VIACOM INTERNATIONAL INC. vs. MAHARAJA ORGANISATION LTD. AND OTHERS

018-SLLR-SLLR-2006-V-1-VIACOM-INTERNATIONAL-INC.-vs.-MAHARAJA-ORGANISATION-LTD.-AND-OTHERS.pdf


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VIACOM INTERNATIONAL INC.VS.MAHARAJA ORGANISATION LTD. AND OTHERSSUPREME COURTS.N. SILVA, CJ.
UDALAGAMA, J AND,
FERNANDO, J
CASE No. SC (APPEAL) NO. 40/99HIGH COURT (CIVIL) 21/93(3)
31 ST SEPTEMBER AND 19TH OCTOBER 2004
Intellectual Property – Code of Intellectual Property Act, No. 52 of 1979 asamended – Registering of “MTV Music Television” and “Maharaja Television" ■Sections 90 and 100 of the Code – Avoidance of confusion by viewers – Side byside comparison of the two marks.
The appellant objected to the registering of “MTV" as a trade mark by the2nd respondent (Registrar of Patents and Trade Marks) The Maharaja markwas registered after the registration of the appellant’s mark, “MTV MusicTelevision”. The appellant urged that the impugned registration would createconfusion in the minds of viewers of television. A condition imposed by the 2ndrespondent that neither party has the monopoly of the letters M. T. V. was of noavail. The 2nd respondent and the High Court both allowed the registration.The appellant appealed to the Supreme Court.
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The respondents filed no affidavits of objection, whilst the 2nd respondentRegistrar was prepared to abide by the decision of the court. The 2ndrespondent also did not file an affidavit of objections.
HELD :
(I) The High Court’s contention was that the way letters “MTV” are written inthe two marks are different and therefore, one could clearly distinguishthe two marks. The High Court came to this conclusion by a close, side byside comparison of the two marks ignoring previous decisions to thecontrary.
Per Raja Fernando, J
“What is important is to consider the prominent parts of both marks anddecide whether the prominent parts of the two marks taken as a whole with the
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design/get up, closely resemble one another as to confuse the consumer.
The court should not compare the two marks meticulously”
A preliminary objection to the appeal that only the 2nd respondent,Registrar should have been made a party respondent was in error andought to be rejected.
Cases referred to:
Toklon v Davidson 1915 32R pages 133-136
Bacadi Company Limited v Vigal Kardi (Ahuja's'IntellectualProperty Case) (1959) Vol 3 No. 3 Page XII
N STLE SA v Multitech Lanka (Pvt) Ltd (1999) 2 SLLR 298
Arumugam v Seyed Abbas Air 1964 Mad 206
APPEAL from the judgment of the High Court
K. Kanga – Iswaran, P. C. with Dr. Harsha Cabraal for plaintiff appellant.Romesh de Silva, P. C. with Hiran de Alwis for 1st respondent.
S.Barrie, State Counsel for 2nd respondent.
Cur.adv. vuit
28th April, 2005RAJA FERNANDO, J.
The Plaintiff – Appellant Viacom International (hereinafter referred to as theAppellant) filed this appeal on 10.11.1999 to set aside the Order of theHigh Court of the Western Province sitting in Colombo in the exercise ofits civil jurisdiction (hereinafter referred to as the Commercial High Court)dated 13th September 1999 and make order in favour of the appellant asprayed for in the plaint dated 11 th August 1998.
Preliminary objection :
When this matter came up for hearing the appellant took up a preliminaryobjection that the 1 st defendant – respondent, The Maharaja OrganisationLtd., (hereinafter referred to as the 1 st respondent) was not entitled to beheard in this application as it had not taken part in the proceedings in theCommercial High Court. However it was agreed by the parties on 17thMay 2004 that the objection to the participation of the 1 st Respondent in
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these proceedings be considered with the main appeal and that the partieswould tender written submissions and further the court could make itsorder on the written submissions of the parties.
Accordingly the appellant filed his written submissions on 31.08.2004and the 1 st Respondent, his on 19.10.2004. The 2nd defendant – respondentThe Director of Intellectual Property, (hereinafter referred to as the 2ndrespondent) whose decision the Appellant is seeking to set aside did notfile his written submissions.
Before proceeding to consider the main appeal of the Appellant it isnecessary to initially make an order with regard to the preliminary objectionraised by the Appellant regarding the participation of the 1 st respondent inthese proceedings.
Firstly, the 1 st respondent is a party to the appeal named by the appellantand further the decision the Appellant is seeking to set aside is the decisionof the Commercial High Court made affirming the Order of the 2ndRespondent made on 13th September 1998 in favour of the 1 st respondent’sTrade mark. Therefore it is the 1st respondent who is the party directlyaffected by the outcome of this appeal. Hence it is the view of the Courtthat apart from 1 st respondent being a party to the appeal he being theparty directly affected by the decision of the court he must necessarily bepermitted to participate and heard in this appeal.
Accordingly I make order over-ruling the preliminary objection of theAppellant and permit the 1 st respondent to participate and be heard in theproceedings of this appeal.
The Main appeal
The main appeal is on the Registration by the Director- General ofIntellectual Property the 2nd respondent of the trade mark “MTV” underclass 38 of the international classification as the trade mark of the 1 strespondent the Maharaja Organisation made on 30th June, 1998.
The Background
The plaintiff – appellant, Viacom Incorporated in U. S. A. the user of thetrade mark “MTV Music Television” which has been registered in the US
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and in several other countries made an application to register its mark“MTV Music Television” in Sri Lanka on 15th May 1991 under applicationNos. TM 61297 and TM 61298 in classes 38 and 41 respectively of theinternational classification and has prior registration for MTV.
Pursuant to an agreement with Teleshan Network (PVT) Ltd. of SriLanka and TNL television station the Appellant has been telecasting MTVMusic Television in Sri Lanka, before Maharajah Television Commencedits telecast.
The 1st respondent made an application on 23rd May 1991 underapplication No. 61332 for the registration of the alphabetical letters “MTV”in respect of communication in the same class 38 of the Internationalclassification. The said mark was accepted and published in terms ofsection 107 of the Code of Intellectual Property (hearing after referred toas the Code.) in the government gazette No. 830 of 29th July 1994 subjectto the condition that the registration did not give the 1st respondent theright to exclusive use of the letters M. T. and V
Upon publication the Appellant filed notice of opposition in terms ofsection 107(2) of the Code of Intellectual Property on 18th January 1995.
The Applicant’s opposition was:
That the 1 st Respondent’s propounded mark will contravene theprovisions of Section 99,100 and 142 of the code.
That the Appellant had pending applications under the same class38 in TM 61297 and class 41 in TM 61298 filed prior to the 1strespondent’s application.
That the 1 st respondent’s propounded mark is not sought to beregistered in good faith
That the propounded mark is likely to create the erroneousimpression that the 1 st respondent’s services are the services ofthe appellant
That the 1 st respondent’s propounded mark will give the impressionthat there is a connection or association between the 1strespondent’s service and of the appellant.
After an inquiry the 2nd respondent made order on 30 th June 1998allowing the 1 st respondent’s application for registration.
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The appellant being aggrieved by the said order of the 2nd respondentappealed there from to the Commercial High Court under Section 182 ofthe code. The appeal of the Commercial High Court by the appellant wasdismissed by the High Court on 13 th September 1998.
This appeal is to set aside the judgment of the Commercial High Courtdated 13th September 1998 and make order in favour of the Appellant asprayed for in the plaint dated 11 th August 1998.
Submissions of the parties.
The Appellant submits that the registration of the 1st Respondent’smark “MTV” by the 2nd Respondent is contrary to the provisions of thesaid Code and the Order of the learned Commercial High Court Judge isreplete with irrelevant considerations made without due regard to the lawand abundance of Judicial authority relating to Trade Marks.
Further it was submitted by the Appellant that the finding of the 2ndRespondent in registering the mark of the 1 st respondent is entirely withoutmerit and misconceived both as a matter of fact and of law.
It was the submission of the Appellant that in the Commercial HighCourt the 1 st Respondent did not file proxy and/or answer or participate inthe appeal before the Commercial High Court and the 2nd Respondent,the Director of Intellectual Property, informed court that he is not filinganswer and that he will abide by the judgement of court.
In effect the 2nd respondent did not defend his order in the CommercialHigh Court or before this court.
The Commercial High Court disposed of the appeal solely on the affidavit,answer and written submissions of the appellant.
The 1st Respondent in his submissions filed in this court referring tothe host of authorities cited by the Appellant attempts to dismiss them bymerely stating that they are irrelevant and causes confusion rather thanthrow light on the matter.
It is the submission of the 1 st Respondent that both Maharaja Televisionand Music Television made applications to register MTV as the Trade
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Mark of each of them and that the Appellant objected to the registration ofthe 1 st Respondent’s trade mark and the 1 st Respondent objected to theregistration of the appellant’s trade mark. The Registrar of Trade Marksthe 2nd respondent permitted the registration of both marks with adisclaimer that no party is entitled to the exclusive use of the letters MTV.
The 1 st Respondent submits that the 2nd Respondent and the learnedHigh Court Judge have both come to the same conclusion that the markwill not cause deception or confusion in the minds of the public and thatthe viewers will ignore the common denominator of the two marks and willknow clearly that one is Music TV and the other is Maharaja TV.
Merits of this Appeal
In terms of the code of Intellectual Property a “Mark” Means a TradeMark or service mark serving to distinguish the goods or services of onefrom those of another.
The exclusive right in a mark may be acquired by registration under theCode. Unregistered marks are safeguarded under the provisions relatingto unfair competition and the common law, under action for passing off.
Once an application for registration of a mark is received by the registrar,he is required to examine the mark in relation to the provisions of sections99 and 100.
As submitted by the 1st respondent in his submissions what the 2ndRespondent, the Director of Intellectual Property, has done is to registerboth marks with a disclaimer that no party is entitled to the exclusive useof the letters MTV. This is contrary to the spirit and substance of the lawon Trade marks.
A visible sign capable of distinguishing the goods or services of differententerprises can constitute a mark provided it is not inadmissible undersection 99 and 100 of the Code. No trader or service provider should bepermitted to monopolise alphabetical letters unless the mark consistingof such letters can constitute a valid mark and not inadmissible underSection 99 and 100.
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The two marks have been registered without exclusive rights to theEnglish alphabetical letters M T and V.
This position to my mind can not be valid.
The two letters “TV” is a standard abbreviation used all over the worldfor the word ‘Television", as such no party could claim exclusive rights forthe use of the letters TV. Then the only letter left in the mark is the letter
M.According to the evidence on record the Plaintiff -Appellant hasextensively used “MTV” as a mark and acquired a reputation/identity andtherefore when the letter M is taken together with the two descriptive lettersTV as a whole the three letters MTV can stand as a valid mark. It is settledlaw that a mark should be taken as a whole. The Plaintiff-Appellant doesnot receive exclusive rights to the letters TV but he should receive exclusiverights to the combination of letters MTV in this instance. Thus others arenot entitled to the use of the combination of letters MTV.
The law attempts to avoid ‘confusion’ in the minds of the public as tothe source of the service. If both Music TV and MaharajalM are permittedthe use of the mark MTV it is hard to understand how the viewers couldknow the correct source of the service.
The learned High Court judge’s contention is that the way the lettersMTV are written in the two marks are different and therefore one couldclearly distinguish the two marks. Further he has come to this conclusionby a close, side by side comparison of the two marks.
The learned trial judge has completely ignored the host of authoritieswhich stipulate that, such side by side comparison is not the way toexamine Trade marks. What is important is to consider the prominentparts of both marks and decide whether the prominent parts of the twomarks taken as a whole with the design/get up, closely resemble oneanother as to confuse the consumer. Without doubt the prominent parts ofboth marks included in this appeal are the letters MTV. The court shouldnot compare the two marks meticulously. As Lord Johnson expressed inTokalon v. Davidson (') “we are not supposed to scan the words and domicroscopic inspections. It is a matter of general and casual point of viewof a consumer walking into a shop.”
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When one considers the two marks in that light it is clear that bothmarks so closely resemble one another and the consumer/viewer is likelyto be confused.
The initial question then to be decided is, when a particular programmeis said to be telecast on "MTV” whether a viewer will be in a position toknow which of the two channels this programme comes on; Music TV orMaharaja TV. If the answer to this simple question is that one cannotdecide, then both Marks cannot co-exist and the second registration hasto be cancelled.
The learned High Court Judge in deciding that the two marks arediametrically opposed to each other has engaged in a critical side by sideexamination of the two marks and of their presentation and a minuteexamination of each letter of the alphabet in the two marks.
It is settled law both in Sri Lanka, India and elsewhere that “In order tocome to the conclusion whether one mark is deceptively similar to another,the broad and essential features of the two marks are to be considered.They should not be placed side by side to find out if there are any differencesin the design and if so whether they are of such a character as to preventone design from being mistaken for the other. It would be enough if theimpugned mark bears such a overall similarity to the registered mark aswould be likely to mislead a person usually dealing with one to accept theother if offered to him.” Bacardi Company Limited Vs. Vigal Kardi (Ahuja’sIntellectual property case (2)
In the case of Nestle SA Vs. MultiTech Lanka (Pvt.) Ltd(3), Fernando J.has in a trade mark/unfair competition dispute held that such dispute“cannot be decided by simply totting up and weighing resemblances anddissimilarities upon a side by side comparison of the marks”.
The issue is whether a person who sees one in the absence of theother and who has in his mind’s eye only a recollection of that other wouldthink the two were the same. The mind’s impression (idea) of the mark iscritically important. The impression (idea) of the mark here is “MTV”.
In Arumugam vs. Seyed Abbas(A) it has been held that "Strikingresemblance between distinctive words of an existing registered trademark and the proposed trade mark disentitles the latter to be registered.”
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Further the learned High Court Judge has ignored the phoneticresemblance of the two marks.
It is undisputed that the Plaintiff-Appellant applied to the Registrar ofPatents and Trade Marks for the registration of the Trade mark “MTVMusic Television” on 15th May, 1991 in applications numbered TM 61297and TM 61298 in classes 38 and 41 respectively.
Whilst the Appellant’s application was pending the 1st respondentMaharaja Organisation also filed an application on 23rd May 1991 for theregistration of the alphabetical letters “MTV” with a devise in respect ofCommunication in Class 38 the same class as the appellant underapplication No. 61332.
The plaintiff-appellant objected to the registration of the Trade mark ofthe 1 st respondent on the ground that the plaintiff-appellant being theregistered owner of the Trade mark “MTV Music Television” under the sameclass as the 1st Respondent his rights under the Code would becontravened.
It is common ground that the plaintiff – appellant had the Trade mark“MTV Music Television” registered prior to the 1 st Respondent in the sameclass. Therefore, another application to register the same trade mark or asimilar trade mark which is likely to mislead or confuse the public as tothe source of the service cannot be registered.
Eventhough, the original registration was subject to the condition thathe will have no exclusive right to the alphabetical letters MTV, what thelaw attempts to prevent is confusion in the minds of the public as to thesource of the service. As mentioned above the plaintiff-appellant is entitledto letter “M” with the letters T and V under the special circumstancesrelating to this matter.
The only way in which the same letters MTV could have been used asa trade mark by another is to either show that customers/viewers will notnormally regard such letters as indicators of the Origin of the servicesconcerned, it is the contention of the 1st Respondent that the letterscombined in an artistic manner used by the 1 st respondent is capable ofdistinguishing the services of the 1 st respondent from the plaintiff- appellant.
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The learned High Court Judge has come to that same conclusion by aminute and a side by side close scrutiny of the purported Trade mark ofthe 1st respondent.
As stated earlier in examining Trade Marks such side by side closescrutiny is not the approach to decipher trade marks. One must considerwhether the public could without confusion identify the source of the goodsor services offered under such trade mark.
In so deciding one invariably has to consider the services offered by thecompeting parties. Undoubtedly, both the plaintiff-appellant’s “Music TV”and the 1st respondent’s Maharaja TV are under the same Trade mark“MTV” offering the same services if not identical services. Therefore, theconfusion in the minds of the public is more probable.
The learned High Court Judge has failed to properly consider the twomarks under the law for the protection against unfair competition. He hasnot considered whether there has been an appropriation of the benefit ofthe good name or reputation of one for the commercial advantage of theother. Nor has he considered the use of the two marks concurrently in thesame class and in respect of the same service and whether it would causeconfusion, as given in Section 142 of the Code, resulting in an act of unfaircompetition.
It is evident on the affidavits and other documents filed by the appellantbefore the High Court that the appellant has been telecasting MTV musictelevision in Sri Lanka and elsewhere even prior to the registration of theappellant’s Trade mark MTV by the Director of Intellectual Property inSri Lanka. It is the submission of the appellant that the 1st respondentwas aware of the use of the mark by the appellant at the time the 1strespondent made his application for registration of a deceptively similarmark for registration under the same services.
There is merit in the submission of the appellant that their Trade markMTV Music Television was in use long prior to the 1 st respondent filinghis application for registration of a similar mark and there would be unfaircompetition and even passing off.
The phonetic resemblance of the two marks is such that it is almostimpossible for a person to distinguish between the two services. The
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disclaimer recorded by the 2nd respondent in respect a of the letter M Tand V is in the circumstances of this case of no relevance. As I mentionedearlier the use of MTV by both will lead to confusion among the public.Whether or not the 1 st defendant-respondent intended such outcome isimmaterial. Thus, his registration or use of letters MTV is contrary to theprovisions relating to unfair competition and cannot be permitted. The unfaircompetition law safeguards not only the interest of traders and serviceproviders but also the consumers.
Therefore I hold that the Registration by the 2nd respondent of the trademark of the 1st respondent is contrary to the provisions of Sections 99,100 and 142 of the code of Intellectual Property Act, No. 12 of 1979.
Accordingly, I set aside the judgment of the Commercial High Court,dated 13th September 1999 and also set aside the Order of the 2ndrespondent dated 30th June 1998 allowing the 1 st respondent to registerTrade Mark No. 61332.
S.N. SILVA, C. J— I agree.
N.K. UDALAGAMA, J.— I agree.Appeal allowed.