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Judgment
S. Usha, Technical Member
These appeals have arisen out of the orders passed by the Assistant Registrar of Trade Marks on 15.3.2000 allowing the opposition Nos. DEL-
8848 and DEL-8254 and dismissing the application Nos. 479031 and 471518 respectively filed under the provisions of the Trade and Merchandise
Marks Act, 1958 (hereinafter referred to as the Act). As the two applications were for two similar marks, the parties and the facts were one and the
same, the Registrar had passed a common order against which two appeals have been filed.
The appellants M/s J & P Coats Limited filed an application for registration of the trade mark 'ANCHOR' word per se under No. 471518 in class
24 claiming as proposed to be used mark and the trade mark 'ANCHOR PRINTED CANVAS' under No. 479031, in class 24 claiming user since
December, 1982 in respect of tapestry and embroidery, printed canvas and textile articles. In application No. 479031, the appellants filed Form TM-16
to amend the date of user and by an order dated 11.2.1994, the date was amended to read as used since December, 1982.
Both the applications were advertised in the Trade Marks Journal and the respondent No. 1 herein had filed the notice of opposition opposing the
registration of the trade marks. The grounds of opposition were as under:
(a) The respondent No. 1 was carrying on business for last several years.
(b) The respondent No. 1's predecessor conceived and adopted the trade mark as early as 1980 and has been in continuous use since then for textile
goods.
(c) The respondent No. 1 became the subsequent proprietor by virtue of a deed of assignment and the respondent No. 1 had been using the said trade
mark 'ANCHOR' since 1.1.1988.
(d) The respondent No. 1 had filed an application for registration of the trade mark 'ANCHOR' under No. 598507 on 1.6.1993 claiming user since
1980.
(e) The respondent No. 1's trade mark 'ANCHOR' had earned goodwill and reputation among the public and that the public associate the said trade
mark with that of the respondent No. 1.
(f) The rival trade marks and the goods are identical; the trade channels, the class of customers are the same and as such triple identity is established.
(g) The adoption of an identical mark by the appellants was only to trade upon the goodwill earned by the respondent No. 1/opponent.
(h) The use and registration of an identical mark by the appellant will cause confusion and deception among the public and was hence prohibited under
Section 11(a) and (e) of the Act.
(i) The registration is prohibited under Section 12(1) of the Act as the goods are same and the rival marks are deceptively similar.
(j) The application for registration of the trade is colourable imitation and that the appellant cannot claim to be the proprietor of the mark under Section
18(1) of the Act.
The appellants herein / applicant before the Registrar filed their counter statement denying the various averments made in the notice of opposition.
The appellants submitted that they had been carrying on the business of manufacturing and marketing embroidery threads and embroidery kits and
they had bonafidely adopted the trade mark 'ANCHOR' in the year 1942 and prayed that the notice of opposition be dismissed.
After completion of the formal procedure, the matter was set down for hearing before the Assistant Registrar of Trade Marks, New Delhi. The
Assistant Registrar held that the appellant's mark that was registered earlier was not conclusive and the new application for the same has to be
refused registration. The appellant's mark was not distinctive nor was capable of being distinguished as the mark was applied as a mark proposed to
be used. The onus was on the appellant to show that the mark had become distinctive and the same was not discharged by the appellants and hence
did not qualify for registration under Section 9 of the Act.
The respondent No. 1's objection under Section 12(1) of the Act was not sustainable as the respondent No. 1 did not have their trade mark
registered earlier.
The appellants had not given any explanation as to adoption of the trade mark who were only proposing to use the mark whereas the respondent
No. 1 in fact had given the date of user since the year 1980. In the absence of any explanation as to adoption, the appellants are not the proprietors of
the trade mark and the objection under Section 18(1) of the Act was sustained.
The application for registration was against the provisions of Section 11 of the Act as there was every possibility of confusion and deception being
caused. In such circumstances it was for the respondent No. 1 to prove sufficient reputation. The respondent No. 1 had proved the same by way of
various documents like sale invoices, copies of advertisement bills etc., Therefore, registration of the said mark was hit by the provisions of Section
11(a) and (e) of the Act.
Aggrieved by the said orders of the Assistant Registrar of Trade Marks, the appellant filed two appeals before the Hon'ble High Court of Delhi in
CM(M) 443/2000 and CM(M) 405/2000. The same has now been transferred to this Board as per the provisions of Section 100 of the Trade Marks
Act, 1999 and re-numbered as TA/167/03/TM/DEL and TA/325/04/TM/DEL respectively.
The matters were taken up for hearing in the Circuit Bench at New Delhi on 13.3.2008. Learned Counsel Ms. Anuradha Salhotra assisted by Ms.
Shalika Bhalla appeared on behalf of the appellants. In both the appeals the respondent No. 1 had not entered appearance either before the Hon'ble
High Court or before this Board inspite of service of notice.
The learned Counsel for the appellant mainly took us through the impugned order passed by the Assistant Registrar of Trade Marks dismissing the
application and allowing the opposition. The counsel pointed out that the Assistant Registrar had gone wrong by holding that the appellants had not
filed any documents to prove user which was totally a wrong finding. The appellant further submitted that they had adopted the trade mark
'ANCHOR' for embroidery threads and kits as early as 1942 and had been using the same since then The appellant had obtained registration for the
trade mark in various other classes. The impugned trade mark application was filed in the year 1987 as a proposed to be used mark only in respect of
canvas for tapestry and embroidery, printed canvas and textile articles in class 24.
Learned Counsel for the appellant also pointed out that they had taken out Form TM-16 for amendment of the date of user and the same was
allowed which had also been recorded by the Assistant Registrar in the impugned order. From the said recordal it is to be taken that the use of the
trade mark by the appellant was from December, 1982, was the submission of the learned Counsel for the appellant.
Learned Counsel for the appellant also submitted that the Assistant Registrar had given contradictory findings in his order as to the documents. In
one para the Assistant Registrar had stated no documents were filed to prove user and in the other he had stated that several documents had been
filed to prove user.
The last submission of the learned Counsel for the appellant was that their trade mark 'ANCHOR' was a well known mark as per the provisions
of Section 11 of the Trade Marks Act, 1999.
We have gone through the documents filed by the appellants and have considered the arguments of the learned Counsel for the appellants.
The appellant's trade mark was applied for registration as of the year 1987 claiming user as a proposed to be used in respect of the trade mark
'ANCHOR' word per se and 'ANCHOR PRINTED CANVAS'. Subsequently the appellants had filed Form TM-16 for amendment of user to read as
used since December, 1982. There has been an observation of the Assistant Registrar that the Form TM-16 had been allowed in the impugned order.
We, therefore, find that the Assistant Registrar has allowed the Form TM-16 for amendment of the date of user on being satisfied of the use by the
appellant. The mark, in our view, has acquired distinctiveness by use for a period of five years prior to date of filing of application for registration. The
appellants had adopted the trade mark as early as 1942 and have obtained registration in other classes like 23, 26 and 27. When that be so, the
appellants were the proprietors of the trade mark in respect of textile goods prior to that of respondent No. 1 Moreover a plain reading of Rule 144
The class of goods in relation to trade marks to which Chapter X of the Act shall apply and which are in the Act and rules referred to as textile goods
shall be classes 22 to 27 (inclusive) of the Fourth Schedule"" which makes it clear that the Assistant Registrar had gone wrong in holding that
registration in respect of some goods was not conclusive. The appellants in fact had produced sufficient invoices, advertisement materials to prove that
they have been in the business of textile and other allied goods. The Rule 144 is clear that goods in classes 22 to 27 are related goods.
We disagree with the view of the Assistant Registrar that the mark was only proposed to be used and that they did not file any documents to rebut
the objection under Section 9 of the Act. In fact, we find the amendment as to the date of user had been allowed by the Assistant Registrar on
11.02.1994. Therefore, the objection under Section 9 of the Act is rejected.
The next issue under Section 18 of the Act is that who is the proprietor of the impugned trade mark. We do not agree with the findings of the
Assistant Registrar in this regard that the appellant had not given any explanation about the adoption of the mark. Here, we are of the opinion that the
appellant and the respondent No. 1 have not given explanation about the adoption. In fact, we find that the appellants have been using the mark since
1942 as regards other related goods and the present one is an application with regard to embroidery goods which is of the year 1982. The respondent
No. 1 had adopted the mark only in the year 1980. It is a well settled law that priority prevails over a registered user. The appellant's use being prior,
their rights are to be protected and in our view the appellants are the proprietors of the mark. The objection under Section 18 of the Act is answered in
favour of the appellants.
The other issue is the prohibition under Section 11 of the Act. The mark if allowed to be registered would cause confusion or deception to use of
the mark by the respondent No. 1 The onus is on the respondent No. 1 to prove by use that if the mark is allowed to be registered, their mark being in
use for a very long time would cause confusion among the public. In such circumstances as to confusion the public interest is to be considered than a
private individual. Here the appellant's mark has been registered in respect of textile goods as early as 1943 itself and thus have gained wide
reputation among the public. The rights of the respondent No. 1 as a subsequent adopter and user cannot be protected. The protection under Section
12(1) of the Act is not available to the respondent No. 1 We also observe that the Assistant Registrar himself had made a finding in the last part of the
order that the appellants had no doubt acquired reputation in respect of embroidery threads, book and kit in respect of textile goods. Therefore, the
appellant's mark has acquired reputation and goodwill among the public and there was no possibility of confusion or deception being caused. The
objection under Section 11 of the Act is rejected.
Having answered all the objections in favour of the appellants, we are of the opinion that the application Nos. 479031 and 471518 has got to
proceed to registration as the respondent No. 1 have not made out a case.
We, therefore, allow the appeal Nos. TA/167/03 and TA/325/04 setting aside the order of the Assistant Registrar dated 15.3.2000 allowing the
opposition Nos. DEL-8848 an DEL-8254 to application Nos. 47903(sic) and 471518 respectively. No order as to costs.