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Judgment
S. Usha, J
This appeal arises out of the order dated 15.10.2008 passed by the Assistant Registrar of Trade Marks dismissing the opposition No. MAS-2781
and allowing the application No. 457890 to proceed to registration as per the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the
Act).
The respondent No. 1 herein filed an application for registration of the trade mark 'SAHEENA' in class 3 in respect of cleaning power under
application No. 457890 B on 01.08.1986 claiming to be a proposed to be used mark. The application was advertised as accepted in the Trade Marks
Journal No. 1032 dated 01.06.1992 at page 255.
The appellant herein filed notice of opposition against the registration of the impugned trade mark on the ground that they adopted a trade mark
'SABENA' in respect of cleaning powder as early as 01.01.1963; their trade mark had acquired wide and excellent reputation; the impugned trade
mark 'SAHEENA' is identical with the appellants already existing trade mark 'SABENA'; the marks are identical as well the entire get up lettering
style and colour scheme on the pouches are identical and the registration if granted would be in contravention of the pro visions of the Act. The
respondent No. 1 filed their counter statement to the notice of opposition denying the various averments made therein. They further had stated that
though the appellants have pleaded that they are the registered proprietors of the trade mark nothing has been filed to prove the same. The rival marks
are entirely different and the registration is not prohibited under Section 12 of the Act. The conflicting mark as claimed by the appellant was not stated
in the examination report. The registration does not offend the provisions of the Act.
On completion of the formal procedures, the matter was heard and the impugned order was passed on the finding that the appellant had not proved
their user since 01.01.1963 as claimed in their notice of opposition and hence the trade mark cannot be said to have acquired reputation. The objection
under Sections 11(1) and 9(2) 93) are not sustainable. The respondent No. 1 had produced documents to prove user since 1969 and as prior user were
entitled to registration under Section 12 of the Act. The objection under Section 9(2)(a), 11(3)(a)(c) of the Act were rejected as both the marks were
used together and when one mark was registrable and there may be confusion will not be a bar for registration. The objection under Section 18(1) of
the Act was rejected as the appellant were not prior in adoption and use of the trade mark and cannot be termed to be the proprietor of the trade
mark.
Aggrieved by the said order, the appellants have preferred the present appeal. The main grounds of appeal are-
(a) the order of the Registrar is contrary to law, probabilities of the case and violative of the principles of natural justice;
(b) the learned registrar erred in holding that the word Sabeena is distinctive and capable of distinguishing the goods of the respondent No. 1;
(c) there is no legal basis on which the entire opposition is decided by the Registrar;
(d) the respondent No. 2 erred in concluding that the respondent No. 1 has been using the mark SAHEENA since the year 1969;
(e) the Registrar erred in holding that the copy of Form TM 28 filed by the appellant is subsequent to the relevant date;
(f) the Registrar ignored the established principle of law that the search report issued by the Registrar does not prove that the mark applied for
registration is not similar to a registered trade mark already on the Register;
(g) the Registrar erroneously concluded that the respondent No. 1 is the prior user of the trade mark;
(h) the sales tax registration does not prove use of a mark on and in relation to goods in the course of trade;
(i) the learned Registrar erred in holding that the marks Sabena and Saheena are not similar;
(j) the learned Registrar ought to have refused registration of the impugned mark under Section 12(1) of the Trade and Merchandise Marks Act, 1958
and Section 11(1) of the Act;
(k) the Registrar failed to take note of the fact that the user claimed by the appellant in their trade mark application for registration under No. 534459
dated 11.08.1990 is 01.01.1977;
(l) the Registrar ought to have refused registration under Section 11(3) of the Act;
(m) the Registrar should have held that the marks are deceptively, phonetically and visually similar and the likelihood of confusion in the minds of trade
and public is vulnerable;
(n) the respondent No. 2 erred in holding that the mark of the respondent No. 1 qualifies for registration under Section 9 of the Act;
(o) the impugned order is contrary to law, well established principles of law, equity and good conscience;
(p) the order is contrary to the facts on the record and also to the principles of law and is liable to be set aside.
The respondent No. 1 filed their counter statement denying the allegations made in the grounds of appeal. They stated that they had adopted the
trade mark as early as 01.01.1969 and had been using the same since then continuously and extensively. They made a search in the Trade Marks
Registry before applying for the registration of the trade mark and found that there was no conflicting mark available on the Register of Trade Marks.
The appellants have no locus standi to oppose the trade mark. The rival trade marks are totally different and there is no similarity between the two
marks. There is no infirmity in the order of the Registrar. The balance of convenience is in favour of the respondent No. 1.
The appellant filed their reply to the counter statement denying the allegations made therein.
The matter came up before this Appellate Board on 22.04.2010. We have heard the arguments of the learned counsel Shri A.A. Mohan, learned
counsel appearing for the applicant and Shir A.s. Balaji, learned counsel for the respondent.
The counsel for the appellant submitted that the impugned order has been passed without any application of mind. The matter was heard in the year
2004 and the impugned order was passed in the year 2008 by the Registrar. The rival marks SABENA AND SAHEENA are deceptively and
phonetically similar. The impugned trade mark when applied for in the year 1986 was proposed to be used whereas in the counter statement filed
before the Registrar of Trade Marks the respondent has claimed user since 01.01.1969 without any amendment and the same has been accepted by
the Registrar which is without any basis. The civil suit has no relevance here in the opposition proceedings and relied on the judgement of this
Appellate Board adopted in 2005 (30) PTC 542 (IPAB) Jolen Inc. v. Assistant Registrar of Trade Marks and Anr...
In reply the counsel for the respondent No. 1 submitted that though the appellant claimed user since 1963 there is no evidence advanced to prove
the same. The date of user given in the copyright registration is of the year 1977 only. The counsel brought to our notice the sales tax registration
dated 14.10.1969 and submitted that they adopted the trade mark 'SAHEENA' as early as 1969 itself. The counsel also pointed out that the exhibit C
at page 38 the appellant's cleaning powder pouch there was a mention that the trade mark under No. 317386 was registered which was in fact under
opposition.
The counsel also relied on the observation of the Registrar in the impugned order that though the appellant claimed user since 1963 no documents
produced to prove the same. The counsel, therefore, prayed that the appeal be dismissed and the impugned order be upheld.
In rejoinder the counsel for the appellant submitted that the impugned trade mark was prohibited registration under Section 11 (3) of the Act as it
would lead to confusion and deception and amount to passing off. The user claimed by the appellant from the year 1977 is proved by their copyright
registration certificate.
We have carefully considered the arguments of both the counsels and have gone through the pleadings and documents. The main contention of the
appellant was that the rival marks are phonetically and deceptively similar and the mark was prohibited registration under Section 11 of the Act. The
impugned mark, if allowed to be registered, would lead to confusion and deception. The other contention was also that they had been using the trade
mark SABENA since 01.01.1963 continuously and extensively by which the mark has gained wide reputation among the public. But no legal evidence
adduced before us to prove the same.
Even if we are to take into consideration the Trade Mark Registration filed by the appellant they are of the year 1976 and 1990 under Nos. 317386
and 534458 respectively. In the memorandum of grounds of appeal at para O, the appellant themselves have averred that their user is 01.01.1977.
While that be the case, it is to be taken that there was no user till 1977 and that the mark was not adopted as early as 01.01.1963. Be that as it may,
the other issue will be that mere registration will not help the appellant to prove their user. The decision quoted by the Registrar in the impugned order
-1998 PTC-18 in M/s Gupta Enterprises Vs Gupta Enterprises is applicable to the case on hand and the settled principle has been laid down by the
Apex Court in other matters. It was held, 'the presence of a mark in the register does not prove its user at all. It is possible that the mark may have
been registered, but not used. It is not permissible to draw any inference as to the user from the presence of the mark on the Register. The only way
by which the user can be proved is by leading the evidence which the opponents have failed to do so, therefore, simply relying on the registered trade
mark is not enough to prove the user of the registered trade mark'.
On perusal of the copyright registration certificate relied on by the appellant, it is seen that the first publication is only of the year 1977 which has
not been denied by the appellant.
The issue of passing off has to be decided based on the user date. It is clear in a passing off action the prior user gets a valid right than the
registered proprietor. Here again, it is the respondent whose use is from the year 1969 whereas the appellant's is of the year 1977 though they claim to
be using the same since 1963, which has not been substantiated by valid evidence.
Even assuming the rival trade marks are similar, when the respondent is prior in adoption and use, the use cannot be said to be dishonest. The
respondent's trade mark is, therefore, entitled to be registered. The appellant has failed to let in evidence to prove their user which burden heavily lies
on them. The respondent No. 1 has produced the sales tax registration certificate dated 14.10.1969 which proves the respondent's user of the trade
mark SAHEENA.
The issue as regards proprietorship of the trade mark is concerned, it has already been decided that the respondent is the prior adopter and user of
the trade mark and the adoption is honest, in such circumstances, we have no hesitation in holding that the respondent No. 1 is the proprietor and is
entitled for registration as per the provisions of Section 18 (1) of the Act.
Having decided all the issues in favour of the respondent, we find no reason to allow the appeal. The appeal is, therefore, dismissed with no order
as to costs. Since the appeal itself has been dismissed, M.P. Nos. 37 and 38/2009 have become infructuous and the same are dismissed accordingly.