to appear before the Assistant Registrar they did not do so.  Finally the Assistant Registrar heard the respondent and then passed orders.

 

5.         The learned counsel for the appellant submitted that the word Chamak was directly descriptive of the goods, and the respondent has not proved user.  The appellant relied on AIR 1953 SC 357 – National Sewing Thread Co. Ltd., Chidambaram Vs. James Chadwick and Bros. Ltd. “The principles of law applicable to such cases are well settled.  The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant.  It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of Sec.8 and therefore it should be registered.  Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the mark.  The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing.”

 

6.         The learned counsel for the respondent relied on the judgment in MCA 3 of 1992 of the Hon’ble Gujarat High Court.  This was an earlier round of litigation of the same matter, where by order dated 18.2.1992 the registrar had refused to consider this mark for registration. The learned counsel also submitted that the appellant had not produced any evidence and the registrar had passed a correct order.

 

7.         In the order of Gujarat High Court – Misc. Civil Appln. No.3 of 1992 – Dilipkumar R. Patil Vs. Assistant Registrar of Trade Marks, Ahmedabad dated 17.1.1998, the learned Judge had held “If the provisions of section 9(1)(d) of the said Act are considered then it would be quite clear that the words/word which are/is to be used as a trade mark may not have two references to the quality or characteristic of the goods.  In considering whether a mark has reference to the characteristic or quality of the goods, the mark must be looked at not in its glittering significance but as it would be a reflection to the public at larger.  Such question is a practical question to be decided by the common understanding of the terms amongst those who use it or have occasion to use it in the course of their daily life and not by the meaning to be found in the dictionaries.  The petitioner is dealing in lime and building materials and he is using the word ‘Chamak’ for his products.  The Assistant Registrar has observed in his order that the word ‘CHAMAK’ according to Hindi dictionary means, flash, glenm, splendour, light, bright, shine etc.  It is very difficult to hold that the lime which is used as a building material could fall in any of these description/definition of ‘CHAMAK’.  It is not at all possible to hold that by the word ‘CHAMAK’ any person dealing with the material in question will understand that ‘Chamak’ means lime.  Lime has neither brightness nor shaping nor flash nor splendor nor bright.  I am unable to hold that by the use of the said word ‘CHAMAK’ by the present appellant, the appellant will be encroaching on the rights of the other persons dealing in similar material”  .   So this question is no longer open.

 

8.         As regards user the Registrar was satisfied that the evidence showed user by the respondent. On the other hand the appellant had not filed any evidence to show user that there was likelihood of confusion.

 

9.         The Respondent had filed Regular Civil Suit No.2/93 in the Joint District Judge Ahmedabad (Rural) – Dilipkumar Patel and Vishal Limes Private Limited Vs. Rajesh Lime Suppliers against the appellant for passing off. The appellant as defendant did not file any written statement. The plaintiff witness had stated that since 1981 he was selling plaintiff’s Chamak lime and bills were produced. The defendant had not produced any evidence to show he had inherited the business from his father. The suit was dismissed on the ground that the plaintiff had not proved his case.  One thing is clear from this judgment and that is the appellant did not produce any evidence to prove user even before the civil court.

 

10.       The Registrar had referred to the respondent’s evidence to show user. We called for the records and perused the same.  The Hon’ble Gujarat High Court had held it is not descriptive.  So none of the objections to the registration of the mark can be sustained.

 

11.       In the absence of any evidence on the side of the appellant, we have no material to hold that the impugned order is erroneous.  We therefore dismiss the appeal.

 

 

 

 

(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.)

 

 

 

 

 

 

 

About advocatemmmohan

ADVOCATE

Discussion

Comments are closed.

Blog Stats

  • 2,887,331 hits

ADVOCATE MMMOHAN

archieves

Enter your email address to subscribe to this blog and receive notifications of new posts by email.

Join 1,905 other followers
Follow advocatemmmohan on WordPress.com
%d bloggers like this: