Berkefeld Filter Analagenbau Gmbh vs Registrar Of Trade Marks And Ors.

S. Jagadeesan, J

This appeal is directed against the order of the Assistant Registrar of Trade Marks, Calcutta, dated 23.9.1997, rejecting the application of the

appellant for registration of their trade mark ""BERKEFELD FILTER"".

The appellant herein filed its application No. 495981 on 16.8.1988, for registration of the word mark ""BERKEFELD FILTER"" in respect of its

goods water pipe system, particularly the sprinkling system and their various parts and components, mobile and stationary apparatus and the equipment

for treating, particularly softening, purification, disinfection and degassing, removal of iron and/or decontamination of water and other liquids with the

aid of filters, as well as their parts and components, filter elements, filter systems, essentially comprising a filtering substance, filter casings, regulating

control and monitoring accessories and equipment, as well as their parts and components being goods included in class 11 of the Trade and

Merchandise Marks Act, 1958 (hereinafter referred to as the 'ACT'). The said application was advertised before acceptance in the Trade Marks

Journal No. 1089, dated 16.10.1994, at page 993. The third respondent, filed their notice of opposition on 15.2.1995, objecting to the registration of the

impugned mark on the ground that they are the registered proprietors of the trade mark ""BERKEFELD"" under No. 323181, in class 11 in respect of

filters for drinking water and parts thereof. The third respondent is using its trade mark since April, 1976 and as such, the registered trade mark is

being identified and associated exclusively with the third respondent is respect of its goods. The registration of the impugned mark would cause

confusion and deception during the course of trade and as such, the same is prohibited under Section 11(a) read with Section 12(1) of the said Act.

Further, the adoption of the impugned mark by the appellant is with a view to trade upon the goodwill and reputation enjoyed by the third respondent in

their registered trade mark and therefore, the appellant cannot claim its proprietary rights in terms of Section 18(1) of the Act. An objection was also

taken under Section 9 of the Act.

The appellant filed its counter on 27.9.1995, refuting all the averments of the third respondent and further stated that the words ""BERKEFELD-

FILTER"" is the leading and memorable part of their trade name and that the said mark is already registered in a number of countries in the world and

is being used internationally. The appellant also filed a request in Form TM 16 to amend the statement of user to read as ""since the year 1984"" and

also they prayed for amendment of the specification of goods by way of another Form TM 16. The appellant further stated that the third respondent

got the registration of its trade mark by committing a fraud and the appellant is actively considering to lodge rectification proceedings. The third

respondent did not file any evidence under Rule 53, but, relied on the facts stated in the notice of opposition. The appellant filed its evidence by way of

affidavit of Mr. Henrich Foge alongwith 5 exhibits. Thereafter, the matter was heard by the Assistant Registrar. Ultimately, the Assistant Registrar of

Trade Marks, passed the impugned order rejecting the application of the appellant, however, giving an option to register its mark for the specification

of the goods other than ""Filters for Drinking water and parts thereof, mainly on the ground that the appellant has miserably failed to establish its prior

use. As against the same, the appellant filed the appeal TMA 203/1998, on the file of the High Court of Calcutta. After the amended Trade Marks

Act, 1999, came into force, the appeal was transferred to this Appellate Board and numbered as TA/301/2004/TM/KOL.

We have heard Ms. Moushumi Bhattacharya for the appellant and Shri S.P. Choudhri for the third respondent.

The learned counsel for the appellant vehemently argued that the impugned mark is the registered trade mark of the appellant is various countries

throughout of the world and it is also their house mark. The exhibits filed alongwith the evidence would establish the use of the impugned mark by the

appellant. The second respondent has erred in relying on the statement of Mr. Henrich Foge, the Managing Director of the appellant firm to come to

the conclusion that the impugned mark was not in use during 1984 and 1986 in India. The appellant has also registered the label mark ""BERKEFELT-

FILTERS"" for drinking water and parts thereof and the said application for registration was made as early as on 18.2.1977, and this aspect has not

been considered by the Assistant Registrar. Hence, the impugned order of the Assistant Registrar is vitiated for non-consideration of certain relevant

factors.

On the contrary, the learned counsel for the third respondent contended that the appellant had not let in any evidence to establish its use much less,

the prior use. Even with regard to the alleged registration of the trade mark for Filters for drinking water, he contended that the appellant did not let in

any evidence for the use of the same and in the absence of any evidence of use, mere registration alone cannot give any protection to them. The

Assistant Registrar has rightly held that the appellant is not entitled for the registration of the impugned mark and consequently, the appeal is liable to

be dismissed.

We have carefully considered the above contentions of both the counsel. There is no dispute that the appellant had registered its mark in several

countries, the list of which is available at pages 84 to 87 of the paper book. As observed by the Assistant Registrar of Trade Marks, the registration in

other countries will not give any right to the appellant for registration of the same in India. Of-course, if there is no opposition, it may be entitled for the

them. But, when there is an opposition from the registered proprietors of similar trade mark, then, it is for the appellant to establish its right to claim

such registration which can be done by establishing its earlier use or otherwise.

In the affidavit filed in support of the evidence on behalf of the appellant, it is stated that the Exhibit 'A' is a brochure, Exhibit 'B' is the list of

worldwide registration, Exhibit 'C' series is the photocopies of some of the registration certificates from different countries, Exhibit 'D' series is the

various advertisements and Exhibit 'E' series is some of the caution notices published in Indian Newspapers. We have perused the relevant exhibits.

Exhibits 'A', 'B', 'C' and 'D' are of no assistance to the appellant to establish its use of impugned trade mark in India. The registration in other countries

has no relevance to claim registration in India, especially, when there is an opposition from the registered proprietor of an identical trade mark.

So far as the user is concerned, in the application for registration, it was stated as ""proposed user"". To get over the same, Form TM 16 was filed

seeking amendment of the user as from 1984. As rightly pointed out by the Assistant Registrar, the affidavit filed on behalf of the appellant in support

of the evidence clearly mentions that the appellant company is using the impugned mark since 1984 as during 1984 and 1986, they trans-shipped their

goods as samples. However, the appellant did not produce any evidence for continuous use of their mark thereafter. Hence, the appellant, having

failed to establish the use of the impugned mark in India, cannot claim any over-riding right against the third respondent, who is the registered

proprietor of the similar trade mark.

Insofar as the claim of the appellant regarding the registration already obtained in respect Filters for drinking water, of-course, there is no

discussion about the same in the impugned order. The affidavit filed in support of the evidence of the appellant did not disclose about the registration

already obtained by the appellant. However, the learned counsel for the appellant contended that the registration being the part of records of the Trade

marks Registry, this Board can take judicial notice of the same. Of-course, the trade mark has been registered and it still remains in the Register of

Trade Marks Registry, we can take it that there is a registered trade mark. But, mere registration cannot give any right or superiority to the appellant

to bow down another registered proprietor. When the conflicting interest arises, it is for the appellant to establish that it is using the registered trade

mark continuously by exercising its right of earlier registration. In the absence of any evidence of user, it is presumed that the appellant is satisfied in

getting the registration alone and not interested in using the same. In such circumstances, the other competing person who establishes the continuous

use of the trade mark will get the benefit and that is what has happened in the case on hand. The third respondent having established its continuous

use of the trade mark and having obtained the registration will definitely have an edge over the appellant.

The Assistant Registrar, considering all these facts and also taking into consideration of the limited registration of the third respondent's mark, has

given an option to the appellant to modify the description of the goods in its application for registration. We do not find any ground for the grievance of

the appellant. We also do not find any reason to interfere with the impugned order of the second respondent. Hence, we confirm the same and the

appeal is dismissed with a cost of Rs. 10,000 imposed on the appellant.