Case: Caterpillar Tractor Company, Peoria, U.S.A. Vs Union Carbide India Limited, Calcutta. Trademark Tribunal
| Counsel | For Appellant: Mr. Vivek Grover instructed by M/s. Remfry & Son, Advocate and For Respondents: Mr. J.S. Sarkar instructed by M/s. D.P. Ahuja & Co., Advocate |
| Judges | Om Parkash, DRTM |
| Issue | Trade and Merchandise Marks Act, 1958 - Sections 9, 11, 12(1), 12(3), 18(1) |
| Judgement Date | August 11, 1989 |
| Court | Trademark Tribunal |
Judgment:
Om Parkash, DRTM
1. On 8th January, 1979, M/s union Carbide India Limited, 1-Middleton Street, Calcutta-700016 (hereinafter referred to as "the applicants") made an application being application No. 344597 to register in Part A of the Register a trade mark comprising of a label containing the work 'CAT' and the device of a cat in respect of "electric dry cells" in class 9. The applicants had not stated the period of user of the mark applied for in the application but subsequently they amended the statement of user to read as "for the last 25 years" vide the request on Form TM-16 dated 16.7.79 The applicants also filed another request on Form TM -16 subsequently for amendment of the mark and submitted fresh labels. Both the above mentioned Forms TM-16 were allowed and the mark in the application was amended accordingly, After preliminary scrutiny, subject to association with trade marks Nos. 222456, 265880, 252922, 264884, 564881, 270522, 273015, 279502, 279501, 301474, 309205, 309201, 310984, 311802, 326589, 321981 and 374596, the application was accepted for registration and accordingly advertised in Trade Marks Journal No. 751, page 566 dated 16-9-80.
2. On 14th January, 1981, M/s Caterpillar Tractor Company, 100 N.E. Adam Street, Peoria Illinois, U.S.A. (hereinafter referred to as "the opponents") filed a notice of opposition on the grounds as follows:
1) That they are the registered proprietors of the trade mark "CAT" in India under Registration No. 139717 dated 28th July, 1949 in class 7 in respect of internal combustion engines, diesel engines and other power supplying machinery adapted for employment as the source of power for self-propelled vehicle (other than land vehicles) and as stationery or portable power units for industrial, marine and agricultural uses, machinery for use in scraping, collecting and dumping earth. Rock or like materials; power and manually controlled graders sacrifiers, scrapers, rippers (machines) and ploughs adapted to be employed for the construction and maintenance of roads, for moving and removing of earth, rock snow and like materials, for preventing soil erosion and for other industrial and agricultural uses; cable controlling machinery for controlling cable actuated equipment for earth moving and agricultural purposes; hydraulic-control machinery for controlling hydraulically actuatd equipment for earth moving and agricultural purposes; electric generators and diesel electric generator sets for furnishing electric power; agricultural generators and agricultural implements of the larger kind and parts attachments and accessories therefore included in class 7".
2) That they are also proprietors of the mark under Registration No. 142496 dated 22-2-1950 in class of 12 in respect of "Tractors, tractor engines and equipments and fittings, tractor drawn travelers, self propelled land vehicles; wagons dump wagons and all other goods in class 12".
3) That the above marks have been duly renewed and they are still valid and subsisting. The mark "CAT" has been continuously and extensively used in India since 1949 and is internationally well known and is registered in many countries of the world. The mark is distinctive and is extensively identified with the goods manufactured by them. By reason of use, advertisement, sales promotional work and also by reason of the superior quality of the goods sold thereunder, the same mark has earned reputation and valuable goodwill in the market.
4) That the mark in respect of which the applicants are seeking registration consists of the identical word 'CAT". The registration and use of the impugned mark is bound to cause confusion and deception among the trade and public. The applicants have sought registration of the trade mark "CAT" and device for the sole purpose of trading upon and benefiting from the vast reputation and goodwill attached to their trade mark "CAT". The mark "CAT" and device adopted by the applicants is calculated to facilitate and to lead to "passing-off" of the applicants' goods as and for their goods or as goods associated with them.
5) That the applicants were aware of the user of the opponents' said registered trade mark at the time, they adopted the trade mark for which they are seeking registration. The adoption of the impugned trade mark be the applicants is dishonest ab-initio. The applicants are not the proprietors of the mark for which they are seeking registration. The applicants' mark will cause embarrassment and be prejudicial to the business carried on by them under the aforesaid mark "CAT".
6) That registration of the mark applied for in the name of the applicants will be contrary to sections 9, 11(a), 11(e), 12(1), 12(3) and 18(1) of the Trade and Merchandise Marks Act, 1958.
7) That the foregoing constitutes sufficient grounds for the exercise of the Registrar's discretion in their favour and they pray that the mark in the above application may be refused registration.
3. On 23rd April, 1981, the applicants filed their counter-statement denying all the allegations what it contained in the notice of opposition. The applicants relied on the following ground for their registration:
1. That they are an old established company of repute in India engaged, inter alia, in the manufacture and sale of "electric dry cells" and "torches". They are the registered proprietors of a numbers of marks containing and /or consisting of the device of a cat, as all essential feature of their mark.
2. That the device of a cat was adopted by them in respect of the goods manufactured and marketed by them in or about the year 1949. They have applied from time to time for registration of other marks containing and /or consisting of the device of a cat.
3. That some of the marks registered and /or consisting of the device of a cat are given as under:
i). Registration No. 140784 dated 14-10-1949 in respect of "Electric batteries" with a claim of use since 3-12-1949. The said mark was advertised in Journal No. 86 at page 852 dated 1-10-1959.
ii) Registration No. 202456 dated 22-9-1959 in respect of "Batteries for radios including transistor". The said mark was advertised in Journal No. 386 dated 1-7-1965 at page 282.
iii) Registration No. 252922 dated 20-11-1968 in respect of "Dry cells...
To continue reading
Request your trial