Ambala Lalludas Patel Vs Bhagwan Kirana Company

BEFORE THE INTELLECTUAL PROPERTY APPELLATE BOARD, CHENNAI

CIRCUIT BENCH AT AHMEDABAD

TA/280/2004/TM/AMD (Appeal No. 3 of 2000)

Decided On: 16.11.2006

Appellants: Ambala Lalludas Patel

Vs.

Respondent: Bhagwan Kirana Company and The Assistant Registrar of Trade Marks

Judges/Coram:

Z.S. Negi, Vice-Chairman and S. Usha, Member (T)

Counsels: 

For Appellant/Petitioner/Plaintiff: Umesh B. Brahmbhatt, Adv.
For Respondents/Defendant: Ajay Amitabh Suman, Adv. for R1

Subject: Intellectual Property Rights

Acts/Rules/Orders:

·  Trade Marks Act, 1999 - Section 100;

·  Trade and Merchandise Marks Act, 1958 - Sections 9, 11, 12, 12(1) and 18

Cases Referred:

·  F. Hoffimann LA Roche and Co Ltd. v. Geoffery Manners & Co Pvt. Ltd. AIR 1970 SC 2062;

·  Cycle Corporation of India v. T.I. Raleig Industries Pvt. Ltd. AIR 1996 SC 3295;

·  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 AIR 1998 Del 232;

·  Registrar of Trade Marks v. Asok Chandra Rakhit Ltd. AIR 1955 SC 558;

·  Uphras Lapasan v. Ka Esiboll Lyngdoh AIR 1986 Gauhati 55;

·  National Sewing Thread Co. Ltd. v. James Chadwick AIR 1953 SC 357;

·  Amritdhara Parmacy v. Shri Satya Deo Gupta AIR 1963 449;

·  Dyer Meakin Breweries Ltd. v. Scotc Whisky Association AIR 1980 Delhi 125

Disposition: 

Appeal Dismissed

ORDER

S. Usha, Member (T)

1. Appeal No. 3 of 2000 along with Civil Application No. 40 of 2000 in Appeal No. 3 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 T.A./280/2004/TM/AMD.

2. The appellant filed an application for registration of the label, inter-alia consisting of the word 'BHAGWAN' Jeera along with letters 'A' and 'L' device of Goddess Durga seated in a Lion in respect of Jeera, Fennal Seeds, methi seeds in class 30 under application No. 474885 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. 474885 and the appellant herein had filed their counter statement in 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 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 on the following grounds:

The Assistant Registrar had rejected the objection 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 also rejected the objection under Section 12(1) of the said Act as the first respondent had no right to raise the same, as the first respondent's mark was pending registration. As regards Section 11(a) of the said Act, the Assistant Registrar rejected the objection as there was no document filed to prove about the confusion or deception being caused. The learned Assistant Registrar on accepting the contention of the first respondent that they had adopted the mark 'BHAGWAN PUJARI' since 1.1.1980 from their trading style wherein the appellant had not given any reason for their adopting the word 'BHAGWAN', had allowed the opposition and refused registration of the application. Aggrieved by the said order the appellant filed the above appeal.

5. The matter was taken up for hearing in the Circuit Sitting 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.

6. Learned Counsel for the appellant submitted that they have been using the mark 'BHAGWAN PUJARI' 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 Registration 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. MANU/SC/0302/1969;

Cycle Corporation of India v. T.I. Raleig Industries Pvt. Ltd. MANU/SC/0886/1996;

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 MANU/DE/0116/1998; 

Registrar of Trade Marks v. Asok Chandra Rakhit Ltd. MANU/SC/0052/1955.

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 is case. Learned Counsel for the first respondent relied on following judgments in support of his claim:

Uphras Lapasan v. Ka Esiboll Lyngdoh MANU/GH/0011/1986;

National Sewing Thread Co. Ltd. v. James Chadwick MANU/SC/0063/1953;

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 and that 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, are 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.

10. 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.

11. 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. 40 of 2000 for stay becomes infructuous. However, there shall be no order as to costs.