AI Structured Summary
Not yet generated for this judgment
Judgment
S. Jagadeesan, J
The appeal is directed against the order of the Deputy Registrar of Trade Marks dated 5th March, 1999, rejecting the opposition of the appellant
opposing the registration of the respondent's trade mark “PRESTIGE†in respect of “Gin in Class 33.
The first respondent herein filed an application bearing No. 389890B to register the trade mark in Class 33 consisting of the word
“PRESTIGE†in respect of wines, spirits, liquors, claiming that they are using the said mark since 16th December, 1970 in respect of Gin. The
said application was filed on 12th May, 1982. The Registrar of Trade Marks raised preliminary objection under Sections 9 and 12(1) of the Act. The
first respondent amended the specification of goods by restricting to Gin alone and converted the application into one for registration in Part B of the
register. The application was ordered to be advertised before acceptance. The appellant herein filed the notice of opposition on 11th August, 1992
under No. MAS 2754, stating that the trade mark under the impugned application is neither adopted to distinguish or capable of distinguishing the
goods of the applicant and that the appellants are the proprietors of the trade marks in relation to a variety of goods such as liquors, soft drinks, food
products falling in Classes 33, 32 and 30 respectively. The appellants has acquired enviable reputation to the said trade mark by the extensive use and
wide publicity of the trade mark. Further, the appellants are the proprietors of the registered trade mark in Class 33 in respect of all kinds of liquors
and the mark sought to be registered by the respondent is identical to that of the appellants and as such there is likelihood of deception or confusion in
the course of trade and hence the registration of the respondent's mark is prohibited under the provisions of Sections 11(a), 11(b) and 11(e) of the Act.
The respondents are further not entitled to the concurrent registration under Sec. 12(3) of the Act. The respondent in their reply denied all the
allegations of the appellant and submitted that they are entitled for registration under Sec. 12(3) read with Sec. 33 of the Act. The Deputy Registrar of
Trade Marks rejected the opposition of the appellants. Hence, this appeal. We have heard the arguments of both the counsel.
The learned, counsel for the appellant vehemently contended that in the affidavit filed by one Shri Ranganatha Gopal on behalf of the respondent
herein before the Registrar of Trade Mark, the deponent had not given his address, the non furnishing of the address by the deponent contravenes the
mandatory provision of Rule 116 of the Trade and Merchandise Marks Rules, 1959, and as such, the affidavit cannot be acted upon. His further
contention is that in the affidavit filed by one Shri N.L. Srinivasan, on behalf of the respondent also suffers from the same defect. Further, in the
affidavit filed by Shri N.L. Srinivasan in paragraph 3, the deponent has stated that he has filed an affidavit at the pre-advertisement stage of the
application, whereas, the affidavit at the pre-advertisement stage was filed by one Shri Ranganatha Gopal. Hence, the statement of Shri N.L.
Srinivasan that he had filed an affidavit at the pre-advertisement stage is a false statement and consequently the affidavit deserves no consideration.
Similarly, in para 3 of the affidavit of Shri N.L. Srinivasan, refers to the leave of the Tribunal to refer and rely on the exhibits filed alongwith the
affidavit at the pre-advertisement stage. The affidavit filed at the pre-advertisement stage of Shri Ranganatha Gopal do not refer to the filing of any
documents and in fact, paragraph 5 of the affidavit of the said Shri Ranganatha Gopal seeks leave of the Tribunal to refer and rely on the documents
when produced. Similarly, Shri N.L. Srinivasan also did not file any documents alongwith his affidavit and the same is very clear from the last
sentence of paragraph 3 of his affidavit, where he seeks leave of the Tribunal to rely on further documents if and when produced. In view of these
statements, it was contended, that it is clear that the respondents did not produce any documents either at the pre-advertisement stage or at a later
point of time. The statement made by the Deputy Registrar in his order with regard to the documents produced by the respondent is not correct.
Further, the copies to the documents were not furnished to the appellant and as such, they were not in a position to effectively controvert the same.
Even assuming that the documents were produced by the respondents at the earliest point of time, the non-furnishing of the copies of the appellant
would disentitle the respondent to rely upon the same. The Deputy Registrar also ought not to have made any reliance to them. His further contention
is that in paragraph 2 of the affidavit of Shri N.L. Srinivasan, it is stated that the respondents have been regularly and in the course of the trade, using
the trade mark “PRESTIGE†since 16th December, 1970, whereas the affidavit of Shri Ranganatha Gopal refers to the sales turn over from
April, 1973. Hence, this statement also cannot be accepted. He also contended that in the verification of his affidavit, Shri N.L. Srinivasan has stated
that what is set out in paragraphs 1 and 3 of his affidavit are true to his knowledge. In paragraph 3 of the affidavit Shri N.L. Srinivasan has stated that
he filed an affidavit at the pre-advertisement stage which is false and also he crave leave to refer to the said affidavit and exhibits filed in connection
with the affidavit. Here again, no exhibits were filed alongwith the affidavit by Shri Ranganatha Gopal. Hence, the purpose of verification is to re-
affirm the averments made in the affidavit by way of an oath. When the parties have no sanctity to the solemn swearing as well as to the verification,
then such statements made in the affidavit cannot at all be taken into consideration and the affidavits are to be rejected at the threshold. His next
contention is that the respondents do not have continuous use of the trade mark since the affidavit of Shri Ranganatha Gopal do not mention any turn
over for the period July 1978 to June 1979, which means there was absolutely no trade for that year and consequently it cannot be said that the
respondents are continuously using the trade mark. Finally, it was contended that the respondent did not produce any documents by way of evidence.
The Xerox copies produced by the respondents cannot be taken as genuine and in the absence of the original documents, it has to be construed that
there was no evidence at all on the side of the respondents. Consequently, the Deputy Registrar ought to have accepted the opposition of the appellant
and rejected the registration of the trade mark of the respondent.
On the contrary, Shri M.K. Rao, the learned counsel for the respondent contended that the documents were produced alongwith the affidavit of
Shri Ranganatha Gopal at the pre-advertisement stage itself, which is clear from the records. Though the copies of such documents were not
furnished to the appellant, the appellants were permitted to peruse the records at the time of hearing before the Deputy Registrar and time was
granted to them by the Deputy Registrar to put forth their objections. The learned counsel for the appellants having perused the evidence produced by
the respondent, did not choose to file any objection. Moreover, the appellant never called upon the respondents to produce the originals. Consequently,
the Deputy Registrar proceeded on the basis of the evidence produced by the respondent. So far as the continuous use of the trade mark by the
respondent is concerned, the respondent had furnished the sales turn over from April, 1973 to August, 1990. Non-furnishing of the turn over for
1978â€"79 may be due to the non-availability of the records. The appellant never made any observation with regard to the continuous use of the trade
mark by the respondent. The Deputy Registrar, having accepted the continuous use of the trade mark allowed the registration of the trade mark under
Sec. 12(3) of the Act. The appellant having failed to object to the evidence adduced by the respondent, is raising all technical pleas before this
Appellate Board which are of no merits.
By way of reply, the learned counsel for the appellant contended that no documents are available on record. Further, Rule 57 of the Trade and
Merchandise Marks Rules, 1959 contemplates the filing of the original documents by the parties. Since the original documents were not produced by
the respondents, their evidence have to be rejected.
We have carefully considered the above contentions of the learned counsel. We have also called for the original records from the Deputy Registrar
of Trade Marks and perused the same.
A perusal of the impugned order of the Deputy Registrar of Trade Marks would reveal that the points raised by the learned counsel for the
appellant before this Board are the same as raised before the Deputy Registrar. In fact, all the points raised by the learned counsel for the appellant
are too technical which in our view, deserves no consideration for the simple reason that justice cannot be denied on too much technicalities.
With regard to the contention of the learned counsel for the appellant that Shri N.L. Srinivasan has sworn to a false affidavit stating that he filed an
affidavit at the pre-advertisement stage, we can simply reject the said contention on the basis that neither Shri Ranganatha Gopal nor Shri N.L.
Srinivasan is the party before the Deputy Registrar. The party before the authorities is the Mysore Sugar Company Limited. At the pre-advertisement
stage, Shri Ranganatha Gopal was the Company Secretary and a sworn affidavit was filed by him. Similarly, at a later stage, i.e., at the time of filing
the objection, Shri N.L. Srinivasan was the Company Secretary of the respondent company and a sworn affidavit was filed by him also. Both the
deponents have filed the sworn affidavit only on behalf of the company and not in their personal capacity.
As far as the contention of the learned counsel for the appellant that the deponents have not given their addresses in the affidavit and the same is in
contravention of Rule 116, we are of the view that there is absolutely no merit in this contention also. Though the Rule contemplates the deponents to
give the address, in the affidavits, the deponents have stated that they are the Company Secretary of Mysore Sugar Company Limited, Mandya
District. When the company can be easily identified and located and moreover when the affidavits were filed only on behalf of the company, the non-
furnishing of the address by the deponents would not contravene the said Rule 116 of the Trade and Merchandise Marks Rules, 1959.
So far as the next contention of the learned counsel for the appellant that no evidence was filed alongwith the affidavit of Shri Ranganatha Gopal
is concerned, we perused the records. Though in paragraph 5, Shri Ranganatha Gopal has stated that he would rely on the documents in support of
using of the said trade mark, when produced, but, the fact remains that the documents were filed alongwith the affidavit which reveal that the
respondent had been using the trade mark since 1972. The learned counsel for the appellant raised an objection that the originals were not produced
by the respondent as contemplated under Rule 57 of the said rules and as such the documents cannot be relied upon. Further, he also contended that
the copies were not furnished to the appellant and on this ground also the documents cannot be relied upon since the appellant was deprived of their
opportunity to put forth their objections. Rule 57 contemplates the service of the copies on the other side only at the request of the other side and at
their cost. When we asked the learned counsel for the appellant as to whether he made any verification in the records in the office of the Deputy
Registrar with regard to the filing of the documents, he answered that there is no obligation on his part to verify the records. If that be so, when the
Rule do not contemplate any obligation on the part of the respondent to furnish the documents to the appellant without asking for the same, the
nonfurnishing of the copies of the documents by the respondent on the appellant do not vitiate the proceedings.
With regard to the non-production of the original documents also, we asked the learned counsel for the appellant as to whether he requested the
Deputy Registrar to direct the production of the originals. For this also, his answer is that he never insisted.
The appellant also did not produce any original documents with regard to his sales turnover. They produced only the Xerox copies of the
documents. But however, the learned counsel for the appellant wanted to rely upon the same. When he wants to rely upon the Xerox copies of the
documents produced by his client to be relied upon, the same yardstick has to be applied to consider the documents produced by the respondents.
Hence, we do not find any merit in any of these contentions of the learned counsel for the appellant
The Deputy Registrar of Trade Marks directed the registration of the respondents on the ground of concurrent user which is under the umbrella of
Sec. 12(3) of the Act. In fact, the respondents have produced the documents for their sales since 16th June, 1972 (the date mentioned in the earliest
invoice) even though, they claimed in the affidavit that they were using the said trade mark since 1970. Of-course, from July 1978 to June 1979, there
is no turn-over. For the period from April 1973 to August, 1990 except 1978â€"79 the respondents claim to have been carrying on the trade in the
same trade mark “PRESTIGE†in respect of their produce “Ginâ€. The evidence produced by the respondent would also establish their claim.
The appellant had claimed the user from January, 1979 and registered under No. 387983, dated 23rd March, 1982. However, the date of their earliest
invoice is 19th March, 1979. On the other hand, the respondents have used the mark from 16.6.1972, which is earlier to the date of use of the mark by
the appellant which is 19.3.1979. The learned counsel for the appellant being unable to get over this factual issue, seems to have concentrated on the
technical matters. The objection on the part of the appellant is that there is no continuous use by the respondent and as such, he is not entitled for the
benefit of Sec. 12(3) of the Act. As already pointed out, except one year, the respondent had been using the mark continuously since 16.6.1972 and
definitely the respondent had earned a reputation of their trade in the particular commodity “Ginâ€. The appellant had claimed the user from
January, 1979. Hence, there is no dispute with regard to the respondent's earlier bona fide use of the said trade mark. But the objection on the part of
the learned counsel for the appellant is that there is no continuous use by the respondent and as such, he is not entitled for the benefit of Sec. 12(3) of
the said Act. Since the respondents have proved by evidence their honest adoption and use of the mark “PRESTIGE†from 16.6.1972 which is
earlier to the admitted use of the mark by the appellants viz. from 19.3.1979, the claim of the appellant for registration of their mark under Sec. 12(3)
read with Sec. 33 of the Act, cannot be granted.
In view of the above reasons, we uphold the order of the Deputy Registrar. Accordingly, the appeal is dismissed. There is no order for costs.