Case: Alfred Dunhill Limited, London Vs K.B. Engineering Works, Ludhiana. Trademark Tribunal
| Counsel | For Appellant: Mr. V.G. Nair, Advocate and For Respondents: Mr. V.P. Ghiraiya, Advocate |
| Judges | M. R. Bhalerao, DRTM |
| Issue | Trade and Merchandise Marks Act, 1958 - Sections 9, 11(a), 12(3), 18(1), 18(4) |
| Citation | 1983 (3) PTC 45 (Reg) |
| Judgement Date | December 16, 1982 |
| Court | Trademark Tribunal |
Judgment:
M. R. Bhalerao, DRTM
On 1st June, 1976, Nathan Lal, Kundan Lal and Sahib Ditta, trading as K.B. Engineering Works, Gill Road, Ludhiana-3 (hereinafter referred as "the Applicants") made an application, being No. 315368, to register a trade mark consisting of the word ''DUNHILL' (word per se) in Class 12 in respect of the specification of goods which on subsequent amendment reads as, ''Parts included in Class 12 of cycles for sale in the States of Punjab, Haryana, Madhya Pradesh, Rajasthan, Gujarat, Maharashtra, Bihar, West Bengal and Andhra Pradesh. The mark is claimed to have been used ''since 15.5.1973'. In due course the application was advertised in the Trade Marks Journal No. 685 dated 16th December 1977 at page 607.
On 17th April, 1978, Alfred Dunhill Limited, of 30 Duke Street, St. James, London, S.W. 1 England (hereinafter referred to as "the Opponents') lodged a Notice of Opposition, under Section 21(1), to the registration of the aforesaid trade mark on the following grounds:
-
That the Opponents are the proprietors of the trade mark ''DUNHILL' and the trade mark label containing the word ''DUNHILL' as its essential feature.
-
That the Opponents have registered their trade mark ''DUNHILL', in Class 34, for various goods under numbers 16597, 230873, 231059, 231060, 231366 to 231368, 230790, 243566, 250011, 251336, 253092, 246692 and 272937.
-
That the Opponents are using their trade mark ''DUNHILL' in respect of cigarettes, pipe tobacco and smokers' articles and in respect of extremely wide range of other goods including tool kits for motorists.
-
That the Opponents enjoy undoubted reputation throughout the word including India.
-
That in several countries the Opponents have successfully stopped and prevented the use of the trade mark ''DUNHILL' by others even in respect of unrelated goods; such as, gramophone records, clothings, whisky, rum, radios, confectionery, spectacles, etc.
-
That the word ''DUNHILL' is a part of the Opponent's corporate name.
-
That use of the mark applied for by the Applicants in relation to the goods for which registration is sought would lead to confusion and deception, as the trade and the public may assume that there is some trade connection between the Application or their goods and the Opponents.
-
That since ''DUNHILL' is the Opponent's trade mark, the mark applied for is neither adopted to distinguish nor capable of distinguishing the Applicant's goods.
-
That the registration of the mark applied for will be contrary to the provisions of Sections 9, 11(a) and 18(1) of the Act.
-
That the Registrar's discretion be exercised adversely to the Applicants.
-
In their Counter-statement, the Applicants denied the allegations contained in the Notice of Opposition. The Applicants stated that they used the trade mark ''DUNHILL' honestly since 1973.
-
The evidence in support of opposition consists of an affidavit by Shri Richard Dunhill, the Chairman of the Opponent Company.
-
The evidence in support of application consists of an affidavit of Shri Nathan Lal, a partner of the Applicant firm.
-
The evidence in reply consists of an affidavit of Shri Richard Dunhill.
-
The matter came up before me for a final hearing on 9th December, 1982. Shri V.G. Nair, Advocate, instructed by Shri Depenning & Depenning, Patent and Trade Mark Attorneys appeared for the Opponents. Shri V.P. Ghiraiya, Advocate appeared for the Applicants.
-
After some discussions the learned counsel for the Applicants desired to withdraw the interlocutory petition filed by him on 15th January, 1979. Accordingly, the said petition is treated as withdraw.
-
The Opponent's objection under Section 9, as stated in paragraph 7 of the Notice of Opposition, reads as follows:
"Since DUNHILL is our trade mark and is identified with us and with our goods, it is neither adapted to distinguish nor capable of distinguishing the Applicant's goods".
-
The Opponent's objection under Section 9 is linked with the Opponent's objections under Sections 11(a) and 18(1). It will therefore be proper to examine firstly the objection under Sections 11(a) and 18(1) of the Act. If the Opponents succeed under Sections 11(a) and 18(1), their objection under Section 9 will be sustained.
-
According to Section 11(a), a mark, the use of which would be likely to deceive or cause confusion, shall not be registered as a trade mark. The Opponents have raised their objection in paragraph 6 of their Notice of Opposition. Their objection is that having regard to the prior use and reputation of their trade mark ''DUNHILL' used in respect of cigarettes, pipe tobacco, smoker's articles and wide range of other goods; the use of the same trade mark by the Applicants in respect of "parts of cycles" would be likely to cause confusion and deception, as the trade and the public may assume that the Applicant's goods are the Opponent's goods or that there is some trade connection between the Applicants or their goods and the Opponents.
-
At the hearing, the learned counsel for the Opponents argued that to succeed under Section 11(a) it is not necessary for the Opponents to establish that they have used their trade mark in India but it is enough if they have established that their trade mark has...
To continue reading
Request your trial