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Judgment
Z.S. Negi, J
This is an appeal under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) directed against the order dated 6.12.2004
passed by the Assistant Registrar of Trade Marks whereby he has dismissed the opposition No. MAS-59164 and allowed the application No. 651271
to proceed to registration.
Shri Lalit Jain, Sole Proprietor of M/s. Super Threads (India) filed an application No. 651271, in class 23, for registration of Trade Mark 'ARROW'
with label device of ARROW with world map on it in respect of threads and yarns claiming user thereof since November, 1994 and, after hearing the
preliminary objections, the said application was advertised in the Trade Marks Journal No. 1244 dated 1.4.2001 at page No. 118. Thereupon, the
appellant herein filed notice of opposition No. MAS-59164 on the grounds that the trade mark ARROW and the device of ARROW was adopted by
the appellant, which is a well known Corporation, or its predecessor in mid 1800 and has used the same in respect of wide range of goods including but
not limited to readymade garments; that the trade mark ARROW and the device of ARROW is a world renowned and the reputation thereof has
travelled into India; that the goods under the trade mark have been manufactured and marketed by M/s. Arvind Clothing Limited, Ahmedabad, as the
licensed user of trade mark of the appellant; that it is the registered proprietor of trade mark under Nos.171338 as of 21.10.1955 in class 25 in respect
of wearing apparels for men, women and children, shirts with cuff, neckties, underwear and pyjamas, under Nos. 172713 as of 16.1.1956 in class 24 in
respect of handkerchiefs, 172714 as of 16.1.1956 in class 25 in respect of wearing apparels for men, women and children, shirts with cuff, neckties,
underwear and pyjamas, 198634 as of 25.10.1960 in class 24 in respect of handkerchiefs and 198635 as of 25.10.1960 in class 25 in respect of shirts,
ties, underwear and colors and the same are valid and still subsisting; that the said trade mark has acquired significant goodwill and reputation in India
and that the respondent's trade mark is not qualified to be registered under Section 9 and the registration will be contrary to the provisions of Sections
11(a),(b) & (e), 12(1) and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter to be called as the repealed Act).
After completion of procedural formalities, the Assistant Registrar of Trade Marks heard both the parties on 12.8.2004 and passed the impugned
order allowing the application to proceed for registration and dismissing the opposition on the following grounds that:
(a) the Section 9 does not call for consideration as the Registrar has not raised objection under Section 9 in the application stage and the mark was
considered to be distinctive itself, having no direct or other reference to the character or quality of the goods, and as such the objection under Section
9 of the repealed Act is without merit and is not sustainable;
(b) though both the marks are similar yet the class of goods are different and the nature and composition of respective sets of goods are different
having different nature and purpose, therefore, there would not arise any tangible danger of confusion if respondent's mark is put on the Register;
(c) in the absence of any positive evidence adduced to hold that the respondent's mark is disentitled to protection in the Court of Law, the objections
under Section 11(b) and (e) of the repealed Act is not established by the appellant;
(d) from the evidence it is found that the respondent's adoption of trade mark was bonafide, therefore, the appellant's objection based under Section
18(1) of the repealed Act is not agreeable.
Aggrieved by the dismissal of its opposition No. MAS-59164, the appellant has preferred this appeal on various grounds. The appellant has filed along
with the appeal an application for interim stay of operation of the impugned order dated 6.12.2004. After hearing the said application, issuance of
certificate to respondent No. 1 was stayed by order passed on 1.3.2006 with further direction to the Assistant Registrar that he may proceed with
regard to the other statutory requirements.
The appeal came up for hearing before us wherein Ms. Gladys Daniel, learned Counsel assisted by Ms. V. Mohini appeared for the appellant and
Shri T.K. Ramkumar, learned Counsel assisted by Ms. Sumitha Vibhu appeared for the respondent No. 1. On request made by the learned Counsel
for the respondent, permission was granted to submit written submissions on behalf of respondent No. 1 within a week. Liberty was given also to the
learned Counsel for the appellant to file written submissions, if any, within a week.
Ms. Daniel, learned Counsel for the appellant submitted that the appellant is a well known corporation manufacturing readymade garments under
the trade mark ARROW and the device of arrow simpliciter or in combination with other trade marks. The trade mark ARROW and device of arrow
was adopted by the appellant or its predecessors in mid 1800 and the appellant has obtained registration of trade mark ARROW and/or device and/or
marks containing the same as essential part thereof in several countries of the world including India. Learned Counsel further submitted that the
appellant's trade mark ARROW and device of arrow is a well-known mark and has acquired substantial reputation and goodwill in India and sufficient
documentary evidence has been filed by the appellant to substantiate its rights over the trade mark or device of arrow or both. Ms. Daniel mainly
contended that the conclusion arrived at by the respondent No. 2, that though the mark applied for by the respondent No. 1 and the registered mark of
the appellant are similar to each other yet the goods yarns and threads covered by the respondent No. 1's mark are totally different from that of
appellant's goods, is contrary to the established principles of law. By placing reliance upon the decisions in WWF International v. Mahavir Spinning
Mills Ltd. 1994 (14) PTC 250 and Needle Industries (India) Limited v. Sanjay Jaiswal and Ors. 2002 (24) PTC 646, she contended that thread and
yarn are held to be goods of similar connotation to readymade garments and similarly needle and thread are held to be cognate goods which would
cause confusion and deception. Learned Counsel further contended, relying on the decision in Daimler Benz Aktiegesellchaft and Anr. v. Hybo
Hindustan 1994 (14) PTC 287, wherein the trade mark BENZ in respect of automobile was protected by the Court against the use of similar mark in
respect of undergarments, that the appellant's trade mark is a well-known trade mark having goodwill and reputation worldwide including India as such
the appellant's trade mark is entitled to be protected even with respect to different and unrelated goods. Besides this, she relied upon the judgments in
Caterpillar Inc., Illinois USA v. Jorange and Anr. 1998 IPLR 326 (Mad-DB), Bajaj Electrical Ltd. v. Metal & Allied Products, Kamal Trading
Company and Ors. v. Gillette U.K. Ltd. 1988 PTC 34, Banga Watch Company v. N.V. Phillips, Eindhoven, Holland and Anr., Bata India Ltd. v.
Pyarelal & Co. M. Mahendra Shah of Annapurna Enterprises v. Hindustan Lever Ltd. 1997 (2) Arb. L R 118, Sunder Parmanand Lalwani and Ors.
v. Caltex (India) Ltd. and Ushodaya Enterprises Ltd. v. T.V. Venugopal and Anr. 2001 PTC 727 in support of the principle of law that a mark
identical or similar to a well-known trade mark shall not be registered or allowed to be used in respect of goods unrelated to those covered by the said
well-known mark. It was contended that the goods of both the parties are cognate goods but even the definition of infringement of registered mark
under Sub-section (4) of Section 29 of the Act is widened to include unrelated goods. The observation of respondent No. 2 that the goods under the
rival marks are not similar is fallacious as the threads and yarns are interim products used in the manufacture of end products, like handkerchief and
wearing apparel, of the appellant. In support of her contention, the learned Counsel relied upon para 21 of the judgment of the Apex Court in Corn
Products Refining Co. v. Shangrila Food Products Ltd. reported in. Learned Counsel, by placing reliance upon the decision in Ruston and Hornby Ltd.
v. Zamindara Engineering Co. contended that no confusion or deception is required to be proved and as such the observation made in the impugned
order of respondent No. 2, that no instance/evidence of confusion or deception has been cited and, therefore, there is no reason for refusing
registration, is incorrect. She further contended that the respondent No. 2 erred in observing that the mark applied for used in a normal and fair
manner in relation to its goods will not be reasonably likely to cause confusion/deception amongst the substantial number of persons. She, relying on
paras 11 and 12 of the judgment of the Supreme Court in Amritdhara Pharmacy v. Satyadeo Gupta PTC (Suppl.) (2) 1, contended that the test for
determining the question of confusion/deception is to be decided from the view of a man of average intelligence and imperfect recollection.
Ms. Daniel next contended that the respondent No. 2 has wrongly held that the objection raised by the appellant under Section 9 of the Act is
without merit and is not sustainable. She submitted that the impugned mark of the respondent No. 1 is neither adapted to distinguish nor capable of
distinguishing the goods in respect of which the registration is sought and further, the two months use of mark before making application for
registration is a short period of time to acquire distinctiveness, and in any case the respondent No. 1 has not furnished any evidence to prove its use
even in those two months' period. Reliance was placed upon the decision of this Appellate Board in the Needle Industries (India) Ltd. v. Super
Threads Industries and Ors. 2007 (34) PTC 614 (IPAB), wherein it was held thus: ""To acquire distinctiveness and with a view to be capable of
distinguishing, the mark should have been in use for a considerable period of time....
Learned Counsel next contended that the observation of the respondent No. 2, that the adoption of impugned mark by the respondent No. 1 is bona
fide, is erroneous for various reasons. Firstly, no evidence has been filed by the respondent No. 1 for its claimed use of mark since November, 1994
and the invoice filed for the earliest use is of April, 1995 and as such the use claimed is false amounting to fraud. Where a registration has been
obtained by suppression of a material fact or by making a false representation, such registration is made without sufficient cause and can be said to
have been obtained by fraud as was held by the High Court of Madras in the case of R.S. Ramappa v. B. Monappa and Anr. Any document
evidencing use of the impugned mark by the respondent No. 1 subsequent to 6.1.1995 (date of application) is not relevant to determine its proprietary
rights as was held by the High Court of Calcutta in the case of E. Griffiths Hughes Ltd. v. Vick Chemical Co.. Secondly, no explanation has been
given by the respondent No. 1 for adoption of the impugned mark. Reliance was placed upon the findings in Aktiebolaget Volvo of Sweden v. Volvo
Steels Ltd. 1998 PTC (18) 47, wherein it was held that the lack of explanation or false explanation of name by the defendant may be extremely
relevant.
Ms. Daniel contended that the respondent No. 1 has in the counter statement raised new pleas which were never raised before the respondent No.
2 and also filed additional documents (Annexures B,C & D) along with the counter-statement. The respondent No. 1 has stated that its products are
sold to the industry on the basis of orders placed, whereas the appellant's products are sold across the counter in branded outlets and departmental
stores; that the class of purchaser of the respondent No. 1's product is neither men of average intelligence nor of imperfect recollection and, that the
appellant has no intention of ever entering in the line of manufacturing of the respondent No. 1 which is evident from the abandonment of class 23
applications by the appellant in UK. Further, that the word ARROW is a common English word and the labels when compared are very different and
that the case of the appellant is barred by acquiescence. The aforementioned additional pleas/grounds raised by the respondent No. 1 should be
disregarded being in violation of the principles of natural justice. Raising strong objection to the filing of additional documents at the stage of appeal
that too without application for production of additional documents as evidence is contrary to law, learned Counsel stressed that the additional
documents should be rejected as was rejected by this Appellate Board in the case of Shri Ram Fibers Limited v. E.I. DuPont Nemours & Co. (M.P
No 16/05 in TA/312/2004/TM/DEL) dated 1st day of March, 2005.
On the other hand, Shri Ramkumar leaned Counsel for the respondent No. 1 vehemently opposing the appeal submitted that this Appellate Board
deciding this appeal may take into account the fact that the proceeding before the Registrar in the matter of opposition is a quasi judicial function with
discretionary powers and therefore what needs to be looked into is only whether the Registrar has exercised the discretion vested with him properly
and if this Appellate Board finds that the Registrar has exercised his discretionary powers properly in a lawful manner, then the impugned order
cannot, under normal circumstances, be interfered with. He submitted that the application for registration of the impugned mark was properly
scrutinised by the Trade Marks Registry and only after satisfying themselves that the mark was eligible for registration it was advertised in the Trade
Marks Journal and afterwards while dealing with the appellant's objections in opposition proceedings, respondent No. 2 has rightly held that the
impugned mark could be accepted for registration under Section 9 of the repealed Act. The objection would not be sustainable as there was no
Section 9 objection raised by the Registrar and the mark was considered distinctive by itself since the word had no direct or other reference to the
character or quality of the goods which made it qualified for registration- falling squarely under Section 9(d). Learned Counsel further submitted that
the respondent No. 2 was right in taking into consideration the use of the respondent No. 1's mark despite placing reliance, by the counsel for the
appellant, upon the judgment of this Appellate Board in Needle Industries (India) Ltd. (supra) as that case is distinguishable wherein the user under
consideration was the user to establish concurrent use which is not applicable to the facts of this case and also that case was judged on the basis of a
well-known trade mark.
Shri Ramkumar submitted that with regard to Section 11(a) objection, the respondent No. 2 had rightly applied his mind to the facts furnished
before him and passed order under that section taking the relevant evidence placed on record before him and thus the finding cannot be interfered
with. After going into the merits of the case, the respondent No. 2 has rightly held that the goods covered by the rival marks are totally different and
notwithstanding the submission of the appellant's counsel that the goods of respondent No. 1 are intermediary, the claim that the goods manufactured
are different from the goods of the respondent No. 1 and they were to be classified as goods of different class. Heavy reliance was placed by the
counsel for the appellant of Corn Products case (supra) to maintain that threads go into the manufacture of garments and, therefore, the same should
not be allowed. Learned Counsel submitted that in Corn Products case the question that was discussed was whether any confusion or deception
would arise of the use of the impugned mark and in that case the reputation of the appellant therein was established beyond doubt by way of affidavits
and also by admission by the respondent. Therein, the respondent led no evidence of actual user of the mark and lastly the matter was decided on the
grounds of trade connection, which is that there must be some connection in the course of trade between the two products for a chance to exist for
deception or confusion. On the contrary in the instant case it is established beyond doubt that there exists not a shred of confusion or deception even
after using the respondent No. 1's goods openly and honestly in the market for more than a decade and on the contrary there exists no trade
connection between the goods of respondent No. 1 and the appellant as one is sold in the shops and the other is sold on orders booked from industrial
manufacturers. Relying on the decision of the Privy Council in Thomas Bear & Sons v. Prayag Narain (1941) 58 RPC 25 it was submitted that a
mere statement of deception or confusion ought not to be made but that ought to be proved as laid down by that judgment. The learned Counsel
submitted that the practice of Trade Marks Registry based on the recommendation of the Textile Advisory Committee is to treat threads and yarns to
be goods of different descriptions (see Law of Trade Marks and Passing Off, by P. Narayana, 6th Edition, p. 249). The Panda case (supra) relied
upon by the learned Counsel for the appellant is distinguishable on the facts that the mark PANDA adopted by the plaintiff was a world renowned
mark and plaintiff had sales in different parts of India and thus there existed a trade connection in India, therefore, interim injunction was granted
against the defendant in the passing off suit filed by the plaintiff. On the contrary, the appellant, in the present case, has not established any existence
in India. Even assuming without admitting that the appellant has a licensee in India, they have not filed a single shred of bills or invoices of sales in
India bearing the trade mark and proof of establishment of shops etc. but claimed to be the well-known user on the face of some alleged exports.
Further, when there is no evidence of any sale in India by the appellant, there can be no question of trade connection. Learned Counsel pointed out
from pages 179 to 249 of the typed set that all the documents which contain the trade mark are only purchase orders of the appellant on its letter
heads and custom documents filed by it and none of the bills and invoices issued by the Indian suppliers have used the trade mark ARROW but on the
contrary one licensee/supplier used its own mark. In the list of countries, where the appellant has licensees all over the world, India does not figure.
Shri Ramkumar submitted further that the worldwide list filed by the appellant showing registration of trade marks obtained by it cannot support
the appellant's claim of worldwide use of the well-known mark as renewal of majority of the marks are not known and such list can, by no stretch of
imagination, constitute evidence of world wide use of the mark ARROW by the appellant. Likewise, none of the copies of advertisements filed by the
appellant pertain to the territory of India. Learned Counsel stressed that contrary to the claim of the appellant that its mark is well-known mark and
would qualify for protection under the well-known mark, neither the alleged user by the appellant in India has been established nor its transborder
reputation established by way of advertisements or affidavits or proof of successful defence of its registered trade mark or in any other manner as
envisaged under the provisions of the Act. In reply to the objection raised, to the documents at Annexures B, C and D to the typed set, by the counsel
for the appellant, Shri Ramkumar submitted that these are public documents and as these are available in public domain there was no necessity to file
a petition for these additional documents. He submitted that the unreported case of Shri Ram Fibers Ltd. (supra) relied by the counsel for the appellant
is not applicable to this case as in the case relied upon, certain additional documents were filed at the appeal stage whereas the documents field in the
instant case are available in the public domain.
Learned Counsel submitted that with regard to the objections under Section 11(b) and (e), the respondent No. 2 has, based on the submissions
made and facts furnished in the opposition proceedings, rightly held that the opposition would not stand under these clauses of the section. It was
submitted that the mark of the respondent No. 1 is not contrary to any law for the time being in force to be hit by Section 11(b). With regard to 11(e),
it was submitted that the mark of respondent No. 1 is entitled to protection in a Court of law as no case has been made out by the appellant to the
contrary and that the respondent No. 2 has applied his mind and held rightly that the opposition should be dismissed on this ground.
Learned Counsel with regard to objection under Section 12(1) submitted that the appellant has failed to furnish any prima facie finding by any
authority that the goods for which registration is sought are goods of the same description, though the appellant has cited number of cases which deal
with different goods, which have been held to be goods of the same description. By trying to make case wise distinction of cited cases by the
appellant's counsel, it was further submitted by Shri Ramkumar that the cases cited have been decided on the basis of the reputation of the marks,
awareness created by the use of the marks, marks being household names, reputation established by heavy user or advertisements, or affidavits filed
to establish transborder reputation. Learned Counsel, in support of his argument, also submitted that in the matter of an application by J. & J. Colman,
Ltd. to register a trade mark (Vol XLVI RFC 126), the Court held that mustard and semolina are goods of a different description and not of the same
description; one is a food, and the other a condiment and in the United Brothers v. United Trader 1997 (17) PTC 603, the High Court of Delhi held
that goods manufactured by the plaintiffs and defendants may be sold in the same shop or counter but the said goods are so different in shape and use
that there cannot be any confusion in the mind of the purchaser that the goods manufactured by the defendants are that of the plaintiffs.
Learned Counsel for the respondent No. 1 submitted that the mark was adopted honestly and in due course of business in 1994 and in 1994 the
appellant had no presence in India, except only for purchasing material from India. The decision rendered by the High Court of Bombay in Cluett
Peabody & Co. Inc. v. Arrow Apparels 1998 PTC (18) 156 strengthens the case of the respondent No. 1, wherein interim injunction was refused to
the petitioner on the grounds that petitioner (appellant herein) had not used its trade mark in India for a long period of time and that there was no
evidence of date on which the reputation had travelled into India.
Shri Ramkumar contended that in the present case the registered user or licensee of the appellant should have been made party to the proceeding
as required by Section 136 of the Act. There is no merit in the submission of the counsel for the appellant that as in the opposition proceeding the
licensed users need not be impleaded, therefore, fresh parties in the appeal could not be added. Learned Counsel concluded his argument by placing
reliance on the decision of the Apex Court in Milment Oftho Industries and Anr. v. Allergan Inc 2004 (28) PTC 585 (SC) wherein the Court held as
under:
Multinational corporations, who have no intention of coming to India or introducing their products in India should not be allowed throttle an Indian
company by not permitting it to sell a product in India, if the Indian company has genuinely adopted the mark and developed the product and is first in
the market....
Learned Counsel for the appellant in reply/clarification to the submissions/contentions of the respondent No. 1 submitted that the respondent No. 1
has raised certain new questions of facts at the time of hearing which are frivolous and have been made to protract the proceedings and to divert the
attention of the Appellate Board from the main issue involved. The first new issue raised is that the appellant has not impleaded its licensees or
registered users in the appeal to which the learned Counsel submitted that the provisions of Section 136 of the Act has no application to the present
case as the same is not filed under Chapter VII of the Act and besides this, the proceedings from which the appeal arose was filed by the appellant
alone. The next new issue is that the appellant's trade mark ARROW has a disclaimer for the device of arrow. Relying upon the decision of the
Supreme Court in The Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. learned Counsel submitted that the disclaimer does not take away the
right to oppose and the disclaimed trade mark is not a license in the hands of unscrupulous traders to exploit the registered proprietor's goodwill and
reputation. In relation to issue that the appellant has no use in India and any use since 1985 is through its licensees, learned Counsel relying on the
decision in WWF International (supra) submitted that the law in India recognises the use of trade mark by licensee as amounting to use by the
proprietor thereof. She further submitted that the documents relied upon by the appellant to establish use of trade mark ARROW and device of arrow
in connection with exports from India are relevant and substantiates the appellant's case as the same has statutory support under Section 56 of the
Act.
We have heard the arguments of learned Counsel for both the sides carefully, gone through the records along with opposition proceedings file of
the Trade Marks Registry and the written submissions on behalf of both the parties and a host of case law cited by them and thereafter we have
arrived at the conclusion that this is a fit case to be remanded to the Registrar of Trade Marks for considering the matter afresh for the following
reasons:
(a) The application No. 651271 for registration and the notice opposing the registration being No. MAS-59164 were filed under the repealed Act but
the impugned order is found to be passed under the repealed Act without taking into consideration of the requirements of the corresponding provisions
of the Act. It is undisputed that the application for registration and the opposition thereto were pending at the commencement of the Act and in terms
of Section 159(3) of the Act, the impugned order ought to have been passed under the corresponding provisions of the Act. The respondent No. 2 has
passed the impugned order under the provisions of Sections 9, 11(a), (b) & (e) and 18(1) of the repealed Act without taking into full consideration the
corresponding provisions of Sections 9(1)(a) & (b), 9(2)(a), 11(1) & (3) and 18(1) of the Act. While determining whether there exists likelihood of
confusion on the part of the public, which includes the likelihood of association with the earlier mark because of proposed trade mark identical with an
earlier trade mark and similarity of goods covered by the trade mark, or similarity to an earlier trade mark and the identity or similarity of the goods
covered by the trade mark shall not be registered but in the present case the aspect of 'likelihood of association' was not determined under Sub-section
(1) of Section 11 of the Act (refer para 7of the notice of opposition). Sub-section (2) of Section 11 provide that a trade mark which, is identical with or
similar to an earlier trade mark and, is to be registered for goods which are not similar to those for which the earlier trade mark is registered in the
name of a different proprietor, shall not be registered if or to the extent, the earlier trade mark is a well-known trade mark in India and the use of the
later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark. Though
the appellant claims that its trade mark and device of arrow are world renowned; that the reputation travelled into India; that in India it also has
acquired significant goodwill and reputation and its trade mark is well-known (vide paras 4 and 5 of notice of opposition, and para 11 of affidavit dated
20.11.2002 of Sh. Surinder Singh) and these claims [having regard to the provisions of Sub-sections (5) to (11) of Section 11 of the Act] have not been
taken into consideration/adjudicated upon by the respondent No. 2. Likewise the provisions of Section 11(3) have not been taken into consideration in
the opposition proceedings.
(b) The respondent has raised objection that the registered user or licensee of the appellant had not been made a party to the proceedings. The reply
of the appellant thereto that the provisions of Section 136 of the Act (corresponding to Section 114 of the repealed Act) has no application to the
present case as the same is not filed under Chapter VII of the Act and besides this, the proceedings from which the appeal arose was filed by the
appellant alone. From the plain reading of the section, part of the reply of the appellant to the extent that the present case is not filed under Chapter
VII of the Act is not sustainable. However, the other part of the reply of the appellant that the opposition was filed by the appellant alone and
therefore in the appeal arising wherefrom the registered user need not be made a party has a considerable force. The registered user has a direct
interest in the trade mark of which it is such user. With a view to comply with the mandatory statutory requirement, we are of the opinion that the
registered user ought to be made a party before the lower tribunal so as to have an opportunity of being heard, if required. Para 8 of the affidavit
dated 20.11.2002 of Shri Surinder Singh has stated to have filed therewith the relevant pages of advertisements by the licensed user made in the
newspapers and magazines but no such pages are found with the said affidavit. The affidavit further states that the licensed user have sold readymade
garments under the trade mark ARROW and have spent substantial amount in promoting and advertising the products but no details have been
furnished. The said affidavit has annexed sample copies of certain invoices/shipping documents/order letters in respect of goods under the trade mark
ARROW and device of Arrow but there is no whisper in the order about the consideration/worth/acceptance or otherwise of those invoices, etc.
From the annexure to the said affidavit it is seen (at p.98) that M/s Coromandel Garments Limited, Madras is also the registered user of the appellant
(which has used its trade mark 'cordel' on certain invoices) but its name as a registered user has neither figured in the notice of opposition nor in the
said affidavit and also nothing is mentioned about it in the impugned order.
(c) The respondent has raised a new fact in the case that its goods are sold in special markets, to people who are in the industry and are well aware of
the high quality of goods that are needed for their production, who are not people of average intelligence and imperfect recollection but are people of
above average intelligence and high technical competence which is the bench mark for people making such purchases. This new fact is required to be
enquired into by the Registrar of Trade Marks by taking into consideration of such surrounding circumstances as may be necessary to enquire into the
factual position.
(d) The respondent has filed certain additional documents to establish that the appellant has no intention of ever entering in the line of manufacturing
goods under class 23 in view of the abandonment of class 23 application of the appellant in the United Kingdom. As the said additional documents are
filed without application for permission of the Appellate Board by taking the plea that these documents are available in the public domain and as such
no application for filing them is required. These documents may, after filing the same by the respondent No. 1, be taken on record as per procedure
prevalent in the Registry of Trade Marks. Further, the respondent has raised another new issue that the appellant's trade mark has disclaimer for the
device of arrow and as such the appellant has no locus to oppose the application for registration. This aspect also requires to be enquired into by the
Registrar. Though the respondent No. 2 has recorded in the order that from the evidence it is clear that respondent No. 1's adoption of the trade mark
is bonafide but it is not clear as to what is that evidence which satisfied him that the adoption is bonafide.
Counsel for both the parties advanced their arguments for and against the distinctiveness of the mark. But it is found that the issue of
distinctiveness of the impugned mark has not been raised by the appellant in the appeal on hand. Hence we have not taken into consideration the
arguments in relation to distinctiveness of the mark applied for by the respondent.
For the reasons stated in paragraph 17, we do not consider it necessary to discuss the large number of decisions cited or relied upon by the parties.
In view of the above, the impugned order dated 6.12.2004 is set aside and the matter relating to consideration of the application for registration and
of opposition thereto is remitted back to the Registrar of Trade Marks with direction to consider the matter afresh in accordance with law and decide
it as expeditiously as possible, but in no case later than six months from the date of receipt of this order. Let a copy of this order along with the
opposition file of the Trade Marks Registry be sent to Registrar of Trade Marks for taking appropriate action at his end.