V.S. Dhanasekar And Ors. vs K. Lokaiyan And Ors.

Raghbir Singh, J

The appellants/opponents filed Opposition No. MAS-3053 dated 27th April, 1994 to trade mark application No. 513952 of the

respondents/applicants to register the trade mark label containing the device of an elephant head with a garland in its trunk and the expression

ELEPHANT HEAD BRAND"" as its essential feature in respect of lungies and sarees included in class 24, which was filed on 26th July, 1989. The

respondents/applicants claimed to have been using the trade mark from 1st June, 1965 on the date of the application. The opponents claimed that they

are the proprietors of the trade mark label containing the device of an elephant and/or elephants and the words 'ELEPHANT BRAND' in respect of

textiles piece goods including lungies and handkerchiefs and have been using the said trade mark for the past several years under registered trade

mark Nos. 157473, 165215 and 310619, all registered in class 24. They claimed that by virtue of long, continuous and extensive use, wide publicity and

sales promotion work and also the high quality of goods sold under the distinctive elephant device and the trade mark 'ELEPHANT BRAND'

enormous goodwill and reputation HAVE accrued to their said trade marks. They further claimed that the impugned trade mark is hit by Sections

11(a), 11(b), 11(e), 12(1), 12(3), 9 and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act).

Respondents/applicants filed a counter statement on 13th March, 1995 denying the allegations of the opponents and disputing the alleged similarity

between the trade mark of the opponents and of the applicants and also stating that they have adopted the trade mark 'ELEPHANT HEAD BRAND'

with the device of elephant head with a garland in its trunk which is being used by them since the year 1965 in respect of lungies and sarees and as

such they are entitled to registration of the mark under Section 12(3) of the Act. Appellants/opponents led evidence through an affidavit dated 20th

November, 1995. The Respondents/applicants filed evidence through an affidavit on 28th November, 1997 and also requested to treat the evidence

filed by them earlier in respect of another application No. 365872 (since abandoned) as part and parcel of the evidence of the subject application. The

case was heard by the Deputy Register on 31st July, 2000 and by his order dated 19th March 2002 he dismissed the opposition and ordered that the

application be proceeded to registration subject to condition to be notified in the Trade Marks Journal that the device of elephant is common to the

trade. The present appeal is against the order of the Deputy Registrar dated 19th March 2002. Ms Gladys Daniel, Advocate appeared for the

appellants but none appeared for the respondents.

The issues in this manner relate to Sections 9, 11(a), 11(b), 11(e), 12(1), 12(3) and 18(1) of the Act. The learned Deputy Registrar has rightly

rejected the contention that the registration of the impugned trade mark offends the provisions of Section 9 of the Act. the opposition is also based

upon the contention of similarity between the two trade marks which aspect needs examination under Sections 11 and 12 and Section 9 is in no way

concerned with that.

The learned counsel for the appellants has objected to the registration of mark under the provisions of Section 12(1) of the Act. She pointed out that

the condition of disclaimer over the usage of the device of an elephant imposed earlier on the application was subsequently cancelled by way of

corrigenda in the Trade Mark Journal No. 1097 dated 16th February, 1995 when their opposition was pending. This is incorrect for the reason that

when such disclaimer had been imposed on the appellants' similar mark, which is registered prior to the present application, how the same has been

cancelled in the case of the respondents' application. Apparently there is not much of dissimilarity between the expressions 'ELEPHANT BRAND'

and 'ELEPHANT HEAD BRAND'. Further, the goods for which these marks are used are also the same. Hence, the appellants' objection under

Section 12(1) is sustained. But the applicants' claim is also based upon the provisions of Section 12(3) of the Act which provides that in case of honest

and concurrent user of other special circumstances, which in the opinion of the Registrar, make it proper to do so, he may permit registration by more

than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in

respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose. He has to

exercise the discretion keeping in view either or both of the guidelines provided by the Legislature, namely, ""honest concurrent user"" and ""other special

circumstances"". In London Rubber Co, Ltd. v. Durex Products, PTC (Suppl)(1) 246(SC, )para 22 J: Mudholkar accordingly relied upon the following

in Kerly on Trade Marks at p. 164.5 namely: -

The words 'or other special circumstances' were held in Hold & Co., (leeds) Ltd., Applications, (1957) RPC 289, to include any circumstances

peculiar to the application in relation to the subject matter of the application and this includes use by an applicant of his mark before the conflicting

mark was registered or used.

However, there had been an earlier attempt in this matter by the respondents to register the trade mark vide application No. 365872 in class 24 as

of 9th September 1980 for which an Opposition had been filed by the appellants in 1987. The application had been abandoned under Section 21(2).

However, the applicants immediately thereupon filed a fresh application for registration of the very same trade mark on 26th July, 1989 which was

numbered as 513952 claiming user from 1.6.1965, which is the trade mark presently under dispute.

As regards Section 12(3), the learned counsel for the appellants submitted that the respondents are not eligible for registration of their mark as they

have not honestly and concurrently used the mark. Section 12(3) is an exception to Section 12(1) of the Act. Even if an opponent succeeds under

Section 12(1), then, also the applicants can succeed under Section 12(3) provided he can prove through evidence that he has honestly and concurrently

used the mark. Also where the applicant's date of commencement of use is prior to the opponent's date of use, the provisions of Section 33 of the Act

allow for registration of the applicant's mark. In fact the word 'other special circumstances' in Section 12(3) include any circumstances peculiar to the

subject matter of the application and this includes use by an applicant of his mark before the conflicting mark was registered or used (London Rubber

Co. Ltd. v. Durex Products, PTC (Suppl)(1) 246(SC)). In the present case the first relevant date is the date of use of the mark by the applicants. The

applicants have claimed that they have been using the mark from 1st June, 1965. The next relevant date is the date of use of the mark by the

opponents. The opponents have claimed user from 1895 for which no evidence had been filed. Further, in their registered trade mark No. 165215

dated 3.8.1954, which was for 'ELEPHANT BRAND' in respect of lungies and sarees, the user claimed, was from 30 years before the date of the

application. However, no documentary proof of user has been filed by them. The next relevant date is the date of registration of the opponents mark

'ELEPHANT BRAND' under No. 165215 which as per the record is 3rd August, 1954. In order to come under the purview of Section 12(3) the

applicants have to prove through evidence that they have been using the mark prior to the use of the mark by the opponents or prior to the registration

of the marks of the opponents whichever is earlier. It is seen that the applicants have been using the mark since 1st June, 1965 where as the

opponents have not produced evidence of use. However, the opponents have registered their mark with effect from 3rd August, 1954 under No.

165215. The earliest of the date between the use by opponents, if any, and registration of the opponents mark is 3rd August, 1954. As the applicants

have been using their mark from 1st June, 1965 which is a date later than the date of registration of the mark by the opponents that is 3rd August,

1954, the applicants cannot claim the benefit of Section 12(3) read with Section 33 of the Act. Furthermore, as mentioned above, the applicants had

filed application No. 365872 for the same trade mark on 9th September, 1980 and when an opposition had been filed against the same by the

appellants, they had abandoned their application. Hence, the applicants are not entitled for registration under Section 12(3) of the Act.

As regards Section 18(1) of the Act, the counsel for the appellants contended that the respondents have not honestly adopted the mark. She

referred to the decision of the Bombay High Court in AIR 1958 Bom 56 and submitted that the respondents are not eligible for registration of their

mark under Section 18(1) of the Act because of dishonest adoption. It is seen from the records that the respondents have adopted the mark on

1.6.1965. Both the parties are from Chennai and it cannot be believed that the applicants were not aware of the mark of the opponents. Hence, we

are of the opinion that the applicants have not honestly adopted their mark.

Taking into consideration that above, we allow the appeal. There is no order for costs.