MALHOTRA INTERNATIONAL (PVT.) LTD
v.ANGLO-ASIAN DISTRIBUTORS LTD AND ANOTHER
SUPREME COURTDHEERARATNE. J.
WIJETUNGA. J. ANDWEERASEKERA, J.
SC APPEAL 8/97
HC (CIVIL) CASE NO. 17/96(3)
DC COLOMBO CASE NO. 1/4267 SP122nd JUNE, 200010th JULY. 2000
Intellectual property – Unfair competition ■ Section 142 of the Code ofIntellectual Property Act. No. 52 of1979 ■ Order of the Registrar of Patentsand Trade Marks in respect of an application to register a trade mark -Procedurefor appeal against the Order – Section 182 of the Act – Relevanceof the form and actual use of a mark on the question of unfair competition.
The plaintiff-appellant (the appellant) was the owner of the trade markTOPAZ in respect of inter alia safety razors and safety razor blades inseveral countries including India and Sri Lanka. The Is' defendant-respondent (the 1st respondent) applied to the Registrar of Patents andTrade Marks, the 2nd defendant-respondent (the 2nd respondent) toregister trade marks “2PAS", “2-PAZ~ and “FOBAS” in respect of inter aliasafety razors and safety razor blades. The appellant objected tothe applications alleging that the proposed trade marks had a closeresemblance to the appellant's trade mark TOPAZ and was intended tomislead the public as to the source of its goods. After inquiry, the 2ndrespondent dismissed the trade mark applications in respect of “2-PAS"and “2-PAZ”, but allowed the propounded mark “FOBAS" to beregistered.
The appellant appealed to the District Court in terms of section 182 ofthe Code of Intellectual Property Act (IP Act). The appeal was lodgedby way of filing a plaint like a regular action in he District Court.That appeal was transferred to the High Court of Colombo, in termsof section 10 of the High Court of the Provinces (Special Provisions)Act. No. 10 of 1996.
Malhotra International (Pvt.) Ltd. v. Anglo-Asian Distributors Ltd. 117
and Another (Dheeraratne. J.)
The appeal which was lodged by way of filing a regular action wasnot technically flawed in view of the decision in G.T.C. DirectoriesLanka (Pvt.) Ltd. v. Mukthar Marrikar and Another*".
The documentary evidence before the Court showed that the get up,colour scheme of labels or hanging cards, adopted by the lslrespondent were deceptively similar to those of the appellant underthe mark “TOPAZ". Such evidence was relevant to a decision as towhether there were acts on the part of the Is' respondent amountingto unfair competition within the meaning of section 142(2) of theIP Act.
Per Dheeraratne, J.
"In order to determine the existence of unfair competition, it wouldnot be adequate to consider only the form in which the propoundedmark is applied for, but a consideration of the actual use of that markbecomes necessaiy in given circumstances: the form in which apropounded mark is applied for, by itself, may look quite innocuous"
Case referred to :
1. G.T.E. Directories Lanka (Pvt.) Ltd. v. Mukthar Marrikar and Another(1998) 3 Sri LR 180.
K. Kanag-Isvaran. P. C. with K. M. B. Ahamed for plaintiff-appellant.
I51 defendant-respondent absent and unrepresented.
S. Barrie. S. C. for the 2nri defendant-respondent.
Cur. adv. vult.
July 31, 2000.
DHEERARATNE. J.The plaintiff – appellant (the appellant) is the owner of thetrade mark TOPAZ, in respect of inter alia safety razors andsafety razor blades, in several countries, including India andSri Lanka. The appellant has been exporting safety razors andsafety blades from India under the trade mark TOPAZ and hasbeen advertising those items for sale in the several countries
Sri Lanka Law Reports
(200013 Sri LR.
where the trade mark has been registered. In Sri Lanka, theappellant is the registered owner of the trade mark No. 61181with the word TOPAZ, with a diamond outline and with anoverlapping diamond in class 8, in respect of safety razorsand safety blades, with effect from 29th April 1991. Prior to theregistration of this trade mark, the appellant was also theregistered owner of the same trade mark registered underNo. 37856, with effect from 1st February 1977. Due to anoversight in the payment of the renewal fees, that registrationlapsed on 1st February 1987 and the said trade mark wasremoved from the register of marks on 14th November 1994.Before the removal of the appellant's trade mark No. 37856,about July or August 1990, the first defendant – respondent(the 1st respondent) made applications to the Registrar ofPatents and Trade Marks (the 2nd respondent) to register trademarks Nos. 59482 ‘2 – PAS, 59484 '2 – PAZ' and 59690 FOBAS’in class 8, in respect of inter alia safety razors and safetyblades. The appellant, alleging that these applications weremade by the 1st respondent, with the avowed object ofbringingits trade mark into close resemblance with the appellant’strade mark TOPAZ, to mislead the public as to the source ofits goods, filed notices of opposition and objected to theregistration of 1st respondent’s aforesaid trade marks. The2nd respondent, after inquiry, dismissed the trade markapplicaitons No. 59482 and 59484 of the 1st respondent, inrespect of ‘2 – PAS’ and ‘2 – PAZ’ respectively, on the groundthat they resembled phonetically, the appellant’s trade markTOPAZ’. However, by his order dated 3rd October 1994, the2nd respondent dismissed the notice of opposition of theappellant and allowed the propounded mark of the Is'respondent’s application No. 59690 ‘FOBAS’, to be registered.
Being aggrieved by the said order in respect of lslrespondent’s application No. 59690, the appellant preferredan appeal to the District Court in terms of section 182 of theCode of Intellectual Property Act No. 52 of 1979 (IP Act).
SC Malhotra International (Pvt.) Ltd. v. Anglo-Asian Distributors Ltd. 119
and Another (Dheeraratne, J.)
The appeal was lodged by way of filing a plaint, like in aregular action in the District Court. That appeal which waspending before the District Court was later transferred to theHigh Court, Colombo, in terms of section 10 of the High Courtof Provinces (Special Provisions) Act No. 10 of 1996. The HighCourt by its judgment dated 9th January 1997, dismissed theappeal of the appellant and the present appeal to this Court isthe sequel. The High Court dismissed the appeal on twogrounds. The first ground was that the appeal was technicallyflawed, inasmuch as an appeal in terms of section 182 of theIP Act, cannot be lodged by way of filing a regular plaint in theDistrict Court. I need hardly labour on this aspect of thematter, as that has been already carefully considered andspecifically determined by this Court in the case of G. T. E.Directories Lanka (Pvt) Ltd. v. Mukthar Marrikar and another111.I hold that the appeal to the District Court was, therefore, nottechnically flawed.
The second ground for dismissal of the appeal was that onmerits, the 1st respondent’s propounded mark was entitled tobe registered. The appellant mainly relied on section 100(1) (e)read with section 142 of the IP Act, in objecting to thepropounded mark. In terms of those sections, a mark shall notbe registered, which infringes other third party rights or iscontrary to the provisions of Chapter XXIX relating to theprevention of unfair competition. Subsection 142(1) whichcomes under that specific Chapter states, that any act ofcompetition contrary to honest practices in industrialor commercial matters shall constitute an act of unfaircompetition. Subsection 142(2) gives an inclusive definition of‘acts of unfair competition’, by specifying certain acts whichshall be included within the meaning of that term. Ourattention was drawn by learned President’s Counsel for theappellant, in particular, to subsection 142(2) (a) which reads:-all acts of such a nature as to create confusion by any meanswhatsoever with the establishment, the goods, services or theindustrial or commercial activities of the' competitor.
Sri Lanka Law Reports
120001 3 Sri LR.
In the consideration of the application of the relevant lawto the facts of this case, it is material to take into account, thefact that the 1st respondent’s unsuccessful attempts to obtainregistration of the two trade marks 2-PAS' and ‘2 – P A Z'.Were those too, attempts made by the 1st respondent, to createconfusion with the goods of the appellant with the mark“TOPAZ”? The phonetical resemblance of the 1st respondent’smarks with that of the appellant, could not certainly beaccidental. It is also material to observe that no appeals werelodged against the orders of refusal for registration made bythe Registrar.
With the notice of opposition to the registration of the 1strespondent’s mark ‘FOBAS’, an affidavit was filed tenderingcertain relevant documents for the consideration of theRegistrar. These documents, it was contended on behalf of theappellant, revealed that the get up, colour scheme of labels orhanging cards, adopted by the 1st respondent were deceptivelysimilar to those of the appellant under the mark TOPAZ’.Principally, following similarities were high lighted betweeneach set of labels used for the marks ‘FOBAS’ and TOPAZ’,namely; the top of letter ‘F’ was styled to imitate the letter T;the shape, size and colour of letters in each set were identical;the profile of a woman pictured in each set was quite similar,although the face of the woman was turned to two differentdirections in each set; double triangle within the marks appearand the placement of the marks within the triangle wereidentical. The leading characteristics of the two sets of labelsbear close resemblence to each other. It was rightly contendedby learned counsel for the appellant that neither the Registrarnor the learned High Court Judge, did consider these mattersclosely, with a view to determine whether there were acts onthe part of the 1st respondent, so as to create confusionamounting to acts of unfair competition within the meaningof the law. In order to determine the existence of unfaircompetition, it would not be adequate to consider only theform in which the propounded mark is applied for, but a
Malhotra International (Pvt.) Ltd. v. Anglo-Asian Distributors Ltd. 121
and Another (Dheeraratne. J.)
considerstion of the actual use of that mark, becomesnecessary in given circumstances; the form in which apropounded mark is applied for, by itself, may look quiteinnocuous. It would appear to me that both the Registrar andthe learned High Court Judge were in error when they lookedat the propounded mark only and not its user, the evidenceof which was before them, in coming to the respectiveconclusions they reached. Had they looked at the user of thatmark they would have unhesitatingly arrived at a differentconclusion.
For the above reasons, I allow the appeal and (a) setaside the judgment of the High Court; (b) set aside the orderthe 2nd respondent; and (c) direct the 2nd respondent not toregister the propounded mark number 59690 ‘FOBAS’. Ifurther direct the 1st respondent to pay the appellant a sumof Rs. 25,000 as costs of this appeal.
WIJETUNGA, J. – I agree.WGERASEKERA, J. 1 agree.