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Judgment
S. Jagadeesan, J
The appellant preferred this appeal against the order of the Deputy Registrar of Trade Marks, Mumbai dated 17.7.2002 rejecting the opposition of
the appellants for the registration of the trade mark of the respondent. The respondent sought for the registration in class 34 for Beedies under
application No. 545844 a label mark consisting of numeral '7' along with the words ""Special Beedi No. 7"" claiming user from July, 1987. To get over
the objection raised by the Trade Mark Registry, the respondent amended the area of the operation with the specification of goods amended to read as
Beedies for sale in the State of Madhya Pradesh"". The Trade Mark Registry accepted such amendment and advertised the application of the
respondent for acceptance under section 20(1) in the Trade Marks Journal No. 1139 dated 16.11.96.
The appellant herein filed the notice of opposition on 7.7.97 on Form TM 5 submitting their objections to the registration of the respondent's
impugned trade mark. Their objections are that the appellants are carrying on established business as manufacturers and dealers in Beedi and they are
the proprietors of the Trade Mark ""Sher Beedi No. 7"" ""Special Sher Bidi"" and ""Special Sher Beedi No. 7"". The appellants claimed that by the use of
their above said trade mark which is in extensive use, they enjoyed a huge reputation and goodwill in the market. The impugned trade mark of the
respondent being deceptively similar to the trade mark of the appellants, the same cannot be registered in view of the prohibition envisaged in terms of
section 11(a) read with section 12(1) of the Trade and Merchandise Marks Act, 1958. Further, the appellants opposed the registration on the ground
that the respondents use of the impugned mark is not honest and, therefore, the respondents cannot claim any proprietary rights as well as any
advantage out of its tainted use in terms of section 18(1) and section 12(3) of the said Act. The appellants also prayed for the exercise of the
discretion of the Registrar adverse to the respondents under section 18(4).
The respondents filed their counter-statement denying the various averments made in the notice of opposition. They further claimed that they are
using the impugned mark since 1987 honestly. The respondents further stated that the impugned mark is totally a different one from the trade mark
used by the appellants. Further the Word Special No. 7 and the numeral 7 has been disclaimed by the appellants. In view of such disclaimer it was
contended that the appellants are not entitled to maintain their opposition. So far as the other trade marks used by the appellants are concerned, they
are different and separately identifiable and there is no similarity as regard those trade marks.
The appellants by way of evidence filed an affidavit of Shri Sangal Chand Patel alongwith the Exhibits A to C. The respondents also filed an
affidavit of Shri Mohammed Ahmed, partner of the respondent company by way of evidence alongwith the Exhibits A to C. On behalf of the appellant
reply affidavit was filed. The respondent also filed a request on Form No. 16 for amending the statement of user to read as from the year '1986'
instead of '1987'. After hearing the learned counsel on either side, the Deputy Registrar under the impugned order overruled the objections of the
appellant and allowed the request in Form TM-16 and also directed the registration of the respondent's trade mark. Aggrieved by the same, the
present appeal has been filed by the appellants.
Mr. Vijay Shah, the learned counsel for the appellant contended that the appellants are the proprietors of the trade mark Sher Beedi No. 7 and
Special Sher Beedi as well as the label consisting of the word Lion No. 7. The appellants were using the label Lion No. 7 since 1905. Immediately
after the Trade and Merchandise Act came into force, the said Trademark was registered and as such the numeral 7 is fully associated with the
appellants. He further contended that both the trade marks of the appellant as well as the respondent would confuse the consumer because of the
common numeral 7. His contention is that taking into consideration of the consumers of beedi, they may not be in a position to differentiate the goods
with the letters inscribed therein and most of the consumers will go by the numeral 7 which may lead to confusion in the minds of the consumer. His
further contention is that the appellants as well as the respondents being in the same place, the respondent might have been fully aware about the
appellant's trade mark in respect of their goods. Hence, the use of the identical trade mark by the respondent cannot be termed as honest use. The
learned counsel for the appellant has further contended that the Deputy Registrar did not traverse the question of similarity and the impugned order is
very silent in this respect. He also contended that with regard to the exercise of the discretion, the Deputy Registrar did not give any reason for
exercising his discretion in favour of the respondent. The learned counsel for the appellant also contended that the Deputy Registrar ought not to have
allowed the request on Form 16 as the amendments sought for, goes to the root of the matter when the respondents claimed the user of the trade
mark from 1987 in their application. By way of amendment they have now claimed user from 1986 which totally makes a different claim without any
material evidence and as such the request of the respondent should have been rejected. Consequently, the impugned order should be set aside.
On the contrary, Mr. Ashish A. Agarwal, the learned counsel for the respondent contended that the Deputy Registrar has considered both the trade
marks of the appellant as well as the respondents and found that both are not identical and also found that the numeral No. 7 is disclaimed by the
appellants. When there is no similarity and when the Deputy Registrar had considered all the aspects and had given proper reasons for overruling the
opposition, then the appellate authority may not interfere with the same. He further contended that only if the lower authority has failed to consider
any of the aspects or if the impugned order is patently illegal or contrary to law, then only the appellate authority can interfere with such orders. No
such irregularity has been pointed out in this case and as such no interference is called for. By way of reply, the learned counsel for the appellant
contended that irrespective of the disclaimer, the appellant has got a vested right in respect of the numeral 7. When the appellants right is affected, he
is entitled to oppose the registration of identical trade marks or even if such numeral becomes a part of a trade mark.
We heard both the counsel. We will take up the plea of similarity first. The learned counsel for the appellant claimed that the word Lion No.7 which
was in use since 1905 had been registered in the year 1942 under No. 504. He claimed that the numeral 7 is fully associated with the appellants in
respect of their beedi in view of the word Bidi No. 7. He submitted that the respondents mark Special Beedi No.7 having the numeral 7 in the centre
of the label is deceptively similar to the trade mark of the appellant. So far as the Sher Beedi and the Special Sher Beedi No. 7 marks are concerned,
the learned counsel for the appellant contended that the No. 7 in the Special Sher Beedi No. 7 has special identification with regard to the appellant's
use. Even though the numeral 7 has been disclaimed it is not known to the general public as in the beedi labels no mention is made of the disclaimer.
So far as the label Lion No. 7 is concerned, the picture of the Lion is in the centre and the numeral No. 7 is on the right side corner of the label.
When that be so, we do not think that the consumer would refer to numeral 7 while purchasing the beedies manufactured by the appellant. Even
according to the learned counsel for the appellant most of the consumers of the beedi are poor and belong to the labour class. In such circumstances,
to identify with the Lion might have been easier for them instead of No. 7 since the picture Lion is more prominent than the numeral 7. Apart from
that, it is an admitted case that the appellant is not using the said trade mark now. However, we do not want to enter into the question of disclaimer in
view of the distinctiveness of the trade marks of the appellant as well as the respondents.
So far as the Special Sher Beedi No. 7 is concerned, here again, the appellants while referring to the same in the notice of opposition has referred
to it as Special Sher Bidi as the numeral 7 being insignificantly placed. When the plea of disclaimer is raised by the learned counsel for the respondent,
the learned counsel for the appellant did not dispute the same. But however, his contention was that irrespective of the disclaimer the appellant has got
a vested right to the said numeral 7. Here again, we have to point out that unlike the label of the respondent which has the numeral 7 prominently at
the centre, the appellants trade mark is prominent with the words 'Special Sher Beedi"". The appellant is using the trade mark Lion for beedies and
other marks like the Special Sher Beedi and Special Sher Beedi No.7 used by the appellants are all correlated with the word ""Sher Bidi"" and not
'numeral 7'. When the consumers desire to purchase the beedies of the appellant company they are likely to refer it to as Sher Beedi or the Special
Sher Beedi and there is no possibility of the consumer of the appellant to refer it to as numeral 7. From the above, it is also clear that the impugned
trade marks used by the respondent cannot be said to be similar in nature much less deceptively similar. Hence, we do not find any merit in the
contention of the counsel for the appellant. Hence, the objection raised under section 11(a) has no merit.
Coming to the question of honest use by the respondent, the only contention of the learned counsel for the appellant is that the appellant as well as
the respondents are from the same place, i.e., Jabalpur District and as such the respondent ought to have been aware about the use of the trade mark
with numeral 7 by the appellant and as such the statement of the respondent that he is honest user is patently a false statement. Consequently the
respondent is not entitled for any registration under the discretionary power under section 18(4).
We do appreciate the tenor of the arguments of the learned counsel for the appellant. The respondent claimed to have been using the impugned
trade mark from 1986 or even assuming from 1987. The statement of accounts have been furnished and documentary evidence has been produced
and the same had not been challenged. However, a critical argument was made by the learned counsel for the appellant with regard to the quantity of
the turnover and not with regard to the use of the trade mark by the respondent. When that be so, the appellant also might have come across the use
of the impugned trade mark by the respondent. When the appellant had not chosen to challenge the use of the impugned trade mark by the respondent
we are unable to appreciate the opposition raised by the appellant at this stage. We have earlier held that the rival marks are not similar. Hence, the
contention of the learned counsel under section 18(4) deserves on consideration. Coming to the last contention raised by the learned counsel for the
appellant that the Form TM 16 ought not to have been allowed by the Deputy Registrar, we are of the view that no illegality has been made out. The
respondent has stated that they have been using the impugned trade mark from 1986 and documentary evidence has been produced. As stated
already, the same was not challenged. By way of amendment the respondent had made a claim of user since 1986 and that be so, the Deputy
Registrar has considered this aspect and found that the license was issued to the respondent only in August 1986 and from then onwards, the
respondent had been using the said impugned trade mark. Perhaps the turnover for the year 1986 might have been insignificant one and as such in the
application for registration they have stated that they are using the trade mark since 1987 basing upon the turnover. Subsequently, the amendments
have been sought for on the legal advice which cannot be said to be mala fide. Hence, we agree with the Deputy Registrar and we do not find any
valid ground to interfere with the same. One other aspect which was noted is that when we went through the statement of account of the appellant,
periodically, there has been an increase in the turnover of the appellant in large scale. When that be so, the presence of the respondents beedi in the
market has not at all affected the trade of the appellant. In such circumstances, it cannot be said that there would be confusion in the minds of the
consumer with regard to the appellants goods. For all these reasons, we confirm the order of the Deputy Registrar and consequently the appeal is
dismissed. However, there will be no order as to costs.