K O S T A L V S. R E G I S T R A R O F T R A D E M A R K S A N D O T H E R S

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1 K O S T A L V S. R E G I S T R A R O F T R A D E M A R K S A N D O T H E R S INTELLECTUAL PROPERTY APPELLATE BOARD Guna Complex Annexe-I, 2nd floor, 443, Anna Salai, Teynampet, Chennai (Circuit Bench sitting at Kolkata) TA/300/2004/TM/KOL (A. No. 202/1998) MONDAY THIS, THE 10th DAY OF JANUARY, 2005 Hon ble SHRI JUSTICE S. JAGADEESAN Chairman Hon ble DR. RAGHBIR SINGH Vice-Chairman KOSTAL VERWALTUNGSGELLSCHAFT MBH A Corporation organised under The Laws of Germany Wiesenstrasse 47, Ludenschied FEDERAL REPUBLIC OF GERMANY Appellants (By Advocate Ms. Maushumi Bhattacharya) Vs. 1. THE REGISTRAR OF TRADE MARKS, KOLKATA 2. THE ASSISTANT REGISTRAR OF TRADE MARKS, KOLKATA 3. H. LAXMICHAND JAIN & SMT. DEEMA DEVI Trading as HIMLITE PRODUCTS (INDIA) No. 1, M.T. Street, B.V.K. Iyergar Road, Cross, BANGALORE KARNATAKA Respondents (By Advocate - Ms. Sunita Goel for R3) O R D E R(No. 3 of 2005) Hon ble Shri Justice S. Jagadeesan 1

2 The appellants have filed this appeal against the order of the Assistant Registrar of Trade Marks dated , wherein the appellants application for registration of the Trade Mark was refused. 2. The label mark consisting of the letters LK was sought to be registered in class 9 under application No B by the appellants on After accepting in Part-B, the application was duly advertised in the Trade Marks Journal No dated at page The third respondent herein, M/s. Himlite Products (India) filed their notice of opposition on objecting to the registration of the impugned mark on the ground that they are the proprietors of the Trademark LK as they are using the same since 1979 in respect of motor starters and their spares, panel and switch gears. Further, their application No for registration of the said trademark is pending. Due to the extensive use and wide publicity, the said trademark of the third respondent is being identified and exclusively associated with them relating to the goods produced by them. Hence the registration of the impugned trademark is prohibited in terms of Section 11(a) of the Trade and Merchandise Marks Act, The further objection is that the impugned mark is a letter mark and is prima-facie not distinctive without any evidence of use and therefore the registration of the same is objectionable under Section 9 of the said Act also. The appellant cannot claim the propriety right of the impugned mark as the same does not qualify for registration under Section 18(1) of the said Act. 3. The appellants filed their counter statement denying the various averments of the third respondent and further stated that the impugned mark was adopted by them as early as 1979 and they also obtained the registration of the impugned mark in different countries all over the world. So far as India is concerned, the impugned mark is being used by the appellants since January Both the parties filed their evidence and the matter was taken up for argument. The Assistant Registrar after hearing both the counsels, under the impugned order, allowed the opposition No. CAL 2729 of the third respondent and rejected the application of the appellants for registration finding that the appellants failed to establish by letting any evidence of their use of the impugned mark since the year 1976 or 1979 or 1986 and also the visual impression of the impugned mark was not sufficiently distinctive for registration in Part B and as such does not qualify for registration under Section 9 of the said Act. The third respondent having reputation and goodwill in respect of their mark, the registration of the impugned mark would cause confusion and deception and as such, is prohibited in terms of Section 11. As against the said order, the appellants filed appeal in TMA 1 of 1998 on the file of Hon ble High Court of Calcutta. The said appeal was transferred to this Appellate Board pursuant to Section 100 of the Trade Marks Act, 1999 and numbered as TA/300/ We heard Ms. Maushumi Bhattacharya, the learned counsel for the appellants and Ms. Sunita Goel, the learned counsel for the respondents on during our sitting at Kolkata and reserved orders. Subsequently the counsel on either side filed elaborate written arguments and the counsel for third respondent along with his reply written argument requested for a further hearing. So we listed the appeal on and heard Ms. Maushumi Bhattacharya for the appellant and Mr. A.M. Shah for the third respondent. The learned counsel for the appellants contented that the appellants obtained registration 2

3 of their mark LK in various countries throughout the world and they started the use of the same in India from Though it has been mentioned in the application that the use of the said trademark since 1986, the appellants filed evidence by way of an affidavit in the name of Mr. Hans Joachin Dohling along with the enclosures, which clearly establish the use of the impugned mark by the appellants since The Assistant Registrar of Trade Marks has referred to some portion of the affidavit and found that the appellants did not use the impugned trademark in India. Even if it is not used in India, having obtained registration in foreign countries and the appellants goods being available in India, the appellants are entitled for the benefit of the transborder reputation and as such, the impugned mark ought to have been permitted to be registered. The third respondent s mark has not attained any distinctiveness. Further, the appellant s mark is not letter mark but logo mark. Apart from that, it is also contented that the goods of the third respondent falls under Class 7 and not under Class 9 and so there is no prohibition for registration of the impugned mark. 5. The learned counsel for the third respondent contented that the appellants though claimed the use of the impugned mark from 1986, by way of amendment, they claimed the use from There are contradictions in the plea of the user of the appellant. The evidence produced by them does not establish their use in India even though their mark had been registered in several other countries. In the absence of any evidence to establish that the impugned mark is familiar in India and has also obtained reputation and goodwill, the appellants are not entitled for the registration. The Assistant Registrar of Trade Marks, on a careful consideration of the materials available on record, has found that the registration of the mark is objectionable under Sections 9 and 11 of the said Act. When that be so, there is no infirmity in the order of the Registrar of Trade Marks and consequently, there is no merit in the appeal. 6. We carefully considered the above contentions of both the counsels. We perused the evidences produced by both the parties. The enclosures along with the affidavit of Mr. Hans Joachin Dohling, a senior Director of the appellants firm are only the label mark Exhibit A. One letter from TATA Engineering and Locomotive Company Limited as Exhibit B, wherein it is stated that the TATA Engineering and Locomotive Company Limited had first imported Combi Switches in April 1983 and since then, they have imported Kostal switches from time to time. This letter is dated The Exhibit C is a declaration wherein it is stated that HELLA has a business relationship with the Indian partner company M/s. JMA Industries, Delhi since 1959 and the company has business relationship with the Indian Automobile Manufacturers, TATA Engineering and Locomotive Company Limited and Ashok Leyland Limited for nearly same time. HELLA has also relationship with the German Company M/s. Leopold Kostal Gmbh and company, KG, for more than twenty years. Apart from this, the advertisement pamphlets are enclosed, which are available at pages 100 to 109 in the type set. 7. The third respondent filed their evidence, which is available from pages 53 to 86, which contains the Auditor s Certificate with regard to the turnover of the third respondent from 1979 to 1995; registration of copy right; and the advertisements and few bills of the year 3

4 1979, 1982 and After our careful consideration of the materials available on record, we find that the findings of the Registrar that the appellants have totally failed to establish the use of the impugned mark in India, is correct. The appellants have not placed on record any piece of evidence for the use of the impugned mark in India at any point of time whether being 1976 or 1979 or Even after that also, there is no iota of evidence that the appellants had used the impugned mark in India at any time. At page 43 of the type set, the countries in which the appellants had obtained the registration of the trademark are available. Merely because the appellants have got the registration in various parts of the world, it cannot be presumed that the appellants have got reputation and goodwill in respect of the impugned mark in India. Further, those advertisements relate to the products of Kostal Trademark. Even in respect of the advertisement pamphlets, there is nothing to show that such advertisements were made in any of the Indian journals or any of the journals having circulation in India. Further, those advertisements relate to the products of Kostal Trademark. In such circumstance, we do not find any reason to deviate from the finding arrived at by the Assistant Registrar of Trade Marks. 8. On the other hand, the third respondent had produced one bill, which is placed at page 65 of the type-set to establish the use of their mark since 1979 and the other bills at pages 67 to 86 of the type-set relates to the years 1982 and thereafter and the same was accepted by the second respondent along with the statement of sales turnover, to come to the conclusion that the third respondent had established the use of their mark in India and they also built up the reputation and goodwill in respect of their mark. 9. Coming to the legal issues raised by the learned counsel for the appellant relying upon the Division Bench judgement of Calcutta High Court in the case of Allergan Inc. Vs. Milment Oftho Industries and other, reported in 1999 PTC 160, she contented that the appellants had introduced their product with the impugned mark LK earlier to the third respondent as the prior user, the appellant is entitled for the registration. Further, the third respondent filed their application for registration after nearly twelve years after claiming the use. There is absolutely no reason for the third respondent to wait for such a long time to file their application for registration and this itself would falsify their claim of earlier user from The judgement relied upon by the learned counsel for the appellant may not be of any assistance because in that case, the Division Bench has held that the respondent admittedly adopted the mark of the appellant therein. In this case, it is already found that the appellant did not establish by any evidence that they are using the impugned mark earlier to that of the third respondent and further the third respondent while adopting their trademark has no knowledge about the appellant s mark. 10. The next contention of the learned counsel for the appellant is that the impugned mark though it is word mark, the manner in which the registration is sought for would clearly establish that it is a logo mark and it has its own distinctiveness and as such there is no bar under Section 9 of the Trade and Merchandise Marks Act, In support of the same, she also relied upon the Division Bench judgement of the Delhi High Court in B.K. Engineering Company, Delhi Vs. U.B.H.I. Enterprises (Regd.), Ludhiana and another reported in AIR 4

5 1985 Delhi 210 wherein the learned judges held that the trademark BK is a word of device, which is distinctive of plaintiff s goods. At Para 53, Page 219, the learned judges have held as follows:- The manufacturers name B.K. Engineering Co. and the house mark B.K. in a circular device are a part of the descriptive material of the plaintiffs. The description is part of their goodwill and a right of property. B.K. is both a descriptive and distinctive name, commercially speaking. This is clear from the advertisements and cartons of the plaintiffs product in this suit and the suit before the District Judge filed in From the above portion it is clear that there is enough material for the learned judges to come to the conclusion that the mark B.K. is a word or device. In the case on hand, the words LK sought to be registered in a round label. The K is written above the vertical line of the letter L as extracted below:- Merely because both the letters are within the circle, we do not think that the impugned mark is a logo mark. The respondent is also having the same word mark in a rectangle, which is extracted below:- As this is also considered as a logo mark, we cannot come to the conclusion that both the logo marks are distinct and different and as such, the appellant is entitled for registration. Definitely, there will be confusion by the words LK and the so called logo, may not be sufficient ground to make any distinction. 5

6 12. The learned counsel for the appellant commented upon the Registrar s conclusion that the registration under the Copy Rights Act would debar the registration under the Trade Marks Act. We are unable to agree with the view of the Registrar of Trade Marks on this aspect as it has been repeatedly held that the registration under the Copy Rights Act is different from the registration under the Trade Marks Act. When there are other grounds to confirm the order of the Registrar, we do not think there is any need to interfere with the conclusion arrived at by the Registrar. The learned counsel for the third respondent relied upon the judgement reported in 1986 RPC 100 wherein the registration of the letters GI in three dimension was refused following the principles laid down in an earlier case in Ford- Werke AG s Application (1955) 72 RPC 191 at 196 & 197, on the ground that the only feature of the mark apart from that of being three ordinary letters is their portrayal in three dimensional aspect and the impression given that the letters are translucent. The use of three dimensional lettering is commonplace in public life. Many trading premises use such a form of lettering and it occurs frequently in various forms of advertising. Similarly while the impression of translucency is not so common it is by no means unfamiliar. It is certainly not sufficient by itself to render the mark capable of distinguishing, notwithstanding the disclaimer entered on the form of application. 13. We are of the view that the principles laid down in 1986 RPC 100 will answer the issues raised by the learned counsel for the appellant and supports the case of the third respondent also. 14. In the absence of any evidence that the appellant is using the trademark in India and the third respondent having proved their use in India since 1979 or at least from 1982 on a regular basis, the appellant is not entitled for the registration of the impugned trademark. Accordingly, the impugned order of the Registrar is confirmed. The appeal is dismissed. No cost. (Dr. Raghbir Singh) (Justice S. Jagadeesan) Vice-Chairman Chairman 6