Case: Fit Tight Nuts & Bolts Ltd., Bombay Vs Perfect Auto Traders, Ludhiana. Trademark Tribunal

CounselFor Appellant: Mr. D.K. Dhingra, Advocate
JudgesOm Parkash, DRTM
IssueTrade and Merchandise Marks Act, 1958 - Sections 9, 11(a), 12(1), 18(1)
Judgement DateOctober 26, 1990
CourtTrademark Tribunal

Judgment:

Om Parkash, DRTM.

  1. On 11.9.1978, M/s Perfect Auto Traders, Oswal Market, G. T. Road, Ludhiana -141003 (thereinafter referred to as "the Applicants" filed and application being No. 340706 in class 6 under the trade mark "PAT' with the words "FIT TIGHT" beneath the word 'PAT' within a black device of a circle and the placing of these words again placed in a square in respect of 'nuts, bolts and screws made of metals'. Certain objection were raised by the Trade Marks Registry and after compliance of the objections the aforesaid trade mark was ordered to be advertised in Journal No. 818 dated 1.7.83 at page No. 951.

  2. On 24.9.83, M/s Fit Tight Nuts Bolts Ltd., Old Ashram, Adaheri Kurla Road, Andheri, Bombay-400093 (hereinafter referred to as "the Opponents") lodged a notice of opposition on Form TM-5 against the registration of the aforesaid mark on the grounds as given under-

  3. That the opponents are the registered proprietors of the trade mark consisting of 'device of hand holding a spanner" and the word 'FIT TITE' represented on a distinctive device in respect of 'fasteners, nuts and bolts' all the aforesaid being metal goods. This mark was registered as of 23.11.1966 and was advertised in Trade marks Journal No. 444 dated 1.12.1967 at page 645. The registration of this mark is still valid and subsisting.

  4. That by reason of long and extensive use and by reason of the quality of the opponents goods, their registered trade mark and corporate name FIT-TIGHT NUTS and BOLTS LTD. have acquired a substantial reputation and valuable goods will throughout India.

  5. That the mark applied for under Application No. 340706 dated 11.9.1978 contains the words 'PAT FIT TIGHT' which is deceptively similar to Opponent's Registered Trade mark No. 239007 and it is sought to be registered in respect 'nuts, bolts and screws made of metals' The goods of the opponents as well as of the applicants are the same goods or goods of the same description.

  6. That the use of the trade mark applied for will inevitably result in goods in relation to which the mark may be used, being passed off as and for the Opponents goods and/or lead to the trade or the public to believe that there is some connection between the applicants and Opponents and /or lead the public to wonder or have a reasonable doubt whether there is some connection between the applicants and the opponents. Hence, the registration of the mark applied for will be detrimental to the trade and public.

  7. That the applicants have earlier made and application being application No. 319454B to register the trade mark containing the words PAT FIT TIGHT in respect of 'parts include in class 12 for motor vehicles'. The Opponents oppose the said application and the said opposition was disallowed by the Ld. Deputy Registrar of Trade Marks for the reason stated in his decision and particularly because of the applicant's registration of a substantial similar trade mark under No. 283091B. Further the opponents filed an appeal from the decision of the Deputy Registrar of Trade Marks in the High Court of Delhi and the High Court has remanded the matter of the Ltd. Deputy Registrar of Trade Marks. The Opponents have also filed an application for removal there from the said trade mark No 283091B.

  8. That the applicant's mark is phonetically, visually and deceptively similar to that of the opponents and the registration of the mark applied for is contrary to the provisions of Sections 11{a}, 12{i} and 18{i} of the Act.

  9. On 20.2.1984, the applicants filed their counter-statement denying all the material averments whatsoever contained in the notice of opposition in support of their mark applied for on the grounds as given under:

  10. That the applicants are established manufacturers and merchants of parts of motor land vehicles and nuts, bolts and screws of metal. These goods are marketed by the applicants throughout India and abroad are known for the best quality and workmanship under their well-known trade mark 'PAT-FIT TIGHT' which was adopted in 1971.

  11. That a valuable goodwill and reputation have accrued to the applicant's mark applied for in respect of the said goods. The mark applied for has been adopted bona fide from the trade name of applicants Firm 'Perfect Auto Traders along with words 'FIT TIGHT' denoting quality of goods marketed under this trade mark.

  12. That the applicants are also the owners of the Copy-right work entitled 'PAT FIT TIGHT'. They have also spent substantial sum of money for popularizing this mark. This mark has been coined honestly which can be distinguish from similar goods of other companies due to the distinctiveness of their mark.

  13. That the applicants are also registered proprietors of their trade mark under No. 283091B in class 12 in respect of 'parts of motor land vehicles' advertised in Trade mark Journal No. 588 dated 1.12.1973 at page 837 constituting the words 'PAT-FIT TIGHT' duly surrounded by circles depicting therein the trade name 'Perfect Auto Traders' This mark is valid and subsisting on the Register of Trade Marks and is being renewed from time to time.

  14. That the opponents' trade mark has no trade mark value in view of the facts that the device of handholding a spanner along with words 'FIT TIGHT' are highly descriptive and referred to the character and quality of the goods and as such the said trade mark is liable to be removed from the Register of trade marks.

  15. That the corporate name 'Fit Tight Nuts and Bolt being descriptive, no amount of user can bestow goodwill or reputation.

  16. That the Opponents are causing harassment and are actually perturbed due to the hard competition which the applicants are giving to them. The opponents never used the said trade mark in...

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