Md. Nazrul Islam Vs. National Fans Limited and another, VII ADC (2010) 61

Case No: Civil Petition for Leave to Appeal No. 243 of 2008

Judge: Md. Tafazzul Islam ,

Court: Appellate Division ,,

Citation: VII ADC (2010) 61

Case Year: 2010

Appellant: Md. Nazrul Islam

Respondent: National Fans Limited

Subject: Trade Mark,

Delivery Date: 2009-6-21

 
Supreme Court
Appellate Division
(Civil)
 
Present:
MM Ruhul Amin CJ
Md. Tafazzul Islam J
Md. Abdul Matin J
Md. Abdul Abdul Aziz J
 
Md. Nazrul Islam
............................Petitioner
Vs
National Fans Limited and another
…………........Respondents
 
Judgment
June 21, 2009.
 
The High Court Division held that in order to consider the disputed trade marks it is necessary to consider the nature and kind of the customers of the products and the difference of the “numerals” visually phonetically and structurally to ascertain how confusion may arise in the mind of on unwary purchaser and further an unwary purchaser is not expected to keep his eyes shut when purchasing the commodity…………. (6)
 
Lawyers Involved:
Md. Ismail Miah, Advocate, instructed by Md. Nawab Ali, Advocate-on-Record-For the petitioners (Appeared with the leave of the Court)
Not represented-the Respondents
 
Civil Petition for Leave to Appeal No. 243 of 2008.
(From the judgment and order dated 01.08.2006 passed by the High Court Division in Trade Mark Appeal No. 63 of 2001).
 
JUDGMENT
Md. Tafazzul Islam J.
 
This petition for leave to appeal, at the instance of the opposite party/petitioner, is directed against the judgment and order dated 1.8.2006 of the High Court Division passed in Trade Mark Appeal No.63 of 2001 dismissing the appeal preferred impugning the order dated 10.9.2001 of the Deputy Registrar of Trade Marks passed in Opposition Case No.1657 of 2000 though allowing the prayer of the petitioner to keep Trade Mark GX 06661 hut restraining him from using the words "BISCI Tongi" or বিসিক টঙ্গী on the body of the fan produced by him or in the pack­age/cartoon of the fan produced by him.
 
2. The petitioner filed Application No.26527 dated 14.11.99 in Class 2 before the Registrar of Trade Marks Dhaka for registration of the Trade Marks GX 06661 and the said trade mark application was advertised at page 51 in the Trade Marks Journal No. 203 dated 30.5.2000 pub­lished for the month of April and May 2000.The respondent No.1 then filed T.M.5. being Opposition Case no.1657 of 2000. contending that they adopted the numeral 00661 with "National" as the composite trade mark and applied for reg­istration of the said numeral before the Registrar of Trade Mark on 7.9.2000 in Class 2 and that allured by the good will and reputation of their composite Trade mark numeral, the petitioner subsequently adopted the alphabet GX and number 06661 as his trade mark and so their prayer for registration offends the provi­sions section 14(1) 8(a) and 6(1) (c) of the Trade Marks Act, 1940.
 
3. The petitioner filed T.M.6, i.e., counter statement, contending that he, since 1966, adopted the composite trade mark consist­ing with the letter GX with numeral 06661 in respect of the ceiling fans produced by him and since then he had been continu­ously and extensively using the said trade mark throughout the country and due to long continuous and extensive use of the above trade mark and also due to excellent quality of the product, the ceiling fans pro­ceeded by  him  and  bearing  the Trade Mark of GX 06661 became very popular in the country and the ceiling fan with the Trade Mark GX 06661, is identified by the user as the products of the petitioner and of nobody else and further the Trade Mark GX 06661 is not in conflict with the oppo­nents Trade Mark 00661 and as both are not same visually, phonetically and struc­turally and the number 00661 is of design only and the respondent No.1, only to delay the registration of the Trade Mark GX 06661 of the petitioner, has filed the Opposition Case No.1657 of 2000 and the ceiling land produced by the petitioner has also been duly certified by the BSTI after due testing.
 
4.  The Deputy Registrar of Trade Marks, after hearing,  allowed the Trade  Mark Application No.62527 dated 14.11.99 in Class-2 for registration of the Trade Marks GX 06661 in respect of the ceiling Ian produced by the petitioner. The respon­dent No.1 then filed Trade Mark Appeal No.63 of 2001 and the High Court Division after hearing dismissed the same but restrained the petitioner from using the words "BISCIC Tongi" or বিসিক টঙ্গী on the body of the fans or on the packages car­toons of the said fans.
 
5. The learned counsel for the petitioner submitted that the High Court Division fell in error in restraining the petitioner from using the words "BISCIC Tongi" or বিসিক টঙ্গী on the body of the fan produced by him or the packages cartoon of the said fans in as much as the jurisdiction as exer­cised by the High Court Division in the present  case  is  vested only  upon the District Judge in a suit instituted under section 73 of the Trade Marks Act, 1940 for infringement of registered trade mark or under section 20(2) of the Trade Marks Act 1940 in a suit for passing off and not in a case of the present nature and further the business address of the concerned industry may be changed from one place to  another  and   such  changes may  be entered in the record maintained by the Register of Trade Marks by filing f.M.3 application read with section 47 of the Trade Marks Act, 1940 and as such no restriction can be imposed upon anybody in using any place of the business or changing of business address.
 
6. As it appears the High Court Division dismissed the Trade Marks Appeal No.63 of 2001 holding that the Trade Mark "GX 0661" as being used by the petitioner and the Trade Mark 00661 as being use by the respondent No. 1 are apparently not simi­lar visually, phonetically or structurally and the Trade Mark "GX 06661" consists of two alphabets and 5 numerals whereas the trade mark "00661" consists in only 5 numerals and accordingly those are visu­ally and phonetically different both in English as well as in Bengali and it has been submitted by the learned Advocate for respondent No.1 that in order to get benefit of the concurrent users it is neces­sary to show that both the user are in hon­est use of the trade mark from the same time or there around and it will appear that the word "concurrent" means at the same time and in Bengali it means 'সহবর্তমান’ or সমসাময়িক and thus to be considered as concurrent the time factor has the relevance and the materials on record show that the respondent No.1 is in use of the trade mark since 1989 and the petitioner is in use of the its trade mark since 1996 and the respondent No.1 applied for registra­tion in November, 1 996 and the petitioner has applied for registration in February-September, 2000 and during the period from 1996 to 2000 both the parties were carrying on their business in the market with their respective trade marks and thus they were in the concurrent use of the respective trade marks since 1996 and there arc no materials on record to show that prior to September 2000 the respon­dent No.1 did try to protect its trade mark 06661 under the Trade Mark Act and thus allowed the petitioner to carry on his busi­ness with his Trade Mark GX 06661 and it is on the record that both the parties are carrying on their business with profit and so both the parties were in honest use of their respective trade marks and they are in continuous concurrent use of their respective trade marks. The High Court Division further held that in order to con­sider the disputed trade marks it is neces­sary to consider the nature and kind of the customers of the products and the differ­ence of the "numerals" visually phoneti­cally and structurally to ascertain how confusion may arise in the mind of on unwary purchaser and further an unwary purchaser is not expected to keep his eyes shut when purchasing the commodity and in the instant case the price of ceiling far being around Tk.1000/-, the purchaser with capacity to purchase a fan against such amount is expected to be of average intelligence and therefore it is expected that any consumer purchaser of a ceiling fan will duly scrutinize the product includ­ing name of the manufacturer thereof and therefore there should not be any question of confusion or deception in purchasing a fan; the petitioner is using the similar type of "numerals" and " incorrect address" in the cartoon in packing his ceiling fans inasmuch as the petitioner has his factory at Doliarpar but printed the address of his factory as BSCIC Industrial Estate at Tongi adopting the character and style of the address of the factory of the respon­dent No.1 at Tongi and thereby causing contusion and deception. So the petitioner should not use the word "BISCIC Tongi" in its packages or anything in marketing its fans and accordingly the decision and order rejecting the Opposition Case No.1657 of 2000 filed by the respondent No.1 is upheld but the petitioner may be entitled registration of Trade Mark GX 06661 for his product ceiling fan but he is restrained permanently from using the words "BIS­CIC Tongi" or বিসিক টঙ্গী on the body of the fan or the packages/cartoons of the said fans.
 
7. We are of the view that the High Court Division on proper consideration of the materials on record arrived at a correct decision and there is no illegality or infir­mity in the above decision so as to call for any interference.
The petition is dismissed.
 
Ed.