Balaji Industries vs Narula Industries And Ors.

Raghbir Singh, J

CM (M) No. 236/95 was filed in the High Court of Delhi and has been transferred to this Board in terms of section 100 of the Trade Marks Act,

1999 and has been number as TA/112/2003.

Appellant Shree Balaji Industries filed application No. 465957 dated 12.1.1987 for registration of word 'APPU' in class 12. They claimed user since

1.10.1983. The application after having been accepted was advertised in the Trade Marks Journal No. 1002 dated 1.3.1991 at page 1428.

First respondent M/s Narula Industries gave a notice of opposition on 6.5.1991. They claimed that they are using the word 'APPU' and device since

November, 1982 for the goods ""parts, fittings and accessories for cycles and rickshaws"" and they had already made an application for registration of

the said mark under No. 479708 dated 10.10.1987. The opposition of the impugned mark was based under Sections 9, 11, 12 and 18 of the Trade and

Merchandise Marks Act, 1958 (hereinafter referred to as the Act) and the first respondent also prayed for exercise of discretion vested in the

Tribunal under Section 18(4) of the Act, adverse to the appellant. The appellant filed their counter statement on 24.7.1992 wherein they denied

various' averments of the first respondent. First respondent filed evidence by way of an affidavit under Rule 53 of the Trade and Merchandise Marks

Rules, 1959 on 18.1.1993. The appellant filed their evidence by way of an affidavit on 16.2.1993. There was no reply evidence from the first

respondent.

The Assistant Registrar of Trade Marks heard the matter on 12.1.1995 when Shri Shailen Bhatia, advocate for the respondent was only present.

There was no one from the side of the appellant. Appellant rather filed their written statements vide their letter dated 8.8.1994 and requested that the

matter may be decided on the basis of those submissions.

Grievances of the learned Counsel for the respondent had been that the appellant did not supply the copies of evidence inspite of his demand. They

put reliance upon a letter of Shri Joginder Singh, Advocate who appears to have written to them on 13.10.1993 informing that he had only been

appointed to help the appellant and nothing more and in view of that it would be better for the respondent to contact the appellant directly. Learned

counsel for the respondent deduced the state of non-cooperation from the side of the appellant and his counsel and in view of this their evidence

cannot form part of the proceedings. These are the matters which the learned Assistant Registrar has recorded in his order before ultimately arriving

at his findings. He concluded that having glanced through the evidence of the appellant, he was of the view that the impugned mark was being used by

the appellant in respect of 'cycle-pedals' and the same mark was being used by the respondent for the same goods and therefore has a greater risk of

causing confusion and deception during the course of the trade which is violative of Section 11(a) of the Act. He found that there is no evidence from

the appellant and further they have failed to substantiate their use as claimed. There is no basis for their claiming proprietorship under Section 18(1) of

the Act. He did not find even the case suitable for exercise of discretion under Section 18(4) of the Act. In conclusion, he allowed the opposition.

The appeal was taken up for hearing by the Board on 12.8.2004 in its sitting held at New Delhi. Learned counsel Shri A.K. Goel appeared for the

appellant and learned Counsel Shri Shailen Bhatia appeared for the first respondent.

Learned counsel for the appellant drew our attention to the copies of invoices filed by the appellant alongwith their affidavit. The invoices relate the

period beginning with 30.4.1982 (p. 62/cor. of Trade Marks Registry Delhi file) whereas the user has been claimed of is from 1.10.1983. We have

perused those invoices placed in the file of the Trade Marks Registry. Learned Assistant Registrar has not taken note of those invoices in his order.

Learned counsel for the appellant argued that due care had not been taken in arriving at the conclusions by the Assistant Registrar and in view of that

he requested for acceptance of the appeal and remand of the case to the Registrar for considering the evidence and arriving at a fresh conclusion.

Learned counsel for the first respondent vehemently opposed the appeal. He argued that on the basis of the necessary evidence adduced by him in

relation to his application for registration of his mark under No. 479708 dated 10.10.1987, learned Assistant Registrar had been pleased to grant him

registration vide registration certificate dated 31.8.1995. The said mark is for the word 'APPU' and a device thereof. He argued that no rectification

application has been filed by the appellant in relation thereto and thus he has no case for the registration of the mark. He drew our attention to the

letter of Shri Joginder Singh, Advocate showing his disinclination in providing assistance to the first respondent as opponent in the matter. He made a

mention of the non-cooperative attitude of the appellant towards the first respondent to his request for forwarding a copy of the evidence filed by

them.

We have carefully gone through the evidence filed by the appellant before the Assistant Registrar from the file of the Trade Marks Registry. It is

clearly discernible that a good number of invoices relating to sale of pedals with the mark 'APPU' as a word have been adduced by the appellant

alongwith their affidavit. The first of these invoices is dated 30.4.1982. We do not find any mention of these invoices in the impugned order of the

Assistant Registrar. Appellant has also filed statement of sale from the year 1983-84 to 1991-92.

In view of the above, we feel that the Assistant Registrar has reached the conclusion in accepting the opposition and refusing registration without

properly evaluating the evidence adduced before him. The invoices of sale form a vital piece of evidence in transactions of this nature. The Assistant

Registrar should have taken note of the evidence with a view to arrive at the conclusion relating to user of the mark.

In view of the above we feel that the ends of justice will be met only when a fresh hearing is held that the evidence produced in support of the

application is examined with due care. Hence, we allow the appeal and set aside the order of the Deputy Registrar of Trade Marks and remand the

Application No. 465957 back to the Trade Marks Registry for fresh disposal in accordance with law. No order as to costs.