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Judgment
362 paragraphs · 8,724 wordsZ.S. Negi, J
The above appeal under Sub-section (2) of Section 109 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) is
directed against the order dated 21.10.2002 passed by the Assistant Registrar of Trade Marks, Delhi whereby he dismissed the opposition No. DEL-
8499 and allowed the application No. 479119 to proceed for registration. The Hon'ble High Court of Delhi has, in pursuance of Section 100 of the
Trade Marks Act, 1999, transferred the said appeal, being C.M. (M) No. 133 of 2003 on its file, to the Intellectual Property Appellate Board and the
same has been renumbered as TA/198/2003/TM/DEL.
The brief facts of the case leading to the appeal is that the Respondent No. 1 filed an application No. 479119 on 28.9.1987 for the registration of the
trade mark 'SHAKTI' (word per se) in class 09 in respect of T Vantenna, TV boaster, voltage stabilizers, TV feeder cable and battery charger
claiming user since 6.6.1975 and after examination of the application and consequent upon a hearing as granted to the Respondent No. 1, the same
was advertised, before acceptance, in the Trade Marks Journal No. 1065 dated 16.10.1993 at page 700. Thereupon, the Appellant filed the notice of
opposition dated 16.2.1994 opposing the registration of trade mark of the Respondent No. 1 on various grounds, inter alia, that the opponent/Appellant
is carrying on business as manufacturer and merchant of voltage stabilizers, electric current transformers, electric transformers, etc. for the last
several years; that the Appellant adopted the trade mark SHAKTI in respect of the said goods in 1966 and since then used the same in a stylised
manner; that the Appellant has spent huge amount of money on advertisement of its products and, due to continuous and extensive sales since 1966,
the trade and public associate the said trade mark with the Appellant and its goods only; that the Appellant is the registered proprietor of trade marks
under Nos. 311628-B and 360632, in class 09, in respect of transformers (electric) and voltage stabilizers and, out of these, the trade mark registered
under No. 311628-B is 'Shakti' in a stylised manner; that the trade mark of Respondent No. 1 under application No. 479119 is SHAKTI (word per se),
which is visually and phonetically identical to the Appellant's trade mark 'SHAKTI', therefore, the same is deceptively similar to the Appellant's
registered trade mark under No. 311628-B in class 09; that the goods covered under the said registration No. 311628-B are ""transformers (electric)
and voltage stabilizers"" which are the same goods or goods of the same description as that of goods for which registration is sought for by the
Respondent No. 1 as ""voltage stabilizers"" are included in the specification of goods by the Respondent No. 1; that the trade mark applied for is not
registrable under Section 9 of the Act, as SHAKTI is a personal name and it is also descriptive of the goods; that due to reputation of Appellant's
trade mark and because of high quality of its goods, tremendous publicity and sales since 1966, the use of same trade mark SHAKTI by the
Respondent No. 1 for the same goods or goods of the same description or goods having trade connection would be likely to cause deception or
confusion within the meaning of Section 11 (a) of the Act-which is bar to the registration ; that the registration of the trade mark of Respondent No. 1
is disentitled to protection in a court of law and as such the registration is prohibited under Section 11 (e) of the Act; that in view of the Appellant's
registered trade mark No. 311628-B, Section 12(1) of the Act is a bar to the registration applied for; that due to the said registration and prior use, the
Appellant is the proprietor and hence, the Respondent No. 1 cannot be the proprietor of the trade mark applied for within the meaning of Section 18(1)
of the Act; that the use claimed by the Respondent No. 1 is totally denied, as it is false and dishonest and due to dishonest adoption, the use of the
trade mark of the Respondent No. 1 is dishonest and once adoption is dishonest from its inception, the impugned trade mark is not registrable under
Section 12(3) of the Act and that in view of the circumstances explained above, this is a fit case for the Registrar to exercise his discretion under
Section 18(4) of the Act in favour of the Appellant.
The Respondent No. 1 herein filed the counter-statement on 4.1.1995 denying that the Appellant is carrying on business as manufacturer and
merchant of voltage stabilizers, electric current transformers, electric transformers, etc. for the last several years. It is denied that the Appellant, as
claimed by it, is using the mark since the year 1966 or has advertised its mark extensively. The notice of Opposition is incorrect, wrong and denied and
the Respondent No. 1 does not admit the registration of the Appellant. It is submitted that the mark of the Appellant is registered only in respect of
transformers and voltage stabilizers, though the said registration is not admitted by the Respondent No. 1. The Respondent No. 1 claimed the right to
registration of its mark SHAKTI under Section 12(3) of the Act as it has been using the said mark honestly and concurrently over almost 20 years
since the year 1975. It is denied that the Appellant is the proprietor of the mark whereas the fact is that it is the Respondent No. 1 which is prior in
point of time to that of the Appellant and hence objection under Section 18(1) of the Act is also not applicable. In paragraph 14 of the counter-
statement, it is submitted that the Respondent No. 1 has honestly adopted the mark SHAKTI. While explaining as to how the Respondent No. 1
adopted the mark, it is stated that in fact Mr. Pushpinder Kumar's father and his uncle started a bakery under the name and style of SHAKTI
BAKERY in Chandigarh, which is still carrying on business. Thereafter, the father of Mr. Pushpinder Kumar started another concern under the name
of Jaishakti Radio Corporation which had been manufacturing transistors under the mark Shakti since the year 1965 and the Respondent No. 1 started
on or about 6th June 1975 another concern under the name and style of NEW SHAKTI RADIOS, Patiala and has ever since then been
manufacturing the goods claimed in the application. The Respondent No. 1 claims to have been using its mark over almost 20 years since 1975; has
been widely advertising its products and have a huge sale, hence it is entitled to registration of its mark under Section 12(3) of the Act. It is submitted
that in view of the circumstances as explained above, it is a fit case for refusal of the opposition and acceptance of the application for registration and
the exercise of Registrar's discretion under Section 18(4) of the Act in favour of the Respondent No. 1 and against the Appellant.
The Appellant filed the evidence in support of the opposition by way of an affidavit of Shri Man Mohan Mehra, Managing Director of the Appellant,
along with several kinds of exhibits as A-1 to 58 (consisting, inter alia, of copies of the two SHAKTI trade mark registration certificates and their
renewals, the pricelists from 1966, literature of Appellant under the trade mark SHAKTI, copies of various agreements, letters, DGS and D rate
contracts of various years, performance statements, copy of notice dated 31.8.1997 and it's A D issued by Appellant to the Respondent No. 1 and
order of the Copyright Office rejecting the application of the Respondent No. 1 relating to the trade mark SHAKTI on the objection by the Appellant;
B-1 to 39 (consisting, inter alia, of letter and advertisement bills and advertisement material from 1972 onwards) and C-1 to 166 consisting, inter alia,
of copies of several bills of sales conducted by the Appellant relating to the period from 1967 onwards. The Respondent No. I filed the evidence in
support of the application under Rule 54 of the Trade and Merchandise Marks Rules, 1959(hereinafter referred to as the Rules) consisting of an
affidavit of Mr. Pushpinder Kumar attaching therewith some exhibits- a copy of the said affidavit is filed as Annexure 'E'. The Petitioner/Appellant
filed the evidence in reply under Rule 55 of the Rules consisting of affidavit of Mr. Man Mohan Mehra. After the completion of the evidence the
matter was finally fixed for hearing on 5.7.2002, when both the parties argued the case and the Respondent No. 2 passed the impugned order dated
21st October, 2002 whereby he dismissed the opposition of the Petitioner/Appellant and allowed the application of the Respondent No. 1 to proceed
further for registration.
Aggrieved by the impugned order the present appeal has been preferred on the grounds, inter alia, that the impugned order is illegal, arbitrary and
against the facts of the case; that the very adoption of the impugned trade mark by the Respondent No. 1 was tainted with dishonesty with the sole
purpose of trading upon the goodwill and reputation of the Appellant and no plausible explanation has forth come from the Respondent No. 1 (except a
sham and after-thought explanation) as to why it adopted the identical trade mark SHAKTI in respect of the same goods for which the Appellant has
been using the trade mark openly, continuously and extensively since 1966 and in such a case no amount of user can cure the tainted adoption; that the
present case is the case of triple identity where the goods of the rival party is same, the class is same and the purchasers of the goods are same and
as such the application ought to have been refused for registration; that the Respondent No. 1 has been misrepresented that its trade mark is
registered and, as per various judgments where the applicant made such misrepresentation, the application for registration of trade mark is not entitled
to registration on this ground alone; that the Respondent No. 2 has completely ignored the voluminous evidence filed by the Appellant in support of the
opposition; that the Respondent No. 1 was disentitled to protection in the court of law as it was infringing the Appellant's prior used and prior
registered trade mark; that the Respondent No. 1 was not entitled to concurrent registration under Section 12(3) of the Act as the very adoption of the
trade mark by it was tainted and dishonest; that the Respondent No. 2 misdirected himself while holding that the Respondent No. 1 was the proprietor
of the impugned trade mark by ignoring that it having adopted the impugned mark with dishonest intention of trading upon the goodwill and reputation
of the Appellant and that the Respondent No. 2 should have exercised the discretion vested in him under Section 18(4) of the Act in favour of the
Appellant as the Appellant has made very strong case in its favour. The adoption of the impugned mark by the Respondent No. 1 being dishonest and
the Respondent No. 1 having misrepresented that its trade mark as already registered, the Respondent No. 1 is disentitled to registration and such
registration would result in the impurity of the Register of Trade Marks.
The Respondent No. 1 filed its reply on 26.6.2009, generally denying the material objections raised in the appeal and stating that the Appellant failed
to comply with the requirement of Rule 53 of the Rules, hence the matter was proceeded under Sub-rule (2) of Rule 53 and copy of abandonment
order was supplied to the parties. Subsequently, the Respondent No. 2 sent another letter dated 19.7.1995 to the Respondent No. 1 intimating that the
evidence under Rule 54 of the Rules has been taken on record. Aggrieved, the Respondent No. 1 inspected the file and filed a C.M. (Main) No. 521
of 1995 in the High Court of Delhi praying that the letter regarding taking the evidence under Rule 54 of the Rules on record be quashed. The Hon'ble
High Court also, after hearing the parties, disposed of the petition on 16.4.1996 by passing order that ""For the reasons stated above, the order
proceeding further with the opposition No. DEL 8499 is set aside. Respondent Nos. 1 to 3 shall act on the basis of the order dated 29.6.95 and would
register the trade mark of the Petitioners. Order accordingly."" The review petition [CM. 165 of 1997 in C.M. (M) No. 521 of 1995] filed against this
order was disposed of by the Court on 16.4.98 observing that the Court see no reason to recall that order. Petition for Special Leave to Appeal (Civil)
No. 12725 of 1998 was filed before the Supreme Court; the leave was granted by order dated 15.1.1999 and the Hon'ble Apex Court while granting
the leave set aside both the orders (order dated 29.6.95 passed by the Deputy Registrar of Trade Marks, Delhi and the impugned order dated
16.4.1998 passed by the High Court of Delhi) as not sustainable and remitted the matter back to the Registrar of Trade Marks, Delhi for disposal in
accordance with law.
Pursuant to the above referred directions of the Supreme Court, the matter was set down for hearing and, after hearing the matter on 29.9.1999,
the Assistant Registrar by order dated 16.3.2000 allowed the opponent's evidence (by way of their affidavit dated 9.7.1995) to be taken on record and
further ordered that the applicant may file their evidence in support of application in accordance with the provisions of Rule 54 of the Rules. The
Respondent No. 1 in the meantime filed an interlocutory petition dated 16.7.2001 seeking to file its evidence in support of application for registration
and the said petition was, after hearing on 6.9.2001, allowed subject to payment of cost to the Appellant/opponent. Ultimately, the Assistant Registrar
heard the matter on 5.7.2002 and passed the impugned order dated 21.10.2002-the subject-matter of the present appeal. The Respondent No. 1 in its
reply dated 21.6.2009 has stated, amongst others, that keeping in view of the order dated 16.4.1998 of the High Court, the order of the Assistant
Registrar passed on 21.10.2002 in the opposition, which is the subject matter of the present appeal, has gone far beyond the High Court of Delhi as the
only option left to the Respondent No. 2 was to grant registration to the Respondent No. 1 as had been directed by the Hon'ble High Court. It is
averred that the Respondent No. 1 filed evidence under Rule 54 of the Rules before the Respondent No. 2 showing 26 years of user and crores of
rupees sale as setout in paragraph 5 of the affidavit under that rule. It is further stated that the application of Respondent No. 1 is dated 28.9.1987
claiming user of the mark from 6.6.1975 that is to say having more than 12 years user on the date of making application for registration and as such
the Respondent No. 1 claims right of concurrent registration under Section 12(3) of the Act. The Respondent No. 1 while reiterating its explanation
for adoption of the impugned mark (as earlier setout in paragraph 14 of counter-statement) has submitted that the above referred fact of adoption of
the mark SHAKTI has been explained by the Respondent No. 1 in evidence before the Registrar of Trade Marks. The Respondent No. 1 has denied
that the registration of its mark is hit by section 9 of the Act by retorting back on the Appellant that if the Respondent's mark is the personal name or
descriptive of the goods as is alleged by the Appellant then the mark so got registered by the Appellant is also not registrable as a trade mark on the
same grounds and as such the same is liable to be rectified/removed from the register.
The Appellant on 9.9.2009 filed rejoinder generally reiterating the objections raised in the appeal and also raising preliminary objections in particular
that the reply/counter-statement has not been filed in Form 1 as provided under Rule 10 (1) of the Intellectual Property Appellate Board (Procedure)
Rules, 2003 [in short the IPAB (Procedure) Rules] accompanied with the requisite fee and as such the same cannot be taken on record. The next
such objection is that the Respondent No. 1 has filed several Annexures consisting of invoices, etc. and most of the copies of invoices clearly indicate
the subsequent addition of the impugned trade mark, therefore, the Respondent No. 1 be directed to file the originals of the documents in accordance
with the provisions of Rule 12 of the IPAB (Procedure) Rules. The Appellant has also filed a miscellaneous petition seeking direction to the
Respondent No. 1 to file the original documents. The said miscellaneous petition has not been taken on record for want of removal of defect intimated
to the Appellant by the Registry vide its defect notice dated 15.10.2009.
The appeal came up before us for hearing on 29.10.2009 when Shri N.K.
Manchanda, advocate appeared on behalf of the Appellant and Shri H.P. Singh, advocate appeared on behalf of the Respondent No. 1. Shri N.K.
Manchanda, learned Counsel for the Appellant, while referring to paras 1 and 2 of the preliminary objections in the rejoinder contended in short that
the Respondent No. 1 has not filed the counter-statement in accordance with the provisions of Rule 10 (1) and has also filed several documents
consisting of copies of invoices showing interpolation therein of trade mark SHAKTI and such copies are required to be verified for which the
Respondent No. 1 be directed to file the original documents in accordance with the provision of Rule 12 of the IPAB (Procedure) Rules. On the other
hand learned Counsel for the Respondent No. 1 while disputing with the preliminary objections submitted that the counter-statement was filed in Form
1 and the Registry, having noticed only one defect viz. that the affidavit filed with it was not stamped, called upon the Respondent No. 1 to rectify the
defect and accordingly the defect was duly removed by the Respondent No. 1 by filing the stamped affidavit on 8.10. 2009. Further, the filing fee has
been remitted by the Respondent No. 1 by way of a draft of Rs. 2000, even though that defect was not intimated to Respondent No. 1 by the
Registry. Regarding non-filing of originals of the documentary evidence by the Respondent No. 1, the learned Counsel submitted that it is an after
thought plea as no such objection was raised before the Registrar of Trade Marks and as such the objection was waived by the Appellant. From the
available records we have noticed that the objection that the reply/counter statement has not been filed in accordance with the provision of Rule 10 (1)
of the IPAB (Procedure) Rules is not sustainable in view of the fact that the Respondent No. 1 had removed the defects. Even the filing fee which
was not paid due to over sight had been paid by the Respondent No. 1. From the perusal of records received from the Registry of Trade Marks,
including the impugned order, we failed to find any objection raised by the Appellant that the Respondent No. 1 has not filed the originals of the
documents as the alleged interpolated invoices were filed before the Registrar as evidence. The objection of the Appellant that the Respondent No. 1
has filed several Annexures consisting of copies of invoices etc. is raised without any basis as upon verification we noticed that almost all the copies
of invoices are already on record-forming part of record of the Registry of Trade Marks. The Appellant had thus waived the objection of non-filing of
originals before the Registrar. The Appellant though has filed a miscellaneous petition seeking direction to the Respondent No. 1 to file the original
documents, but the same has not been taken on record for want of removal of defect before the date of hearing on 29.10.2009 by the Appellant. The
Appellant did not utter a word during the course of hearing about such miscellaneous petition filed by it or, sought for grant of time for removal of the
defect notified to it by the Registry. Hence, we over rule the preliminary objections raised by the Appellant in relation to rules 10 (1) and 12 of the
IPAB (Procedure) Rules.
Learned Counsel for the Appellant contended that the Respondent No. 1 has not relied upon the evidence allegedly filed by it for the period of pre
advertisement of the application and copy thereof was not sent to the Appellant and as such the Respondent No. 2 has wrongly relied upon the ex
parte decision of acceptance of the application by the Registry at the pre-advertisement stage on the basis of the alleged evidence of Respondent No.
1 filed for the period of pre advertisement of the application. He submitted that the Respondent No. 2 was duty bound to look into the opponent's
objection under Section 9 of the Act independently in the opposition proceedings. He submitted that the mark SHAKTI is a personal name and also
descriptive of the goods of Respondent No. 1 and as such the said mark is not registrable under Section 9 of the Act. On the other hand, Shri H.P.
Singh, learned Counsel for the Respondent No. 1, submitted that Respondent No. 2 has taken into consideration the provisions of Section 9 of the Act
independently and after looking into all aspects of the case has rightly dismissed the Appellant's opposition with further direction to grant registration to
the Respondent No. 1. He submitted that the Respondent No. 2 has taken into consideration all the relevant evidence, including pre-advertisement
stage evidence. A trade mark acquires distinctiveness by virtue of its use and at the time of making application for registration, the Respondent No. 1
had long user of more than 12 years and as such by that time the impugned mark had become distinctive. He further submitted the Appellant has not
made clear as to how the impugned mark is hit by Section 9 of the Act, except a bald statement that the impugned mark is personal name and
descriptive of the goods. There is nothing on record to substantiate the allegation that SHAKTI is a personal name and descriptive of the goods. He
wondered, if the mark applied for by the Respondent No. 1 is personal name and descriptive of the goods, then why the same argument should not
recoil to the Appellant's registered trade mark and the goods covered by it and consequently the similar/identical mark got registered by the Appellant
becomes liable to be removed from the Register of Trade Marks. By the impugned order, the Respondent No. 2 while disagreeing with Appellant's
submission that the mark applied for by the Respondent No. 1 was not distinctive, observed that, with regard to opponent's objection under Section 9
of the Act, he was of the opinion that the Respondent No. 1 had filed substantial documentary evidence of distinctiveness in respect of the user of the
mark since 6.6.1975 and on the strength of that evidence the application was accepted. While not finding any logic in the objection raised by the
opponent, the Respondent No. 2 rejected the objection and went on to observe that when the opponent's mark was accepted by the Registry on the
strength of user why the applicants are not entitled for registration. From the observations made and conclusion arrived at by the Respondent No. 2, it
is quite clear that the applicant had successfully discharged the onus upon it and had satisfied the Respondent No. 2 that the trade mark applied for
was not objectionable and was capable of registration. From the perusal of the record of the Trade Marks Registry it is noticed that the Respondent
No. 1 had adduced adequate documentary evidence to prove the user and reputation of its mark. The documents comprised of affidavit dated
7.9.1992 of Mr. Pushpinder Bansal, one of the partners of the Respondent No. 1, setting out therein the sales figures for the years 1975-76 to 1989-90
and annexures thereto, namely, copies of Electronics for you and Electronics Development for the years 1980, 1981 and 1985-86 which contain
advertisement of trade mark of the Respondent No. 1, copies of invoices from 21.8.1980 to 15.3.1992, copies of trade inquiry letters received from the
prospective customers, copies of newspaper advertisements published in different newspapers published from different States/Cities from 12.9.1988 to
24.9.1991, copies of handbills, posters and souvenirs and copy of certificate of appreciation issued by Government of Punjab in appreciation of
participation of Respondent No. 1 in India International Trade Fair, 1981. It also transpires from the said record that the mark was accepted for
advertisement (perhaps on the basis of above referred evidence), before acceptance, only after hearing granted to the Respondent No. 1. Except a
bald objection that the mark applied for is personal name and also descriptive of the goods, there is no material on record to substantiate the allegation
that the mark of the Respondent No. 1 is personal name and also descriptive of goods. The objection that acceptance of pre-advertisement evidence
being ex parte was not raised in the pleadings or at the time of hearing as the Respondent No. 2 has not made any mention in the impugned order that
the Appellant had raised the objection before him during the course of hearing that the acceptance of application on the alleged pre-advertisement
evidence of Respondent No. 1 was in any case ex parte as the Respondent No. 1 had not relied thereupon. This is a question of fact which ought to
have been pleaded before the Respondent No. 2.
The position being that, the Appellant cannot be allowed to raise this objection at this stage. The general principle is that while considering application
for registration of trade mark the evidence adduced in support of application from the date of adoption/use to the date of filing of application is to be
taken into consideration. We do not see any reason as to why the evidence for the pre advertisement stage should not be taken into consideration,
especially when the opponent had a fair opportunity to raise objection that it should in the first instance be supplied with the copies of the evidence for
perusal and opportunity be given for rebuttal of the evidence. Here, the Appellant has failed to do so.
Besides this, the register of trade marks, including the application for registration, evidence, if any, filed in connection therewith and all correspondence
relating thereto is open for public inspection [See Chapter 4, para 16 of the book 'Law of Trade Marks and Passing off' (Fifth Edn.) authored by P.
Narayanan] but the Appellant has failed to avail of this facility either. We are of the opinion that the Respondent No. 2 has come to the right
conclusion against the objection raised under Section 9 of the Act and such conclusion is not required to be interfered with by this Appellate Board.
The next issue is whether the class, goods and the purchasers of the goods of the rival parties are same. Learned Counsel for the Appellant
contended that the impugned mark 'SHAKTI' (word per se) of the Respondent No. 1 is visually and phonetically identical with the Appellant's trade
mark 'SHAKTI' registered under No. 311628B and therefore the impugned trade mark of the Respondent No. 1 is deceptively similar to cause
deception and confusion amongst the consumers. Relying on the judgment in Aktiebolaget SKF v. Rajesh Engineering Corporation, 1996 PTC 160
Del. he submitted that the impugned trade mark is likely to cause deception and confusion in the minds of customers. Further, the description of goods
specified(voltage stabilizers) in the impugned application of the Respondent No. 1 is same with the voltage stabilizers of the Appellant and the other
goods specified in the application are goods of same description in respect of which the aforesaid registration has been obtained by the Appellant, the
goods of both the parties fall under the same class and the purchasers of the said goods of the rival parties are same. In view of the Appellant's
aforesaid registered trade mark (advertised in the Trade Marks Journal No. 752 dated 1.10.1980 at page 617), Section 12(1) of the Act is bar to the
registration of the impugned mark. Learned Counsel for the Appellant relying upon the order passed by this Appellate Board in Fena Private Limited
v. Nipa Chemicals Pvt. Ltd. and Ors. 2004 (28) PTC 371 (IPAB) submitted that where the objections raised under Sections 11(a) and 12(1) of the
Act are sustainable, the registration of trade mark should be refused. Learned Counsel for the Respondent No. 1 by drawing our attention to a large
number of copies of news papers advertisement published from different cities displaying the trade mark of Respondent No. 1 submitted that the
Respondent No. 1 has widely advertised its mark and sold its goods hughly whereas the Appellant does not have any publicity or sale since year 1966
as it never advertised its trade mark anywhere to the knowledge of the public and therefore invoking of Section 11(a) of the Act is of no consequence.
The Respondent No. 1 has been continuously and concurrently using the impugned mark for long and as such it is entitled to registration under Section
12(3) of the Act. He further submitted that in view of these circumstances, invoking Section 12(1) of the Act is of a futility. Learned Counsel for the
Respondent No. 1 submitted with force that Order of this Appellate Board passed in Fena Private Ltd.'s case(supra), the issue of concurrent
registration was not involved and hence the ratio of judgment to refuse registration of the impugned mark is not applicable to the present case. Before
looking at the principles propounded by the Courts for determining whether the use of the mark applied for is likely to cause deception and confusion, it
would be appropriate if we briefly look at the provisions of Sections 11 (a) and 12 (1) of the Act. Section 11 (a) lays down that a mark, the use of
which would be likely deceive or cause confusion shall not be registered as a trade mark. Section 12 contains a prohibition of registration of identical
or deceptively similar trade mark and for consideration of the issue under section 12(1) of the Act, two points arise, firstly, whether the rival marks are
identical or deceptively similar and secondly, whether goods under the rival marks are the same or are of the same description. It is a well settled
proposition that while considering the similarity or otherwise of the marks, they have to be compared as a whole. Also to determine whether the two
marks are deceptively similar the test of an average person with imperfect recollection has to be applied and the authority has to visualise, if a
customer who may be an ordinary citizen and who may want to purchase a product would be confused. The question whether the two marks are
likely to give rise to confusion or not is a question of first impression as has been held by the Apex Court in Corn Products Refining Co. v. Shangrila
Food Products Ltd. AIR 1960 SC 142. In Fena Pvt. Ltd.'s case (supra), the applicant's trade mark was 'NIP' (word per se) whereas the Respondent's
trade mark was 'NIPA'(word per se) with the only difference between the two marks was the suffix letter'A'. By taking into consideration of the
above referred decisions that the trademark has to be compared as a whole and that the first impression counts more in deciding the case and also in
view of the fact whether an average person with imperfect recollection would be confused, the Appellate Board held that the rival marks were
visually, phonetically and structurally deceptively similar. As regards the goods, the Respondent's goods comprised of 'chemical substances for
cleaning metal surfaces', whereas the Appellant's goods comprised of 'detergents, soaps and cleaning power' which had been registered under Nos.
306410 and 430 691. After careful consideration of the arguments of the counsels and the evidence adduced to establish user and reputation of their
marks, the Appellate Board found that both the goods were of the same description and hence, the Appellant's objection under Section 12(1) was
sustained. While dealing with Section 11(a) of the Act, which provides that a mark the use of which would be likely to deceive or cause confusion
shall not be registered as a trade mark, the Appellate Board observed that the Appellants had filed evidence of use of the trade mark 'NIP' during the
period from 1976 to 1991, filed documentary proof such as invoices, trade correspondence, advertisements etc., to establish use and reputation of their
mark. It was noticed that the Appellants had extensively used their trade mark 'NIP' in respect of detergents, soaps and cleaning powder. As the
Appellate Board had already held that the rival marks were deceptively similar and the goods were also goods of the same description, it sustained the
Appellant's objection under Section 11(a) as they had established the use and reputation of their mark. In the present case, both the marks when
compared as a whole are visually and phonetically deceptively similar. If one. In the present case looks at the marks, the first impression he gets is
that both the marks are one and the same. The goods in respect of which registration has been obtained by the Appellant under No. 311628B is
transformers(electric) and voltage stabilizes and Respondent No. 1 has sought for registration in respect of TV antenna, TV boaster, voltage
stabilizers, TV feeder cables and battery chargers. Though goods of both the parties fall under the same class but only voltage stabilizers is common in
both and other goods are not same or of same description. In other words the degree of likelihood of causing confusion or deception by the use of
trade mark of Respondent No. 1 will be negligible (in respect of voltage stabilizers). In the era of inbuilt stabilizers, it is difficult to visualise that there
will be considerable degree of confusion or deception in the minds of customers if mark of Respondent No. 1 is used in respect of goods for which
registration is sought for. It is worth noting that there is nothing on record to show or suggest that there was any single instance of confusion or
deception till now caused by the use of Respondent No. 1's mark since the year 1975 nor any such instance has been brought to our during the course
of arguments. Whatever will be the degree of confusion or deception the impugned mark is likely to cause, we cannot turn totally a blinds eye to
sustain the objection raised by the Appellant. We, therefore, sustain the objections raised by the Appellant under Section 11(a) and 12(1) of the Act.
Though in our opinion there is likelihood of causing some degree of confusion or deception by user of the mark of Respondent No. 1, the same is not
enough to override the provisions of Section 12(3) of the Act. It has been stated by learned author Dr. S. Venkateswaran in his book 'The Law of
Trade Marks and Passing-off' that a trade mark may be registered on evidence of honest concurrent use, notwithstanding that it might deceive or
cause confusion under Section 11(a) so that Section 11 does not override the provisions of section 12(3) of the Act. Our above view gets fortified by
the documentary evidence on record to show that the advertisement of the impugned mark of the Respondent No. 1 has been published in 1989 in
Rajasthan Patrika (Hindi and English) from Bikaner, Jodhpur, Kota and Udaypur in the State of Rajasthan but the Appellant appears to have not
initiated any action to protect its trade mark because it might not have affected the Appellant's trade as has there been any instance of confusion or
deception, the Appellant would have taken some tangible action against the Respondent No. 1. Now having sustained the objections of the Appellant
under Sections 11(a) and 12(1) of the Act, we would see whether the Respondent No. 1 succeed under Section 12(3) of the Act as even if the
Appellant succeeded under Sections 11(a) and 12(1), the Respondent No. 1 may still succeed under Section 12(3)because it overrides the provision of
Section 11(a) and also it is an exception to Section 12(1) of the Act.
Learned Counsel for the Appellant contended that the Respondent No. 1 was not entitled to the concurrent registration under Section 12(3) of the
Act as the basic requirement of that provision is honest adoption of the trade mark which is missing in the present case. The very adoption of the trade
mark SHAKTI by the Respondent No. 1 was tainted with dishonesty. He pointed out that the High Court of Delhi in Ansul Industries v. Shiva
Tobacco Company 2007 (34) PTC 392 (Del.) held that honesty of adoption at the initial stage itself has to be established to take benefit of concurrent
registration under Section 12(3) of the Act. Learned Counsel relied on the order of this Appellate Board in Sushil Jindal Trading as M/s. Sushil
Electricals v. Jindal Electricals and Anr. 2008 (37) PTC 145 (IPAB) to submit that a mere concurrent use is not sufficient for the purpose of Section
12 of the Trade Marks Act, 1999 [corresponding to Section 12(3) of the Act] but the concurrent use should be honest concurrent use and the honesty
of adoption and user is the sine quo non for the application of Section 12 of the Trade Marks Act, 1999. Learned counsel for the Appellant submitted
that the well settled principle for securing benefit of honest and concurrent user is that the user must be for a period prior to the date of application and
the party is not entitled to take advantage of user for over several years merely because the application for registration remains pending before the
Registrar and user evidence subsequent thereto is not relevant. In support of this submission, the learned Counsel relied upon the decision in Charak
Pharmaceuticals v. M.J. Exports Pvt. Ltd., IPLR-1003, Girnar Exports v. Fresh Tea Processor, PTC-2007 (35), GTC Industries Ltd. v. ITC Ltd.,
IPLR-1995 and Raj Wadhwa v. Glaxo India Ltd., PTC- 2005 (25). By vehemently refuting the allegation that the adoption of mark by the Respondent
No. 1 is tainted with dishonesty, learned Counsel for the Respondent No. 1 submitted that the provision of Section 12 (3) of the Act has rightly been
invoked by the Respondent No. 2 and he has considered all the case law cited before him by both the parties. He further submitted that the
Respondent No. 1 had explained the circumstances leading to the honest and bona fide adoption of its mark to the satisfaction of Respondent No. 2
and he, after dealing with the case laws in General Motor Holden's Limited v. The Premier Automobiles Ltd. Bombay, 1983 PTC 350 Bom. and
Sawalram Harikishan, Calcutta v. Roopam, Bombay, 1987 PTC, as cited by the Respondent No. 1 in support of its claim to right to registration under
Section 12(3), observed thus:
In this regard I do not agree with the opponents. The applicants are very much entitled for registration under Section 12(3) of the Act as they have
adduced substantial documentary evidence in support of their claim. Therefore, opponents objection on this count is also rejected."" He further
submitted that there is no dispute that the evidence for user should pertain to the date of application, but the Appellant has failed to pin point any
evidence taken into consideration by the Respondent No. 2 pertaining to the period subsequent to the date of application and such a general submission
is not sustainable. Section 12(3) is an evident exception to Section 12(1) prohibiting the registration of a mark identical to the mark already registered.
The circumstances under which one can claim registration under section 12 (3) of the Act has been explained by Dr. S. Venkateswaran in his book
'The Law of Trade Marks and Passing-off' [Fourth Edn. 1963 (Reprint 1999)] at pp. 267-68:
Concurrent use how acquired-The right to registration under Section 12(3) as concurrent user may be claimed in the following circumstances: (1)
Where a person bona fide uses a mark and has built up a valuable trade under the mark generally without any knowledge of the prior use of the same
or similar mark by another person in respect of the same goods ; (2) where the goodwill of a business becomes divided as in a dissolution of
partnership, or under the provisions of a will and there is consequently an apportionment of the trade mark among two or more persons carrying on the
business; and (3) where the facts of the case fall under Section 33 of the Act."" Learned author at page 272 in the same book states that ""Section
12(3)overrides the generality of the prohibitions laid down by Sections 11 and 12(1),and it is an enabling provision. So that, a mark which falls under
Section 12(3)""in addition to being one of which it is impossible to predicate that there is no reasonable probability of its causing deception, is also one in
respect of which, by the imposition of limitations and conditions, that risk of deception cannot be altogether removed (see Alex Pirie and Sons Ltd.'s
Appl., (1932) 49 R.P.C. 195 at p.217; London Rubber Co. Ltd. v. Durex Products, Inc., A.I.R. 1959, Cal. 56 ....).
In Ansul Industries case (supra) the Court observed that ""Honesty of adoption at the initial stage itself has to be established to take benefit of
concurrent registration under Section 12(3) of the Act. If the user at the inception is dishonest, subsequent concurrent user will not purify the dishonest
intention.
Commercial honesty at the initial stage of adoption is required. What is protected is innocent use of a mark by two or more persons unknown to each
other and unaware of the mark used by the other. Adoption must be honest, bona fide and without any knowledge on the part of the adopter. The onus
and burden is on the Defendant to show that the user and adoption at the initial stage was honest."" In Sushil Jindal's case (supra), it was observed that
'Since the adoption of mark is not honest no amount of user can cure it. This Appellate Board in the case of Sudarsan Trading Co. Ltd. (supra) has
observed thus: ""The legal principles in relation to the availability of Section 12(3) are well settled and any exercise of the power by the Registrar for
granting honest concurrent use under Section 12(3) is to be given in exceptional cases where honest and concurrent use has been proved by the
applicant to the hilt. Here there is a position of ""triple identity"", namely, same goods, identical or substantially identical mark, and same area of use.
However, the principles of law as contained in Section 12(3)is an exception to the general principles of trade mark law as explained above. The
following propositions have been laid down in various cases for entitlement of honest and concurrent use:
(i) The honesty of adoption and use.
(ii) The quantum of concurrent user shown by the applicant having to duration, area and volume of trade.
(iii) The degree of confusion likely to follow from the resemblance of the applicant's and opponent's marks, which is a measure of the public
inconvenience.
(iv) proved; and Whether any concrete instances of confusion have in fact been (v) The relative inconvenience which would be caused to the parties
and the extent of inconvenience which would result to the public if the applicant's mark is registered.
In the present case, it is noticed from the records that the Respondent No. 1 has been consistently explaining ever since it filed its counter-statement
as to how it had adopted the trade mark SHAKTI. We have already noted in paragraph 3 above the relevant explanation of adoption of mark as given
by the Respondent No. 1. The Respondent No. 1 has claimed that the same explanation about adoption of the mark had been given to the Registrar
during adjudication proceeding is not rebutted by the Appellant. The Appellant, except making a bald denial, has not effectively rebutted the
explanation given by the Respondent No. 1. In the absence of pleadings to the effect that the Respondent No. 1 was aware of the existence and use
of Appellant's mark, inference can reasonably be drawn that at the time of adoption and use of the impugned mark the Respondent No. 1 to be
unaware of and had no reasonable ground for believing that the trade mark of the Appellant was in existence and use. On face of facts and
circumstances of the present case, we find it difficult to accept the averment of the Appellant that the explanation in relation to adoption of the
impugned mark given by the Respondent No. 1 is after thought and sham. It is not the case of Appellant that the Respondent No. 1 was aware of the
Appellant's registered trade mark or user of the said mark. There is no evidence on record to prove that the Appellant's mark had acquired such an
enviable goodwill and reputation to give temptation to Respondent No. 1 to copy the Appellant's mark for the purpose of trading upon the goodwill and
reputation of the Appellant's mark. We have no means to verify the evidence or to evaluate the evidence filed under Rule 53 of the Rules, as the
documents mentioned at internal page 3 of the impugned order, have not been received by the Appellate Board from the Registry of Trade Marks.
We are unable to see any reason as to why the explanation given the Respondent No. 1 for its honest adoption of the mark should not be accepted.
There can be no dispute that the evidence in support of application for registration upto the date of application is relevant, but the Appellant has not
shown that the Respondent No. 2 has taken into consideration the evidence upto the date of hearing. The Respondent No. 2 has however referred to
bills, etc., pertaining to the period before the date of filing of application for registration in its impugned order. We have already noted that the
Appellant has raised preliminary objection stating that in any case the acceptance of the application on the alleged evidence of Respondent No. 1 filed
at the pre-advertisement stage was in any case ex parte while continuing at biparte stage the Respondent No. 1 has not relied on the said evidence. It
shows that the Appellant agree that evidence of user for the period of pre-advertisement stage was taken into consideration by the Respondent No. 2
There are copies of large number of publicity material available on record which proves that the Respondent No. 1 has been incurring substantial
expenditure in popularising its trade mark. The affidavit dated 13.7.2001 of Mr. Pushpinder Kumar, one of the partners of Respondent No. 1 sets out
the sales figures from the years 1975-76 to 2000-2001(except for the years 1981-82,1982-83 and 1984-85). The sales which was for Rs. 2625 in the
year 1975-76 steadily rose to the tune of Rs. 4,42,449 in the year 1986-87. We think that the volume of trade is fairly large and duration of use is long
i.e. more than 12 years user on the date of application. For claiming registration under Section 12(3), concurrent user need not be continuous and
uninterrupted or that it must be of great magnitude, what is required is a consistent use of the mark in a commercial sense. In the present case, in our
view, there is no instance of confusion or deception since year 1975, therefore, the question of hardship to customers does not arise and even
otherwise some slight hardship to the customers is not sufficient to deprive the Respondent No. 1 of the advantage of the mark. In our opinion, the
Respondent No. 1 has proved the user beyond doubt of the impugned mark since 1975 and it has also established that the adoption of mark was
honest and bona fide without reference to Appellant's mark. The degree of confusion or deception would be negligible and there would be no public
inconvenience by registration of the impugned mark. We are in agreement with the conclusion arrived at by the Respondent No. 2 that ""The applicants
are very much entitled for registration under Section 12(3) of the Act as they have adduced substantial documentary evidence in support of their
claim."" Even otherwise, where the Registrar of Trade Marks has granted registration in exercise of discretion vested in it, the exercise of such
discretion should not ordinarily be lightly interfered with by the appellate authority.
Learned Counsel for the Appellant submitted the Respondent No. 2 misdirected himself while holding that the Respondent No. 1 was the true and
lawful proprietor of the impugned mark by ignoring that the Respondent No. 1 having adopted the impugned mark with dishonest intention of trading
upon the goodwill and reputation of the Appellant. The Respondent No. 2 ought to have exercised the discretion vested in him under Section 18(4) in
favour of the Appellant as the Appellant has made a very strong case in its favour. The submission here before referred to has been strongly denied
by the counsel for the Respondent No. 1 and stressed that the adoption of the mark by the Respondent No. 1 is honest and bona fide and without
reference to any body's trade mark. The property right in a trade mark is acquired by use and the Respondent No. 1 has more than 12 years user at
the time of making application for registration. We have already noted that Respondent No. 1 has given plausible explanation for the adoption of mark
'SHAKTI', which show that its adoption is not dishonest. The Respondent No. 1 has successfully established the user and there is also no dispute that
the Respondent No. 1 has been using the impugned mark more than 12 years before filing application for registration. The record shows that the mark
'SHAKTI' constitutes the corporal name of the Respondent firm- New Shakti Radios. We are in agreement with the conclusion arrived at by the
Respondent No. 2 that ""In my view the applicants are the true and lawful proprietor of the trade mark applied for within the ambit of Section 18(1) of
the Act.
Now we would come a submission made by the learned Counsel for the Respondent No. 1 during the course of hearing that keeping in view of the
order dated 16.4.1998 of the High Court, the order of the Assistant Registrar passed on 21.10.2002 in the opposition, which is the subject matter of the
present appeal, has gone far beyond the High Court of Delhi as the only option left to the Respondent No. 2 was to grant registration to the
Respondent No. 1 as had been directed by the Hon'ble High Court. Here we do not agree with the above submission of the learned Counsel for the
Respondent No. 1 as record shows that the Petition for Special Leave to Appeal (Civil) No. No. 12725 of 1998 was filed before Hon'ble Supreme
Court of India by the Appellant herein against the impugned order dated 16.4.1998 of High Court of Delhi. The Hon'ble Supreme Court granted the
leave on 15.1.1999. While granting the leave, the Court set aside the impugned order of the High Court of Delhi dated 16.4.1998 and order dated
29.6.1995 passed by the Deputy Registrar of Trade Marks, Delhi and the matter was remitted back to the Deputy Registrar of Trade Marks, Delhi for
disposal in accordance with law. It is evident from the passing of the above mentioned remand order by the Hon'ble Supreme Court that the orders
dated 16.4.1998 and dated 29.6.1995 did not survive and no effect to those orders could have been given.
The result is that there is no merit in the appeal and it must fail. We, accordingly, dismiss the appeal. The parties shall bear their own costs.