Case: Bajaj Auto Ltd., Poona Vs J.K. Industries Ltd., New Delhi. Trademark Tribunal
| Counsel | For Appellant: Mr. L.B. Desai, Advocate and For Respondents: Mr. S.K. Dutt, Advocate |
| Judges | Om Parkash, DRTM |
| Issue | Trade and Merchandise Marks Act, 1958 - Sections 11, 12(1), 12(3), 18(1) |
| Judgement Date | June 25, 1991 |
| Court | Trademark Tribunal |
Judgment:
Om Parkash, DRTM.
1. On 4th February 1989, M/s J.K. Industries Ltd., Link House, 3, Bahadur Shah Zafar Marg, New Delhi 110002 (hereinafter referred to as the applicants) made an application, being No. 386104, in respect of 'tyres and tubes included in class 12 for use in land vehicles' under the trade mark 'CHETAK'. The Trade Marks Registry had raised some objections and after compliance of the said objections, the mark was ordered to be advertised before acceptance. In due course, the application was advertised in Journal No. 903 dated 16.1.1987 at page 841.
2. On 10th February 1987, M/s. Bajaj Auto Limited, Bombay Poona Road, Akurdi, Poona-411035 (hereinafter referred to as the opponents) lodged a notice of opposition against the registration of the above mentioned mark.
3. On 27th November, 1987, the applicants filed their counter-statement denying all the material averments whatsoever contained against registration of the mark applied for in the notice of opposition.
4. On 7.3.88 the opponents filed evidence of user which consists of an affidavit dated 1.3.1988 in the name of the one Mr. Ajay Bhargava, Deputy General Manager (Exports) of the opponents' company.
5. On 1.7.1988 the applicants filed evidence in support of application which consists of an affidavit dated 18 June 1988 in the name of one Mr R.C. Bhandari, Vice President of applicants' company.
6. On 16.9.88 the opponents filed evidence under Rule 55 vide affidavit dated 9.9.88 in the name of Mr. Ajay Bhargava.
7. Upon completion of the above said evidence the matter was set down for hearing before me on 9.8.90 at 11 a.m. when Sh. L.B. Desai, Ld. counsel appeared on behalf of the opponents and Sh. S.K. Dutta, Ld. counsel appeared on behalf of the applicants.
8. It may be stated that vide paragraph 13 of the counter-statement, the applicants stated that they also rely on the evidence filed already at the application stage. It may be pointed out to bear in mind that the record does not appear to have revealed that the copies of the evidence filed at the pre-advertisement stage have been sent to the opponents for their scrutiny and perusal in the present opposition proceedings. Hence, the said evidence filed at the pre-advertisement stage cannot be considered until and unless consigned to the opponents for their comments within the rules. Therefore, the evidence in question could not help the applicants.
9. The opponents' objections are confined to sections 11, 12(1) and 18 of the Act, as denoted in the notice of opposition. Apart from this, the opponents have also objected to the registration of the mark applied for under section 12(3) of the Act.
10. Firstly, I shall examine the opponents' objection existing under section 11 of the Act. Section 11 provides--
(a) a mark, the use of which would be likely to deceive or cause confusion, or
(b) the use of which would be contrary to any law for the time being in force, or
X X X X
(e) which would otherwise be disentitled to protection in a court, shall not be registered as a trade mark.
11. The opponents' objection u/s 11(a) is that having regard to the reputation of the opponents' trade mark "Bajaj Chetak" and the use of the applicants' trade mark "Chetak" would be likely to deceive or cause confusion, whenever an opposition u/s 11(a) is founded upon the reputation of the opponents' trade mark, the inference is that the public are so familiar with their trade mark that the use of the applicants trade mark is likely to lead to deception and/or cause confusion among them. In such cases, the preliminary onus of establishing prior use or reputation of the opponents' trade mark lies upon the opponents. (Pl. see Arthur Fairest Ld's appln. (1957) 68 RPC 197 p. 209).
12. The opponents have filed an affidavit dated 1.3.1988 in the name of one Mr. Ajay Bhargava alongwith the certified copy of the duty renewed certificate of Registration under No. 278778 for a period of seven years from 8th March, 1979 in respect of "motor vehicles, motor cycles and three-wheelers motor vehicles and parts thereof included in class 12". The opponents have sold their scooters bearing the trade mark "Bajaj Chetak" through the length and breadth of the country and have already sold more than Rs. 9,00,000 "Bajaj-Chetak" scooters worth more than Rs. 720,00,000 as on 31st December 1987. But the reputation attained by "Bajaj-Chetak" could be considered upto 1982 only. The annexure 'B' is the letter dated 27.12.1977 from the Ministry of Industry covering allotment of "Bajaj-Chetak" scooters under the Foreign Exchange Scheme. Similarly annexure 'C' is a letter dated 1.4.1974 from the Ministry of Finance for "Bajaj-Chetak" scooters for the purpose of Customs and Central Excise duties drawback. The opponents got "Golden Jubilee Year Award 1976" for new model of scooters called Bajaj-Chetak. Hence, the opponents have established great reputation and goodwill within 12 years w.e.f. 1971-1984.
13. As regards the reputation of the applicants' mark "CHETAK", the applicants made the application on 4.2.1982 with user claimed since March, 1978. Hence, the total period at the time of filing the application amounts to about four years only. Annexure 'A' is a set of photostat copies of invoices which are neither attested nor supported by the originals at the time of hearing. Annexure 'C' is the collection of a few photostat pages of magazines undated in respect of advertisements. These documents cannot be exhibited in the absence of their original documents.
14. To conclude, the opponents have got registration of their mark "Bajaj-Chetak" 12 years prior to the date of filing of the applicants application in question in the Trade Mark Registry and they have got user of their mark for about four years. Hence, the opponents used their said trade mark prior to that of the applicants. Accordingly, the opponents' objection existing under section 11 is sustained.
15. Secondly, I shall examine the opponents' objection existing under section 12(1) of the Act Section 12(1) provides:--
"Save as provided in sub-section (3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of different proprietor in respect of the same goods or description of goods".
16. Section 12(1) prohibits the registration of a trade mark when the...
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