Case: Akay Industries, Bombay Vs N.K. Industries, Calcutta. Trademark Tribunal

CounselFor Appellant: Mr. M.R. Nair, Advocate i/b. R.K. Dewan & Co. and For Respondents: Mr. A.M. Saha Roy, Regd. Trade Marks Agent with Mr. Aloke M. Saha, Advocate
JudgesH. P. Shukla, ARTM
IssueTrade and Merchandise Marks Act, 1958 - Sections 9, 11(a), 12(1), 12(2), 12(3), 18(1)
Judgement DateMay 29, 1991
CourtTrademark Tribunal

Judgment:

H. P. Shukla, ARTM

  1. On 9th January, 1984, Narendra Kumar Garg and Smt. Kamaia Devi Garg, trading as N.K., Industries, 146, B.K. Paul Avenue, Calcutta-700006 (hereinafter to as "the applicants") made an application under Section 18(1) of the Act being Application 415807 for registration of a trade mark consisting of the letters "Inki" in a label for the goods "Diaphram valves included in class 7 for use with machines and installations and for use in chemical, pharmaceutical, paper, textile including synthetics, fertilizer, brewery, cement, petroleum and petrochemical industry and in coke oven plaints and gas and compressed air lines, water treatment plants, liquid supply, boilers, steam generator." In due course, the said trade mark was advertised in Trade Marks Journal No. 935 dated 16.5.1988 at page 203.

  2. On 31st August, 1988, Akay Industries (Prop. The Arjan Khimji G. & P. Co. Pvt. Limited) (hereinafter referred to as "the opponents") lodged a notice of opposition under Section 21(1) of the Act to the registration of the aforesaid trade mark. The main grounds of opposition as stated in the notice of opposition are as under:-

  3. That the mark applied for registration is neither adapted to distinguish nor capable of distinguishing the goods in respect of which the applicants are seeking registration. Hence, Section 9 is bar to the registration of the impugned trade mark.

  4. That by reason of the use and reputation of the opponents' trade mark, the use of the applicants' trade mark is likely to deceive or cause confusion and accordingly the registration of the mark would be contrary to the provisions of Section 11(a) of the Act.

  5. That the opponents are the owners of copyright in their corporated logo and their ownership rights in the said logo is protected under the Copyright Act, 1957.

  6. That they are the registered proprietors of the copyright in the said logo under Registered Nos. A-34769/81 and A-34771/81. The impugned mark is nothing but an obvious imitation and substantial reproduction of the opponents' aforesaid logo. Therefore, use of impugned mark by the applicants will amount to piracy of their copyright and, as such, will be contrary to the provisions of the Copyright Act, 1957. Furthermore, the very adoption of the impugned mark by the applicants is designed to cheat the unwary customers and thereby to earn illegal gain', which amounts to an offence punishable under the India Penal Code, 1960. Therefore, the registration of the impugned mark is prohibited within the meaning of Section 11(b) of the Act.

  7. That the opponents submit that the mark under the impugned application is identical with and/or deceptively similar to their trade mark in prior pending application Nos. 367105 and 367106. The goods in respect of which the applicants are seeking registration of the impugned mark and those in respect of which their...

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