Bombay Enterprises vs B.R. Mechanical Corporation

T.R. Subramanian, Technical Member

This is an appeal filed by the Appellants against the order of the Deputy Registrar of Trade Marks dated 1st October, 1990 dismissing the

opposition No. DEL 4675 filed by the appellants opposing the registration of the respondents' trade mark application No. 402484B in Class 7.

On 8th March, 1983, the respondents hereinabove have filed application No. 402404 for registering the trade mark ‘WONTEX’ in Class 7 in

respect of over-lock, bag closer, embroidery machines and spares thereof (except needles). The mark was proposed to be used on the date of the

application. The said trade mark was advertised in the Trade Mark Journal dated 1.10.1986. On 31st December, 1986, the appellants hereinabove filed

a notice of opposition to the registration of the above-mentioned trade mark of the respondents on the grounds that the appellants are he registered

proprietors of the trade mark ‘WINTEX’ and have been using it since the year 1980. They have been using the trade mark in respect of sewing

machines and spare parts thereon since 1.12.1980. The above trade mark has been registered as No. 370339 in Class in respect of sewing machines

and the registration is valid and subsisting. They have submitted that the rival trade marks are deceptively similar and that the respondents' trade mark

is a colourable imitation of the appellants' trade mark. They have also submitted that the goods of the appellants and that of the respondents are goods

of the same description and hence there is likelihood of confusion and deception between the two marks. They have concluded that the registration of

the respondents' mark would be contrary to the provision of sections 9, 11(a) and 12(1) of the Trade and Merchandise Marks Act, 1958.

The respondents filed their counter-statement denying all the material averments in the notice of the opposition and further submitted that the

respondents' mark and the appellants' mark are quite different both visually and phonetically. They submitted that the purchasers of embroidery

machines, over lock machines and bag closer machines cannot be mislead as the appellants' goods relate to sewing machines. They further submitted

that they had bona fidely adopted the trade mark ‘WONTEX’ and concluded that the notice of opposition should be dismissed. They also relied

that the respondents are eligible for registration under section 12(3) of the Act.

The appellants filed evidence in support of the opposition by way of affidavit dated 1.2.1988 sworn by one Shri Girish Kumar, partner of the

appellants' firm. In the affidavit, the annual sales figures were given since the years 1980â€"81 to 1984â€"85. In respect of the sale of goods under the

trade mark ‘WONTEX’ the respondents did not file their evidence in support of their application. The application was heard by the Deputy

Registrar of Trade Marks on 5.9.1990 when Shri V.P. Ghiraiya, Advocate appeared for the appellants but none appeared for the respondents. The

Deputy Registrar has held after hearing the learned counsel of the appellants that under section 12(1) of the Act, the rival marks are visually,

phonetically and structurally similar. However, he had held that the goods of the appellants and the goods of the respondents are different and the uses

and their function, trade channels, and class of purchasers, sales counters, raw materials used, nature of market, etc., are different.

Hence, it is difficult to infer confusion is likely to arise. Therefore, he has held that the objection under section 12(1) is not sustained.

As regards section 11(a) of the Act, he has held that as rival marks are distinctive and dissimilar; the question of user of the appellants' mark does

not carry any weightage. He, therefore, overruled the appellants' objection under section 11(a). As far as section 18 of the Act is concerned, he held

that since the proposed user is deemed to be one of the modes of acquiring proprietorship of a mark and hence the appellants' objection under section

18(1) was also overruled.

The appellants filed an appeal before the Hon'ble High Court of Delhi under CM(M)/5 of 1991 against the order of the Deputy Registrar. The

above appeal was transferred to Intellectual Property Appellate Board (IPAB) under section 100 of the Trade Marks Act, 1999, which section came

into force on 6th October, 2003. The present appeal is the one before the Appellate Board.

At the hearing before the IPAB, Shri V.P. Ghiraiya, Advocate appeared for the appellants but none appeared for the respondents. As regards

section 12(1) of the Act, the learned counsel for the appellants submitted that the Deputy Registrar has already held that the appellants' mark

‘WINTEX’ is visually, phonetically and structurally similar to the respondents' trade mark ‘WONTEX’. However, he submitted that the

Deputy Registrar has erred in holding that the goods of the appellants and that of the respondents are different he drew our attention to the fact that

the appellants have been using the trade mark in respect of sewing machines and that sewing machines are also used for over locking and embroidery

work, etc., in addition to their normal function of stitching.

He, therefore, submitted that the goods of the appellants and that of the respondents are similar goods or goods of the same description. We agree

with the contention of the learned counsel for the appellants. There is no doubt that sewing machines could be used for different purposes in addition

to stitching of clothes. The function for stitching is similar to the function of embroidery and over-locking work etc. The sewing machines could also be

used for embroidery, over-locking and for other purposes through attachments, if necessary. The class of purchasers are also same and they are sold

through the same retail network. Hence, we are of the view that the appellants have made out a case under section 12(1) of the Act.

As regards Section 11(a) of the Act, the learned counsel for the appellants submitted that the appellants have been using their trade mark

‘WINTEX’ from 1.12.1980. He referred to the affidavit of Shri Girish Kumar, wherein the annual sales figures have been given since the year

1980â€"81 to 1984â€"85. On the other hand the applicants have filed their application on 8th March, 1983 and the mark was proposed to be used on

the date of the application. He submitted that the appellants are prior users and registered proprietors of the mark. The above evidence of the

appellants has not been challenged by the respondents by way of evidence or otherwise. It is observed from the records that the respondents have not

bothered to file any evidence in support of their case. Nor have they stated that they rely on the statements made in their counter-statement We,

therefore, feel that the appellants have submitted evidence regarding prior use of their trade mark from the year 1980. As we have already held that

the rival marks are phonetically, visually and structurally similar, we are of the opinion that the appellants have succeeded in their grounds of objection

under Section 11(a) of the Act also.

Accordingly the appeal is allowed. The order of the Deputy Registrar is set aside. There is no order for costs.