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whether the competing goods are different and whether the Registrar was right in refusing the appellant’s opposition. In deciding on this point the well settled law is to consider the nature of goods; its characteristic; its origin; the purpose; whether it is produced usually by one and the same manufacturer or distributed by the same wholesale houses; whether they are sold in the same shop over the same counter; during the same season and to the same class or classes of customers; whether they are regarded as belonging to the same trade etc. The Act uses the expression ”Similarity of goods or services” [S.11(a)]. The essential requirement is that there should be such similarity resulting in the likelihood of confusion on the part of the public. The question whether or not two sets of goods are of the same description is a question of fact and in deciding that question “one has to look at the trade” and must look at it from a practical business and commercial point of view. It is recognized that classification of goods and services is only an enabling tool for seeking registration and we can find many goods of same description in different classes as also goods of different description in the same class. In the instant case the competing marks are identical i.e. SONA. The rival goods are used by the common man. The perception of the mark in the mind of average consumer plays a decisive role. Here the appellant coined, adopted and started using SONA from 1975. The respondent was born some ten years later. Here it is layperson – illiterate, semi-literate, housewives, servants who will be buying both goods. Confusion as to the trade source is therefore inevitable. When the rival goods are used through the same trade channel and sold in the same shop over the same counter, many customers will wonder whether it might not be the case that the two products come from the same source. There is a real tangible danger if the impugned trade mark is put on the Register. The respondent started the use of the impugned trade mark in 1985 with an annual turnover of Rs.36,000/-. Upto 1995 their annual turnover was always less than one lakh rupees. On the other hand even before the respondent’s trade mark was born in 1985, the appellant annual turnover had reached Rs.36.0 lakhs. No wonder the appellant are greatly exercised. He is expanding and diversifying his business. The appellant have thus established by evidence filed before the Registrar and beyond any reasonable doubt, the civil standard of proof required to show that potential customers for the appellant’s goods will be misled into purchasing the respondent’s goods. In determining the likelihood of confusion because of similarity of goods, we are concerned with ordinary practical business probabilities having regard to all the circumstances. There is great affinity between the competing goods here. Since the practice of Registry is not to permit registration for a broad range of goods in a class, it then becomes its duty to ensure correct application of law in respect of subsequent identical mark for cognate class of goods. The Deputy Registrar had erred in applying the wrong test and permitted the registration of the impugned trade mark. His ruling that the rival goods are totally dim-similar is misconceived as the class of customers has been ignored. Similarity and confusion as to origin both largely are matters of fact and impression. The appellant have built a reasonable reputation for their trade mark SONA ten years before the respondent. In deciding such cases one has to think like a common man. That is the only correct test that can be sustained. The supreme test is the likely public confusion bench marking the level of education, class of customers at ground zero. 7. Accordingly, we set aside the order of the Deputy Registrar permitting registration of the impugned trade mark. OA/54/2005/TM/KOL is consequently allowed and the impugned trade mark “SONA” in class 30 is refused registration. There is no order as to costs.

English: Vishnupadh temple Gaya

English: Vishnupadh temple Gaya (Photo credit: Wikipedia)

INTELLECTUAL PROPERTY APPELLATE BOARD

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

 

(Circuit Bench Sitting at Kolkata)

 

OA/54/2005/TM/KOL

FRIDAY, THIS THE 8th DAY OF JUNE, 2012

 

 

HON’BLE SMT. JUSTICE PRABHA SRIDEVAN          … CHAIRMAN

HON’BLE SHRI V. RAVI                                                   … TECHNICAL MEMBER

 

M/s Sona Spices Pvt. Ltd.,

746, Industrial Area,

Phase-11, Chandigarh.                                                      … Appellant

 

(Represented by Advocate: Shri Pankaj Kumar)

Vs.

1.   Gopal Prasad,

Trading as M/s Rekha Sweets,

82, Fatheganj,

Gaya, Bihar.

 

2.   The Assistant Registrar of Trade Marks,

Trade Marks Registry,

CP-II, Baudhik Sampada Bhawan,

(I.P.Bhawan, 5th Floor),

Sector – V, Salt Lake,

Kolkata – 700 001.                                                                    …  Respondents

(None Represented)

 

ORDER (No.162/2012)

 

Hon’ble Shri V. Ravi, Technical Member:

 

            This appeal arises out of the dismissal of an opposition filed by the appellant against registration of a trade mark by the respondent. The trade mark in question is “SONA” in respect of lozenges, toffee and confectionery items. The main ground for refusal by the Deputy Registrar was that the opponents are mainly engaged in sale of spices under the trade mark “SONA” and such sales was confined to North India and the rival goods are goods of different description. Accordingly he rejected the opposition and ordered the application to proceed to registration.

 

2.                 Being aggrieved, the appellant had preferred an appeal and their case is briefly as follows:

(a)             No reason has been given why the rival goods are of different description;

(b)             The Deputy Registrar has erred in not giving a finding on the probability of confusion/deception;

(c)             Respondents evidence in support of the application is not in accordance with law;

(d)             The Deputy Registrar has erroneously given the benefit of S.12 to the applicant;

(e)             No finding has been given with respect to objection raised under S.9, 11, 12 and 18 of the Act;

(f)                The order of the Deputy Registrar under challenge is non-speaking in nature;

(g)             The Deputy Registrar failed to appreciate that since 1975 the opponent’s business has vastly expanded from spices to other edible products like namkeens, confectionery, tea, food items, pickles, mehandi, agarbhati etc.,;

(h)             The Deputy Registrar failed to consider spill over reputation for the rest of India even when sale of “SONA” for spices was registered for sale only in North India;

(i)                 The respondent had failed to discharge onus to prove that the impugned trade mark was entitled to registration;

(j)                 The subsequent adoption and use of an identical mark for same or similar goods is a bar under S.11 for its registration

(k)              The applicant cannot be the proprietor of the impugned mark for the goods in respect of which registration is sought;

(l)                 For the foregoing reasons the order of the Deputy Registrar should be quashed and registration be refused;

 

3.                   The appellant had also filed a miscellaneous petition to stay the registration of the impugned trade mark before this Board which was duly allowed on 22.01.2008 in the absence of contesting respondent despite service. The appeal petition was also returned unserved and the respondent did not enter appearance either to contest the miscellaneous petition or the main hearing.

 

4.                  The matter was listed before us on 01.03.2012 when only the counsel for appellant was present and the matter was heard exparte.  We have heard the submissions of the appellant’s counsel.

 

5.                  The appellant first adopted the trade mark “SONA” way back in 1975 in respect of spices. In 1993 they had expanded business under that mark for namkeen, confectionery and other cognate goods. Several applications under No. 654828, 654829, 654830 in class 30, 29 and 3 have been filed by them for the same trade mark which are pending.

 

6.                  The only point for determination is whether the competing goods are different and whether the Registrar was right in refusing the appellant’s opposition. In deciding on this point the well settled law is to consider the nature of goods; its characteristic; its origin; the purpose; whether it is produced usually by one and the same manufacturer or distributed by the same wholesale houses; whether they are sold in the same shop over the same counter; during the same season and to the same class or classes of customers; whether they are regarded as belonging to the same trade etc. The Act uses the expression ”Similarity of goods or services” [S.11(a)]. The essential requirement is that there should be such similarity resulting in the likelihood of confusion on the part of the public. The question whether or not two sets of goods are of the same description is a question of fact and in deciding that question “one has to look at the trade” and must look at it from a practical business and commercial point of view. It is recognized that classification of goods and services is only an enabling tool for seeking registration and we can find many goods of same description in different classes as also goods of different description in the same class. In the instant case the competing marks are identical i.e. SONA. The rival goods are used by the common man. The perception of the mark in the mind of average consumer plays a decisive role. Here the appellant coined, adopted and started using SONA from 1975. The respondent was born some ten years later. Here it is layperson – illiterate, semi-literate, housewives, servants who will be buying both goods. Confusion as to the trade source is therefore inevitable. When the rival goods are used through the same trade channel and sold in the same shop over the same counter, many customers will wonder whether it might not be the case that the two products come from the same source. There is a real tangible danger if the impugned trade mark is put on the Register. The respondent started the use of the impugned trade mark in 1985 with an annual turnover of Rs.36,000/-. Upto 1995 their annual turnover was always less than one lakh rupees. On the other hand even before the respondent’s trade mark was born in 1985, the appellant annual turnover had reached Rs.36.0 lakhs. No wonder the appellant are greatly exercised. He is expanding and diversifying his business. The appellant have thus established by evidence filed before the Registrar and beyond any reasonable doubt, the civil standard of proof required to show that potential customers for the appellant’s goods will be misled into purchasing the respondent’s goods. In determining the likelihood of confusion because of similarity of goods, we are concerned with ordinary practical business probabilities having regard to all the circumstances. There is great affinity between the competing goods here. Since the practice of Registry is not to permit registration for a broad range of goods in a class, it then becomes its duty to ensure correct application of law in respect of subsequent identical mark for cognate class of goods. The Deputy Registrar had erred in applying the wrong test and permitted the registration of the impugned trade mark. His ruling that the rival goods are totally dim-similar is misconceived as the class of customers has been ignored. Similarity and confusion as to origin both largely are matters of fact and impression. The appellant have built a reasonable reputation for their trade mark SONA ten years before the respondent. In deciding such cases one has to think like a common man. That is the only correct test that can be sustained. The supreme test is the likely public confusion bench marking the level of education, class of customers at ground zero.

 

7.                  Accordingly, we set aside the order of the Deputy Registrar permitting registration of the impugned trade mark. OA/54/2005/TM/KOL is consequently allowed and the impugned trade mark “SONA” in class 30 is refused registration. There is 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.)

 

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