Case: Rangoon Chemical Works Pvt. Ltd., Surat Vs Haw Par Brothers International Ltd. Singapore. Trademark Tribunal
| Counsel | For Appellant: Mr. V.H. Mehta, Advocate and For Respondents: Mr. Sudipto Sarkar, Barrister and Mr. Rajesh Khanna, Advocates with Mr. Godfrey Regd. Trade Mark Agent |
| Judges | C. S. Rao, DRTM |
| Issue | Trade and Merchandise Marks Act, 1958 - Sections 11(a), 12(1), 18(1), 33 |
| Judgement Date | December 21, 1988 |
| Court | Trademark Tribunal |
Judgment:
C. S. Rao, DRTM
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These proceedings relate to two oppositions Nos. CAL-1694 and CAL-1761 and both theses oppositions are heard together since the parries are same, the counsels are same and also the issues arising in both the cases are substantially same. Therefore, the counsels on both sides also agreed that a common judgement may be issued.
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Opposition No. CAL-1694 has been filed to oppose registration of the trade mark Application No. 306622 filed on 1-7-1975 by Haw Par Brothers International Limited, 900 Cathay Building. Singapore-9 (Hereinafter referred to as Applicants) seeking registration of a label mark depicting the device of a leaping tiger as an essential feature of the label and besides the devices of tigers, there characters in Chinese language and at the bottom if the label there are also words in English reading as "KNC AUN TONG TIGER BALM". Applicants sought registration of the above mark in Part A of the Register in respect of medicinal pain balm under class 5 claiming user of the mark since 1940. After some objections were raised by Trade Marks Registry against the Applicants' mark. Applicants filed evidence to substantiate their user whereupon the mark was ordered to be advertised before acceptance and it was accordingly advertised in Trade Marks Journal Issue No. 814 dated 1-5-1983 at page 832.
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Opposition No. CAL-1761 is against the Application No. 316936 filed on 20-7-1976 by the same Haw Par Brothers International Limited 900 Cathay Building, Singapore-9 (hereinafter referred to as Applicants) seeking registration of a label containing the devices of tigers and the words "KNC AUN TONG TIGER BALM". This label also contains Chinese and Arabic Characters. Applicants claimed under of this mark since 1940 and sought registration in Part A of the Register in respect of medicinal pain balm under class.
In this application too, after the Trade Marks Registry raised some objections against Applicants' mark, Applicants filed evidence whereupon the mark was ordered to be advertised before acceptance. Accordingly, the mark was advertised in Trade Marks Journal Issue No. 830 dated 16-5-1984 at page 125.
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To both the above referred Application No. 306622 and 316936, Oppositions were filed under Nos. CAL-1694 and CAL-1761 respectively by Rangoon Chemical Works Pvt. Ltd. Bala Pit, Rander, Surat-5 (hereinafter referred to as Opponents) objecting to the registrations of both of the above marks of Applicants contending mainly, inter-alia- (1) that Opponents are the registered proprietors of "TIGER BRAND" trade marks under registrations Nos. 244978 and 263300 in respect of medicinal balm under class 5 and that their trade marks contain the words "TIGER BRAND" or "FLYING TIGER BRAND" alongwith the device of tiger with wings (2) that the above two registrations are still valid and subsisting;(3) that Opponents have been using the above marks openly, continuously and extensively since January, 1965 as a result of which valuable goodwill and considerable reputation accrued to the above marks; (4) that Applicants' marks are deceptively similar to Opponents' registered marks and that there is also similarity in the get-up of the labels under rival marks leading to confusion and deception, and (5) that in all the foregoing premises Applicants' marks shall be refused registration under sections 9, 12(1), 11(a), 18(1) and 18(4) of the Act.
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Applicants filed a counter-statement denying all the material averments in the notice of opposition and they claimed inter-alia that their predecessor in title are Eng Aun Tong, founded in 1900, whose business was continued by Haw Bar Brothers Private Limited (founded in 1932) and later since 1969 the business is being continued by Haw Par Brothers International Limited. Applications asserted that they and their predecessors have been using the mark in India since at least 1940. They also claimed that the device of a tiger is common to trade, as it is to be found under several marks on the Register. Finally they claimed rights to registration on the basis of their factual user under section 33 of the Act.
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In Opposition No. CAL-1694 Opponents filed an affidavit of Ismail Cassim Bham, their Director, as main affidavit and submitted 7 more third party affidavit as evidence in support of opposition, while Applicants filed the affidavits of Aw It Haw and Edward Geoffrey Hall as main affidavits in support of application and they also filed photostat copies of 7 third party affidavits (filed by them in some other Opposition No. CAL-1200) as evidence in support of application. Thereupon, Opponents filed one more affidavit of Ismail Cassim Bham as evidence in reply.
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In Opposition No. CAL-1761 Opponents filed only one affidavit of their Director, Ismail Cassim Bham, as evidence in support of...
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