Palta Engineering Works vs Chinar Trust, Through Its Trustees, Mr. N.R. Dongre And The Registrar Of Trade Marks

Z.S. Negi, J

This appeal under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) is preferred against the order dated 17.6.2004

passed by the Assistant Registrar of Trade Marks, New Delhi whereby the application No. 556089 for registration of trade mark was refused and

opposition No. DEL-T-1161/53665 allowed.

The Appellant has stated that it is engaged in the business as manufacturer and merchant of Tyres and Tubes for Rickshaws and cycles since the

year 1957 and in August 1973 it adopted the trade mark USHA with conjunction of PALTA (label) in respect of the aforesaid goods. With a view to

have statutory right over the trade mark USHA with conjunction of PALTA (label), the Appellant filed application No. 556089 dated 8.8.1991 for

registration of the said trade mark USHA with conjunction of PALTA device of RICKSHAW (label) in respect of Tyres and Tubes for cycles and

Rickshaws. The application of the Appellant was advertised in the Trade Marks Journal No. 1191 dated 16.1.1999 at page 2172, upon which the

Respondent No. 1 filed the opposition No. DEL-T-1161/53665 on false and frivolous pleas. The matter was set down for hearing on 15.6.2004 and the

Respondent No. 2 heard the opposition to application for registration passed the impugned order dated 17.6.2004. Aggrieved by the impugned order,

the Appellant has filed the present appeal praying, amongst others, that order and decision both dated 17.06.2004 of learned Assistant Registrar of

Trade Marks, New Delhi be quashed and set aside.

On 25.11.2009, when the appeal was posted for hearing, the Appellant filed a miscellaneous petition stating that during the pendency of the appeal,

the subject matter was amicably settled between the Appellant and Respondent No. 1, by which the Respondent No. 1 have consented to make use of

the trade mark PALTA USHA with conjunction of PALTA (LABEL), which is as under:

It is further stated that in the facts and circumstances an amicable settlement between the Appellant and the Respondent No. 1, it is a fit case for this

Appellate Board to allow the instant miscellaneous petition by allowing to amend the trade mark as shown in para 3 of the miscellaneous petition and

the liberty be granted to the Appellant for filing of Form TM-16 with its prescribed fee in the Trade Marks Registry, New Delhi and directing the

Respondent No. 2-the Registrar of Trade Marks, New Delhi-to allow the TM-16 and application No. 556089 in class 12 be proceeded to registration

and certificate of registration be issued as early as possible.

We have heard counsel for both the parties and perused the miscellaneous petition. Learned Counsel for the Appellant urged that in view of the

facts stated in the miscellaneous petition, this Appellate Board be pleased to allow the petition as prayed for by the Appellant. Learned Counsel for the

Respondent No. 1 furnished reply dated 24.11.2009 of Respondent No. 1 through Mr. N.K. Anand, Advocate for it to the miscellaneous petition

during the course of hearing. It is stated in the reply to the Miscellaneous petition that the counsel submitted on behalf of the Respondent that the

petition be allowed without any order as to cost and the trade mark as amicably agreed be allowed to proceed for its registration.

Since the parties have come to an amicable settlement of the dispute, we do not consider it necessary to go into the merits of the present petition

and hence we are not expressing any view on the petition on merits. We also see no reason to reject the present miscellaneous petition especially

when the parties have agreed to amend the application for registration in a particular manner; we, accordingly, allow the miscellaneous petition and

remit the matter back to the Registrar of Trade Marks for considering in accordance with law the Form TM-16 which may be filed by the Appellant.

The present appeal stands disposed of in terms of above order. The parties are left to bear their own costs.