Madras High Court: In a civil miscellaneous appeal filed by Godfrey Phillips India Ltd. (‘Godfrey Phillips’) under Section 91 of the Trade Marks Act, 1999 against the order passed by the Deputy Registrar and resultantly to refuse application filed for registration of trade mark Red & White, Senthilkumar Ramamoorthy, J. while setting aside the impugned order, directed the Registrar of Trade Marks to cancel the certificate of registration granted in favour of Khoday India Ltd. for the trade mark ‘Khoday’s Red and White’ and rectify the register by removing the entry relating to trade mark from the Register of Trade Marks.
Background:
Khoday India Ltd. is a manufacturer of alcoholic beverages. An application for registration of the trade mark “Red & White” was submitted. The said trade mark was accepted for advertisement and advertised in Trade Mark Journal. Godfrey Phillips filed an opposition on the basis that it owns the trade mark “Red & White” in relation to cigarettes and other related products. Godfrey Phillips asserted that it adopted and started using the trade mark “Red & White” since 1940 and that the said trade mark was advertised widely in the print and electronic media. Further, registrations were obtained in respect of the trade mark “Red & White” and formative marks in class 34 from 05-02-1973 onwards.
Issues and Analysis:
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Whether the goods are similar?
The Court noted that the relative grounds for refusal of registration under Section 11(1) of the Trade Marks Act are applicable only if the relevant trade marks are identical or similar and the relevant goods or services are identical or similar.
The Court further noted that the Trade Marks Act does not define the expression “similarity of the goods or services”. Thus, it referred to Nandhini Deluxe v. Karnataka Coop. Milk Producers Federation Ltd., (2018) 9 SCC 183 and Hatsun Agro Product Ltd. v. Arokya Food Products, 2016 SCC OnLine Mad 11315, wherein it was said that products/services that are used for substantially the same purpose and are, therefore, capable of being use as substitutes are likely to be construed as similar. Thus, while applying this test, the Court concluded that cigarettes and alcohol cannot be used as substitutes, and they also do not fulfil the same purpose The mere fact that cigarettes and alcohol may be consumed at the same time does not satisfy the test of complementarity. Thus, Section 11(1) of the Trade Marks Act becomes inapplicable.
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Whether the appellant’s mark is a well-known trade mark?
The Court noted that the expression “well-known trade mark” is defined in Section 2(1)(zg) of the Trade Marks Act. Further, it noted that Section 11(2) provides for goods/services/class agnostic protection to a well-known mark. Thus, even if the goods or services are not similar, if the opponent’s trade mark is a well-known mark, the registration of the subsequent mark would be refused subject to the opponent establishing the requirements of Section 11(2).
The Court further noted that Godfrey Phillips has established that the trade mark was recognized in the relevant section of the public and that goods bearing the trade mark were sold throughout the country. In fact, the registrations obtained outside India evidence that the trade mark was recognized outside India also. The Court inferred that a substantial segment of smokers would be likely to proceed on the basis that the use of an identical or substantially similar mark in relation to other goods is indicative of a trade connection. This lead to the inference that the trade mark “Red and White” was well-known in 1995 when Khoday India Ltd. applied for registration.
Thus, the Court said that the Registrar should have examined the pleading and evidence and determined whether Godfrey Phillips mark is well-known for purposes of deciding the objections under Section 11(2) of the Trade Marks Act.
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Whether non-use of the impugned mark by Khoday India Ltd. is a material consideration in deciding this dispute?
The Court noted that Khoday India Ltd applied for registration on a ‘proposed to be used’ basis in 1995, but did not use the trade mark “Red & White” in relation to alcoholic beverages over the extended period from 1995 to 2012. Meanwhile, the appellant has used the trade mark “Red & White” continuously from the year 1940.
The Court said that when an application is made on a ‘proposed to be used’ basis, such application is considered on the basis that the mark would be applied within a reasonable time to the relevant goods or services because use of a mark is the paramount consideration under the law.
The Court viewed that the non-use of the mark from 1995, after applying for registration on a ‘proposed to be used’ basis, would justify the exercise of suo motu power under Section 57(4) read with sub-sections (1) and (2) thereof.
Moreover, it said that under Section 11(2), once it is concluded that the earlier trade mark is a well-known trade mark, the registration of an identical or similar trade mark is not permitted if the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or reputation of the earlier trade mark. Further, as Godfrey Phillips’ trade mark is well-known, non-use by Khoday India Ltd. strengthens the case of Godfrey Phillips. Thus, if Khoday India Ltd. is permitted to use the mark at this juncture, it would certainly be detrimental to the distinctive character of the Godfrey Phillips trade mark.
[Godfrey Phillips India Limited v Khoday India Limited, 2023 SCC OnLine Mad 7201 decided on 09-11-2023]
Advocates who appeared in this case :
For Appellant: Advocate Arun C. Mohan
For Respondents: Advocate Gladys C. Daniel, Advocate M.Karthikeyan
Buy Trade Marks Act, 1999 HERE
