Liberty Food Company Ltd. Vs. Bombay Sweets and Company Ltd., V ADC (2008) 967

Case No: Civil Petition for Leave to Appeal No. 864 of 2006

Judge: Md. Abdul Matin,

Court: Appellate Division ,,

Advocate: Mr. T. H. Khan,,

Citation: V ADC (2008) 967

Case Year: 2008

Appellant: Liberty Food Company Ltd.

Respondent: Bombay Sweets and Company Ltd.

Subject: Trade Mark, Intellectual Property,

Delivery Date: 2008-2-4


Supreme Court
Appellate Division
(Civil)
 
Present:
M.M. Ruhul Amin, J.
Md.Tafazzul Islam, J.
Md. Abdul Matin, J.
 
Liberty Food Company Limited
.………Petitioner
Vs.
Bombay Sweets and Company Limited and another
......…… Respondents
 
Judgment
February 4, 2008.
 
Trade Marks Act, 1940
Section 8(a)
If the names of the companies manufacturing the chips i.e. “Liberty and Bombay” are read in isolation, they would indeed be two different marks. But in the present case the names cannot be dissected from the overall design and get up.          ….. (12)
 
Lawyers Involved:
T.H. Khan, Senior Advocate instructed by Nawab Ali, Advocate-on-Record-For the Petitioner.
Gazi Neamat Hossain, Advocate instructed by Md. Firoz Shah, Advocate-on-Record-For Respondent No.1. (Appeared with the leave of the Court).
Not represented-Respondent No. 2.
 
Civil Petition for Leave to Appeal No. 864 of 2006
(From the judgment and order dated 17.08.2004 passed by the High Court Division in Trade Mark Appeal No.60 of 2001)
 
JUDGMENT

Md. Abdul Matin J.
 
This petition for leave to appeal is directed against the judgment and order dated 17.08.2004 passed by the High Court Division in  Trade Mark Appeal No.60 of 2001 allowing the appeal and setting aside the order dated 15.05.2001 passed by the Registrar of Trade Marks, Dhaka dismissing the Opposition Case No.1604 of 2000 and granting registration to the Trade Mark Application No. 60134 dated 23.05.1999 in Class-29 in favour of the respondent No. 2 etitioner.
 
2. The facts, in short, are that the respondent appellant, Bombay Sweets and Company Limited is a manufacturer of Potato Chips and has been marketing its products under the trade mark Potato Crackers in an original design, get up and a novel colour scheme. Since adoption of the said trade mark the appellant has been in continuous use of the same till date without any objection from any quar­ter. Due to long continuous use and advertisement of the mark through various media, the trademark of the appellant "Potato Crackers" has become popular and the mark has acquired distinctiveness. The cus­tomers and traders have come to asso­ciate the words "Potato Crackers" with the potato chips manufactured by the appellant. In order to protect the right, title and interest over the said trade mark the appellant applied for registra­tion of the same on 04.07.1995 and the Trade Marks Registry allotted serial No. 44151 in Class-29 in respect of the said trade mark. The petitioner opposite party No.2. Liberty Foods Company Limited filed notice of opposition against registration of the appellants trade mark giving rise to Opposition Case No. 1642 of 2000. The opposite party No. 2 did not file any evidence in support of its opposition and the Opposition Case No.1642 of 2000 was treated as abandoned vide order of the Registrar of Trade Marks dated 12.7.2001 and consequently the application for registration of the trade mark "Potato Crackers" under application No. 44151 in Class-29 proceeded to registration. The certificate of registration of the Trade Mark “Potato Crackers" was finally signed on 17.07. 2001 by the Trade Marks Registry.
 
3. In the mean time the opposite party No. 2 filed an application for registration of its trade mark "Potato Chips" on 25.05.1999 under application No. 60134 in Class-29 and the said mark was advertised in the Trade Marks Journal No. 201 dated 10.03.2000. The respondent-appellant finding that the trademark "Potato Chips" of the opposite party No. 2 was confusingly similar to its trademark "Potato Crackers" filed notice of opposition giving rise to Opposition Case No.1604 of 2000. In the "Evidence in Support of Opposition" the appellant annexed a copy of the certificate of incorporation of "Bombay Sweets & Co. Ltd." dated 19.03.1986 and copies of advertisement bill from the years 1989 to 1999.
 
4. The said opposition case No. 1604 of 2000 was heard on 15.05.2001 and the Registrar of Trade Marks (The Registrar) vide order dated 15.05.2001 dismissed the Opposition Case No. 1604 of 2000 and ordered registra­tion of the trade mark "Potato Chips" under application No.60134 in Class-29.
 
5. The respondent filed the appeal on grounds of opposition, inter-alia, that the appellant has been using the trade mark "Potato Crackers" since 1986 and by expending huge amount of money for advertising the mark it has become the most popular brand in the country and the petitioner being allured by the goodwill and reputation of the respondent-appellant's mark subsequently adopted the words "Potato Chips" as its trade mark with colour, design and get up exactly sim­ilar to the appellants marks.
 
6. The two trademarks are similar and therefore registration of the petitioner trade mark would be likely to cause confusion and deception and as such registration of the same would be con­trary to the provisions of Section 8(a) of the Trade Marks Act, 1940.
 
7. The adoption by the petitioner of the trademark of the respondent-appellant is malafide and dishonest and the respondent-appellants are entitled to protection of its trademark.
 
8. The petitioner contentions were that it adopted the mark in good faith and that the two trade marks are not at all similar and there is no likelihood of confusion and deception.
 
9. As against the order of the Registrar the respondents filed Trade Mark Appeal No.60 of 2001 before the High Court Division and the High Court Division after hearing the parties allowed the appeal and set aside the judgment and order dated 15.05.2001 in Trade Mark Opposition Case No. 1604 of 2000 cancelling the regis­tration of the mark "Potato Chips" in favour of the respondent No.2 in respect of Trade Mark No.60134 in Class-29.
 
10. Being aggrieved by the judgment and order of the High Court Division the petitioners filed this petition for leave to appeal.
 
11. We have heard the learned Counsel and perused the petition and the impugned judgment and order of the High Court Division and other papers on record.
 
12. It appears that the High Court Division held: 
 
"If the names of the companies manufacturing the chips i.e. "Liberty and Bombay" are read in isolation, they would indeed be two different marks. But in the present case the names cannot be dissected from the overall design and get up." 
 
13. In view of the facts and circum­stances of the case we do not find any illegality in the judgment of the High Court Division but for ends of justice, the petitioners should be at liberty to file application for fresh registration before the Registrar of Trade Marks with a new design, colour scheme, get up and wrapper.
 
14. Accordingly the petition for leave to appeal is dismissed. But the peti­tioners shall be at liberty to file appli­cation before the Registrar of Trade Marks praying for registration with a new design, colour scheme, get up and wrapper and Registrar shall be at liber­ty to consider the prayer for the peti­tioners in accordance with law.
 
Ed.