Case: Aruna Cosmetics, Delhi Vs Hindustan Lever Limited, Bombay. Trademark Tribunal
| Counsel | For Appellant: Mr. V.G. Nair, Advocate |
| Judges | K. K. Sharma, ARTM |
| Issue | Trade and Merchandise Marks Act, 1958 - Section 11(a) |
| Judgement Date | August 22, 1988 |
| Court | Trademark Tribunal |
Judgment:
K. K. Sharma, ARTM
On. 16-5-1979, Hindustan Lever Limited, of 165/166 Backbay Reclamation Bombay -- 400020 (hereinafter referred to as the Applicants) filed an application under Application No. 319209 in class 3 to register a composite trade mark consisting of label containing the device of face of a woman and the word "Fair & Lovely" in respect of specification of goods "cosmetics and toilet preparations". On applicants filing evidence of user of trade mark the application was accepted for registration in Part B of the register subject to the disclaimer of words "fair and lovely" separately and device of face of woman and descriptive letters "Press". The application was accordingly advertised in the Trade Marks Journal No. 783.
On 28-1-1982, Chhugamal, Rameshkumar & shrichand, trading as Aruna Cosmetics (hereinafter referred to as the Opponents) having place of business at 5392-A/19 Gupta Market, Sadar Bazar, New Delhi -- 110006 filed notice of opposition inter alia on the following grounds:-
That they are carrying on an old and well established business of manufactures and merchandise of cosmetics since the year 1972.
That the trade mark propounded for registration by the applicants "fair and lovely" with the device of woman is highly descriptive of the goods in respect of which the registration is sought by the applicants and the same is not registrable under the provisions of Section 9 of the Trade and Merchandise Marks Act, 1958.
That the user claimed by the applicants since 1975 is false and the applicants be put to strict proof thereof and that any amount of user that may thereafter be proved is not honest. That in any event such user is not sufficient to justify registration in the name of the applicants. Objection was also raised under Section 18(1) of the Act. It was prayed that application may be refused registration and the cost of proceedings may also be awarded to the opponents.
The applicants filed counterstatement which consists of general denials and it was specifically pleaded that they adopted "Fair & Lovely" trade mark in March 1975. In late 1979 they started using the present vertically printed carton, but retaining the essential features of the horizontally printed carton such as letter style of "Fair & Lovely", colour scheme and device of faces etc. However the horizontal printing was maintained on the tube containing the cream. And that by virtue of extensive use and advertisement the trade mark "FAIR & LOVELY" has become identified with and distinctive of their goods and as such the mark qualifies for registration and is registrable under the provisions of Trade & Merchandise Marks Act, 1958.
The evidence in support of opposition consists of an affidavit by Shri Ramesh Kumar, partner of the opponents firm. Evidence in support of application consists of an affidavit by Shri Mahendra Kumar Sharma, Head of Legal Department of the applicants alongwith Ex. 'A' copies of few invoices. Ex. 'B' and Ex. 'C' carton of the labels used Ex. 'D' copies of few advertisement cuttings Ex. 'E' copy of order passed in suit No. 258 and Ex. 'F' copies of affidavits filed at the preadvertisement stage. The opponents evidence in rebuttal was not taken on record because it was beyond statutory period and the opponents failed to pay the condonation fee as called for by the office.
On completion of evidence the matter was settled down for hearing. Both the parties notified their intention to appear at the hearing.
On 13-9-1983, the applicants filed an interlocutory Petition stating that since the opponents have raised new points in their rebuttal evidence it was necessary for the applicants to file the reply to the said affidavits. The evidence was taken on record and no reply evidence was filed.
The matter came up for hearing before me on 16-10-87 when Shri V.G. Nair, Advocate appeared for the applicants and none appeared for the opponents. Nevertheless even in the absence of the opponents I have given careful consideration to the pleadings of the parties and the material placed on record.
The opposition is mainly based upon Sections 11(a) and 9 of the Trade and Merchandise marks Act, 1958. The trade mark is stated to be in use since March, 1975.
I take up opponents' objection under Section 9 of the Act, first. Section 9 of the Act prohibits registration of the trade mark, unless it contains or consists of atleast one of the following essential particulars, namely:-
x x x x
x x x x
had one or more invented words:
one or more words having on direct reference to the character or quality of the goods and not being, accordingly to its ordinary significance a geographical name or a surname or personal name or any common abbreviation thereof on the name of the sect, caste, or tribe in India.
Any other distinctive mark. Sub section 2 of Section 9 lays down:-
" A name, signature or word, other than such as fall within the descriptive under clause (a), (b), (c) and (d) of sub section (1) shall not be registrable in Part A of the Register except upon evidence of distinctiveness."
The whole issue raised depends upon the determination whether the words "Fair &...
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