1983 (12) TMI 328 - HC - Indian Laws

Appeal allowed, judgments set aside. Rectification granted, costs awarded to appellants. Stay of order for two weeks.

Hiralal Parbhudas Versus Ganesh Trading Company And Ors.

The appeal was allowed, setting aside the judgments and orders of the learned single Judge and the Deputy Registrar. The appellants' application for ... - Issues Involved:1. Deceptive similarity of trade marks2. Actual deception and confusion3. Compliance with procedural rules for affidavits4. Honest concurrent use under Section 12(3) of the Trade Marks Act5. Exercise of discretion by the Deputy RegistrarIssue-wise Detailed Analysis:1. Deceptive Similarity of Trade Marks:The main contention was whether the respondents' label was deceptively similar to the appellants' labels. The appellants argued that the respondents' label, which included the bust of a man and the name 'Himatlal' in Devanagri script, was deceptively similar to their own registered trade mark, which featured the bust of a man and the name 'Hiralal' in Devanagri script. The court referred to well-established principles, including the need to consider the overall similarity and the impression on a person of average intelligence and imperfect recollection. The court concluded that the respondents' label was indeed deceptively similar to the appellants' labels, as an ordinary person would likely confuse the two due to the overall similarity in the labels' features and placements.2. Actual Deception and Confusion:The court found evidence of actual deception and confusion, including affidavits from consumers and dealers indicating specific instances where confusion occurred. The respondents had also applied to amend their registration to read 'Vallabhdas alias Himatlal,' which the court saw as an attempt to come closer to the appellants' labels. The burden of proving no deception then shifted to the respondents, who failed to provide any evidence to the contrary.3. Compliance with Procedural Rules for Affidavits:The respondents argued that the affidavits should not be considered as they did not conform to Rule 116(1) and (3)(a) of the Trade and Merchandise Marks Rules, 1959. However, the court noted that some affidavits were affirmed before a Civil Judge, and others before an Executive Magistrate, which was legally proper. The respondents did not object to these affidavits before the Deputy Registrar, and the court dismissed this contention as unfounded and belated.4. Honest Concurrent Use under Section 12(3) of the Trade Marks Act:The respondents claimed they were entitled to the benefit of Section 12(3) of the Trade Marks Act on the grounds of honest concurrent use. The court rejected this plea, stating that the respondents' actions were far from honest and aimed at confusing consumers to benefit from the appellants' established market presence. The court emphasized that public interest and the purity of the trade mark register must be maintained.5. Exercise of Discretion by the Deputy Registrar:The respondents argued that the Deputy Registrar's discretion under Section 56 of the Act should not be disturbed. The court clarified that the Deputy Registrar had not exercised discretion but had adjudicated on the similarity of the marks. Since the court found the marks to be deceptively similar, there was no basis for exercising discretion in favor of the respondents.Conclusion:The appeal was allowed, setting aside the judgments and orders of the learned single Judge and the Deputy Registrar. The appellants' application for rectification was granted, and the respondents were ordered to pay the costs throughout. The court also requested the Prothonotary and Senior Master to send a copy of the judgment to the Registrar for requisite action. The operation of the order was stayed for two weeks on the respondents' application.