Ambala Lalludas Patel vs Bhagwan Kirana Co

Ambala Lalludas Patel vs Bhagwan Kirana Co. And The ... on 16 November, 2006

Intellectual Property Appellate Board Ambala Lalludas Patel vs Bhagwan Kirana Co. And The ... on 16 November, 2006 Equivalent citations: 2007 (34) PTC 610 IPAB Bench: Z Negi, U T S. ORDER

S. Usha, Member (T)

1                    Appeal No. 2 of 2000 along with Civil Application No. 41 of 2000 in Appeal No. 2 of 2000 for stay filed before the High Court of Gujarat, Ahmedabad has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and numbered as TA/279/2004/TM/AMD.

2                    The appellant filed an application for registration of the label "PUJARI Brand Jeera', inter-alia consisting of the word 'PUJARI' along with device of a Pujari and letters 'A' and 'L' in respect of Jeera, Fennal Seeds, methi seeds in class 30 under application No. 474884 on 9.7.1987 claiming user since 23.12.1981. The said application was advertised before acceptance in the Trade Mark Journal No. 1086 (Supplement) dated 8.9.1994 at page 54.

3                    The first respondent had given their notice of intention to oppose the registration of application No. 474884 and the appellant herein had filed their counter statement to the said application. The first respondent did not file their evidence in support of opposition, but had written to the Assistant Registrar, that they relied on the notice of opposition, whereas the appellant had neither filed their evidence nor had intimated the Assistant Registrar about their intention to rely on the counter statement for evidence in support of their application. After completion of formal procedures the Assistant Registrar set the matter for hearing.

4                    The Assistant Registrar heard the matter and allowed the opposition and refused registration for the reason that the first respondent had not given any reason under Section 9 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the said Act) to say as to why the mark applied for is not distinctive or capable of being distinguished.

He had allowed the objection raised under Section 12(1) of the said Act as the first respondent had submitted a copy of the registered trade mark proving that they are the registered proprietors of the mark 'JEERA PUJARI' and also that the goods are same and the mark applied for registration is deceptively similar with that of the first respondent's registered mark.

As regards Section 11(a) of the said Act, the Assistant Registrar allowed the objection of the first respondent that the use of the impugned mark will cause confusion and deception and also because of the fact that the appellant did not file any evidence in support of their application as the onus to prove the registrability of the application was on the appellant. The learned Assistant Registrar also rejected the claim of the appellant under Section 18(1) of the said Act. The Assistant Registrar also rejected the case of the appellant under Section 12(3) of the Act as the appellant had failed to produce any document in support of their application. The learned Assistant Registrar on accepting the contention of the first respondent that they had adopted the mark 'JEERA PUJARI' since 1.4.1980 from their trading style wherein the appellant had not given any reason for their adopting the word 'PUJARI', allowed the opposition and refused registration of the application. Aggrieved by the said order the appellant filed the above appeal.

1                    The matter was taken up for hearing in the Circuit Bench at Ahmedabad on 26.7.2006. Learned Counsel Sri Umesh B. Brahmbhatt appeared for the appellant and learned Counsel Shri Ajay Amitabh Suman appeared for the first respondent.

2                    Learned Counsel for the appellant submitted that they have been using the mark 'PUJARI' brand Jeera in respect of jeera since 23.12.1981 and had gained reputation over the mark. He also contended that the non

appearance of the parties is not to be seriously viewed. The learned Counsel for the appellant forcefully argued that the opposition was attracted by resjudicata as there was already a compromise memo filed and a settlement arrived at between the parties. He also argued that as they have been using the trade mark since 1981, they were honest concurrent users and that there was no necessity to prove deception or confusion.

7. Learned Counsel for the appellant submitted that the Assistant Registrar had not considered the provisions of Section 9 of the Act and had passed an erroneous order. He also drew our attention to the findings of the Assistant Registrar as to the evidence being taken on record in his finding which were not filed by the first respondent at the earlier stage as per the procedure. Learned Counsel for the appellant relied on the following judgments in support of his claim:

F. Hoffimann LA Roche and Co Ltd. v. Geoffery Manners & Co Pvt. Ltd. ; Cycle Corporation of India v. T.I. Raleigh

Industries Pvt. Ltd. ; Madanagopal v. P.K.A.

Ramacandra Mudaliar (Dead) By LRS 1995 SCC Supp.; Sunderabai W/o Devrao Deshpande v. Devaji Shankar Deshpande 1954 AIR (SC)-0-82; Gupta Enterprises v. Gupta Enterprises ; Registrar of Trade Marks

v. Asok Chandra Rakhit Ltd. .

8. Learned Counsel for the first respondent mainly contended that the opposition proceedings will not be attracted by resjudicata as a compromise was entered into only in 2001 after the impugned order was passed by the Assistant Registrar in the year 1999. He also contended that the onus was on the appellant to satisfy the Assistant Registrar that the trade mark applied is not objectionable and is capable of registration. But here the appellant had neither filed any documentary evidence nor appeared before the Assistant Registrar to prove their case. Learned Counsel for the first respondent relied on following judgments in support of his claim:

Uphras Lapasan v. Ka Esiboll Lyngdoh ; National

Sewing Thread Co. Ltd. v. James Chadwick ;

Amritdhara Parmacy v. Shri Satya Deo Gupta AIR 1963 449; Dyer Meakin Breweries Ltd. v. Scotc Whisky Association AIR 1980 Delhi 125

9. We have carefully considered the pleadings on file and arguments of both the counsel. We are of the opinion that the marks being the similar and identical, there is every possibility of deception and confusion being caused in the public. On perusal of the records we find that the first respondent had been using the mark since 1.1.1980 whereas the appellants have been using the mark since 23.12.1981. Considering the above fact we are of the view that the first respondent is prior user in point of time and have valid rights than that of the appellant. We are, therefore, of the view that as per Section 9 of the said Act the application of the appellant does not qualify for registration. As regards Section 11(a) of the Act, to qualify for acquiring distinctiveness the appellant have to prove user. Here we do not find any evidence to prove user by the appellant. In fact the appellant has not filed evidence in support of his application nor have made a mention of the same in the counter statement filed either before the learned Assistant Registrar or this Board at the appeal stage. Moreover, we also find that the appellant has neither given any reason for his non appearance before the Assistant Registrar nor has he given any reason for non filing of evidence in support of his application even before this Board. Looking at the attitude of the appellant we are of the opinion that they are not interested in pursuing the application. As the mark does not qualify to be distinctive and are thus prohibited for registration under Section 11(a) of the said Act. Similarly, goods being the same, same consumers, same trade channels and same selling outlets for both the products and there being closer similarity between the goods, there is every likelihood of confusion being caused and are disqualified for registration under Section 11(a) of the Act.

1                    The goods have not acquired distinctiveness nor are capable of being distinguished and rights under Section 18 of the said Act is also not available.

2                    We are, therefore, of the opinion that the goods being the same and the mark applied is deceptively similar and identical with the registered mark, the objection of the first respondent under Section 12 of the Act sustains. In view of the foregoing reasons the appeal is dismissed, confirming the order of the Assistant Registrar of Trade Marks. As the main appeal itself has been dismissed, the Civil Application No. 41 of 2000 for stay becomes infructuous. However, there shall be no order as to costs.