M.H.S. Ansari, J. (Chairman)

1. This is an application filed for removal from the register the Trade Mark No. 1072663 in Class 9 registered in the name of Mr. Bharat N. Parikh Rajen A. Kamdar, trading as M/s Safe Earthing Electrodes Manufacturing Company, No. 112, Thambu Chetty Street, Chennai-600 001.

2. It is the case of the applicant that he applied for registration of trade mark "S.E.E." under No. 1311772 in class 9 in respect of Earthing Electrodes and that the said application is pending. The applicant states that he has been carrying on the business in manufacturing and selling "Safe Earthing Electrodes" for a long time and during the course of the business he conceived and adopted the trade mark "S.E.E.", which is being used since 23.09.1999, It is the further case of the applicant that during the year 2000-2001 the respondent was trading under the name and style of Kalpana Electric Company at No. 112, Thambu Chetty Street, Chennai and were purchasing earthing electrode from the applicant bearing the trade mark "S.E.E.". The grievance of the applicant is that the respondent has adopted the trade mark and also got registered the same behind the back of the applicant. Being the proprietor, adopter and prior user of the mark the applicant alone is entitled to the trade mark "S.E.E, and adopting of the same by the respondent is dishonest, with a view to trade on the name and reputation of the applicants mark and, therefore, the said mark ought not to have been registered in the name of the respondent. The mark is not adapted to distinguish the products of the registered proprietor as already the mark is associated in the mind of the public with the applicant and therefore in terms of Section 9, 11, 12 and 18 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) it ought to have been refused registration.

3. In their counter statement, the respondents have denied the material allegations. It is their case that the respondents mark was registered with effect from 09.01.2002, the applicant herein has been using the trade mark "ASHLOK" to denote his Safe Earthing Electrode. The applicant had filed application No. 1311773 in class 9 for registration of the said mark "ASHLOK" with a device of Triangle and Spark without the words S.E.E. It is the case of the respondent that they have chosen to use a descriptive expression as its Trade Mark along with a distinctive device for the purpose of marketing its Safe Earthing Electrodes. Further the respondent is carrying on business under the name and style of Safe Earthing Electrodes Manufacturing Company. Therefore this was an added reason for the choice of Trade Mark S.E.E.. The mark S.E.E. is used by the respondent along with the device and it is contended that the same is descriptive and along with device it is adapted to distinguish. The applicant, it is stated, has been using the Trade Mark ASHLOK and the letters S.E.E. used in the invoices are only as descriptive expression. It is the further case of the respondent that the letters S.E.E. is descriptive expression which is open to use by all in the market. The applicant cannot claim exclusive right for the same. The applicant and respondent are both engaged in the manufacture and sale of Safe Earthing Electrodes. "Therefore, they are both entitled to use the letters S.E.E." "The descriptive expression cannot become the exclusive property of the applicant to the exclusion of the respondent herein."

4. Further it is alleged by the respondent that both the applicant and the respondent do not sell their goods to end customers. The goods are sold to leading companies. The goods are approved by Electrical Engineers prior to the purchase. Since the goods pass through "Vary purchasers", the likelihood of confusion and deception is nil. The respondents goods are priced at 25% above that of the applicant. On account of the price difference no confusion will arise with respect to the rival products.

5. Mr. Rajesh Ramanathan, Ld. Counsel for the applicant submitted that the trade marks are identical for identical goods and, therefore, the only point for consideration is as to who is the prior adopter and user of the trade mark. Reference has been made to the documentary evidence and more particularly to the invoices which are filed at pages 10-20 relating to the period 30.09.1999 and 02.12.2000 in support of his contention that applicant is the prior adapter of the mark. In the alternative, Ld. Counsel contended that as according to the respondent the mark is descriptive, it is not entitled to registration, therefore, the respondent was not entitled to the registration of the descriptive mark S.E.E., it, therefore, warrants removal from the register.

6. Ld. Counsel for the respondent Ms. Daniel contended that the mark of the applicant is different from that of the respondent. The question of confusion and deception does not arise as the goods are not sold across the counter or "off the shelf" but purchased by wary purchasers. It is further contended that the Applicant has not used the mark S.E.E. as a trade mark, instead the applicant has been using the mark ASHLOK for which the applicant has got registration under No. 1311773 without the words S.E.E. In the invoices referred to by the applicant the trade mark used is ASHLOK and the words S.E.E. are used merely to describe the product. The instant application for rectification is not bonafide and suffers from delay and latches. The applicant having made an application for rectification before the Registrar reference to which has been made in the suit instituted by the applicant, he cannot be allowed to avail of the similar relief before this tribunal, it was contended.

7. We heard Ld. Counsel for the respective parties at Chennai on 16.08.2007.

8. Let us first deal with the objections raised on behalf of the respondent as to the maintainability of the instant Application.

9. Ms. G. Daniel, Ld. Counsel for the respondent contended that as the applicant has already filed a rectification Application before the Registrar, instant application is not maintainable. Ld. Counsel for the Applicant referring to para 8 of the Reply, submitted that the said Application filed before Registrar was withdrawn by the Applicants after the institution of the suit in view of Section 125 of the Act and before the filing of the instant application. Ms. Daniel responded by submitting that as the application has been withdrawn without liberty reserved to the applicant to file fresh application on the same cause of action, instant application is not maintainable. Ld. Counsel has drawn analogy of a suit filed in a court, subsequent suit on same cause of action being not maintainable unless the former suit was withdrawn with permission to institute another suit on same cause of action. In our view, the analogy of a suit is not appropriate for the reason that both the institution and withdrawal of suits are governed by the Code of Civil Procedure (C.P.C.) which in terms does not apply to the instant proceedings. In the absence of any statutory provision either under the Act or rules barring the institution of subsequent application after withdrawal of a former Application the objection is not sustainable. No such provision under the Act or the rules framed thereunder have been brought to our notice. Accordingly, the objection is rejected.

10. Next, it was contended by Ms. G. Daniel, Ld. Counsel for respondent that the instant application is liable to be dismissed on the ground of delay and latches. We are inclined to accept the submission made by Shri Rajesh Ramanathan, Ld. Counsel for the applicant that a rectification Application can be filed only after the mark is brought on the register. The respondents impugned mark was brought on the register in 14.02.2005 and immediately thereafter rectification Application was filed before the Registrar and a suit for infringement and passing off was instituted. In the light of the provisions contained in Section 125 of the Act, the Application before the Registrar was withdrawn and the instant application was filed before this Board on 06.10.2006. Reckoned from the date the mark was brought on the register the delay in the institution of the instant application cannot be construed as inordinate. We, accordingly, reject the objection based on delay.

11. From the submissions made by the Ld. Counsel for the respective parties and the documents on record one thing is apparent and this is that the rival marks of the contesting parties before us are in relation to similar goods namely "Safe Earthing Electrodes". It is also clear that both the applicant as well as the respondent are in the same trade i.e. manufacturing and sale of Earthing Electrodes. However, the registered mark of the respondent is very different from the mark "ASHLOK of the Applicant, both structurally as well as visually. With regard to the other mark of the Applicant pending registration, the commonality in the rival marks is the words S.E.E.. One has, therefore, to S.E.E. as to who is the prior adopter and user of the mark S.E.E.. Applicant claims user from 1999 whereas the registration of the mark of the respondent is from 09.01.2002 the user being proposed to be used. As contended by the Ld. Counsel for the respondent, we find that the applicant has made two separate applications for registration of two trade marks. One such application bearing No. 1311773 is at page 72 annexure VI of the evidence filed on behalf of the respondent bearing device of a triangle with letter L embedded and spark and the words ASHLOK prominently displayed. There is no mention of the words S.E.E.. The other application is amongst the evidence at page 1 filed by the applicant being the application No. 1311772 in same class 9 bearing identical device of a triangle with the letter L embedded and a spark and in the place and stead of words ASHLOK the words S.E.E. are prominently displayed. The specification of the goods in both the applications for registration of the trade marks filed by the applicant is for Earthing Electrode and the class specified is 9. The period of user in both the applications is mentioned as since 23.09.1999. For the sake of convenience we extract hereunder the said marks of the applicant and for comparison, the registered mark of the respondent is also extracted hereunder with the particulars as stated in the respective applications.

ADDITIONAL REPRESENTATION

"CHART"

12. The word or words being part of a trade mark to be really distinctive of a persons goods must generally speaking be incapable of application to the goods of anyone else. A trader acquires a right of property in a distinctive mark merely by using it upon or in connection with its goods. A trader who adopts such a mark is entitled to protection directly the goods having assumed a vendible character are launched upon the market. The trade mark, it is, by now, well established, exists independently of the registration which merely affords further protection under the statute. Priority in adoption and use of a trade mark is regarded as a right superior to priority in registration. Also it is well settled that a trade mark must act as an indicator of origin denoting from whom the goods or services come rather than what the goods or services are. As already noticed, the applicant herein claims to be the prior adapter and user of the trade mark S.E.E. Reliance has been placed upon the invoices filed by the applicant as evidence for the period commencing 1999 at pages 10 - 20 of the typed set filed by the applicant. The invoices at pages 10 to 20 demonstrate that the word "ASHLOK" and the device of a triangle with a letter "L" embedded, and a spark is displayed prominently on the invoices and in the column meant for description of goods, the words S.E.E. are appearing along with the words "(Safe Earthing Electrodes)". The mark on the said invoices is identical to the mark bearing No. 1311773 at page 72 of the respondents type set of evidence. It is thus clear that the applicant has been using since 1999 the mark ASHLOK without the words S.E.E. similar to the mark as in his application bearing No. 1311773 and not the mark shown in application bearing No. 1311772. We, therefore, hold that the applicant has failed to establish before us that he is either the first proprietor or the adaptor and user of the mark S.E.E. The objections based on Sections 11, 12 and 18 of the Act raised by the Applicant are accordingly rejected.

13. Let us now examine the question as to whether the mark registered by the respondent is descriptive so as not to be registerable as a trade mark in view of the absolute bar for refusal of registration under Section 9(1)(a) or (b) of the Act. If a trade mark is inherently distinctive, protection begins upon its use in commerce. Where, however, a trade mark is descriptive of the goods or services then protection can begin only upon establishing that the prospective purchasers associate the mark with a product as originating from a particular source, in other words it has to be demonstrated that the mark has acquired a secondary meaning. This can be shown by extensive sales advertising and length of use of the mark. A trade mark is said to be lacking in secondary meaning unless it is established that a significant number of people in the market associate the mark with the product as originating from a particular source. As on the date of application for registration the registered mark S.E.E. did not bear a distinctive character as a result of user occurring before that date. The user shown in the application was proposed to be used. No evidence, therefore, could be offered by the respondent/applicant of distinctiveness acquired by use. The term Earthing electrodes is admittedly descriptive of the product. The mark of the respondent thus falls into the category, which is otherwise referred to as the descriptive class, which should be left open for traders and public generally to use without fear of trespassing on proprietary rights of others. Admittedly, both the applicant and respondent are engaged in the manufacture and sale of Earthing Electrodes. The name of the product being Earthing Electrodes. The trade mark cannot, therefore, be the full or abbreviated form or acronym of the very name by which the goods are known. Earthing electrodes is the name of the goods manufactured by both, applicant and respondent herein. Affixing a laudatory or descriptive word such as "Safe" would not make a descriptive term Earthing electrodes into a registerable trade mark. Descriptive words are those which describe the product or tells something about the product or by describing some characteristic, quality or kind of the product. Such words are not entitled to be registered unless it is established that such marks have attained distinctiveness (See proviso to Section 9 of the Act).

14. The respondent has clearly stated that the respondent and the applicant both are engaged in the manufacture and sale of Safe Earthing Electrodes. It was further brought out by the respondent that the applicant has been using the trade mark ASHLOK to denote his Safe Earthing Electrodes in the market. It is also the case of the respondent that the letters S.E.E. is a descriptive expression which is open to use by all in the market. In para 7 of the reply of the applicant it has taken the position that as respondent has contended that the letters S.E.E. is only to denote Safe Earthing Electrodes which are only descriptive terms then the respondent should not have applied for registration of the letters S.E.E. as a trade mark. It has, however, not been denied that the words S.E.E. stand for safe earthing electrodes. That is the very name of the product manufactured by both the applicant as well as the Respondent.

15. As already observed, the words in full form Safe Earthing Electrodes or its abbreviated form or as acronym S.E.E. (whether with or without full stops in between the alphabets), in our judgment are not adapted to distinguish which means that it did not pass the test for registrability laid down in Section 9 and in particular Sub-sections 1(a) and 1(b) thereof. No trader, in our view, can claim an exclusive right to the use of the common words descriptive of the very goods Earthing Electrodes and thereby effectively prevent any others of the legitimate right to use the said words or market that product under its very name (Earthing Electrodes).

16. In conclusion we hold that the mark S.E.E. being an acronym and descriptive of the goods Safe Earthing Electrodes it is debarred from registration under Sub-sections (1)(a) and (1)(b) of Section 9 of the Act.

17. We, accordingly allow the application and direct that the Trade Mark No. 1072663 in Class 9 registered in the name of Mr. Bharat N. Parikh Rajen A. Kamdar, trading as M/s Safe Earthing Electrodes Manufacturing Company, Respondents herein be removed from the Register. There shall, however, be no order to costs.

A copy of this order be forwarded to the Registrar of Trade Marks for compliance.