M/s. Kaveri Piping Systems Pvt. Ltd. Represented By Its Director Rakesh Daga No. 12/3, 12/4 No. 41, Nayandahalli Mysore Road Bangalore-560039 vs Vinod Industries Represented By Its Proprietor Ramdeepkumar 25/3, (41/1&2) Mutha Chari Industrial Estate Mysore Road Nayandahalli Bangalore-560039 And The Registrar Of Trade Marks Trade Marks Registry I.P. Bhavan G.S.T. Road Guindy Chennai-600032

Prabha Sridevan, J

This is an appeal by the opponent to the registration of the mark ""Ganga Kaveri"" No. 1315836 in class 17. It was advertised before acceptance on

May 15, 2005 in the Trade Marks Journal 1330 Suppl (1). User was claimed since 5.4.2001. The application was dated 18.10.2004. The goods are

HDPE pipes. The opposition was disallowed. The mark has also proceeded to registration.

Two questions arise for consideration -

(i) whether the appeal should be allowed, and

(ii) whether because of the subsequent registration pending the appeal, the appeal has become infructuous.

The appellant is the proprietor of the trade mark ""Kaveri Pipes"" under No. 722253 in class 17 in respect of HDPE pipes. They have been in the

business of manufacturing of HDPE pipes for 20 years. The mark has been used by the appellant since 20.2.1985 in respect of the said goods. The

mark has acquired a good reputation and has come to be associated with the appellant's goods. According to the appellant the use of the mark Ganga

Kaveri by the respondent is likely to cause confusion. The goods are identical, and there is bound to be deception and confusion. The adoption of the

impugned mark is malafide and intended to slice away the profits of the appellant. On these and other grounds the appellant opposed the registration.

The respondent filed his counter statement. He said that a search was done by him in the Trade Marks office and only then he applied for

registration. The impugned mark has been used continuously and uninterruptedly since 5.4.2001. It has become associated with the respondent's

goods. The opponent's allegations are baseless, there is no similarity between the two marks. The respondent contended that the opposition be

dismissed.

5 . The Registrar considered the evidence and the pleadings and held that the objections are unsubstantiated and rejected the opposition.

No one appeared on behalf of the respondent, though notice has been served. We have heard the learned Counsel for the appellant.

7 . The learned Counsel for the appellant submitted that the adoption was clearly malafide, and that the appellant has successfully been defending and

protecting his mark from being infringed and that the certificates of the Chartered Accountants would show the volume of business. The learned

Counsel for the appellant submitted that the evidence filed by the respondent regarding sale of HDPE pipes related to his other mark RISHAAL

pipes. He submitted that there is not a piece of evidence regarding the impugned mark. He submitted that the weight given to the search report was

erroneous.

8 . The Registrar found there was honest and concurrent user, and that this was proved by the search report and the sales and held in favour of the

respondent. In opposition proceedings it is for the applicant/respondent herein to prove that he is entitled to registration. In this case we will examine

the facts and the evidence.

9 . Both the marks relate to goods which are identical, namely, HDPE pipes. The appellant is at No. 41, Nayandahalli, Mysore Road, Bangalore

560039. The respondent is at 41/1&2, Nayandahallai, Mysore Road, Bangalore. The respondent who is admittedly the subsequent user cannot plead

that he never knew of the existence of the appellant. The evidence shows that there are invoices showing sale of Ganga Kaveri Pipes, and all the

invoices bear the imprint of Rishal but the name of the impugned mark is written on the invoices.

The search report shows that the respondent has searched only for the key word Ganga, and so all the conflicting marks shown are Ganga, panch

ganga, akash ganga etc. This is not an honest search. It is tokenism which does not serve the intent and purpose of insisting upon a search. If the

search was for Ganga the report is unlikely to show Kaveri pipes.

A very crucial piece of evidence, which the Registrar has ignored is the letter written by the respondent to the appellant on 21.6.1992. Here the

respondent calls himself the authorized dealer for Rishi and Kaveri pipes. This letter also shows the emblem of the two elephants which is part of the

respondent's mark Rishal. So the respondent was the dealer of the appellant's Kaveri pipes at least in 1992. His case is that he had ""honestly"" and

Bonafide"" adopted the mark Ganga Kaveri in 2001, ""to distinguish"" his goods. It is a very unbelievable story, which speaks of lack of honesty. So the

mark must be removed.

The mark has been registered pending the appeal. The counsel submitted that the appellant should not be driven to filing a separate rectification.

We do not think it is necessary to drive the appellant who has succeeded, to file a rectification petition merely because the mark has been

registered pursuant to the impugned order. In fact in 2005 (30) PTC 104 (IPAB) - Sitaram Rawal and Madanlal Rawal, Appellant v. Subhash

Chander Gupta & Anr., Respondents a similar situation arose and it was held thus â€

Here again what would be the effect of registration of the subsequent mark of the first respondent especially during the pendency of this appeal

has to be considered. When once the subsequent registration of the trade mark in favour of the first respondent is only in the year 2000 that too during

the pendency of this appeal on the file of the Hon'ble High Court of Delhi, such registration is subject to the result of this appeal. As the appellant

succeed in this appeal, automatically the registration of the mark under application 591326 would stand cancelled on the principle that whatever is done

during the pendency of litigation before any Court of law, the validity of such action would depend upon the result of the litigation.

The registration was done only because of the order passed disallowing the opposition. Once that order has been set aside, all consequences flowing

from that order will also be set at naught. Otherwise the appealing opponent gains nothing but a paper victory by succeeding in the appeal. Any benefit

taken by a party by virtue of an order, cannot be retained by the party upon the modification, variation or reversal of the said order. Therefore we hold

that once the order directing the mark to proceed to registration is set aside in appeal, the mark that has obtained registration shall be removed from

the Register.

14 . We therefore allow the appeal OA/18/2010/TM/CH, set aside the order dated 6.7.2009 and consequently direct the Registrar to remove the mark

Ganga Kaveri"", bearing No. 1315836 in Class 17. The respondent shall surrender the certificate. Miscellaneous Petition No. 49/2010 is closed.