Raghbir Singh, Vice-Chairman
1. CM (M) No. 406/94 has been transferred from the High Court of Delhi in terms of Section 100 of the Trade Marks Act, 1999 and numbered as TA/93/03/TM/DEL.
2. Respondent, M/s Balbir and Sons (Agencies), filed application No. 412036 for registration of trade mark BALBI BLACK LABEL in respect of liquors including brandy, whisky and gin and the same was advertised before acceptance in the Trade Marks Journal No. 974 dated 1.1.90 at page 1251. Appellant, M/s Kalyani Breweries Ltd., filed a notice of its intention to oppose the registration on 29.3.90 on the grounds that it is the registered proprietors of the trade mark KALYANI BLACK LABEL under No. 308 in class 32 in respect of beer, but which in the course of trade is sold under the trade mark BLACK LABEL and it is asked by, the customers as BLACK LABEL BEER. Thus, the word BLACK LABEL has acquired a great reputation in the market for the appellant. Beer, though being in class 32 of the Fourth Schedule, and wine etc., being in class 33 of the Fourth Schedule, are sold from the same counters and asked for by the same class of customers. Thus, both the products by the established use of the trade are bound to be regarded as goods of the same class. The mark BALBI BLACK LABEL applied for is confusingly and deceptively similar to the appellants well known trade mark BLACK LABEL. Thus, the registration of the trade mark applied for is contrary to provisions of Sections 11, 12 and 13(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the). The respondent filed their counter statement on 9.2.91 denying the averments of the appellant in opposition. Appellant filed certain evidences of user and reputation by way of an affidavit by Shri V.S. Venkatraman, Secretary of the Appellant Company on 25.5.92. The affidavit was accompanied by 17 unattested photocopies of bills.
3. Deputy Registrar of Trade Marks took up the matter for hearing on 5.5.93. His conclusions are based upon the examination of the matter under Sections 11(a), 12(1) and 18(1) of the. In matter of his examination under Section 12(1) of the Act, he concluded:-

(i) The prefixes in the mark KALYANI BLACK LABEL and BALBI BLACK LABEL being KALYANI and BALBI respectively, are distinct and dissimilar and the suffix BLACK LABEL is identical and/or deceptively similar to each other and the prefixes being essential feature of the mark have greater significance and weight than all suffixes. Thus, the condition relating to the mark being identical with or deceptively similar to the similar mark registered in the name of a different proprietor is not satisfied;

(ii) Appellants goods are in respect of beer and the respondents goods are in respect of liquor, including brandy. Hence rival goods are of the same description falling in different classes and thus, goods being similar, the condition relating to goods being of the same description under Section 12(1) of theis met. Thus, the impugned mark meets the requirements of Section 12(1) having not been disqualified on both the grounds in relation to deceptive similarity of the marks and the similarity of the goods.
4. In relation to his examination under Section 11(a) of the Act, he took on record the affidavit filed by Shri V.S. Venkatraman, Secretary on 25.5.92 wherein the sale figures under the trade mark KALYANI BLACK LABEL had been depicted from 1979-80 to 1990-91. In the same context he relied upon the affidavit dated 18.11.92 of one Shri Balbir Singh for the respondent wherein respondent has shown user of the mark BALBI BLACK LABEL from the 1980-81 to 1991-92. The respondent is the registered proprietor of the trade mark BALBI word per se under No. 298112 as of 1.8.74 in respect of liquors, including brandy, whisky and gin. He concluded that the respondent has succeeded in proving the user of the mark applied for since 1974 in relation to the word per se BALBI and since 1981 to 1991-92 in relation to the impugned mark BALBI BLACK LABEL. Thus, he found that the opposition under Section 11(a) is not maintainable.
5. In his finding about Section 18(1) of thehis conclusion was that respondent has succeeded in proving the right of proprietorship of the mark applied for. Thus, he found that opposition under Section 18(1) of theis not maintainable.
6. Deputy Registrar in his Order mentioned that the appellant is the proprietor of the mark KALYANI BLACK LABEL registered under No. 308025 in class 32 in respect of beer. But the goods, that is, beer are asked for by the customers as BLACK LABEL BEER. Consequently the word BLACK LABEL is stated to have acquired great reputation in the market. He inferred from it. that the appellants registered trade mark KALYANI BLACK LABEL has lost its significance and distinctive value amongst the consuming public due to the word KALYANI. By putting reliance upon something in the notice of opposition of the appellant, he concluded that the words BLACK LABEL have been disclaimed. He further inferred that the appellant has not established the user of its mark BLACK LABEL (disclaimed). Thus, it cannot claim any right in the words BLACK LABEL or mark KALYANI BLACK LABEL under No. 308025 in class 32 as of 28.8.75. While dealing with the evidence of user adduced by the appellant, he concluded that the affidavit filed by Shri V.S. Venkatraman has not shown the sales of the appellant in Delhi, Uttar Pradesh, Punjab, Haryana, Jammu and Kashmir, Himachal Pradesh and Rajasthan. He further recorded that certain unattested photocopies of the bills filed by the appellant by its letter dated 4.6.92 and received in the Registry on 9.6.92 were not taken on record and not considered as a piece of evidence filed under Rule 53(1) and thus, he concluded that such invoices filed on 9.6.92 in the Registry could render no assistance to the appellant. The respondent is the registered proprietor of the mark BALBI under No. 298112 dated 1.8.74 in class 33 and respondent is using this mark with BLACK LABEL as suffix. Thus, they have developed a common law right by virtue or provisions of Sub-section (2) of Section 54 of the. They can avail the benefit and opportunity of user since 1.8.74. In conclusion, the Deputy Registrar mentioned that the essential feature of the appellants mark is KALYANI (prefix) whereas the essential feature of the respondents mark is BALBI which are phonetically, visually and structurally quite distinct and dissimilar. Thus, the fate of both the marks are determined with respect to essential features, that is, prefixes. While rejecting all the objections of the appellant in the matter, the Deputy Registrar concluded that the respondent is entitled for registration under Sections 12(3) and 33 of the.
7. The appellant in the appeal has taken a contention that the respondent, a manufacturer of whisky, brandy and gin, had registered the trade mark BALBI in respect of beer in class 32 under registration No. 298111 and in respect of brandy, whisky and gin in class 33 under registration No. 298112. Both these registrations were taken on 1.8.74 and the trade marks were BALBI word per se. Since the respondent did not accomplish much in selling its products under the trade mark BALBI BLACK LABEL in 1983 it filed application No. 412036 for registration of mark BALBI BLACK LABEL in respect of brandy, whisky and gin in class 33. In this new application the respondent has simply added the word BLACK LABEL to its existing trade mark. This was done with a dishonest objective to confuse and deceive the innocent consumers into believing in buying its alcoholic products under the false and wrong impression. The consumers had come to identify the words BLACK LABEL with the appellant because of the long user since 1971. Learned Deputy Registrar, while recording that the appellant is the prior adopter and user of the trade mark KALYANI BLACK LABEL and the respondents conduct amounted to commercial dishonesty, grossly and patently erred in Ordering that the appellants opposition be disallowed and the application No. 412036 of the respondent for registration of the label BALBI BLACK Label to proceed to registration. KALYANI BLACK LABEL comprising of three words is a composite mark of which all the words are important and integral to it and the appellant had already disclaimed rights to exclusive use of the word LABEL word per say, but not the word BLACK LABEL. The Deputy Registrar failed to appreciate that the words BLACK LABEL have acquired trade mark value over a period of time and precisely that is the reason why the respondent used the said words along with the registered trade mark BALBI. The Deputy Registrar failed to appreciate that the only objective of the respondent was to pass off its alcoholic products as of the appellant and thus to trade upon and benefit upon the reputation and goodwill attached to the word BLACK LABEL being used by the appellant since 1971. The Deputy Registrar held that use of the word BLACK LABEL would not violate the provisions of Sections 11(a) and 12(1) of the. He failed to appreciate that since it is dishonest and fraudulent adoption of the mark by the respondent, it could not be said to have been honest and concurrent user and thus could not be saved by the provision of Section 12(3) of the. It is wrong to say that the prefix of the trade mark was the most important feature of the trade mark and that the suffix of the trade mark was not important. The Deputy Registrar failed to give sufficient importance and weight to the effect that the legal right of the appellant in the words BLACK LABEL in respect of alcoholic drinks have been acknowledged and admitted by other persons in the trade which is evident from the fact that the mark KALYANI BLACK LABEL is being used by other breweries only pursuant to a licence agreement having been entered into with the appellant.
8. Respondent filed its counter affidavit on 2.3.95 wherein it has controverted all the averments of the appellant in the appeal. Appellant filed a rejoinder on 11.9.95.
9. The appeal was taken up for consideration by the Board in its sitting held at New Delhi on 13,9.04. Learned counsel Shri Vivek Dhakolia appeared for the appellant and learned counsel. Shri Bharat Chawla appeared for the respondent.
10. Learned counsel for the appellant drew our attention to the mark KALYANI BLACK LABEL and submitted that the dominant feature of the mark is BLACK LABEL which the respondent in his impugned mark has tried to trade upon. He reiterated that it is wrong to say that BLACK LABEL has been disclaimed. He also stated that the Deputy Registrar is wrong in his findings in saying so. It is only the word LABEL, besides the word MASTERBREW, which has been declaimed. Appellant has extensive sale over a long period of time under that mark since 1971. The user of respondent is only since 1984. There are common trade channels and common customers and thus there is every likelihood of confusion and deception and, in view of the reputation and standing of the appellant in the market, the respondent intended to trade upon the reputation of the appellant and to pass off its products as products of the appellant.
11. Learned counsel for the respondent rebutted the arguments of the appellant and submitted that the impugned Order is perfectly legal and it is wrong to say that it violates Sections 11(a) and 18(1) of the. He submitted that the invoices submitted by the appellant were not taken on record by the Deputy Registrar and those were not attested. The affidavits submitted by the appellant did not have the verification Clause and hence are not admissible in law. He submitted that in matter of composite trade marks the suffix and rest of the part of its has to be taken as a whole and thus both the marks are distinct to each other. In the impugned mark the word BALBI is in bold form and the words BLACK LABEL are in small letters thus leading to a distinctive look vis-a-vis the mark of the appellant. The words BLACK LABEL have acquired the status of public juris and those are being extensively used like in Johny Walkers Black Label Whisky.
12. Learned counsel for the appellant in reply submitted that the words BLACK LABEL as such have not been disclaimed. He submitted that the assignment done is perfectly right since it is in relation to a sister organisation. He submitted that even though the prefixes being distinctive, rest of the words BLACK LABEL as such are potent enough to cause confusion and deception. In matter of absence of verification in the affidavits, he submitted that, that being a technical defect is curable.
13. We have carefully examined the submissions made by the learned counsel for the appellant and the respondent. The Deputy Registrar, after making an examination of the application under Sections 11(a), 12(1) and 18(1) of the, having reached the conclusion that registration of the mark is not objectionable under these three Sections, has finished up with allowing registration as a honest and concurrent user under Section 12(3) of the. This in itself is indicative of him being not so sure about his acceptability of the application under Sections 11(a), 12(1) and 18(1) of the. He is wrong in his analysis when he terms the words per se KALYANI and BALBI as prefixes. The prefix or a suffix is a part of the word integrated to it at the beginning or at the end, as the case may be. It does not stand alone as a separate word. Here in the impugned mark and the mark already on the register, the expressions consist of three independent words wherein the words KALYANI and BALBI are the words perse and not as prefixes. Now the question for the Deputy Registrar was to locate the dominant feature of these three worlds. He has chosen to ignore the very important two words BLACK LABEL which to the consumers of these products have a very significant meaning. The purchaser of an average intelligence will hardly put emphasis upon the words BALBI and KALYANI while going for the purchase of the products in this area. The Courts have emphasised that what is important to point is the distinguishing or essential feature of the trade mark already registered and what is the main feature or the main idea underlying the trade mark and if it if found that the trade mark whose registration is sought contains the same distinguishing or essential features or conveys the same idea, then, ordinarily the Registrar would be right if he came to the conclusion that the trade mark should not be registered (per Chagla C.J. in James Chadwick & Bros. Ltd. v. National Sewing Thread Co. Ltd., AIR 1951 Bom 147 , De Cordova v. Vick Chemical Co., (1951) 68 RPC 103 (SC) it is wrong to suggest that the word BLACK LABEL" has attained the status of public juris in India. Learned counsel for the appellant mentioned that Johny Walker Black Label is not a registered trade mark in India. Product is not freely available in the market, except for its restricted sale at customs duty free shops at airports. Registration as an honest and concurrent user is to be allowed only in those cases where there have been honest concurrent use over a long period. In the instant case the user claimed by the respondent is only since 1984 which cannot be claimed to be a user sufficient enough entitling for the benefit of honest concurrent user. There is every likelihood of impugned mark being confused and causing deception for the registered trade mark KALYANI BLACK LABEL. Concentration of sales in a particular region of the country and the sales being spares in certain regions of the country of a product having a mark already on the register is not a good ground for allowing registration to a new mark which otherwise does not meet the requirements of Sections 11(a) and 12(1) of the. Consequently, we hold that the impugned mark is likely to deceive or cause confusion in terms of Section 11(a) of theand is also disentitled under Section 12(1) of thesince it pertains to the same description of goods and is deceptively similar to the mark of the appellant. Accordingly, for these reasons the impugned Order of the Deputy Registrar dated 30.9.93 is set aside and the appeal is allowed with no Order as to costs.