This Madras High Court judgment sets out certain significant pointers with respect to defensive registration (in the context of Trade Marks Act, 1958) and well-known marks (in the context of Trade Marks Act, 1999). My endeavour is to highlight these aspects of the judgment.
This writ petition was filed by the petitioner praying to quash the order dated 04.01.2013 passed by the 2nd respondent viz., Intellectual Property Appellate Board. The IPAB had earlier allowed the appeal filed by the 1st respondent herein in OA/19/2009/TM/CH and thereby had quashed the order passed by the 3rd respondent viz., the Deputy Registrar of Trademarks in MAS 25781 dated 26.06.2009.
The petitioner-company is engaged in the business of manufacturing and marketing incense (agarbathi) sticks and dhoop sticks for more than half a century. They adopted the trademark ‘CYCLE’ ever since their inception in 1954. The petitioner registered “CYCLE BRAND” mark under Registration No.163539 in Class 3 for Perfumes, oodubathy, dhoop and hair oil and the house mark device of ‘Cycle’ in all the 34 trademark Classifications.
- Whether the 1st respondent’s application for registration of trademark (viz, a composite label comprising of the words “CYCLE” on the top, device of cycle in the middle and words “GRASS BROOM” at the bottom) under Class 21 (in respect of brooms and other articles for cleaning purpose) liable to be refused in the light of the fact that the petitioner has registered the “CYCLE BRAND” in all the 34 trademark Classifications?
- Whether “CYCLE BRAND” trademark is a ‘well known mark”?
The Court based its reasoning on the following principles:
Common words are not entitled to protection under Trade Marks Act. (Citing Registrar of Trade Marks Vs. Ashok Chandra Rakhit, AIR 1955 SC 558 & Bhole Baba Milk Food Industries Ltd Vs. Parul Food Specialities Pvt Ltd, CDJ 2011 DHC 1174)
Non-user of the trademark should not be allowed to enjoy monopoly; otherwise, he will indulge in mischief of trafficking in Trademark and prevent all bone fide users of such common word. (Trading Vs. Vazir Sultan Tobacco co.Ltd, 1997(4) SCC 201)
The petitioner company obtained registration for their mark under Trade and Merchandise Marks Act, 1958. Section 47 of the said Act provided for defensive registration of trademarks. The conditions laid down under Section 47 of the said Act for defensive registration were: i) the trade mark should consist of any invented word; ii) the trade mark should have become so well-known as respect any goods in relation to which it is registered and has been used, use in relation to other goods will indicate a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first mentioned goods. The petitioner failed to prove that “CYCLE BRAND” satisfies both the conditions. Neither the word “Cycle” or “Brand” is invented word and therefore, did not qualify for defensive registration. Further, citing Supreme Court judgment in Skyline Education Institute Vs. S.L.Vaswani & another, the Court held that “unless the word is an invented word coined by a person out of his own effort and thought process, he cannot prevent and exclude others from from using the generic and common word by holding it within his folds by not putting it to use for a long time from the date of registration of the said trademark.”
Therefore, petitioner’s registration of the trademark “CYCLE BRAND” under Class 21 will not be a bar for registration of the 1st respondent’s trademark/composite label.
The next question that falls for consideration is whether the petitioner has established that his mark is a well known mark. The defensive registration was done away with under the Trade Marks Act, 1999 and the concept of a “well-known trade mark” as defined under Section 2(1)(zg) was introduced and Section 11 was amended in conformity with Section 47 of the Trade & Merchandise Act, 1958. In the Trade Marks Act, 1999, Section 11(6),(7),(8) & (9) explain the nature of a well-known trade mark and how to determine the same.
A reading of Section 11(6) makes it clear that while considering whether the mark is a well-known trade mark, the relevant factors to be take into consideration are i) knowledge or recognition of the Trade Mark in relevant sections of the public as a result of promotion of the mark, ii) duration, extent and geographical area of use and promotion through publicity and iii) record of successful enforcement of the rights in the Trade Mark, in particular the extent to which the mark has been recognized as well-known by any Court or Registrar. In the instant case, no evidence was adduced by the petitioner to show that the petitioner’s mark is a well known mark within the meaning of Section 2(1)(zg) and Section 11(6),(7) & (8) of the Act.
Citing these aspects, the writ petition was dismissed.
This judgment puts across two vital legal messages: i) law does not favour one who just ‘sits’ (or squats) on his/her trademark; and ii) as for proving that a mark is a “well-known mark”, it is essential to adduce evidence. The burden of proof is upon the party claiming so. If the party does not adduce evidence, the claim gets negated.
The judgment refers to the claims made by the petitioner with respect to the Orders issued by IPAB and Deputy Registrar (Paragraphs 24 & 25). The judgment perceived it as a case of misinterpretation. It is unfortunate that an Order leaves even a scintilla of scope for misinterpretation as in the instant case. Our system is miles away from quality judgment writing / Order writing and it is definitely a serious systemic defect. Readers may be aware that the SC had earlier set aside a Himachal Pradesh High Court judgment owing to poor English. Now, contrast it with the early judgments of our SC and HC especially those judgments belonging to pre-independence era.
For the benefit of readers, I am copy-pasting Paragraphs 24 and 25 mentioned above:
“24.Further, it was argued by the learned counsel for the petitioner that both the respondents 2 & 3 have held that the petitioner’s mark is a well-known mark. But, this submission of the learned counsel for the petitioner deserves no merits. From a careful perusal of the order passed by the 3rd respondent, it is seen that the 3rd respondent has not given any speaking order on any issue for determining the mark as a well-known mark under Section 11(10) of the Act. The order of the 3rd respondent merely recorded the arguments of the petitioner and respondent and without any discussion goes on to hold that the impugned mark is deceptively similar to the opponent’s mark CYCLE BRAND as it is not only the mark of opponent’s, but, also the house mark of the opponent. Absolutely, We do not find any finding by the 3rd respondent to the effect that the petitioner’s mark is a well-known mark as claimed by the petitioner. Similarly, even the finding of the 3rd respondent that the mark is deceptively similar to the petitioner’s trademark CYCLE BRAND and that it is the petitioner’s house mark, is not based on any evaluation of evidence or analytical finding, but a mere repetition of the petitioner’s arguments.
25.Similarly, We find that the 2nd respondent-IPAB in para 9 of its order has only elaborated the submission made by the learned counsel for the petitioner herein/respondent therein and as a passing reference, it stated that the trademark of the petitioner herein is a well known mark and it is not the determination of the 2nd respondent-IPAB and it is only the submission of the learned counsel. For better appreciation, it would be appropriate to extract the relevant portion in the order of the 2nd respondent-IPAB at para 9 as hereunder “9.The Counsel for the respondent on the other hand argued that the appellant have deliberately copied their mark with minor cosmetic changes. The respondent trade mark is a well known mark. They have been using CYCLE BRAND since 1954. ……” No doubt, in the conclusion portion, at para 11, the 2nd respondent-IPAB has stated that there is no disputing that CYCLE BRAND for agarbathis (incense stick) is an established brand over many decades. But, it is not an invented or unique device. Again, only as a passing reference, the 2nd respondent-IPAB has stated that the mark of the petitioner is an established brand, but no determination was made to arrive at such a conclusion by the 2nd respondent. Therefore, the submission made by the learned counsel for the petitioner that the 2nd respondent-Board has rendered a finding that it is a well-known mark, cannot be accepted. The 2nd respondent has not given any finding based on document or evidence that the petitioner’s mark is a well-known mark. There is a mere passing reference in the order of the 2nd respondent-IPAB. It is not the same as a ‘well known mark’ defined in Section 2(1)(zg) and there is no determination of the mark as being well known, following the parameters laid down in Section 11(6) to (9) of the Trade Marks Act.”