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Judgment
Sanjeev Kumar Chaswal, Technical Member
1 . The Original Appeal arises out of the order of the Assistant Registrar dated 11th, March, 2009 refusing the opposition of the appellant herein and allowed the application of trademark "NOMEX" under application No. 499603 in Class 5 of the respondent under the provisions of the Trade and Merchandise Marks Act, 1958. The Assistant Registrar has rejected the contentions of the appellant in their opposition, being aggrieved by the impugned order of the Assistant Registrar. Therefore, appellant has filed this appeal.
Brief facts of the case are as under:
2 . As per the case of the appellant, the appellant's Company is a limited company incorporated under Company's Act 1956 having registered office in Mumbai. The appellant has production facilities for Dupont Crop Protection Products, Dupont Liquid Packaging Systems. The appellant claims its association with India since 1802, when they used to supply raw materials for black powder for explosives.
3 . The appellant has claimed that they have spent huge amount of time, money and efforts in promotion of trademarks registered under various classes in world over including India. The appellant has further claimed that the appellant is a registered proprietor of many trademarks covering more than 50 countries.
4 . The appellant has obtained registration and is registered owner of trademark "NOMEX" in many countries including India. The appellant has further stated that all the above registrations of the trademark has been renewed from time to time and are valid and subsisting. The details of the same are stated as under;
a) "Nomex" Trademark Registration No. 365579 dated 1st September, 1980 in Class 22.
b) "Nomex" Trademark Registration No. 805151 dated 8th June, 1998 in Class 16.
c) "Nomex" Trademark Registration No. 805152 dated 8th June, 1998 in Class 17.
d) "Nomex" Trademark Registration No. 805153 dated 8th June, 1998 in Class 23.
e) "Nomex" Trademark Registration No. 805154 dated 8th June, 1998 in Class 24.
The appellant came to know through an advertisement dated 16th April, 1999 that vide journal No. 1197, the respondent had filed an application under the name "NOMEX" vide application No. 499603 dated 19th October, 1988 under the Trade and Merchandise Marks Act, 1958 in respect of pharmaceuticals, medical preparations and substances in Class 5 claiming user as proposed to be used.
6 . The appellant has filed a Notice for Opposition dated 13th of August, 1999 vide Opposition No. BOM-54010 against the registration of the trademark "NOMEX" in class 5 under the provisions of trade and merchandise marks Act of 1958.
On completion of the pleadings, the Assistant Registrar heard both the parties, the Assistant Registrar has passed an order on 11th of March, 2009 rejecting the Opposition of the appellant on the following grounds.
(i) The Assistant Registrar accepted the contention of the applicant/respondent herein that they took search on the trademark registry for the trademark "NOMEX" in Class 5 and also made a market survey in the market for medicinal products and there was no conflicting trademark in Class 5.
(ii) The Assistant Registrar held that there is no similarity and identical with the mark that of the opponent as per section 11(A) revised under section 11(1) of the Act. Hence, there is no possibility of confusion and deception under section 11(C) revised under section 11(3) of the Trademarks Act 1999. The goods of the applicants are entirely different from the opponent.
(iii) The Assistant Registrar rejected the contention of the opponent that they have not proved prior user period from 1984 to 1988 and used his discretionary power under section 18(4) of the Act by granting registration of the trademark "NOMEX" in class 5 to the respondent.
8 . The appellant has raised the following contentions in the present appeal are as under:
) The Assistant Registrar has failed to appreciate the appellant use of the trademark "NOMEX" in the international market since 1963 and in India since 1984.
) The Assistant Registrar has failed to appreciate that the trademark adopted by the respondent is identical to the appellant, who is a prior adopter and user in India.
) The Assistant Registrar has erred in holding that usage of the mark by the respondent would not cause confusion and deception amongst the members of the public and trade as the respondent buyers are different from that of the appellant.
) The appellant further claimed that "NOMEX" is a well-known trademark.
) The Assistant Registrar has failed to appreciate that the respondent has no use and is yet to use the mark and it is identical to the appellant trade mark.
) The Assistant Registrar has erred in holding the appellant has not proved prior user from 1984 to 1988.
) The Assistant Registrar erred by disallowing opposition of the appellant and further erroneously used his discretionary power under section 18(4) of the Act, which are contrary to principals of law.
) The Assistant Registrar has erred in holding the respondent had taken proper steps, despite of no search report brought on record.
The respondent has raised the following contentions are stated as under:
a) The respondent has taken care and prior search in selection, adoption as there was no prior use of the trademark in the pharmaceutical industry.
b) The respondent conceived and coined the trademark "NOMEX" for use in respect of medicinal and pharmaceutical preparations falling in Class 5.
c) The registration of application "NOMEX" in Class 5 will not cause prejudice to the appellant under section 9 of the Act as under section 8 to respondent trade mark is distinctive and capable of distinguishing from the goods of the appellant.
10 . We have given our careful consideration to the contentions put forth by the learned counsel for the appellant and respondent and also perused the impugned order.
At the outset, while perusing the impugned decision of the Assistant Registrar of 11th, March, 2009, the Assistant Registrar has rendered a short cryptic order without assigning cogent reasons by simply quoting the provisions under the Trade and Merchandise Marks Act, 1958 revised under sections 11(1) and 11(3) of the Trademark Act, 1999. The impugned order of the Assistant Registrar does not disclose on what grounds or on what material record that he has allowed the registration to go ahead by rejecting the contentions of the appellant/opponent and further does not disclose any judicious reasoning, while exercising his discretionary power vested with him under section 18 of the Act for granting the registration to the respondent herein.
The Assistant Registrar at one end admits in his order that the marks are similar and identical, without divulging sound reasoning as to how he had arrived into conclusion that the mark though identical and similar but still there is no confusion or deception. The Registrar has failed to discuss the cogent reasons in accepting the application of the respondent allowing their trademark to be registered.
In view of the aforesaid reasons, we are of the considered view that the impugned order was passed in gross violation of principles of natural justice. Accordingly, the impugned order of the Assistant Registrar of Trade Marks, Mumbai dated 11.03.2009 is hereby set-aside. The Assistant Registrar shall consider the matter afresh by affording opportunity to both sides and pass orders on merits in accordance with law within a period of three months from the date of receipt of this order.
Accordingly, the appeal is disposed of and there shall be no order as to costs.