Sterling Machine Tools vs The Central Government and Others

Sanjiv Khanna, J.—The petitioner, M/s Sterling Machine Tools, has impugned the certificate dated 28th July, 1995 issued by the Joint Registrar of Trade Marks to the respondent No. 7, M/s A.K. Enterprises, certifying that upon search, no trade mark identical or deceptively similar to the trade mark "Bharat Marshal" was found to be registered or applied for.

The respondent No. 7 had applied for the said certificate under TM Form No. 60 for registration under the Copyright Act, 1957. The said certificate is required under the proviso to 45(1) of the Copyright Act, 1957.

Counsel for the petitioner, has drawn my attention to similar requests made by the petitioner under Rule 24(1) of the Trade and Merchandise Marks Rules, 1959 in Form TM-54 dated 18th March, 1993 and dated 18th February, 1994 in respect of the trade marks "Bharat" and "Bharat Marshal". In Addition, the petitioner had also made search under Form TM-60 dated 18th March, 1973 for the mark "Bharat". The Registrar of Trade Marks in response to the three search applications of the petitioner had responded in negative and had informed the marks "Marshal" and "Bharat Marshal" resemble the trade marks, which were already registered. Thus there is contradiction between the certificate/reports submitted by the Registrar of Trade Marks, when the petitioner had submitted applications in Forms TM-54 and TM-60 in respect of the marks "Bharat" or "Bharat Marshal" and the certificate issued to the respondent No. 7 by the Registrar of Trade Marks in respect of the mark "Bharat Marshal" by the impugned letter dated 28th July, 1995.

Rule 24 of the Trade and Merchandise Marks Rules, 1959 reads as under:

Request to Registrar for search-

1.) Any person may request the Registrar, on form TM-54, to cause a search to be made in respect of specified goods classified in any one class in the Fourth schedule to ascertain whether any mark is on record which resembles a trade mark of which three representations accompany the form. The Registrar shall cause such search to be made and the result thereof communicated to the person making the request.

2.) If, within three months from the date of the communication of the result of the search aforesaid, an application is made for the registration of the trade mark in question, and the Registrar takes objection on the ground that the mark resembles a mark, which was not disclosed in the search but was on record on the last of the dates on which the search was made, the applicant shall be entitled, on giving notice of withdrawal of the application within the period mentioned in Rule 40, to have repaid to him any fee paid on the filing of the application.

3.) Any person may request the Registrar, on form TM 60 to cause a search to be made and for issue of certificate under Sub-section (1) of Section 45 of the Copyright Act, 1957 (14 of 1957) to the effect the no trace mark identical with or deceptible similar to such artistic work, as sought to be registered as copy right under the Copy Right Act, 1957 (14 of 1975) has been registered as a trade mark under the Trade and Merchandise Marks Act, 1958 (43 of 1958) in the name of, or that no application has been made under that Act for such registration by, any person other than the applicant.

Any person can make an application to the Registrar in Form TM- 54 to cause a search to be made in respect of the specified goods classified in the fourth schedule and ascertain whether any mark on record resembles the said mark. Sub-rule 2 permits the Registrar to take on record any objection in case an incorrect search report was given and when the mark assembles a mark, which was on record but was not disclosed. Objection, however, in this regard had to be filed within 3 months. Sub-rule 3 permits a person to make an application to the Registrar in Form TM-60 to cause a search to be made and for issue of certificate u/s 45 of the Copyright Act, 1957. A certificate is issued by the Registrar when there is no trade mark identical with or deceptively similar to the artistic work, already registered or a mark for which an application for registration was pending. Rule 24(1) uses the word "resembles" and Rule 24(3) used the expression "identical with or deceptively similar to another mark" when it so nearly resembles the other mark so as likely to deceive or cause confusion. Resemblance of the two marks, which is likely to cause deception or confusion, is the criterion under Rule 24(3). Reference in this regard can be made to Section 2(d) of the Trade and Merchandise Marks Act, 1958, which defines the expression "deceptively similar" as under:

(d) "deceptively similar": A marks shall be deemed to be deceptively similar to another mark if it so nearly resembles that other marks as to be likely to deceive or cause confusion;

However, in the present case I need not go into details and leave it open to the Registrar of Trade Marks to go into the question of resemblance and deceptive similarity as used in Sub-rule 1 and 3 of the Rule 24 of the Trade and Merchandise Marks Rule, 1959 as the matter is being remanded back. It is apparent that the Registrar of Trade Marks has given contradictory reports and the certificate dated 28th July, 1995 issued to the respondent No. 7 was without examining the earlier marks, which had been registered on the date when the application under TM Form No- 60 was filed by the respondent No. 7 and when certificate was issued. The Registrar of Trade Marks will re-examine the matter in the light of the reports submitted by the Registrar of Trade Marks on the search carried out on the request of the petitioner. The impugned certificate dated 28th July, 1995 is accordingly quashed and set aside and the matter is remanded back to the Registrar of Trade Marks to re-examine the Form TM-60 filed by the respondent No. 7 and pass an appropriate order. It is clarified that the observations made in this order are tentative and prima facie and the learned Registrar will dispose of the application in Form TM- 60 filed by the respondent No. 7 without being influenced by any of the observations made in this order.

The writ petition is accordingly disposed of. In the facts and circumstances of the present case, there will be no order as to cost.