Under the Trademark law opposition to the registration of a mark can be filed on the ground that it is identical or similar to an earlier registered trade mark and also that the goods specification of both the marks are similar or identical. However, in case of honest concurrent use or in case of other special circumstances, the Registrar may permit registration of a similar or identical mark in respect of the similar or identical goods or service. If the goods specification of the impugned mark is different from the registered/unregistered trademark, opposition can be made on the ground that the registered mark is a well-known mark and registration of the impugned mark would cause dilution of the registered mark.
The recent case of JVC Industrial Corporation V. Victor Company of Japan Limited & Anr.2005 (31) PTC 315 (IPAB) makes an interesting case for study on the question of similarity of goods specification and jurisdictions of registrars.
Factual Background
The Appellant JVC Industrial Corporation had applied for the registration of their mark "JVC" in respect to " Battery Chargers, electric inventors, electric invertors, electric voltage stabilizer and safety helmets included in class 9 of the Act. When the mark was advertised, the respondents Victor Company of Japan Limited & Anr registered proprietors of the mark "JVC" gave a notice of intention to oppose the application.
The Assistant Registrar after hearing both the parties and perusing the evidence, accepted the opposition and refused to register the impugned mark. Aggrieved by this decision, the Appellant filed a review application, which was heard by deputy registrar Shri Om Prakash. The deputy registrar set aside the order passed in the earlier proceeding. The Appellants filed an appeal in the Delhi High Court, which directed that the instant matter be dealt by any 'deputy registrar' other than Shri Om Prakash. An Assistant Registrar instead of a deputy registrar heard the matter. The Appellant thereafter, filed the instant appeal challenging the proprietary of hearing conducted by the assistant registrar on the ground that as per the order of the High Court the hearing should have taken place before a deputy registrar.
The Assistant registrar found that though falling in the same class, goods description of the appellant is different from that of the respondents. The goods of the former comprised mainly inverters used for generating A.C. current and batteries whereas the goods of latter are mainly audio and video equipments. Therefore the objection on the ground that the goods are similar or identical cannot be sustained. However, the registrar was of the opinion that since both the goods have some trade connection and are commonly used in the household, there is a likelihood of confusion in the minds of consumers of average prudence. Further, according to the Registrar, the appellant also failed to establish that the reason for adopting the mark "JVC was honest.
The Board was called upon to adjudicate upon following issues:
- Whether in the face of the Court's Order, the hearing conducted by the assistant Registrar was a procedural impropriety?
- Whether the goods specification of the impugned marks was same or identical with that of the registered mark?
Arguments of the Parties
The appellant contended that the Registrar has erred in holding goods with respect to which the impugned mark is sought to be registered has trade connection with those of the respondents mark. The former fall in the category of electric goods and the latter fall in the category of electronic goods. Therefore there is no likelihood of confusion in the mind of the consumers. The respondents on the other hand argued that is not necessary for the goods should be exactly similar. The likelihood of confusion must be assessed taking into account the selling counters and the prospective consumers, which shall be same for both the 'impugned mark' and the registered mark. The respondents further pointed out that the impugned mark is exactly similar to their registered mark and therefore has been adopted dishonestly by the appellant to trade on their goodwill. Respondents also produced evidence of their dealing in chargers and batteries.
Decision
The Board was of the opinion that hierarchy is created among the Registrars solely for the purposes of administrative functions. As far as the judicial functions are concerned, all of them enjoy the same powers and competence. The order of the High Court should be considered by the spirit and not the letter of it. According to the Board as the matter challenged before the Court was heard by the deputy registrar, the Court directed that a deputy registrar other than one that heard it should decide the matter. Therefore the assistant registrar is as competent to hear the matter as the deputy registrar.
As to the merits of the case the Board found that the goods specification of the impugned mark is similar to that of the registered mark. Both the goods are supplementary to each other and are commonly used in households. The Board observed:
"In practical terms electric and electronic goods make no difference, since electronics is nothing but an extension of electricity in technology. The thrust as such is that both belong to the same gene as at the bottom of both is that the same energy is used to operate these."
The Board stressed on the reputation and goodwill of the respondent's mark "JVC" in Indian market. According to the Board the respondents had been importing the goods in India and have given wide publicity to their mark, which is evident from various Indian journals. Therefore, the appellants have to discharge a heavy burden of proving that they have honestly adopted the mark and used it for a long time in India.
Comments and Conclusion
Where a mark is similar or identical to a well-known trademark, it can be registered only if it is proved that the mark was adopted honestly and that it has been in prior use in India. The burden of proof in such cases is very heavy and the registration would be denied where the applicant does not present a strong case for registration. In the instant case one of the contentions of the appellant was that the registered mark was in use in other countries since 1968 but not in India, whereas the appellant has been using the mark with respect to their goods for a long time. There is a catena of cases in which the registered proprietors of well-known marks have failed in opposition, as they could not establish use or familiarity of their mark with the consumers in India. The respondents succeeded in opposition proceedings mainly because they had been importing their goods in India continuously and had also given wide publicity to their mark through well-known Indian Journals.
© Lex Orbis 2005
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
