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Judgment
Z.S. Negi, J
1 . The appellant has preferred an appeal under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) against the order and
decision dated 20th October 2006 passed by the respondent No. 2 by disallowing the opposition No. CAL-156852 and allowing application No. 673973
in class 09 to proceed to registration. The miscellaneous application seeking stay of the impugned order has been filed along with the appeal.
It is averred in the miscellaneous application for stay that the impugned order and decision of the respondent No. 2 is ex-facie wrong and there are
good chances of the appellants succeeding in the appeal. The appellants are the proprietor of the trade mark VOLTAS in respect of wide variety of
goods and involved in variety of business and the respondent No. 1 has knowingly copied the applicants' trademark VOLTAS and sought registration
of the impugned trade mark VOLTA in respect of same and/or similar goods. Though the registration of the impugned trade mark is clearly barred by
the provisions of Sections 9, 11 and 18 of the Act, the respondent No. 2 has allowed the application for registration of the trade mark VOLTA.
It is further averred that if the impugned mark is entered on the register during the pendency of the appeal, the relief sought by the appellants in the
appeal will be frustrated. The balance of convenience is in favour of the appellants and against the respondent No. 1 and in the premises the
appellants are entitled to an order staying the operation of the impugned order and decision.
4 . In view of the facts and grounds mentioned in the appeal, the appellants have prayed the following reliefs:
(a) that pending the hearing and final disposal of the above appeal, the operation of the order and decision dated 20th October 2006 of the respondent
No. 2 be stayed and the respondent No. 2 be directed not to register the trade mark under application No. 673973 in class 09 and not to take any
further proceedings in pursuance of the said order and decision;
(b) that pending the hearing and final disposal of the above appeal, the respondent No. 1 be directed not to rely upon the registration of the impugned
trade mark;
(c) that the respondent No. 1 be ordered to pay to the appellants the cost of this application;
(d) such other and further orders, directions and reliefs as this Board may deem fit and necessary.
5 . The respondent No. 1 has filed the common counter-statement to miscellaneous application and the appeal denying all the material averments
made in the application and appeal.
6 . The stay petition came up before us for hearing on 4th March, 2009 when Shri Himanshu Kane, Advocate appeared for the appellants and S/Shri
P.K. Mukherjee and Sudhakar Prasad, Advocates appeared for the respondent No. 1.
Learned Counsel for the appellant submitted that the appellants have been using a coined and an invented word 'VOLTAS' in their corporate name
and house mark, upon and in respect of the goods and services for the last 50 years in a continuous and extensive scale. The appellants have also used
trade marks such as VOLFARM, VOLFRUIT, VOLPUMP, VOLDRILL, VOLITA, VOLDRUM, VOLLAM, VOTA, VOLR VOLBIT, and such
similar words as a trade marks upon in connection with the one or the other of their goods specified in the appeal. It can be seen from the statement
of registered/pending trade marks as annexed to the Notice of Opposition (Form TM-5) that the appellants' goods, amongst others, include power
transmission apparatus, voltage stabilizers, voltage regulators, electric movers, electric and electronic lighters, testing instruments, time switches
(electric) instruments, transformer relays (electrical) and contractors (electric), teleprinters and control apparatus (electric), Starters for electric
motors included in class 7, lift trucks, forklift trucks, platform trucks, pallot trucks and parts thereof and trucks, forklift trucks, platform trucks, pallot
trucks and parts, fittings and attachments including in class 12, electric capacitors, electric safety fuse (cut outs) all being goods included in class 0 9,
etc. under trade marks No. 413430 in class 09, 169308 in class 09, 250576 in class 07, 276224 in class 12 and 372450 in class 09, etc. These goods are
same as are or similar description or cognate, allied and complementary with the goods, namely Lead-Acid Accumulator and that this fact has not
been controverted by the respondent No. 1. The respondent No. 2 has also not considered these facts at the time adjudication. Learned Counsel for
the appellant further submitted that the explanation for adoption of impugned mark VOLTA of respondent No. 1 is that the word volt has been taken
from the dictionary which means ""Unit of electromotive force, difference of potential that would carry one ampere of current against one ohm
resistance""; if this explanation is bonafide and correct, the mark VOLTA which comprises of the descriptive word VOLT with addition of letter 'A'
can never be distinctive or acquire distinctiveness and it cannot be registered in respect of Lead-Acid Accumulator. The learned Counsel submitted
that the respondent No. 2 has in his impugned order recorded that ""I have no hesitation to hold that technically the rival marks i.e. the rival words
VOLTA and VOLTAS are undoubtedly practically identical, but keeping in view the Applicant's use of the impugned mark in the specified territory of
his use i.e. Eastern Zone which is not the only word 'VOLTAS' but a label mark, it will be appropriate and necessary to grant him the registration on
the basis of honest and concurrent use since the year 1990 in the above given particular area of the country and balance of convenience and the fact
that not a single instance of any confusion or deception has been pointed out to this Tribunal by the Opponents in the use of the impugned mark since
last more than 16 years"", in such circumstance the respondent No. 2 ought not to have taken into consideration the use of impugned trade mark by the
respondent No. 1. The counsel submitted that the evidence adduced by the respondent No. 1 before the respondent No. 2 do not pertain to the
relevant period, but pertain to period subsequent to the filing of application for registration. He pointed out that the invoices do not contain any sales tax
registration number. Some of the invoices are not at all legible. It is a settled principle that the burden of proving that the trade mark sought to be
registered is not likely to deceive or cause confusion is on the applicant but it has not discharged that burden. The learned Counsel by taking us to
certain copies of invoices stated that the appellants were very much present in the Eastern Zone as some of such copies show the presence of
appellant in Jamshedpur in 1993 and Calcutta as back as in 1982. On the basis of such evidence, the conclusion arrived at by the Registrar about user
of the impugned mark is wholly erroneous. Beside this, the observation of the Registrar that the use of impugned mark in the specified territory of
Eastern Zone is also an erroneous observation as the appellant is very much in use of its mark in the Eastern Zone. Learned Counsel submitted that
trade mark VOLTA applied for registration by the respondent No. 1 is identical with or deceptively similar with the goods for which the appellants
have obtained registration of trade marks or applications are pending for registration. The respondent No. 1 has merely omitted letter 'S' from the
appellants trade mark VOLTAS and adopted VOLTA. The aspect of well-known appellant's trade mark has been totally overlooked by the
respondent No. 2. The registration of the impugned mark sought to be registered in respect of Lead-Acid Accumulator are being same as or goods of
the same description as goods for which the appellants marks are being used and/or is registered and/or is pending for registration. The appellants and
the respondent's goods are sold through the same channels and are purchased by the same consumers. The rival goods are alike, cognate and/or
complementary. There is trade connection between the rival goods. The learned Counsel cited a number of cases in support of his submissions such
as National Sewing Thread Co. Ltd., Chidambaram v. James Chadwick and Bros., Ltd. AIR 1953 Supreme Court 357, Bengal Immunity Co. Ltd. v
Denver Chemical Manufacturing Co. and Ors. AIR 1959 Ca 636, T.G. Balaji Chettiar v. Hindustan Lever Ltd., Bombay AIR 197 Mad 148, Bal
Pharma Ltd. v. Centaur Laboratories Pvt. Ltd. and Anr. 2002 (24) PTC 226 (Bom) (DB) and Harish Motichand Sariya v. Ajanta India Limited and
Anr. 2004 (28) PTC 42 (Bom). Lastly, learned Counsel by furnishing a copy of website search report submitted that the status of application No.
673973 as on 27.2.2009 is shown as opposed, meaning thereby that the registration certificate has not been issued to the respondent No. 1.
Shri P.K. Mukherjee, learned Counsel for the respondent No. 1, submitted that the stay application of the appellants contains no valid grounds of
objections which is wholly false and is devoid of any merit and the relief sought for are not maintainable either in law or on facts and therefore liable to
be dismissed in limine with cost to the respondent No. 1. He submitted that the trade mark VOLTA is a self coined word which was honestly
conceived and adopted in or about the year 1990 and commenced commercial use thereof. The goods sold under the said trade mark have branded to
popularize by virtue of extensive and continuous use and the same has become popular and acquired reputation amongst the purchasing public. He
submitted that the adoption and use by a trader of a mark may be honest despite his knowledge of a similar mark already on the register of trade
marks, therefore, it was held that once the honesty of user of a mark has been established, the fact of knowledge of rival's registration loses much of
its significance especially when the rival goods have no connection whatsoever during the course of their trade. He further submitted that the trade
mark of respondent has by virtue of long use has acquired substantial reputation and goodwill and in fact there has been no confusion in the course of
trade. The goods in respect of which registration has been sought cannot be considered by any stretch of imagination as goods of the same description
to that of appellant's goods and the respondent is in no way dependent of the so-called reputation and goodwill of the appellant. He also submitted that
the respondent No. 2 has rightly held that the mark used by the respondent No. 1 is being used in the specified territory of his use (Eastern Zone)
which is not only the word VOLTA but is a label mark, and it will be appropriate and necessary to grant registration on the basis of
We have heard and considered the arguments of both sides and have perused the documents referred by them, including the impugned order. The
rival marks are deceptively similar and the respondent No. 2 has also found that the words VOLTA and VOLTAS are undoubtedly practically
identical. Prima facie we are unable to agree with the finding of the respondent No. 2 that despite such identical marks, he came to the conclusion that
it is appropriate and necessary to grant registration to respondent No. 1 on the grounds of its use in the specified territory (Eastern Zone). The
appellant has proved that it was very much existing in the Eastern Zone that is to say in Jamshedpur and Calcutta. There is no copy of invoice for the
year 1990 and only skeleton invoices for the year 1991 are on record which are not sufficient to prove such user to acquire distinctiveness. There is no
advertisement placed on record to prove that the mark had acquired distinctiveness at the time of making application. There is also no finding of
respondent No. 2 that the adoption of mark is bona fide and honest. Without coming to the conclusion that the adoption of mark is bonafide and honest,
how registration on the basis of honest concurrent user is allowable to the respondent No. 1. The respondent No. 2 has not given any reason on the
basis of which he arrived at the conclusion the impugned mark is distinctive of the goods of the respondent No. 1 and that there is no likelihood of
deception or confusion. The claim of the appellant that their goods are same as are or similar description or cognate, allied and complementary with
the goods of respondent No. 1, which remained uncontroverted by the respondent No. 1, has not been considered by the respondent No. 2 in his
impugned order. The claim of appellant that its goods are of similar description or allied or cognate with the goods of the respondent No. 1 and that its
trade mark is well-known trade mark have not been traversed by the respondent No. 2. We are of the opinion that the appellant has prima facie made
out its case for stay. The balance of convenience is in favour of the appellant as the registration certification has not yet been issued and that if it is
issued the very purpose of filing the present appeal will be defeated. The respondent No. 1 can still carryon its business even without having
registration certificate in the like manner as it has been carrying on till now. We do not consider it necessary at this stage to traverse the citations or
case laws relied upon by the appellant.
In view of the above, we allow the miscellaneous petition and direct the Registrar of Trade Marks not to issue registration certificate to the
respondent No. 1 in respect of application No. 673973 in class 09 until further orders. There shall be no order as to costs.