Chandra Prakash Varlani vs Tata Engineering And Locomotive Co. Ltd. And Anr.

S. Jagadeesan, J

The appeal is directed against the order of the Deputy Registrar of Trade Marks, dated 23rd January, 2002, allowing the opposition No. 51952 filed

by the first respondent herein and rejecting the application No. 542832 in class 12 filed by the appellant in the name of Chandra Prakash Varlani, to

register the trade mark label containing the device of two juxtaposed wheels and the word ""TAT"" as its essential features of the mark in respect of

their products and fittings for automobiles and two wheelers.

The appeal which was originally filed in the High Court of Judicature at Madras in T.M.A. No. 5/2002 was transferred to this Appellate Board by

virtue of Section 100 of The Trade Marks Act, 1999.

The appellant filed application No. 542832 in class 12 for registration of trade mark ""TAT"" alongwith the device of two juxtaposed wheels. The first

respondent opposed the above mark under Opposition No. MAS 51952 stating that the appellant's word mark ""TAT"" is identical and similar to that of

the first respondent's mark ""TATA"" and the Deputy Registrar of Trade Marks allowed the said opposition and refused the application of the appellant

for registration.

It seems the appellant filed one more application No. 542831-B in class 12 for registration of two wheels, which mark has been ordered to be

associated with the impugned mark under the present proceeding. The Opposition No. MAS 51458 filed by M/s. Motor Industries Company Ltd.,

Bangalore, against the application No. 542831-B of the appellant, was dismissed by the Deputy Registrar of Trade Marks and consequently the

application No. 542831-B was ordered to be proceeded to registration. Though the appellant's counsel argued this, the Deputy Registrar of trade

marks has not made reference about the application No. 542831-B in the impugned order. However, the order dated 2.1.2002, in respect of application

No. 542831-B was filed in the typed set in M.P. No. 17/04 in T.A. 17/2003.

Now, pending the appeal, the applicant filed an application M.P. No. 17/2004, seeking to amend the trade mark under Application No. 542832 by

substituting the trade mark label with entirely a new mark with the letters ""Tat"" with two wheels filed before this Board and also to order its

association with both the other trade mark Nos. 265676 and 542831-B.

The first respondent filed counter to the said MP. No. 17/2004. When the M.P. No. 17/2004 was listed for disposal, the learned counsel for the

appellant contended that the amendment sought for is not substantially altered to the original trade mark sought to be registered and as such, the

amendment can be ordered. Shri Satish Parasaran, the learned counsel for the first respondent represented that the first respondent has no objection

for allowing the amendment. But, however, if the amendment is allowed, such amended trade mark has necessarily to be published as there is vital

variation between the original trade mark sought to be registered and the amended one. If the objection is called for, the first respondent will get an

opportunity to put forth their opposition. Apart from that, if any other third party wants to oppose the amended trade mark of the appellant, they also

may have an opportunity.

The learned counsel for the appellant, by way of reply, conceded that the appellant has no objection for the publication of the amended trade mark

and also for calling for objections. The learned counsel for the appellant further represented that the Appellate Board may take publication and call for

the objections in respect of the amended trade mark. We directed both the counsel to file a memo in terms of the arguments advanced by them.

Though, both the counsel filed separate memo, the said memos are not in conformity with the arguments advanced before us. Hence, considering the

arguments advanced before us, we are of the view that the 1st respondent has no objection for allowing the amendment provided the amended trade

mark is published afresh and objections are called for. The learned counsel for the appellant also has no objection for the publication of the amended

trade mark and to call for the objections.

So far as the request of the learned counsel for the appellant that the Appellate Board can take up the task of calling for objections, we are of the

view that it may not be possible for the Appellate Board to take up the work of the Registrar of Trade Marks. Hence, the only way out is, consequent

to allowing of the amendment, the order of the Deputy Registrar of Trade Marks has to be set aside and the matter to be remitted back to the Deputy

Registrar with a direction to call for objections by publishing the amended trade mark with label consisting of word ""Tat"" alongwith two wheels and to

dispose of the matter afresh on merits.

Accordingly, the appeal is allowed. The impugned order of the Deputy Registrar of Trade Marks is set aside. The matter is remitted to the Deputy

Registrar of Trade Marks with a direction to publish the amended trade mark of the appellant with letters ""Tat"" along with two wheels and call for

oppositions and dispose of the application No. 542832 filed by the appellant herein afresh on merits. There will be no order as to costs.