INTELLECTUAL PROPERTY APPELLATE BOARD
M.P.No.01/2008 in ORA/105/2006/TM/CH
M.P.No.130/2011 in ORA/90/2007/TM/MUM
ORA/105/2006/TM/CH and ORA/90/ 2007/TM/MUM
FRIDAY, THIS THE 20th DAY OF APRIL, 2012
HON’BLE Smt. JUSTICE PRABHA SRIDEVAN … CHAIRMAN
HON’BLE Shri V. RAVI … TECHNICAL MEMBER
No.4, Fairlie Place,
Kolkata – 700 007. …. Applicant
1. The Registrar of Trademarks,
Chennai – 600 032.
2. Rajesh Kumar Naredi,
F-11/C, IDA, Gandhi Nagar,
Hyderabad – 500 037.
3. M/s Mahavir Home Appliances,
No.134, Tulsi Complex, Sultanpet,
Bangalore – 560 053. … Respondents
1. Rajesh Mumar Naredi,
Trading as Vishesh Appliances,
F-11/C, I.D.S. Gandhi Nagar,
Hyderabad – 500 037.
2. M/s Mahavir Home Appliances,
represented by its Partner S. Jain,
No.134, Tulsi Complex, Sultanpet,
Bangalore – 560 053 … Applicants
1. Rallifan Limited,
No.4, Fairlie Place,
Kolkata – 700 007.
2. The Registrar of Trade Marks,
I.P.Building, Mumbai – 400037. … Respondents
Shri R. Krishnamurthy, Senior Counsel assisted by Shri Arun C. Mohan, Shri L. Ramprasad for the applicant in ORA/105/2007/TM/CH and respondent No.1 in ORA/90/2007/TM/MUM
Shri P.S. Raman, Senior Counsel assisted by Smt. P.V. Rajeswari, Shri Sivaraman Vaidyanathan for R3 in ORA/105/2007/TM/CH and applicant No.2 in ORA/90/2007/TM/MUM
None appeared for R2 in ORA/105/06/TM/CH and applicant No.1 in ORA/90/07/TM/MUM
Hon’ble Justice Prabha Sridevan, Chairman:
ORA/105/2006/TM/CH has been filed for removal of the mark “RALLY” registered under No.1213190 in Class 11, ORA/90/2007/TM/MUM has been filed for the removal of the mark “RALLIFAN” No. 306508 in class 11. Both the marks relate to electric fans manufactured by the respective owners. So goods are the same, the trade channels are consequently the same. We do not see any phonetic difference between, “I want a Rallifan” and “I want a Rally fan”. They sound identical. So the decision will depend on other facts like priority of user and honesty of adoption and so on. The owners of Rally fan have also raised a point of law with regards to S.44 of the Trade Marks Act 1999 ( Act in short). We will refer to the parties as Rallifan and Visesh, which will include Visesh’s alleged assignee Mahavir Home Appliances.
2. The case of Rallifan is that they are the registered proprietor of the mark Rallifan since 26-6-1975 in respect of electric fans. They had used the mark Rallis since 1950s and Rallifan since 1965. Ralli is an important feature of the mark. The registration in favour of Visesh of the mark is contrary to law. It was applied for on 9-7-2003 and the certificate was granted on 26-9-2005. The Mark cannot remain on the register because it is identical phonetically to Rallifan’s mark. It is identical when written in Indian languages. The products are identical. There would be deception and if it remains it will not be in public interest. The devolution of interest in the mark in favour of Rallifan is clear. There are also MOUs in favour of dealers. The user by Visesh is much later. Their adoption is not bonafide. The assignment in favour of Mahavir Home Appliances is made with an ulterior motive and is not genuine. C.S.293 of 2006 was filed before the Calcutta High Court for injunction against infringement of the marks 195299,195300, and 306508. But it was withdrawn. Presently O.S.111/2008 has been filed before the Principal District Judge, Coimbatore in respect of the mark Rally. The mark “Rally” must be rectified and in the proceedings filed by Visesh on almost the same pleadings Rallifan prayed that their mark should remain.
3. The case of Visesh is that they have been in the business since 1999. Rallifan is not a person aggrieved as they are not the owner of the mark of Rallifan. Rallifan has acquiesced in the use of the mark by Visesh. There is no evidence of use of the Rallifan mark. The assignment of the mark is not valid because the associated marks have not been assigned. Rallis is a personal name. Visesh has used the mark substantially and in any event the sales is restricted to the South. There are statistics sufficient to prove user. The adoption is bonafide. Rallifan has not shown any proof of injury or confusion. Visesh prayed that their mark should remain and on basically the same pleadings prayed that the mark Rallifan shall be removed.
4. Both sides filed the evidence in support of their case which will be referred to later. MPs have also been filed for reception of additional evidence.
5. The learned Senior counsel appearing for Rallifan submitted that the devolution of interest is clearly shown in the history sheet. The Associated marks were not renewed and have been removed in ORA/91 and 92/2007/TM/MUM. This mark Rallifan has been validly assigned. A comparison of the sales of Rallifans and Rally fans will prove the case of Rallifan. The affidavits of consumers prove confusion. Rallifan’s use of the mark is long prior to the use by Visesh. The learned Senior Counsel relied on several decisions.
6. The learned Senior Counsel appearing for Visesh submitted that the mark Rallifan was associated with two other marks. When that is so , there can not be any assignment of one mark without the marks with which it was associated. He submitted that they adopted the mark Rally for its connotation with speed etc as in a motor rally. He submitted that they had even engaged a graphics expert to devise the logo. Their logo was not at all identical to the Rallifan. The various documents to show transmission of use can not be believed. He referred to S.44 of the Act. He showed that the user of Rallifan stop with 2002. When there is no user by Rallifan it cannot traffick in the mark. He too relied on several decisions.
7. We have considered the two applications carefully.
8. In ORA/91 and 92 /2007 the marks 195300 and 195299 were rectified on the ground of non-renewal, by order dated 4-9-2009. So it is clear that Rallifan could not have assigned the lapsed marks, but only the live one. We do not see any irregularity in this.
9. Exhibit B filed by Rallifan is the certified copy of the history of the mark 306508. It shows that it has been renewed till 26-6-2010. The registration date is 26-06-1975 as an associated mark with two marks mentioned above in the name of RALLIS INDIA Ltd. It was renewed, in 1982 and 1989. On a TM-24 H.M.P. Engineers were recognised as subsequent proprietors as from 3-12-92. It was renewed from 1996. On another TM24 Unique Global Ltd was recognised as subsequent proprietors as from 11-9-1997. It was renewed from 2003. On form TM-33 the proprietor’s name was altered to Ralllifan Ltd.
10. Ex C (colly) are invoices from 1991 till 2002. Almost all the invoices carry the wave like logo Rallifan. Ex D Colly are licence agreements in respect of the mark Rallifan in favour of other parties in 2002 namely Rallifan Power Appliances. Ex E Colly are advertisements from 1993 to 2004. These have been made in newspapers circulated in Kerala, Kolkata, Tamilnadu, Karnataka, Orissa, Rajasthan, Chandigarh, Pondicherry, A.P. Ex.F (colly) are evidence to show that the advertisements were telecast in TV channels. Ex G Colly are letters from dealers of Rallifan in 2006 and 2007. These documents have been proved by the affidavit of S.K. Gadia.
11. The above evidence clearly shows the proprietorship and user of Rallifan till the date of petition. The fact that the sales invoices stop with 2002, does not affect the case of Rallifan. The wide spread advertisement all over the country clearly shows use. So Rallifan has shown use which is clearly prior to the use of Rally by Visesh which is admittedly from 2000.
12. Now we will look at the evidence filed by Visesh. R1 is the Central and Sales Tax registration which do not refer to the mark Rally. We only know that Visesh manufactures electric fans. R2 is the letter dated 26/12/2006 certifying that Global Art had created the Rally Logo for Visesh in or about 1999. R3 is the chartered accountant certificate relating to Visesh. This does not specify that the sales are of Rally fans. R4 are photographs of shops where Rally fans are sold.R5 is the copy of papers filed before the Calcutta High Court. R6 is the search report dated 30-Nov-2006 . This does not show the mark Rallifan.
13. In addition Rallifan has filed additional evidence Ex H series. These are affidavits of the year 2007 of Sri A.K.Bothra Calcutta, Mukesh Agarwal Jaipur, Nagendra kumar, Vishakapatnam, and other dealers from Coimbatore and Chennai. They are mostly dealers of Rallifan and they testify that they know about the existence of Rallifan and that they came to know about Rally fan recently and that it will definitely cause confusion.
14. The following judgments were cited:
1) 1998 PTC (18) 142 Westinn Hospitality Services Vs Ceasar Park Hotels. In this case it was held that there was no likelihood of confusion since the company in USA had no intention to commence business here.
2) 2006 8 SCC 726 Ramdev Food Products vs. Arvindbhai Rambhai Patel and others. In this the common feature was ”Ramdev”. It was held that the right to use the trademark was exclusive and there can be only one mark, one source, one proprietor and that a proprietor of a registered mark has a statutory right, thereto.
3) 1991 (110) PTC 122 (Mad) Madras fertilizers vs Chaitra Fertilizers. In this it was held that the marks need not be identical without any differences. It is enough to show that the consumer is likely to be deceived.
4) AIR 1970 1649 Ruston and Hornby vs Zamindara Engineering. In this it was held that where the trademarks are identical, the Court in an action for infringement will not inquire whether the mark is likely to deceive. But where the mark is somewhat similar the test for infringement action and passing off is the same.
5) 1996 16 PTC 537 SC: Cycle corporation of India vs T.I. Raleigh Industries. This dealt with the benefit of S. 46 and the legal effect of a licence agreement.
6) AIR 1951 Bombay 147:James Chadwick vs The National Sewing Thread. In this case it was held that the marks and the mental association formed on an average man of ordinary intelligence must be borne in mind.
7) 2006 32 PTC 705 IPAB Rajive Paul vs Princeson Jose. In this case the marks were identical and the Board rejected the plea of honest concurrent user.
8) AIR 1998 Guj 247 Rupa & co vs Dawn Mills. In this case it was held DON primafacie infringes DAWN, and that though the visual background was not similar, since the goods were same and the test of a man of ordinary intelligence was applied.
9) PTC (Supp) (1) 13 (SC) Corn Products Refining Co., vs. Shangrila Food Products. In this case it was held that the mark GLUVITA for biscuits was held similar to the mark GLUCOVITA for glucose food. It was further held that the two rival marks have to be considered as a whole and that in deciding the question of similarity between the two marks, the Courts have to approach it from the point of view of a man of average intelligence and of imperfect recollection.
10) 2007 34 PTC 557 Alkem Laboratories vs Mega International. In this case both the marks were GEMCAL. The Court held that there was honest concurrent user, on facts both parties had started use around the same time and there was no evidence of confusion.
11) AIR 1963 SC 449 Amrithdhara Pharmacy vs Satya Deo Gupta. In this case the Supreme court considered the effect on an unwary purchase with imperfect recollection
12) 1978 RPC 245 Phantom Trade mark-Supreme Court of Judicatute – Court of Appeal, England. In this case the mark Phantom was at all times associated with two other marks, and at no time was any action to dissociate it from them. Therefore a partial assignment of associated marks was held to be a nullity.
13) In Corn Products Refining /Co., case (supra) it was held that a person seeking protection of his mark on the basis of existence of similar marks has to prove that his mark has acquired a reputation by actual user in the market.
14) 2000 CLC 183 – M/s Indian Shaving products Ltd., an anr., vs Gift Pack and another. Here it was held that others using the mark is not a defense. Since the court is called upon to decide the dispute between the parties before it. The court cannot be expected to adjudicate upon a dispute which is not before it.
15) 2011 (4) CTC 417 – Blue Hill Logistics P. Ltd., vs. Ashok Leyland Ltd., and another. It was held that a person claiming exclusive right over a mark cannot claim it is a generic expression.
16) Several other judgments were also cited where in respect of marks a) WITCO and NITCO 2010 (43) PTC 240 (Mad) (DB) – WITCO (India) Pv. Ltd., – vs – NITCO; b) Gangotree and Shree Gangotree 2005 (31) PTC 502 (Mad) – Gangotree Sweets and Snacks P. Ltd vs. Shree Gangotree Sweet, Snacks & Savories; c) Goldage and Godrej PTC (Supp) (2) 631 (Del) – Mohindra Traders vs. Godrej Boyce Mfg. Pv. Ltd.; d) LVL 2007 (34) PTC 731 (IPAB) – Jain Doors Pvt. Ltd., vs. Suresh Kumar Jain; e) Nandhini and Nandhini Deluxe 2011 (48) PTC 359 (IPAB) – Karnataka Co-operatie Milk Producers Federation Ltd., vs. N. Anand & A. Narsimha Rupesh Anand, trading as M/s Nandhini Deluxe & Ors.; f) Eenadu for newspapers and agarbathies (2011) 4 SCC 85 T.V. Venugopal vs. Ushodaya Enterprises Limited the prior users right was upheld.
15. In the present case the assignment was of the only mark that was alive, the registered proprietor had not renewed the other two marks and had allowed them to lapse. So the assignment was of the only mark that was alive. A partial assignment is frowned upon because it would run counter to the principle, one source, one mark, and would injure public interest. But in this case the other marks had been expunged, this mark alone had been renewed and kept alive. So the S.44 objection that assignment of associated marks can only be as a whole and not separately is rejected.
16. The marks are the same. There is no beating around the bush. Neither the logo nor the spelling can improve Visesh’s case. Both the goods will sound similar since they will be referred to as Rallifan and Rally fan. Visesh fails the test laid down by the Supreme Court. We cannot believe that when Rallifan has been in the market for so long, a new entrant in 2000 in relation to the same goods i.e. electric fans was unaware of it. The adoption is not free from doubt and cannot be allowed. The evidence of the chartered accountant’s certificate does not show sales of Rally fans alone but all electric appliances that Visesh is dealing in. On the other hand Rallifan has shown that it is using the mark through the invoices and the advertisements. The affidavits to prove confusion cannot be rejected. In fact in this case where the marks are identical we do not need anything more. Rallifan had long been in the market when Rally fan entered. The reason given that they had chosen Rally for the speed etc associated with motor rally is not at all convincing.
17. The Registrar has not applied the provisions relating to grounds for registration correctly. We must interfere with the decision. Rally cannot remain in the register. It is removed.
18. A person whose adoption is not free from doubt cannot seek the removal of the mark which it has tried to imitate. So the rectification of the mark Rallifan is rejected. The applicant in ORA/105/2006/TM/CH has filed M.P.No.01/2008 for filing additional evidence. Similarly, the applicants in ORA/90/2007/TM/MUM have filed M.P.No.130/2011 for filing additional evidence. We have considered the additional evidences filed by the applicants in the respective rectification applications. In view of this M.P.No.01/2008 and M.P.No.130/2011 are allowed.
19. In view of the above ORA/105/2006/TM/CH filed by M/s Rallifan Limited is allowed. The Registrar of Trade Marks is directed to remove the trade mark “RALLY” registered under No.1213190 in Class 11 in the name of the respondent No.2. ORA/90/2007/TM/MUM filed by Mr. Rajesh Kumar Naredi is dismissed. No order as to costs.
(V. RAVI) (JUSTICE PRABHA SRIDEVAN)
TECHNICAL MEMBER CHAIRMAN
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)