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.
