Agritrico Paper Edge (P) Ltd. vs U.S. Sharma, Assistant Registrar Of Trade Marks And Indian Oil Corporation Ltd.

S. Jagadeesan, J

We have heard Shri Mohan Vidhani for the appellant and Ms. Anjula Chopra for Shri Hemant Singh for the second respondent.

The appellant has filed this appeal against the order of the Assistant Registrar of Trade Marks, dated 13.1.1997, rejecting their application No.

496135 B in Class 12 for registration.

Admittedly, the second respondent herein filed a suit No. 356.03.99 in the District Court, Delhi and obtained a decree for injunction restraining the

appellant herein from using the impugned trade mark 'SERVO'. The learned counsel for the appellant fairly represented that in view of the injunction

granted by the City Civil Court by the decree dated 24.5.2004, the appellant cannot use the impugned mark and the appellant has also failed to prefer

any appeal against the said decree and consequently the decree in the civil suit covers the rights of the parties.

Even though there is a decree against the appellant for injunction, the principles governing the infringement and the principles governing registration

being different, it is necessary for us to consider whether the impugned order of the Assistant Registrar is valid and legal. The appellant filed the

application No. 496135 B for registration of the trademark 'SERVO FILTERS' in respect of air, oil, fuel and hydraulic filters included in class 12,

claiming the user as proposed one. The said application was advertised in the Trade Marks Journal No. 1038 dated 1.9.1992 at page 607. The second

respondent herein filed their notice of opposition stating that the registration of the impugned mark will be in violation of the provisions of the Trade

and Merchandise Marks Act, 1958, especially section 9, 11(a), 11(e), 12(1) and 18(1). The second respondent further stated in the notice of opposition

that they are using the mark 'SERVO' since 1974 in respect of lubricating oil and greases. The said mark was registered in the name of the second

respondent as early as 12.1.1972 in respect of industrial oil and greases. The goods of both the parties are similar and the appellant is adopting the

registered mark of the second respondent with malafide intention and consequently, the impugned mark cannot be registered. Thereafter, the appellant

filed counter along with the evidence and the second respondent also filed the reply with rebuttal evidence.

After considering the evidence available on record, the Assistant Registrar of Trade Marks found that the impugned mark cannot be registered as

there is a statutory bar under section 12(1) of the said Act. The second respondent had already obtained registration of the identical mark and the

impugned mark being identically similar in respect of the goods, which are also of the same description as that of the second respondent. The

Assistant Registrar further held that the prohibition under section 11(a) is also attracted as the goods of the appellant and the second respondent are of

the same description and the trade channel is also being the same, there will be a confusion and deception in the trade. It was further held by the

Assistant Registrar that the appellant is not the proprietor of the trademark and as such, the registration would violate section 18(1) of the said Act on

the ground that the second respondent had registered their mark as early as 1972 whereas the appellant is seeking registration of the impugned mark

by filing the application on 17.8.1988 as a proposed user, when the second respondent is also in the market with the same mark for more than sixteen

years and as such the adoption by the appellant of the impugned mark is nothing but malafide one. We have also perused the file and considered the

evidence available on record. We do not find any infirmity in the findings of the Assistant Registrar of Trade Marks. Moreover, the findings being

purely question of fact on the appreciation of the evidence available on record, in our view, no interference is called for. Accordingly, on merits also,

we find the appeal is devoid. Hence, the appeal is dismissed. There will no order as to costs.