Registration of the trademark CANON in class 16

While dealing with the issue of confusion and deception the similarity of the marks are to be considered as a whole mark. Here, the marks are identical and the goods are similar or identical. When that be so, the class of customers are to be considered. Illiterate class of people are also likely to deal with the products either as consumer by themselves or as purchasers for their masters. Such people will not be able to distinguish between the rival ones. Hence there will be definitely confusion and deception in the minds of the consumers and, therefore, the objection under section 11 (a) and 11 (e) of the Act sustains. The argument that the goods are different has been considered in various judgments and the familiarity known Benz case, Diamler Benz Aktiegesellschaft versus Hypo Hindustan – The Delhi High Court has held that the Trademark Benz was extensively used with respect to automobiles produced by the plaintiffs and the plaintiffs therein have built up a well reputation and goodwill for their automobiles through the said trademark registration in Coimbatore “Benz”. In such circumstances, the use of such identical mark “Benz” by the respondents with respect to under garments will lead to confusion in the market, although the manufacturers of Micredes Benz Cars were neither manufacturing nor selling garments nor underwear apparels. The appellants have also stated that though the goods are different their reputation has got to the considered on the above principles as also decided in the Caltax Case which was not considered by the Registrar in the impugned order. According to the principles laid down in the above cases it is for us to consider whether the appellant has built up a reputation and goodwill in the market and whether by such use by the respondents No.3 to 5 there will be confusion in the market. Considering the fact that the trademark has acquired the status of a well-known mark as stated in the Notice of Opposition and the ground of appeal, which has not been denied by the respondents No. 3 to 5 we are of the view that the same has got to accepted. It has been the general view and settled principle that where trademark is determined to be well-known in at least on relevant section of the public in India by any Court or register, the same shall be considered as a well-known mark. The appellants has relied the judgment of this Board in OA/43/2005/TM/KOL in support of this principle. In such a case a well-known mark has got to be protected. ‘As per the principles laid down in the Benz case the marks when identical, the respondents No.3 to 5 cannot be permitted to have the trademark registration. We therefore find that the order of the Registrar is not in order as regards the finding that the goods are different.

We shall also deal with the issue as to the finding of the Registrar as the documents filed along with the reply affidavit cannot be considered as per the provisions of Rule 5 of the Rules. The Apex Court and the other Courts have been of the view that evidence should not be shut down at any stage. Here we find that the documents filed are the annual reports, advertisements and bills to show their use. We are of the view that the respondents’ No. 3 to 5 can have no objection for trademark application filing those documents of the appellant and the Registrar could have considered the same. We also do not find any merit in the submission of the respondents’ No. 3 to 5 that a search was made and no conflicting mark was available as it is not supported by any evidence. The respondents’ No. 3 to 5 have not disputed the fact that the appellant use is prior to that of the respondents’ No. 3 to 5.

The only submission is that there was no mark pending or registered where a search was made. In such circumstances the appellants are prior user and the respondents’ No. 3 to 5 cannot claim proprietorship right as per section 18(1) of the Act. The order under section 18(1) of the Act also fails.

We also quote the observations made in OA/43/2005/TM/KOL here, “The mark “CANON” is an essential part of the corporate name of the appellant before us. The mark “CANON” gives an indication of the origin of the goods emanating from or relating to the appellant. If the respondents No. 3 to 5 mark is allowed trademark registration undoubtedly it is bound to cause confusion in the mind of the public that the goods of the respondents No. 3 to 5 with the identical trademark has connection with the registered proprietor of the mark, in the case on hand, the appellant. Therefore, the respondents No. 3 to 5 cannot be allowed to register the mark “CANON” of which the appellant is the registered proprietor”. The observation squarely applies to the case on hand and we are of the view that the impugned trademark “CANON” cannot be allowed to be registered.

Prior User – Deceptive similarity – Passing off

In the case before us the applicant have established beyond all doubts the vast and widespread reputation of their mark relied upon which are sufficiently irrefutable. The respective field of activity in which both applicant and respondent carry on business is identical. We have already ruled that there is a close similarity between the competing trademarks. Also, the class of person who are likely to be deceived are the common man both semi-literate and illiterate. The purpose of the goods and the trade channel through which it passes are also identical. Undoubtedly, the public be led to think both goods have a common source. The respondent use of DREAMS’ is clearly much later than that of the applicant. Therefore, in our judgment the respondent trademark is clearly hit by Section 11(3). The next point for consideration is, is the respondent protected under section 12?. Here, the supreme consideration is honesty of adoption and use. There is little doubt that the respondent’s trademark on the date of application for rectification in 2008 has acquired considerable, voluminous and impressive sales turnover. But what disturbs us is the dubious claim of use from 1987.

There is no supporting documents available. Instead a letter from the Fire department and newspaper cutting of the incident have been provided. A copy of F.I.R. has also not been placed on record. The handwritten bills and invoices cannot be acted upon as it is of doubtful authenticity. It is true while reviewing protection under this section, the balance of convenience is a relevant consideration. We are conscious that much hardship will be caused to the respondent, if the impugned mark is now removed from the register. But voluminous sale cannot override commercial honesty. The applicant have expressly alleged that the respondent had knowledge of the applicant’s trademark registration in Cochin. Being in the same trade we can assume that is the truth. If that be so, all subsequent sale to build reputation is irrelevant. The market is full of gold diggers. The common public has no domain skill or expertise to distinguish the rival marks. The applicants trademark SWEET DREAMS is a ready cash cow attracting all manner of competitors. What gives credence to our suspicious is that even after having admitted knowledge of the applicants’ trademark SWEET DREAMS only in 2006, the respondent now without the shield of obvious deniability, continued to promote the trademark DREAMS with greater vigor to camouflage the legal roadblock they had boxed themselves into, hoping to triumph as and when the face off comes. The respondents’ massive sale post 2004 is merely a stage setting to get into the register through convulsed route with fixity of purpose. The interest of the public not to be deceived or confused is uppermost in our mind when we rule that section 12 cannot come to the rescue of the respondent and his mark cannot co-exist.

Lastly, it asserted that the respondent cannot be the proprietors of the impugned mark under section 18(1). It is obvious that the respondent have copied the applicants mark with inconsequential changes and masquerade it as his mark that subsumes the material part of the applicant’s mark. In such a situation there would be immense confusion and deception in the minds of the public. The respondent trademark DREAMS cannot denote the origin of his goods and the market will not accept it as a distinguish mark. All the seductive arguments advanced cannot hide the ugly truth that the respondent’s mark is a plain copy meant to free ride on the applicant’s mark and its reputation. This is a masterpiece of deception. The perception that recent massive turnover is a huge enabler is a profound misconception. Consequently, the respondent cannot be treated as the legitimate proprietor of the impugned trademark.