INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex, Annexe-l, 2nd floor, 443, Anna Salai, Teynampet, Chennai 600 018
(Circuit Bench Sitting at Ahmedabad)
M.P.Nos. 181 to 190/2011
IN
ORA/3 to 12/2007/TM/AMD
AND
ORA/3 to 12/2007/TM/AMD
WEDNESDAY, THIS THE 28TH DAY OF DECEMBER, 2011
HON'BLE Smt. JUSTICE PRABHA SRIDEVAN ... CHAIRMAN
HON’BLE Ms. S. USHA … VICE-CHAIRMAN
ORA/3/2007/TM/AMD
Geekay Enterprises,
C-115, Synthofine Estate,
Off. Aarey Road,
Goregon (East),
Mumbai – 400 063. ... Applicant
(Represented by: Ms. Bhagwati Trivedi)
ORA/4/2007/TM/AMD
Garg Scientific Glass Industries,
34, 1st Floor, Sainath Industrial Estate,
No.2, Off. Aarey Road,
Goregaon (East),
Mumbai – 400 063. ... Applicant
(Represented by: Ms. Bhagwati Trivedi)
ORA/5/2007/TM/AMD
Shree Dutta Scientific Glass Works,
A/2, Sainath Indusrial Estate,
No. 1, Off. Aarey Road,
Goregaon (East),
Mumbai – 400 063. ... Applicant
(Represented by: Ms. Bhagwati Trivedi)
ORA/6/2007/TM/AMD
Sanjog Scientific Industries,
7, Heera Panna Industiral Estate
Off Aarey Road, Goregaon (East),
Mumbai – 400 063. … Applicant
(Represented by: Ms. Bhagwati Trivedi)
ORA/7/2007/TM/AMD
Silicaware Pvt. Limited,
54-C, Chotani Estate, Grant Road (E),
Proctor Road,
Mumbai – 400 007. … Applicant
(Represented by: Ms. Bhagwati Trivedi)
ORA/8/2007/TM/AMD
Sushil Trading Corporation,
205, Alankar Industrial Estate,
Dindoshi,
Off Aarey Road, Goregaon (East),
Mumbai – 400 063. … Applicant
(Represented by: Ms. Bhagwati Trivedi)
ORA/9/2007/TM/AMD
ATR Glass Process Systems Pvt. Ltd.,
667/668, GIDC, Makarpura,
Vadodara – 390 010. … Applicant
(Represented by: Ms. Bhagwati Trivedi)
ORA/10/2007/TM/AMD
Sigma Scientific Glass Works Pvt. Ltd.,
Plot No. 4606, GIDC,
Near Deep Jyot Stationery,
Ankleshwar – 390 002. … Applicant
(Represented by: Ms. Bhagwati Trivedi)
ORA/11/2007/TM/AMD
Star Scientific Glass Co.,
C/14, A, Sardar Estate,
Ajwa Road, Vadodara,
Gujarat. … Applicant
(Represented by: Ms. Bhagwati Trivedi)
ORA/12/2007/TM/AMD
Kalpesh Shah,
Sole Proprietor of Shakti Lab Equip. &
Chemicals,
Plot No. 5215, GIDC,
Ankleshwar – 390 002. … Applicant
(Represented by: Ms. Bhagwati Trivedi)
Vs
Hemant Haricharan Goel,
Trading as Goel Scientific Glass Works Pvt. Ltd.,
D-35, Sardar Estate,
Ajwa Road,
Vadodara – 19. ... Respondents (in all the above matters)
(Represented by: Ms. Padmaja Kandge )
ORDER (No.241/2011)
Hon’ble Justice Prabha Sridevan, Chairman:
All these rectification applications have been filed against the registration of the mark XTRONG bearing No: 1014962 in class 9. All the applicants have the same grievance against the mark. The pleadings are almost the same. The evidence in ORA/3/2007/TM/AMD is taken as the basis. Since the issue to be decided is one and the same, a common order is passed.
2. The applicant’s case is that the mark is an abbreviation of the words extra strong. The glass manufacturers have been using the word XTRONG or XSTRONG to describe the joints of flanges and on all ends of glass equipments. Extra strong is the only way to describe the product, so a misspelling of the word would still be a descriptive word. No one can claim monopoly over it. The respondent is a dishonest user of the mark. The respondent has claimed user from 31-12-1989. Even prior to that date this word has been used by glass manufacturers to describe the strength of the joints. It is commonly used. The respondent has filed a suit against the applicant in ORA 10/2007/TM/AMD in Vadodra. No single person can claim an exclusive right over a non-distinctive descriptive mark. The mark is not registrable under Ss.9(1)(a)(b)&(c), 2(a),18(1) 36 , and 57 (2) of the Act.
3. The respondent claimed that the mark was an invented word. It is the brand name of the respondent. It was the respondent who invented the new system of flanges. It was named as XTRONG since the invented flanges had much more tightening strength than the normal flanges. The respondent claimed he was the honest originator and concurrent user of the mark. He prayed that the application to be dismissed.
4. In reply the applicant claimed that the fact that the respondent claims concurrent usage is an admission that he is not the prior user. It is also stated that strengthening of the joints was developed by Schott, Germany, who have been using the word XTRONG several years before the respondent.
5. The respondent filed the trademark registration certificate, certification of incorporation, certificate of importer-exporter, certificate of ISO 9001:2000, certificates of SSI, GST, CST, National Small Industries Corporation Permanent Establishment Certificate, PAN card, invoices and catalogues.
6. The applicant filed exhibit B (colly) which contains technical information of ABLAZE glass works which refers to Xtrong glass joints, the product catalogue of Star scientific Glass co which refers to standard Flat buttress ends (X-strong type), 2003 Product catalogue of the applicant in ORA/10/2007/TM/AMD, which refers to the said applicant coming up with a new design of glass named as XTRONG, the 2000 product catalogue of Yash Industries also refers to a new design of glass joints named as Xtrong joints., the members directory 2004 of the All India Scientific Glass Equipment Manufacturers’ Association describes joints as “Xtrong and buttress joints” glass assemblies are described as “Xtrong, QVF and SCHOTT type glass assemblies”, the article by C.S.Patel (Past Joint Secretary) says “ the most brilliant contribution of Indian glass industry to the world of glass process plants has been the Xtrong flanges., a letter from Borosil glass works describing flanges as “Xstrong type flanges” and so on. There are many such documents. Most important is the 1993 edition of the Schott engineering catalogue which refers to the standard flat buttress ends.
7. The applicant’s documents show that the glass industry uses the word Xtrong to describe the type of joints. In fact the respondent in its counter statement has said that” the invention was named as “Xtrong” it means the invented flanges have much more tightening strength as almost 3 times more than normal flanges”. This is a clear admission that the word describes the flanges as being “extra strong”, so on the respondent’s own admission the word is descriptive of the goods.
8. In 1999 PTC (19) 598 Bharat Enterprises (India) vs. C. Lall Gopi Industrial Enterprises and Ors., the Court held that the words Heat Pillar is generic and all the room heaters which are designed like a pillar are using that word and therefore no one can claim exclusivity to the said word.
9. In 2006 (32) PTC 126 (Ker.) (DB) Tractors and Farm Equipment Ltd., vs. K.S.Sunil Kumar the Court held that the words INSTA POWER indicates instant power and is a generic word and there can be no monopoly.
10. In PTC (Suppl) (1) 106 (Mad) Nestles Products (India) Ltd., vs. Alvitone Laboratories & Ors. the Court held that INSTEA does not qualify as an invented word but it suggests instant tea and registration ought not to have been granted.
11. In the “Law of trademarks & geographical Indications” 2nd edition 2005 it is said that descriptive words with trifling variations conveying the same sound or meaning without constituting a substantially different word are not regarded as invented words. The book cites ORLWOOLA (misspelt for All Wool). It says misspellings commonly used in the trade such as XTRA for EXTRA are not allowable for registration.
12. In this case, the word XTRONG when used in conjunction with the product that is glass flanges will immediately convey the meaning that the flanges are extra strong. In the INSTEA case the learned Judge held:
“13… Whatever be the mode of contrivance, if to the eye or to the ear the resultant expression conveys the same idea as would be conveyed by any recognizable expression in the common vocabulary, then the word would not be regarded by the trade mark law as an invented word. In short, an invented word must be different from any word in common speech, and the difference must be substantial and not skin deep, merely…
…
18. I do not, therefore, reject the affidavits as of no importance. At the same time, I do not completely rely on them either. For I have to address the crucial questions to myself in order to get the right answers. When the arguments opened and when, for the first time, I came across the expression “INSTEA”, my first impression was that the word had something to do with tea and had something to do with instant. The first impression, I must confess, has outlasted all the learned arguments and explanations I happened to listen to subsequently in the course of the hearing of the appeal. It seemed to me that this is a fine example of a telescoped expression such as we find in “art-silk” for artificial silk. “Comintern” for communist international and “Consembly” as a newspaper equivalent of constituent assembly…”
13. This applies to this case. The word XTRONG can only mean extra strong and nothing else. The respondent himself has admitted that the word describes the strength. The documents filed by the applicant show that the glass industry has for many years used the word Xtrong to describe a type of flange. The respondent being in the same industry must be aware of it and yet he has not objected to the use of the words “Xtrong type”even by the AISGEMA as though it is a descriptive one. The evidence filed by the applicant shows that the word XTRONG is commonly used by the glass industry to mean a particular type of flange. So we conclude that the mark is not an invented word, it is a descriptive mark, it does not distinguish the respondent’s goods from others as everyone uses the word Xtrong. It does not deserve registration.
14. The applicant has claimed user since 1989. But none of the documents filed by the respondent is prior to 2000. In any event they do not prove user even the invoices do not refer to Xtrong. To resist the application for rectification on the ground that it is descriptive, the respondent must have shown that even if the mark was descriptive it has acquired secondary meaning. The respondent has claimed that he invented this type of flange, and since it had thrice as much strength as the normal flange he adopted this name for his invention. He has not filed any evidence for it. But in one of the documents filed by the applicant which is the Yash Industries brochure(part of Annexure B(colly)) we find that “ It was recognised for the first time in GOEL in 1989 that a glass cylinder stands better in the application of axial force rather than in the application of radial force. To exploit this feature we have come up with a new design of glass joints which is named as XTRONG” Even if the GOEL mentioned is a reference to the respondent, it does not advance the respondent’s case. This does not say that the respondent invented this design. Even the Joint Secretary’s letter says that this is the Indian glass industry’s contribution. The applicants did not specifically raise the publici juris objection, though they claim it is commonly used to describe this type of joints and is the only practicable description. But since the applicants have raised the S.57(2) objection, we examined it from this angle. So even assuming without accepting that it was the respondent who made this type of flange he had obviously allowed the entire industry to use the word XTRONG, and it is too late now to claim exclusivity to the word which is used in common trade parlance and to restrain others from using it. Lindley, L. J. observed in the "Yorkshire Relish" case at page 73:
"There is another way in which a name originally a good trade name may lose its character and become publici juris--i.e. where the first person using the name does not claim the right to prevent others from using it and allows other persons to use it without complaint. The name then comes to denote the article and nothing more; the name becomespublici juris, and any one who is at liberty to make the article can call it by the name by which it is usually known.”
15. The law regarding publici juris is laid down in Ford v. Foster, (1872) 7 Ch A 611 at p. 623 ("Eureka" case) (Z13). The test to determine whether a word that was originally a trade mark has become publici juris or not was stated in the following words by Sri G. Mellish, L. J.:
"....the test must be. whether the use of it by other persons is still calculated to deceive the public, whether it may still have the effect of inducing the public to buy goods not made by the original owner, of the trade mark as if they were his goods. If the mark has come to be so public and in such universal use that nobody can be deceived by the use of it, and can be induced from the use of it to believe that he is buying the goods of the original trader, it appears to me, however hard to some extent it may appear on the trader, ..the right to the trademark must be gone”
16. In this case it is clear from the evidence produced by the applicant that the mark has become so widely used to denote a type of joint, the public knows that it is buying that type of joint and not the respondent’s goods nor is it deceived into buying someone else’s goods under the impression it is the respondent’s.
17. The applicant in ORA 10/2007/TM/CH alone was sued by the respondent, but all the other applicants have with justification filed these petitions under S.57(2) , since this mark shall not remain in the register. The Hon’ble Supreme court has held in Infosys case 2011(1)SCC 125 that the word person aggrieved has a wider connotation in S 57. There public interest is involved. No one can obtain registration of a mark which is purely descriptive and non-distinctive.
18. The fact that so many rectification proceedings have been filed only goes to prove the case of the applicants that they are all affected by the registration of a word which is common in the industry. Everyone has been using the word XTRONG for a long time continuously. In fact the respondent himself says he is a concurrent user, which means that he admits that at least one person if not more is using the mark and he is using it concurrently. This too disentitles him from claiming exclusivity to an ordinary descriptive word.
19. For all these reasons the mark shall be removed from the register. The ORAs are allowed with costs of Rs 2000 each. The miscellaneous petitions stand closed.
(S. USHA) (JUSTICE PRABHA SRIDEVAN)
VICE-CHAIRMAN CHAIRMAN
Psn
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)
