Shyam Singh vs Manohar Singh

S. Usha, J

Appeal arising out of the order dated 12.02.2007 allowing the opposition No. MAS 187244 and refusing application No. 1164244 in class 3 for

registration. The Appellant herein filed an application dated 06.01.2003 for registration of the trade mark 'Raju Singh' a label mark in respect of Henna

Powder and Mehandi Paste in class 3 claiming user since 02.01.2001. The said application was advertised before acceptance in the Trade Marks

Journal No. 1325 Suppl.(1) dated 20.12.2004 at page No. 90 as a word mark.

The first Respondent herein filed their notice of opposition stating that they are well-known manufacturer and merchant of mehandi and they have

been in existence for several years. The customers gave special preference to their products in view of their high quality and correct pricing. They

have been using several trade marks including 'Singh Special Cone', Singh + Singh Mehandi Industries and Ragu Singh , for which they have filed

numerous trade mark applications. By virtue of long uninterrupted use, vast publicity and high quality, the consumers have recognised the first

Respondent's trade mark. The impugned trade mark 'RAJU SINGH' is virtually identical to their trade mark 'RAGU SINGH' which would definitely

cause confusion and deception among the public. The first Respondent had also stated that the registration of the impugned mark would be contrary to

the provisions of Sections 9, 11, 12 and 18 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

The Appellant herein filed their counter denying all the material averments in the notice of opposition and prayed that the notice of opposition be

dismissed with costs. On completion of the formal procedures, the learned Registrar set down the matter for hearing and passed the impugned order.

The Registrar had passed the impugned order on the finding that on perusal of the records it is seen that the Appellant has not proved their case as

there are lot of contradictions regarding the trading style. The aforesaid use of the mark by the Appellant is therefore hit by the provisions of Section 9

of the Act. The mark does not satisfy the requirement of registration under Section 11 of the Act as the marks are identical / similar and the possibility

of confusion is very much present. The Appellant has also not proved his case which heavily rests on them. The next issue is under Section 12 of the

Act regarding deceptive similarity of the mark. Counsel for the Appellant argued that the trade mark 'RAJU SINGH' is the name of the Appellant's

son, for which no evidence was produced to prove the same. First Respondent has produced evidence regarding exorbitant sales in the market and

they are prior users of the mark and on going through the records and considering the arguments the issue under Section 12 of the Act was decided in

favour of the first Respondent. The issue under Section 18 of the Act was also decided in favour of the first Respondent as they were prior users of

the mark and they had honestly adopted the mark and had earned good reputation since the year 1997. As the adoption of the Appellant was

fraudulent and dishonest, the proprietorship of the mark rests with the first Respondent and the Appellant had failed to discharge their proprietorship

and therefore are not entitled for registration of the mark under Section 18 of the Act.

Aggrieved by the said order, the Appellant is before us on appeal. The Appellant is leading manufacturer of mehandi power and cone and have

been carrying on said business since 1997. They have been carrying on business of manufacturing and selling mehandi under the brand name 'RAJU

SINGH' since 2001. The brand of the Appellant gained immense popularity and that the customers now have been specifically asking for 'RAJU

SINGH' mehandi. The Appellant has filed the appeal on the following grounds:

(a) The order of the Registrar is contrary to law and facts and circumstances of the case.

(b) The first Respondent cannot falsely claim exclusive right over the word 'SINGH'.

(c) The learned Registrar without due consideration of the facts and circumstances of the case has wrongfully allowed the opposition filed by the first

Respondent.

(d) There can be no bar for a person from using his name or surname for business.

(e) There is no similarity between the two marks and the label mark of the first Respondent should be considered in its entirety.

(f) As there is no confusion or deception, there is no bar under Section 11 of the Act.

The Appellant therefore prayed that the appeal be allowed and the mark be proceeded to registration.

The first Respondent herein filed their counter-statement stating that the claim of use made by the Appellant since 1997 is denied. In fact only in the

year 2003 the Appellant started selling mehandi products under the trade mark for which the first Respondent had immediately taken legal action

which has not been brought to the notice of this Tribunal. The first Respondent herein was first in the market to have conceived the concept of

packing mehandi paste in cones. During the course of business the first Respondent honestly conceived and adopted the trade mark ' SINGH' with

suffix as a word mark and device mark. The first Respondent's trade mark has acquired well known status within Sub-Section 6 of Section 11 of the

Act. The first Respondent being the prior adopter had also initiated legal action in various forums against the Appellant herein. The first Respondent

being prior user and adopter of the mark, their rights are to be protected and therefore prayed that the appeal be dismissed refusing registration of the

mark.

We have heard both the counsel on merits. But during the course of arguments it was brought to our notice that the trade mark applied for

registration was a label mark and the advertisement was a word mark. We perused the records to satisfy ourselves and found that the application was

for a label mark whereas the advertisement was a word mark. Learned Registrar has observed in the impugned order that the opponent vehemently

argued that the advertisement was wrongly made but had gone ahead in hearing and pronouncing the order instead of re-advertising the correct label

mark. In such a case we are not going into the merits of the case.

Rule 43 of the Trade Mark Rules, 2003 prescribes the mode and manner of advertisement of an application. The very purpose of the advertisement

is to bring it to the notice of the general public the complete information of the application for registration by which the public will have an opportunity

to have clear information of the application made. If however an advertisement gives incomplete information in respect of the particulars of the trade

mark advertised, a prospective opponent is deprived of an opportunity of getting full information regarding the trade mark and is also deprived of filing

an effective opposition. Therefore, an incorrect advertisement which amounts to misrepresentation ought to be cancelled. While cancelling the

aforesaid advertisement, the application has to be put to the stage of acceptance as per the provisions of Rule 38 of the Trade Marks Rules, 2002.

In view of the above, we direct that the application for registration be properly advertised in the Trade Marks Journal calling for effective

opposition. Accordingly the matter is remanded back to the Trade Marks Registry, Chennai with a direction to the Registrar to re-advertise the

impugned application No. 1164244 in class 3 calling for objections and to dispose the matter in accordance with law.