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Judgment
S. Jagadeesan, J
Both the appeals are filed against the order of the Registrar of Trade Marks, New Delhi dated 26.4.1993 allowing the application of the first
respondent for registering their mark 'MRP' in respect of 'repair outfit for tyres' included in Class 12 and rejecting the opposition of the appellant
herein. The appeal T.A. No. 77/2003/TM/DEL (CM(M)/296/93) was filed by the counsel for the appellant and T.A. No. 208/2003/TM/DEL
(CM(M)/297/93) was filed by the appellants themselves.
The first respondent herein filed the application No. 438336 on 25.5.1985 for the registration of their Trade Mark 'MRP' in respect of 'repair outfit
for tyres' included in Class 12. The Registry raised certain objections and after compliance thereof, the said application was advertised in Trade Marks
Journal No. 943 dated 16.9.1988 at page 726. On behalf of the appellants, their counsel M/s. Kurian Associates filed a notice of opposition on
15.12.1988 in No. DEL-6074 raising the grounds that the appellants are having the registered Trade Mark 'MRF', having business in the name of
'MRF Limited' since 1961 and their trade mark is a registered one under No. 231949 in Class 12. The respondent's trademark is deceptively similar to
the appellant's trademark and the goods for which registration is sought are the same or of the same description. Hence, the registration of the
impugned mark is prohibited under Section 12(1) of the Trade and Merchandise Act, 1958, hereinafter referred to as the Act. Further, the impugned
mark applied for registration is a colourable imitation and/or closely resembles the appellant's mark and, therefore, the registration offends Section
11(a) of the said Act. The first respondent's claim as user is not valid and as such they are not entitled for concurrent registration under Section 12(3).
In all, the appellant's objection is that the registration of the impugned trademark of the respondent is prohibited under Sections 9, 11(a), 11(b), 11(e),
12(3) and 18(1) of the Act.
The respondents have filed their counter statement on 5.6.1989 denying all the allegations of the appellants made in their opposition. On 28.11.1989,
the appellants filed evidence in support of their opposition of trademark. On 24.1.1990, the first respondent filed evidence in support of the mark
applied for registration. The Registrar of Trade Marks heard the respective counsels of both the parties and ultimately disallowed the opposition No.
DEL/6074 of the appellants and directed the registration of the trade mark by allowing the first respondent's application No. 4383396 in Class 12. The
Registrar in his impugned order found that the registration of the impugned trademark is prohibited under Sections 11(a) and 12(1) of the Act since the
mark is almost identical with that of the appellant's mark 'MRF' and upheld the objection of the appellants. The Registrar of Trade Marks, however,
over-ruled the objection of the appellants so far it relates to Section 9 and Section 18(1) of the said Act. The mark was directed to be registered under
Section 12(3) of the Act finding that the first respondent is a bona fide user of their trade mark 'MRP' since 1978 and consequently they are entitled
for the benefit of the concurrent registration. Aggrieved by the same, the appellant, through counsel, filed the appeal No. CM(M) 296 of 1993 and
another appeal by themselves in CM(M) 297 of 1993 in the High Court of Delhi. Both the appeals were transferred to this Appellate Board pursuant
to Section 100 of the Trade Marks Act, 1999 and numbered as TA/77/2003/TM/DEL and TA/208/2003/TM/DEL respectively.
Since both the appeals are against the same order of the Registrar of Trade Marks dated 26.4.1993, the disposal of one would follow the result of
the other appeal. Hence, we take the T.A. No. 77/2003/TM/DEL for disposal.
The learned Counsel for the appellant Shri Anand vehemently contented that the Registrar has totally erred in relying upon the evidence of the first
respondent in respect of the user. The only evidence produced by the first respondent are the copies of the bill books and some original bills from the
years 1978 to 1986. In all these exhibits, the mark 'MRP' had been interpolated by using the carbon paper and as such, the same ought not to have
been accepted. Further, he contented that the Registrar having found that the impugned trademark of the first respondent offends Sections 11 and
Section 12(1), ought not to have permitted the registration, as there will be confusion and deception in the minds of the public as well as the traders.
We carefully considered the above contention of the learned Counsel of the appellant. The first respondent did not appear either in person or
through the counsel. From the records, we find that the first respondent wants to register their mark 'MRP' on the ground that their Trade name being
'Malhotra Retreading Products'. Though the learned Counsel for the appellant made some comments with regard to the trade name, we are of the
view that there is no merit in the same.
The question for consideration in this appeal is whether the order of the Deputy Registrar of Trade Marks directing the registration of the impugned
mark of the first respondent under Section 12(3) can be sustained. To claim the benefit as an honest concurrent user under Section 12(3) of the Act,
the burden lies on the person who claims the benefit. Moreover, Section 12(3) being an exception for the prohibition imposed under Section 12(1) for
the registration of the identical or deceptively similar trademark, unless the claimant establishes the use of the impugned trademark, he is not entitled
for the benefit of the registration. Hence, in considering this claim, primarily we have to consider the evidence adduced by the first respondent with
regard to their use of the impugned mark. The learned Counsel for the appellant contented that the bills produced by the first respondent as a piece of
evidence to prove the use of the impugned mark cannot be relied upon since all the bills are being Xerox copies and close scrutiny of the same further
establishes the interpolation of the impugned mark. He further contented that in the absence of original document, the Xerox copies of the bills cannot
be accepted. In order to satisfy ourselves, we perused the records. The pages 87 to 114 of the type set filed alongwith the appeal memo contains
documents relied upon by the first respondent. All the documents are only Xerox copies. Except two or three bills, in all other bills the word 'MRP', the
impugned trademark had been written separately below the description of goods. This clearly raises a doubt with regard to the genuineness of the
mentioning of the impugned mark. When the documents relied upon by the first respondent throw some doubt with regard to the genuineness, then, the
same cannot be accepted. The documents available at pages 110, 112 and 114 of the type set are the Gate Passes of the years 1984 and 1985. In
these Gate Passes, under the column 'Identification of Mark' and 'Sl. No. of the goods', it is mentioned 'MRP', the impugned trademark. In the Gate
Passes, there is a specific column to mention the 'Variety of goods'. Normally the trademark will be mentioned under that column. The column
'Identification Mark; and 'Sl. No.' is meant only to mention the Carton No. or the identification of the Carton, which is being carried. Here again, only
Xerox copies were produced. We find there is some merit in the contention of the learned Counsel for the appellant. When the documents relied upon
by the first respondent do not establish their plea of concurrent use, much less, honest concurrent use, in our opinion, the first respondent is not entitled
for the benefit of the registration. The Deputy Registrar of Trade Marks has over looked these facts. Hence, we are unable to agree with the
conclusion of the Deputy Registrar. Accordingly, the order of the Deputy Registrar is set aside.
Consequently, the application No. 438336 in class 12 of the first respondent for registration of the impugned mark 'MRP' is rejected. The appeal
T.A. No. 77/2003/TM/DEL is allowed. In view of allowing of the appeal filed by the counsel for the appellant, the other appeal T.A. No.
208/2003/TM/DEL filed by the appellant themselves is also allowed. However, there will be no order as to costs.