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INTELLECTUAL PROPERTY APPELLATE BOARD This Appeal arises out of the order dated 30.09.2006 refusing the application for registration and the opposition under No. 172888 in Class 9. The appellants herein filed an application for registration of the Trade Mark CAP CAB on 03.11.2000 in Class 9 under No. 967948 claiming user since 01.04.1986 in respect of various kinds of electrical wires and cables. The said application was advertised before acceptance in the Trade Mark Journal MEGA – 6 dated 25.11.2003 at page 3580 under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act). The respondent herein filed their notice of opposition opposing the registration on the ground that they are the Registered Proprietors of the Trade Mark CAP CAB under No. 750328 in Class 17 as of 03.01.1997. The respondent had also filed an application under No. 750328 in Class 17 which is under opposition. The respondent’s main contention was that they had adopted the Trade mark as early as 1981 and had been using the same continuously and extensively since then. =23. On perusal of the records, it is seen that both the appellants and the respondents are carrying on a business of similar goods with identical marks. In the case of deciding the issue of deceptive similarity, the class of customers are to be considered. The class of customers here would belong to all categories. In such circumstances, we will have to consider the priority in use. Though the respondents claim user since 1981, their documents are only of the year 1990 whereas the appellants documents are from the year 1986. The public who are aware of the appellants goods since 1986 are likely to associate the goods only with that of the appellants goods. There is no doubt the onus is always on the appellant / applicant to prove that there has been no instance of confusion in the market. The appellant being prior in use, if at all there is confusion it will only be because of the respondent’s goods. The onus, therefore now shifts on the respondent to prove confusion, which has not been satisfied. We, therefore, do not think there is any valid reason to refuse the application for registration. 24. For the above mentioned reasons, the appeal is allowed and the application for registration of the trade mark CAP CAB under No. 967948 in Class 9 is allowed to proceed for registration. No order as to costs. In view of the fact that the appeal has been disposed off, nothing survives in the Miscellaneous Petition.

INTELLECTUAL PROPERTY APPELLATEBOARD

Anna Salai near old Anand theater signal, Chennai

Anna Salai near old Anand theater signal, Chennai (Photo credit: Wikipedia)

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

 Teynampet, Chennai-600018

                                            *****

(CIRCUIT BENCH SITTING AT DELHI)

 

M.P.No.280/2007

IN

 OA/08/2007/ TM/DEL

AND

OA/08/2007/TM/DEL

 

WEDNESDAY THIS THE 28th DAY OF DECEMBER,  2011

 

HON’BLE SMT.JUSTICE PRABHA SRIDEVAN                …  CHAIRMAN

HON’BLE MS. S. USHA                                                      …  VICE CHAIRMAN

 

Shri Rajnish Kohli,

S/o Shri D.N.Kohli,

Proprietor of M/s CAPITAL ELECTRIC CORPORATION,

3/59, Jungpura Extension,

New Delhi 110 014.                                                                                  … Appellant

(Represented by Advocate:   Shri M.K.Miglani)

Vs

CAPITAL CABLE INDIA LTD,

1798-A, Bhagirath Palace,

Delhi 110 006.                                                                             …   Respondent

(Represented by Advocate: Shri Umesh Mishra )

O R D E R No. 242/ 2011

 

 

HON’BLE MS. S. USHA, VICE CHAIRMAN:

This Appeal arises out of the order dated 30.09.2006 refusing the application for registration and the opposition under No. 172888 in Class 9.  The appellants herein filed an application for registration of the Trade Mark CAP CAB on 03.11.2000 in Class 9 under No. 967948 claiming user since 01.04.1986 in respect of various kinds of electrical wires and cables.  The said application was advertised before acceptance in the Trade Mark Journal MEGA – 6 dated 25.11.2003 at page 3580 under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).  The respondent herein filed their notice of opposition opposing the registration on the ground that they are the Registered Proprietors of the Trade Mark  CAP CAB  under No. 750328 in Class 17 as of 03.01.1997.  The respondent had also filed an application under No. 750328 in Class 17 which is under opposition.  The respondent’s main contention was that they had adopted the Trade mark as early as 1981 and had been using the same continuously and extensively since then.

2.         The appellants herein filed their counter statement stating that  they had been using the mark since 01.04.1986 as had been claimed in the application for registration of the Impugned Trade Mark.  They also submitted that the case of the respondent of user since 1981 is false.  The learned Registrar after hearing both the counsel held that the appellants have failed  to submit any document  to  prove the claim of  honest user of the mark in the market.  And therefore, the case of “honest user” under Section 12 of the Act was not satisfied and rejected the submissions on Section 12.  As regards the proprietorship, the Registrar had held that the respondents have proved proprietorship of the mark by registration and, therefore, the appellant’s claim of proprietorship was rejected.  The Registrar also held that the Impugned Mark was not capable of distinguishing the goods and therefore, the objection under Section 9 was upheld.  The objection under Section  11 was also upheld by the Registrar and, therefore, the opposition was allowed and the registration was refused.

3.         Being aggrieved by the said order, the appellant herein filed the instant appeal.  The appellants stated that they had honestly and bonafidely conceived and adopted the Trade mark CAP CAB in the year 1986 in order to distinguish their goods from those of others.  The appellant adopted the said mark  knowing well that there were no similar marks in use in respect of the said goods.  The Trade mark CAP CAB was coined by taking CAP from the word “Capital” which was part of its  firm name and common suffix CAB representing the goods “Cables”.

4.         The appellant had established a good business under the said trade Mark CAP CAB and thus the Trade Mark CAP CAB had become distinctive of the  goods of the appellants.

5.        The appellants preferred the present appeal on the following grounds:

1.The impugned order is contrary to law and facts of the case.

2.The impugned order suffers from serious infirmity as the Registrar failed    to adjudicate the matter and deserves to be set aside;

3.The Registrar erred in law in not  giving any finding on the evidence filed by the respondent which are  seriously challenged by the appellant.  In fact, the respondent had never used the trade mark CAP CAB.    There is no finding that the respondent had used the mark or established any goodwill and reputation.  In the absence of such finding, the provisions of Section 11 becomes inapplicable to the proceedings;

4.The Registrar had failed to consider the evidence filed by the appellant to prove the fact that the respondent’  was using different Trade Marks and not the Trade Mark CAP CAB.

5.The Registrar had failed to adjudicate the very basis of the proceedings relating to the registration of the Trade Mark.

6.The Registrar had grossly erred in dealing with the appellants evidence;

7.The Registrar ought to have allowed the application for registration on account of honest and bonafide adoption and continuous use for the past 20 years;

8. The Registrar was completely  wrong in holding that the adoption of the mark by the appellant was not honest because the appellant did not verify the records of the Registrar at the time of adoption.  In fact, in the year 1986 when the appellant  adopted the Trade mark CAP CAB, there was nothing on record of the Registrar of Trade marks and such verification would not have rendered adoption of the mark by the appellant as dishonest;

9. The Registrar grossly erred in holding that the mark is not capable of distinguishing the case of the appellant and prohibited under Section 9 of the Act.

10. The impugned order is unwarranted and in the circumstances of the case, bad in law and as such is not sustainable.

6.         The respondent herein filed their counter statement stating that the respondent  is a well known company which is engaged in the trade and business of manufacturing and marketing of electrical wires and cables, insulation wire, conduit pipes , PVC pipes, laminated sheets, rubber pipes, gaskets, flexible pipes tubes and parts of plastic material and carrying on business under the name and label  of M/s Capital Cable India Limited.  The respondent adopted the Trade mark CAP CAB  in the year 1981 and in order to protect their statutory rights, applied for registration of the trade mark CAP CAB in relation to goods in class 9 and 17 in the year 1997.  The application made in Class 17 under No.750328 was registered in the name of the user.  The other application under No.750330 has been opposed by the appellant herein.

7.         As a result of extensive advertisement and publicity, respondent has earned an excellent reputation in relation to the above mentioned goods sold under the Trade Mark CAP CAB.  On account of superiority of the goods, long extensive and continuous use, the trade mark CAP CAB has become very popular  among the trade and public.  By virtue of such long use, the trade mark has come to be extensively  associated with its goods and business.  Therefore, the Trade Mark has acquired distinctiveness by long use and the Trade mark registered is validly subsisting on the registrar.

8.       The present appeal is an abuse of process of law and therefore, bad in law and is liable to be dismissed.  The appeal is barred by the provisions of law as the appellant  has suppressed and misrepresented the material facts.

9.         The Appellant is not the proprietor of the Trade Mark  CAP CAB, the appellant never used the mark in relation to any goods, the appellant has wrongly stated that they adopted the Trade mark in the year 1986.  They have never proved that they had been using the Trade mark in relation to the goods for which the registration has been sought for.

10.       The impugned Trade Mark is absolutely devoid of distinctive character and capable of being distinct.   The impugned Trade mark  does not fulfill any of the requisite conditions as laid down under the statute and therefore does not qualify for registration as a Trade Mark.  Impugned Trade Mark is identical and or deceptively similar to the respondents Trade mark and therefore,                  prohibited under Section 11 of the act.

11.       The appellants  adoption is dishonest only with the  intention to trade upon the good will and reputation  earned by the respondents’.  The application is prohibited  for registration under sections  9,11, 12, 18 & 33 of the Trade Marks Act.

12.     We have heard Mr. M.K. Miglani for the appellant and Mr. Umesh Mishra for the respondent,  on 19.10.2011.

13.       The learned Counsel for the appellant submitted that they had applied for registration of the trade mark CAP CAB under No.967948 on 03.11.2000 claiming user since 01.04.1986.  The same was opposed by the respondent herein on the ground that they had adopted and used the trade mark since 1981 but have not substantiated the same by any proof.  The sales figures furnished by the respondent is in respect of various trade marks as is seen from the document at page 39 of the appeal papers.  In the other invoices, it is seen  that the trade mark CAP CAB is written by hand and only creates a doubt as to the validity of the document.

14.       The appellant submitted that they had coined the word CAP CAB from their trading style  i.e. Capital Electric corporation and CAB from the Cable.     They had been using the said trade mark since 1986.  Their sales turnover runs to several lakhs of Rupees.  As the sales invoice filed by the appellant did not have the trade mark  CAP CAB mentioned,  a separate declaration affidavit from the customer was filed to prove their user since the 1986.   The appellant took us through the advertisements since 1987 onwards.

15.       The appellant further submitted that the respondents registered application under No. 750328 in Class 17 and the other pending application under No. 750330 in class 9 were mentioned in the impugned order, were not pleaded by the respondent.  The learned Registrar has passed the impugned order without proper application of mind and the Registrar has failed to consider the appellants objections.

16.       The counsel then relied on the judgement reported in PTC (Suppl)(1) 490 (Delhi) “ Pritam Das … Vs  Anil Food Industries … “  to say that mere filing of application for registration is not sufficient to  get any relief unless the person is able to prove prior use.

17.       1981 PTC 121  “The Indian Association of Thermometry and others Vs M/s Hicks Thermometers (India) ltd., and Another”  was relied on to say that it is natural to have affidavits which are stereotyped.   It is only to prove the use of the mark as well as the reputation earned through the use.

18.       The learned counsel finally submitted that they are using the trade mark since 1986, whereas though the respondent had claimed to have been using since 1981 have not produced any document in proof thereof.  The counsel therefore, prayed that the application for registration be allowed.

19.       In reply, the counsel for the respondent  submitted that they had filed two applications in the year 1997 and had obtained one registration and the other application is opposed by the appellant herein.  Their adoption is from their trading style Capital Cable Industries Ltd.  The appellants adoption is dishonest, therefore the registration ought not to be granted and the appeal be dismissed.

20.       We have heard and considered the arguments and have gone through the documents and pleadings.

21.       The appellants have filed documents from the year 1987 though they claim use since 1986.  On perusal of the documents filed by the respondents, we do not find any document earlier to 01/01/1990.  It is also pertinent to mention here that in the other applications filed by the respondent  under No. 750328 in Class 17 and No. 750330 in Class 9 on 01.03.1997, the user claimed is 1982 whereas in the counter statement filed in the instant matter, the respondent has claimed user since 1981.   We cannot consider any date of user as it has not been proved by respondent as there are different dates as the respondents are themselves not clear in their claim of date of use.  The appellants have filed sufficient evidence in proof of their user since 1986.  The appellant has filed certain C Form of declaration issued by the Central Sales Tax Authorities along with the affidavit of the purchasers.  The C Form is of the year 1986.

22.       The Registrar has held that the proprietorship can be acquired by use or by honest adoption or by registration.  Here the appellants has acquired the proprietorship right by  honest adoption and use.  The appellants have claimed use since 1986 and have proved the same by cogent evidence.  The respondent’s use as observed earlier is not clear and therefore cannot be considered.  The appellants are prior in use and their claim of honest use can be accepted.  The respondent’s registration will be of no use.  The well settled principle is mere registration of the trade mark without any use will not provide any relief.   The respondents registration without any use cannot be considered.  The appellants have proved their use prior to that of  the respondents use.

23.       On perusal of the records, it is seen that both the appellants and the respondents are carrying on a business of  similar goods with identical marks.  In the case of deciding the issue of deceptive similarity, the class of customers are to be considered.  The class of customers here would belong to all categories.  In such circumstances, we will have to consider the priority in use.  Though the respondents claim user since 1981, their documents are only of the year 1990 whereas the appellants documents are from the year 1986.  The public who are aware of the appellants goods since 1986 are likely to associate the goods only with that of the appellants goods.  There is no doubt the onus is always on the appellant / applicant to prove that there has been no instance of confusion in the market.  The appellant being prior in use, if at all there is confusion it will only be because of the respondent’s goods.  The onus, therefore now shifts on the respondent to prove confusion, which has not been satisfied.  We, therefore, do not think there is any valid reason to refuse the application for registration.

24.       For the above mentioned reasons, the appeal is allowed and the application for registration of the trade mark CAP CAB under No. 967948 in Class 9 is allowed to proceed for registration.    No  order as to costs.    In view of the fact that the appeal has been disposed off, nothing survives in the Miscellaneous Petition.

(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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