Bansal Brothers vs Kanahya Lal Satish Kumar

Z.S. Negi, J

This is an appeal under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) directed against the order dated 11.6.2004

passed by the Assistant Registrar of Trade Marks, Delhi whereby he allowed the opposition No. DEL-T-2215/ 57113 and refused the application No.

595283 for registration of trade mark.

The case of the Appellant-a proprietorship firm of which Smt. Premwati Bansal is the sole proprietor-is that it is engaged in the business of

processing and marketing of rice, food grains and pulses since the year 1990. The Appellant claims to be the proprietor of the trade mark KANHIYA

LABEL which was adopted on 1.4.1990 and thereafter the said mark has been in continuous use up to the present time without interruption or

interference from any corner whatsoever and that it has already built up a valuable trade under the said trade mark. The trade mark KANHIYA

LABEL of the Appellant has, on account of its long, continuous, extensive and exclusive use, already become distinctive and associated with the

aforementioned goods of the Appellant. It is further claimed that the public at large associate the said mark with the goods of the Appellant and the

Appellant has used the said mark exclusively to the exclusion of others. The Appellant has stated to have the mark widely advertised through different

media such as advertisement in leading newspapers, distribution of trade literatures and novelties, etc. and it has already spent substantial sum of

money on the publicity of the said mark and in consequence thereof the said mark enjoys solid and enduring reputation in the markets.

On 22.4.1993, the Appellant filed application No. 595283 for registration of trade mark KANHIYA label in class 30 claiming user since 1.4.1990 in

respect of the aforesaid goods and the said application was advertised, before acceptance, in the Trade Marks Journal No. 1231 (Supplement) dated

21.9.2000 at pages 263-264. On 16.10.2000, the Respondent herein gave notice of its intention to oppose the registration of trade mark on the grounds

that the Respondent is engaged in the business of various kinds of sweets, namkeens, halwa, poori, samosa, bhujia, chips and all such other halwai-

made and/or cooked/fried preparations from the year 1971 and it has been using the trade mark 'KANAHYA' regularly, extensively and without

interruption of any kind whatsoever and the said mark has become popular and distinctive in the markets. It claimed that the Respondent is the first

and prior adopter and promoter of the mark, and is the true and lawful proprietor of the mark KANAHYA. The Respondent is stated to have acquired

statutory rights to the exclusive use of the trade mark KANAHYA by virtue of its registration under No. 354090 in class 30 and the said registration is

valid and subsisting. The Respondent mainly objected to the registration of trade mark that the same is prohibited under the provisions of Sections 9,

11, 12 and 18 of the Act and the said opposition was numbered as DEL-T-2215/57113. The Appellant herein then filed the counter-statement dated

26.7.2001 generally denying the material averments made in the notice of opposition. The Respondent did not file any evidence in support of its

opposition but in the request for extension of time on Form TM-56 dated 11.8.2001 and Form TM-56 dated 24.11.2001, it relied upon the facts and

circumstances stated in the notice of opposition as part evidence. Thereupon, attention of the Appellant was invited by the Registrar of Trade Marks

vide letter dated 19.9.2002 for filing evidence in support of the application under Rule 54 of the Trade and Merchandise Marks Rules, 1959 but the

Appellant did not initiate any action on its part and, therefore, the matter was ultimately set down for hearing on 8.6.2004. After hearing the matter on

8.6.2004, the Assistant Registrar of Trade Marks passed the impugned order dated 11.6.2004 whereby he allowed the opposition No. DEL-T-

2215/57113 of the Respondent and refused the registration of application No. 595283 of the Appellant.

Aggrieved by the impugned order dated 11.6.2004, the Appellant challenged the said order by way of filing the present appeal on the grounds, inter

alia, that the Registrar ought to have appreciated that the goods of the Appellant and goods of the Respondent are quite different and there is no any

trade connection between the them; that the impugned order is erroneous in law and on facts; that the Registrar failed to appreciate that the

Respondent did not comply with the mandatory requirement of provision of Sub-rule (1) of Rule 50 of the Trade Marks Rules, 2002 (hereinafter

referred to as the Rules) and as such the opposition ought to have been dismissed in view of the provision of Sub-rule (2) of Rule 50 of the Rules

alone; that the Registrar ought to have appreciated that the Respondent is guilty of suppression of material fact that its application being No. 354090B

was limited only for sale in the State of Punjab and the Appellant's application for registration should have been allowed to proceed for registration

excluding the State of Punjab; that the Registrar failed to appreciate that the Respondent has miserably failed to discharge the onus upon it to prove

that the objections raised in the opposition under Sections 9, 11 and 12 of the Act are sustainable; that the Registrar failed to return any finding on the

objections raised under Sections 9, 11, 12 and 18 of the Act; that there is apparent error on the face of the record and there is sufficient reason for

review of the impugned order and that the impugned order is non-speaking order and the same is made mechanically, without due care and caution in

the exercise of discretion.

The Respondent filed the counter-statement dated 28.9.2004 denying the grounds taken in appeal and at the same time raising certain preliminary

objections, inter alia, that Mr. Harish Bansal, the Appellant herein has no locus standi to file the present appeal as he is not the applicant in application

No. 595283 -the subject-matter of this appeal; that the appeal is not maintainable either in law or on facts; that the Appellant has not shown any valid

or convincing reason for not filing the documentary evidence despite specifically inviting its attention to Rule 54 of the Trade and Merchandise Marks

Rules, 1959 by the Registrar of Trade Marks vide letter dated 19.9.2002 and that the Appellant lacks bona fide, honesty and locus standi to file the

present appeal. It is stated by the Respondent that the Appellant has totally failed to file any evidence in support of application even after receipt of

letter dated 19.9.2002 from the Registrar of Trade Marks inviting the attention of Appellant to the requirement of Rule 54 of the Trade and

Merchandise Marks Rules, 1959 (corresponding Rule 51 of the Rules). It is submitted that in view of the mandatory provisions as embodied in

Sections 9, 11 and 12 of the Act, the impugned identical mark 'KANHIYA' in respect of same kind/description of edible goods included in the same

class 30 should be refused for registration, especially at a stage, when not even a single iota of evidence had been filed by the Appellant in support of

its application and when the Respondent already holds registration of trade mark 'KANAHYA' under No. 354090B in class 30. Submission is made

that the Appellant failed to file even an iota of evidence in support of application and thus failed to discharge the ultimate onus on it to prove the

registrability or distinctiveness of the impugned mark, when challenged, therefore, the Registrar, after thorough perusal of record and material

available on the file, has rightly refused the impugned application and the impugned order is a reasoned one passed under the relevant provisions of the

law. The Appellant in reply to the allegation that the Registrar ought to have appreciated that the Respondent is guilty of suppression of material fact

that its application being No. 354090B was limited only for sale in the State of Punjab and the Appellant's application for registration should have been

allowed to proceed for registration excluding the State of Punjab, submitted that the Respondent has at the time of hearing of this case by the

Registrar on 8.6.2004 filed the relevant documents (copies of certificate of registration of trade mark under No. 354090B and Mega Journal dated

25.8.2003 page 820 comprising of Respondent's registration application No. 886112) in the presence of the counsel for the Appellant and as such

nothing has been suppressed as alleged or otherwise. In repudiation of one of the grounds of appeal that there is error apparent on the face of record

and there is sufficient reason for review thereof, the Respondent has submitted that in fact there is no error apparent on the face of the record nor

there is any sufficient reason or ground for review of the impugned order as falsely alleged. Further, it is stated that the Appellant ought to have filed

an application for review before the Registrar of Trade Marks seeking review of the impugned order.

We have heard counsel for both the parties and have gone through the material available on record, including 25 pages of scanned copies of certain

documents, in relation to the application filed by the Appellant for registration of the impugned trade mark, forwarded by the Registry of Trade Marks,

New Delhi. However, we have no opportunity to go through the original documents filed in opposition by the Respondent before the Registry of Trade

Marks or even copies thereof as the Registry has stated that the opposition file DEL-T-2215/57113 is not traceable.

Learned Counsel for the Appellant contended that the Registrar ought to have appreciated that the goods of the competing marks are absolutely

different and distinct and there is no any trade connection between them. Hence, no question of any likelihood of deception or causing of confusion

amongst the consumers can arise in this case. He further contended that the Registrar failed to appreciate that the Respondent neither filed any

evidence in support of its opposition nor it informed the Registrar and the Appellant in writing that it did not desire to adduce evidence in support of the

opposition but intend to rely upon the facts stated in the notice of opposition and thus the Respondent has not complied with the mandatory provisions

of Sub-rule (1) of Rule 50 of the Rules and thus the Respondent failed to discharge the initial onus on it to prove the user and reputation of its mark.

While the Respondent failed to comply with the aforesaid mandatory provisions, the Registrar ought to have dismissed the opposition in view of the

provision of Sub-rule (2) of Rule 50 alone and allowed the application to proceed for registration. Learned Counsel for the Appellant by referring to

para 22 of Chapter 6 of Mr. P. Narayanan's book 'Law of Trade Marks and Passing off' (6th Edition) submitted that it is well settled that in an

opposition proceeding the onus is ultimately upon the applicant to establish that he is entitled to registration of the trade mark applied for and where the

objection to the application is based on the alleged use and reputation of the opponent's trade mark, or any other facts, the onus of establishing those

facts lies upon the opponent, but once this initial onus on the part of the opponent is discharged, the burden is on the applicant to show that the use of

his mark is not likely to deceive or cause confusion and this onus is discharged by filing evidence of relevant fact and submitting arguments at the

hearing. In appropriate cases this can be done by arguments alone. Learned Counsel pointed out that it is evident from the facts and records that the

Respondent has not discharged the initial onus which lay on it to prove the use and reputation of its trade mark.

Refuting the above submissions of the counsel for the Appellant, learned Counsel for the Respondent submitted that the Appellant's mark

KANHIYA is undoubtedly visually, phonetically and in all such other essential respects identical with or deceptively similar to that of the Respondent's

prior used, popular and registered trade mark KANAHYA. The counsel heavily relied on the passage (17.33) from Mr. P. Narayanan's book 'Law of

Trade Marks and Passing off' (5th Edn.) which states that where one mark contains the whole of the other or its essential feature, it is a factor to be

taken into consideration. It should be considered whether the individuality of the common part is lost or whether the common part stands out

prominently. The goods of both the competing marks are of same description, that is to say edible goods meant for human consumption and they being

of the same description are having trade connection. If the mark of the Appellant is registered there is highly likelihood of causing deception or

confusion and the Appellant has miserably failed to discharge the onus on it to prove that the use of its mark is not likely to deceive or cause

confusion. This onus could have been discharged by the Appellant by filing evidence and submitting arguments but the Appellant has totally failed to

do so. Learned Counsel took us to para 3 of the counter-statement (Form TM-6) wherein it is averred by the Appellant that it is continuously using the

mark KANHIYA LABEL since its adoption on 1.4.1990 up to the present time and the business carried on by it is a very extensive and goods bearing

the mark have been practically distributed in major parts of the country to submit that such a bald claim/averment of extensive and continuous user

cannot be accepted in the absence of an iota of evidence filed by the Appellant to substantiate its averments. Similarly, by taking us to the claim made

by the Appellant in para 5 of Form TM-6 that it has widely advertised the trade mark through different media, such as advertisement in leading

newspapers and it has already spent substantial sum of money on publicity of the trade mark, he submitted that without adducing any documentary

evidence to support the claims, such claims cannot be accepted. To buttress his submission in relation to confusion and deception and the onus to

prove lies on the applicant, learned Counsel relied on the decisions in National sewing Thread Co. Ltd, Chidambaram v. James Chadwick & Bros.

Ltd. AIR 1953 SC 357, Prem Nath Mayer v. The Registrar of Trade Marks and Anr. AIR 1972 Calcutta 261 and Sunder Parmanand Lalwani and

Ors. v. Caltex (India) Ltd. AIR 1969 Bombay 24. Learned Counsel for the Respondent submitted with all force that the Respondent was desirous of

filing documentary evidence in support of opposition and having in view that the documents were old and required to be traced from the old records

which was bound to take some time for locating, collating and filing the required evidence, the Respondent applied for extension of time with effect

from 10.10.2001 to 10.2.2002 by filing two Form TM-56 dated 13.8.2001 and 26.11.2001, respectively. Since the Respondent was very much

interested in prosecuting the opposition proceedings and as an abundant caution it relied on the facts and circumstances as stated in the notice of

opposition by recording such reliance on the aforesaid Form TM-56. The learned Counsel relied upon the decision of Division Bench of Calcutta High

Court in Prem Nath Mayer's case (supra) to submit that the Division Bench has held that Rules 51 to 55 of the Trade and Merchandise Marks Rules,

1959 do not enjoin a shifting of the onus from the applicant to the Respondent at any stage of the proceedings. In view of this fact, the submission

made by the Appellant that the opposition ought to have been dismissed pursuant to the provision of Rule 50 (2) of the Rules alone is misconceived

and fallacious and such submission cannot be sustained at all.

It is clear from the notice of opposition that one of the grounds of objection to the application for registration of trade mark KANHIYA of the

Appellant is that the mark applied for is visually, phonetically and in all such other essential respects identical with, and/or deceptively similar to, the

Respondent's prior used, popular and registered trade mark KANAHYA. However, the Appellant has in the counter-statement (Form TM-6) not

specifically or by necessary implication denied the objection that the rival marks are identical or deceptively similar to likely to cause confusion and

deception but have simply stated that the averments in that para is wrong and denied and further stated that the competing goods are absolutely

different and distinct and the Respondents are not admitted to be the prior user and registered proprietor of trade mark KANAHYA. In such

eventuality , the Appellant is taken to have admitted the objection that the Appellant's mark KANHIYA is visually, phonetically and in all other

respects identical with and/or deceptively similar to the Respondent's mark KANAHYA (see Jahuri Sah and Ors. v. Dwarika Prasad Jhunjhunwala

and Ors. AIR 1967 Supreme Court 109). Even when the two marks KANAHYA and KANHIYA are compared as wholes, visually and phonetically

they are identical. It can be said that ideas conveyed by both the words KANAHYA and KANHIYA are identical so as to cause likelihood of

deception or confusion, if the said marks are used by two different proprietors in respect of edible goods. The first impression one gets by seeing at

both the competing marks is that both are one and the same. The consumers/purchasers of goods of both the parties are the proverbial common man

having average intelligence and imperfect recollection, who may tend to remember easily the word KANHAYA and may not remember the device.

However, the Appellant has controverted to say that the competing goods are absolutely different and distinct and there is no any trade connection.

We are inclined to agree with the averment made in the counter-statement of the Respondent that the goods of the rival parties are of the same

description, being edible goods for human consumption. It is not true to state that they are having no trade connection because it is a matter of

common knowledge that the consumers are common and the trade channel is common as the fried or roasted 'namkeen dal' packets are sold at the

grocery shops also. Another matter of common knowledge is that for the preparation of sweets, namkeens, poori, samosa, etc., in respect of which the

Respondent has the registered mark KANAHYA label, the Appellant's goods i.e. food grains including rice and pulses in respect of which registration

of trade mark KANHIYA label is sought, is used in one form or the other by the Respondent and hence there is trade connection between them.

There is likelihood that if an unwary purchaser of average intelligence with imperfect recollection steps in to a grocery shop and asks for

KANAHIYA dal/pulse he may end up by purchasing the fried or roasted KANAHYA dal packet unless he takes care to ask for raw or uncooked dal

/pulse, therefore, there is likelihood of causing deception or confusion among the consumers. When the marks and goods are identical or deceptively

similar, the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion. The question of

onus came up before a division Bench of Bombay High Court in James Chadwick & Bros. v. The National Sewing Thread Co. Ltd. AIR 1951 Bom

147 and the Court dealing with Section 10 of the Trade Marks Act, 1940, which corresponds to Section 11 of the Trade and Merchandise Marks Act,

1958 (with which the Court was concerned), the Division Bench held that the burden of proving that the trade mark sought to be registered was not

likely to deceive or cause confusion was upon the applicant and it was for him to satisfy the Registrar that his trade mark did not fall within the

provisions of Section 8 or 10 and therefore it should be registered. This decision went up in an appeal to the Supreme Court. The Supreme Court while

dealing with the question of onus at para 22 of its judgment in National Sewing Thread Co. Ltd.'s case (supra) held: ""The principles of law applicable

to such cases are well settled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause

confusion is upon the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of Section 8 and therefore it

should be registered. Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not discharged by

arriving at a result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the

registration of the mark. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of

ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he

would connect the trade mark with the goods which he would be purchasing."" The Appellant has miserably failed to discharge the onus on applicant to

prove that the mark applied for if registered it is not likely to deceive or cause confusion.

Now we go to the next contention of the Appellant that where the objection to the application is based on the alleged use and reputation of the

opponent's trade mark, or any other facts, the onus of establishing those facts lies upon the opponent and that the Registrar ought to have dismissed

the opposition in view of the provision of Sub-rule (2) of Rule 50 of the Rules. In Prem Nath Mayer's case (supra), the Court while considering rules

51 to 55 of the Trade and Merchandise Marks Rules,1959 observed thus: ""...These are the relevant Rules which were considered by the Trial Court

and which are to be considered by us in determining if there is any indication that the onus shifts from the applicant to the opponent at any stage. As I

read the Rules I see nothing therein to justify the conclusion that the onus shifts from the applicant to the opponent at any stage. On the contrary, the

indication in Rule 54 is clear that the onus lies upon the applicant because that rule says that even if the opponent does not file any affidavit to adduce

evidence in support of the opposition, the applicant has to file within two months from the receipt of copies of the affidavits in support of the

opposition, such evidence by way of affidavits as he desires to adduce in support of his application. This Rule, in my view, makes it clear that even if

the opponent is unable or unwilling to adduce any evidence by affidavit in support of his opposition, the applicant must file his evidence by affidavit in

support of the application. The Rules therefore do not enjoin a shifting of the onus from the applicant to the opponent at any stage of the proceedings.

The onus of proving, that the mark if registered, will not lead to confusion or deception, is squarely upon the applicant. Furthermore, the question as to

on whom the onus lies, has been settled and set at rest by the Supreme Court in the two decisions mentioned earlier, and I do not think it can now be

held that the onus lies upon the opponent and that it shifts from the applicant to the opponent at any stage of the proceedings.

Now we would consider as to whether the Registrar ought to have dismissed the opposition pursuant to Sub-rule (2) of Rule 50 of the Rules. From

a plain reading of Sub-rule (1) of Rule 50 of the Rules, it is abundantly clear that the opponent shall leave with the Registrar such evidence by way of

affidavit as he may desire to adduce in support of his opposition within two months from the service on him of a copy of the counter-statement or

within such further period not exceeding one month in aggregate as the Registrar may on request allow or alternatively the opponent shall intimate to

the Registrar and to the applicant in writing that he does not desire to adduce evidence in support of his opposition but intends to rely on the facts

stated in the notice of opposition. Where the opponent take action in accordance with the requirements of Sub-rule (1) of Rule 50 the provisions of

Sub-rule (2) of Rule 50 of the Rules do not come into play. The Division Bench of Calcutta High Court in the Prem Nath Mayer's case (supra)

(relevant portion of observation already extracted in para 10 above), while carefully considering rules 51 to 55 of the Trade and Merchandise Marks

Rules, 1959, observed that nothing is there in the Rules and this Rule makes it clear that even if the opponent is unable or unwilling to adduce any

evidence by affidavit in support of his opposition, the applicant must file his evidence by affidavit in support of his application. The Rules therefore do

not enjoin a shifting of the onus from the applicant to the opponent at any stage of the proceedings. In the instant case the Respondent had not

adduced evidence and alternatively it had relied on the facts and circumstances as stated in the notice of opposition. Taking cognizance of action taken

by the Respondent under Rule 50 (1), the Registrar had issued letter dated 19.9.2002 to the Appellant inviting its attention to file evidence under Rule

54 of the Trade and Merchandise Marks Rules, 1959 (corresponding Rule 51 of the Rules), on which the Appellant initiated no action. Since the

Respondent had taken action under Sub-rule (1) of Rule 50, the provisions of Sub-rule (2) of Rule 50 of the Rules did not attract. In view of para10

above and this para, the contentions/submissions of Appellant regarding initial onus not discharged by the Respondent and that the Registrar ought to

have dismissed the opposition on the ground specified in Rule 50 (2) alone is misconceived and fallacious which cannot be sustained.

Learned Counsel for the Appellant next contended that the Assistant Registrar has failed to return any finding on the objections raised under

Sections 9, 11, 12 and 18 of the Act and the impugned order is not a reasoned order passed under the provisions of the Act. On the other hand learned

Counsel for the Respondent submitted that the Appellant miserably failed to file any evidence in support of its application or to seek extension of time

on Form TM-56 for filing such evidence; failed to file any evidence in support of claimed user of its trade mark since 1.4.1990 or failed to rely on the

counter-statement or to rebut the objections as raised by the Respondent under relevant provisions of the Act. Learned Counsel for the Respondent

while referring to the contents of paragraphs 14 and 15 of Form TM-6 pointed out the Appellant has not proved its claim of prior adoption and

continuous use of its mark, it has not explained as to what made the Appellant to settle on the label mark KANHIYA especially when the

Respondent's mark KANAHYA was on the register of trade marks and KANAHYA is a prominent part of the Respondent's trading name M/s.

Kanahya Lal Satish Kumar since 1971. Learned Counsel relied on the decision of this Appellate Board in Prestige Housewares India Ltd. v. The

Registrar of Trade Marks and Anr. 2006 (1) CTMR 82 (IPAB) to submit that the existence of the Respondent's mark on the register is a prima facie

evidence of user of the mark. He referred to para 16.12 from Mr. P. Narayanan's book 'The Law of Trade Marks and Passing off' to submit that the

evidence of honest concurrent user must relate to the user of the trade mark as a whole and documentary evidence must be furnished to prove it,

when challenged. Learned Counsel relying upon the decision in M/s. National Chemicals and Colour Co. and Ors. v. Reckitt and Colman of India Ltd.

and Anr. AIR 1991 Bom 76 submitted that there was Respondent's registered trade mark in existence but nevertheless the Appellant continued to use

the identical mark for the same description of goods, as such the same cannot be held to be honest concurrent user.

Before considering the above referred issues, it would be appropriate to note the findings of, or observations made by, the Assistant Registrar. The

Assistant Registrar has recorded in his impugned order that ""I have heard both the Ld. counsels acting on behalf of the applicants as well as the

opponents. I have also perused the record available on the file. The attention of the applicants was invited for filing their evidence by the Registry as

back as on 19/9/2002 but they did not initiate any action for filing their evidence in support of application. This Tribunal does not agree with the

submissions of the applicants. In view of this, the opposition No. DEL-T-2215/57113 is allowed and application No. 595283 in class 30 is refused

registration."" For the purpose of giving a reasoned findings by the Registrar on the issues raised, it is expected that there is sufficient material available

on record, whether adduced to substantiate or put forth as arguments in support or rebuttal of the issues. It is quite clear from the impugned order that

the counsel appearing on behalf of the Appellant/ applicant had advanced only one argument that the Respondent/opponent did not inform the

Registrar and the applicant in writing that it does not desire to adduce evidence in support of opposition and this submission was for obvious reasons

not agreed to by the Tribunal. Having put forth only one argument by the Appellant and also having not adduced at any stage of the proceedings even

an iota of documentary evidence in support of its application for registration, we are of the opinion that there was no sufficient material available on

record to enable the Assistant Registrar to appreciate the issues correctly and completely for recording his reasoned findings on the objections raised

in the notice of opposition under Sections 9,11.12 and 18 of the Act. We, therefore, do not find any justification or reason calling for the interference

with the above extracted finding/ observation of the Assistant Registrar.

Regarding the averment made in para 14 of the counter-statement (Form TM-6) that on account of its prior adoption and continuous user of the

mark, the Appellant is entitled to registration under Section 12(3) of the Trade and Merchandise Marks Act, 1958, it may be stated that such an

averment of the Appellant is not found to be sustainable for the reasons given below. It is worth noting that the Respondent has claimed the adoption

of the mark and its user since 1971 and the Respondent in support of claim of user of its mark relied on the decision in Prestige Housewares India

Ltd.'s case (supra) in which it was held that ""Existence of registration on the Trade Marks Register is a prima facie evidence of user of the mark. The

burden for proving that it is not being used is upon the one who alleges so and the remedies are open for him to file necessary applications for

rectification under Section 46 and/or Section 56 of the Act."" The reliance placed on the above referred decision is squarely applicable to the present

case and also its applicability on the present case has not been rebutted or controverted by the Appellant during the course of hearing. Besides this,

honesty of adoption of mark and user is the sine qua non for considering an application under Section 12(3) of the Trade and Merchandise Marks Act,

1958 (corresponding Section 12 of Act). The adoption of the mark should be honest and the use thereof should have consistent use in a commercial

sense. We have already noted that the Appellant has not adduced any evidence to prove its proprietary right in the mark and user thereof. However,

amongst the 25 pages of scanned copy, we noticed an affidavit of Mrs. Premwati Bansal but the annexure1 to 48 thereto (as mentioned in the

affidavit) were not available with the scanned copy. Para 6 of the affidavit sets out sales figures for the years 1990-91 to 1997-98. It is stated that out

of the total annual sale amount, approximately 10% sales relate to the trade mark KANHIYA Label. Since the averment made by the Appellant in its

appeal is that it is engaged in the business of processing and marketing of rice, food grains and pulses, what other business the Appellant might have

been engaged in, wherein it sold goods worth ninety times of price of rice, food grains and pulses is not clear from the affidavit. The said sales figures

is not certified by the Chartered Accountant/ Auditor. In the absence of annexures 1 to 48, sales figures not certified by the Chartered Accountant

and non-clarification about the other goods sold, this evidence of user is doubtful to be taken into consideration. The Respondent claimed to be using its

mark since 1971 and it is difficult to think the Appellant who is dealing with goods of similar description was not aware of the Respondent's trade mark

KANAHYA. In this case, the Appellant has not filed any evidence showing use of the mark since its adoption and also failed to show or establish that

the adoption of its mark was honest and bonafide. The Appellant has no contemporaneous existence in business to that of the Respondent's business

(since in the year 1971, the Appellant had no existence in business in 1971), therefore it cannot claimed to be the concurrent user of the trade mark

KANHIYA.

We would now consider whether the Appellant has the proprietary rights in the trade mark KANHIYA Label. A proprietary right in a mark

sought to be registered can be obtained in a number of ways and one of the modes is that the mark can be originated by a person and while putting

forward the application for registration he should be in possession of some proprietary right which, if questioned, can be sustained. According to Sub-

section (1) of Section 18 of the Act, any person claiming to be the proprietor of a mark whether used or proposed to be used by him, who is desirous

of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark, it is very clear that in such a case,

some definite intention to use the mark in respect of goods for which registration is sought should be shown. In the instant case the adoption and user

of the mark is claimed from 1.4.1990 but there is no proof to establish the use of the mark since 1.4.1990 to 22.4.1993 (the date of application). On the

date of filing of application for registration of trade mark by the Appellant, an identical mark of Respondent was on the register and having this in view

the Appellant's mark sought to be registered would not have the distinctive character to qualify for registration under Section 9 of the Act. The

evidence of user was therefore, necessary to be adduced to discharge the onus on the Appellant. The Appellant, despite notice from the Registry of

Trade Marks did not file evidence in support of the application as required under Rule 54 of the Trade and Merchandise Marks Rules, 1959. There is

not a whisper in the pleadings before the Registrar or before this Appellate Board as to the availability or otherwise of any evidence of user of the

mark and if available what prevented the Appellant to adduce them in evidence. We have noticed above that it is difficult to believe that the Appellant

carrying on a business in goods of same description as that of Respondent, was not aware of the existence of registered trade mark of the Respondent

and the adoption of such mark was without reference to Respondent's trade mark. There is no material to show how the Appellant came to adopt the

mark KANHIYA label. The adoption of such mark was not honest in view of the prior existence of the Respondent's trade mark; therefore, the

Appellant cannot claim to be the proprietor of the mark under Sub-section (1) of Section 18 of the Act.

Regarding the objection raised by the Appellant that the Registrar ought to have appreciated that the Respondent is guilty of suppression of

material facts with malafide intention that its application No. 354090B was for limited to the State of Punjab, the Respondent has in its counter-

statement stated that the Respondent duly holds the registration of the trade mark 'KANAHYA' under No. 354090B in class 30 and the Respondent

has filed copies of that registration certificate and the Respondent's associated application No. 885112 (as advertised in the Mega Trade Marks

Journal No. 1 dated 25.8.2003 and in respect of the enlarged/wide specification of goods for sale in all over India) at the time of hearing on 8.6.2004

before the Registrar in the presence of counsel for the Appellant. The Respondent has annexed copies of the said documents as Annexures R-4, R-

4A and R5 to its counter-statement. This reply of the Respondent stood unrebutted at any stage by the Appellant and having these facts in view, the

objection raised by the Appellant is rejected. We find it difficult for ourselves to sustain the allegation of the Appellant that the impugned order is made

mechanically, without due care and caution in exercise of discretion as we failed to see any material on record which substantiate those allegations.

The contention of the Appellant that in fact there is apparent error on the face of the record and there is sufficient reason for review of the impugned

order is irrelevant in the appeal as appeal and review cannot go hand in hand. We have by this time satisfied ourselves that there is no merits in the

appeal and the impugned order dated 11.6.2004 requires no interference by this Appellate Board. After having formed such a view, we do not think

that any useful purpose would be served by dealing with the preliminary objections raised by the Respondent in its counter-statement; therefore, we

are not burdening ourselves to deal with those preliminary objections.

In view of the foregoing, we find no merits in the appeal and we, accordingly, dismiss the appeal on hand. The parties are left to bear their own

costs of appeal.