Facts:

M/s. Mex Switchgears Private Limited (“MSPL”) has been using the mark MEX in classes 7 and 9 since the year 1960. MSPL was the registered proprietor of the trademark MEX in both classes. Kamax Werke Rudolf filed an application for registration of the mark Kamax in class 7 on a proposed to be used basis. The application for registration of the mark Kamax was opposed by MSPL contending that the two marks were deceptively similar and might cause confusion in the minds of the public, both entities being in the same trade. The Registrar of Trademarks, after hearing both sides, came to the conclusion that the impugned marks were distinguishable, thereby dismissing the opposition by MSPL and allowing the application to proceed for registration. Aggrieved by this order MSPL filed an appeal at the IPAB.

Observations of the IPAB:

1. The mark Kamax was applied for in the year 1990 on a proposed to use basis that is 30 years after the Appellant started using the mark Mex.

2. Form TM 6 (Counter statement) filed before the Registrar was not in accordance with the Trademark Rules as the verification clause was missing.

3. The Respondent gave no substantial reasoning for adoption of the mark Kamax.

Principles relied on:

• Where the essential features or essential particulars of a mark are copied, the subsequent user will not succeed.

• Class of customers & rules of comparison are to be looked into while deciding the degree of resemblance.

• Refusal of Registration is justified if it is apparent that the defendant had no bona fide or logical explanation for the adoption of the mark.

• Adoption of a deceptively similar trade mark by a subsequent individual would definitely cause confusion even though the goods may be different.

• The factors to be considered for deciding the issue of deceptive similarity are nature of the marks, the degree of resemblance, the nature of the goods, the class of purchasers, the mode of purchasing, the broad and essential features of the two marks and other surrounding circumstances.

Conclusion:

While allowing the appeal against the impugned order of the Registrar, the IPAB opined, ”When there is no explanation for the adoption then it is that the applicant/respondent has adopted the trade mark only to earn profit from the reputation of the appellants. When the trade mark MEX was used by the appellants since 1960 for the goods falling in class 7 & 9, the use of the trade mark KAMAX a deceptively similar trade mark subsequently by the respondent will lead to confusion and deception.”

This decision of the IPAB forces us to reconsider what marks may be considered similar if two marks such as Mex and Kamax have now been held to be deceptively similar. We feel that the IPAB could have held differently even if it found the marks to be similar. For example, it could have directed that the Kamax mark be used/registered only in respect of certain goods or the way Kamax is represented be changed.