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Judgment
S. Jagadeesan, J
The appellants herein filed this appeal against the order of the Assistant Registrar of Trade Marks dated 28.9.1998. The respondents herein filed
application Nos. 520377, 520380, 520378, 520376 and 520374 for registration of their trademark 'NEWMAN'. The application No. 520377 is in respect
of ropes, strings, nets, tents, awnings, tarpaulins, sails sacks, padding and stuffings and stuffing materials (hair capo, feather, seaweed, etc.), raw
fibrous textile materials included in class 22. Application No. 520380 is in respect of gutta pareha, India rubber, balata and substitute, articles made
from these substances and not include in other classes, materials for packing, stopping or insulting, asbestos, plastic in the form of sheets, blocks, rods
and tubes being for use in manufactures included in class 17. Application No. 520378 is in respect of leather and imitation of leather, and articles made
from these materials and not included in other classes, skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness
and saddlery included in class 18. Application No. 520376 is in respect of yarns and threads includes in class 23. Application No. 520374 is in respect
of lace and embroidery riband and braid, buttons, press buttons, hooks and eyes, pins and needles, artificial flowers included in class 26. The appellants
herein filed their opposition in DEL-8789, DEL-8790, DEL-8791, DEL-8792 and DEL-8793 respectively stating that the registration of the impugned
trademark claimed by the respondent would be in violation of the provisions contained under the Trade and Merchandise Marks Act, 1958, hereinafter
called the Act, and mainly based upon the user as well as the registration of their trademark 'NEWMAN' in India and abroad. Their trademark is
The respondents filed their counter to the opposition filed by the appellants. Ultimately, under the impugned order, the Assistant Registrar of Trade
Marks disallowed all the oppositions filed by the appellants and allowed the applications filed by the respondents and ordered to proceed for
registration. The appellants filed CM (M) 87 of 1999, before the High Court of Delhi. The same stood transferred to this Appellate Board by virtue of
Section 100 of the Trade Marks Act, 1999 and numbered as T.A. No. 226/2004/TM/DEL.
It is unnecessary for us to traverse the facts in detail because of the limited arguments advanced by the learned counsel for the appellant. The
learned counsel for the appellant contended that the Registrar of Trade Marks has discussed as to whether the registration of the mark claimed by the
respondent would in any way contravene Section 11(a) and Section 12(1) of the said Act. After elaborate discussion, the Assistant Registrar of Trade
Marks gave a finding in favour of the respondents on the ground that the respondents had earned a good reputation and goodwill by the use of the
trademark 'NEWMAN' and as such the objections of the appellant have to be disallowed. The only contention of the learned counsel for the appellant
is that in the earlier litigation, in a Suit No. 2784 of 87 on the file of Delhi High Court, the same parties had settled their differences of opinion and filed
a Compromise Memo agreeing for certain terms. When there is a compromise decree between the parties, it is un-necessary for the Registrar to
discuss in detail, with regard to the questions raised by the parties and he ought to have considered the rights of the parties only in conformity with the
Compromise Decree. The other findings relating to Section 12(1) and Section 11(a) of the Act are irrelevant when the Compromise Decree is taken
into consideration. Further, such findings would obstruct the rights of the appellants in future against even third parties. As such, the findings of the
Registrar relating to Section 11(a) and Section 12(1) of the said Act can be expunged. Except this, no argument was advanced by the learned counsel
for appellant on any other issue.
The learned counsel for the respondent firmly contented that though the rights of the parties are covered by the Compromise Decree, the appellants
raised the issues relating to Section 11(a) and Section 12(1) in their opposition and hence the Registrar is bound to give a disposal on those issues,
otherwise he may be found fault on the ground that the issues raised in the opposition were not considered. Having invited a finding, that too, adverse
to the appellants, now it may not be open to the appellant to seek for setting aside such findings unless it is established that the findings are
unsustainable either on law or on facts. We carefully considered the above contentions of both the counsel.
The un-disputed facts are that the appellants are using the logo mark 'NEWMAN' consisting of the words 'NEWMAN' written upside down in two
lines as under-:
The respondents are using the trade mark 'NEWMAN' written in a single line with capital letters as under-:
When some dispute arose, the respondents filed a Suit No. 4784 of 87 on the file of the High Court of Delhi for restraining the appellants, who are the
defendants in the suit, from using the trademark 'NEWMAN', which the respondents claimed to be their trademark. Compromise Memo entered into.
The parties filed the Compromise Memo in the Hon'ble High Court of Delhi and ultimately the Delhi High Court disposed of the Suit by the following
order.
This is a suit for permanent injunction which has been filed for restraining the defendant from using the mark 'NEWMAN' which is started to be the
mark of the plaintiff.
During the pendency of the suit, an application under Order 23 Rule 3 CPC has been filed. In the application it is stated that the plaintiff had been
using the trademark 'NEWMAN' represented by the logo which is Annexure-A to the application. The defendant has given an undertaking which
Undertaking is contained in the application and supported by an affidavit of Shri Shyam Sunder Batra which undertaking is recorded and accepted by
the Court to the effect that the defendant will not use the trade mark as set out in paragraph 1 of the application. It has further been undertaken,
which undertaking is recorded and accepted, that the defendant will not use the trade name 'NEWMAN' in the special logo script of the plaintiff or
any other logo script which is deceptively similar thereto or is characterised by reverse reading. The parties, however, agree that the defendant shall
be entitled to use the word NEW MAN in a different script, a specimen of the logo which is currently used by the defendant has been annexed as
Annexure-B to the application. It has further been agreed that up to 31st October, 1988 the defendant shall effect the changes aforesaid and dispose
of all packing materials, stationery articles etc., carrying the impugned features. It has also been undertaken that the said undertaking shall be binding
on the parties and their partners or successors in business or assigns.
Apart from recording of the statement of Shri S.S. Batra, Managing Partner of the defendant, on behalf of the plaintiff, statement of Shri Praveen
Anand, Advocate has been recorded accepting the aforesaid terms of the compromise In view of the aforesaid, the compromise is recorded. The
application shall from part of the order.
Suit No. 4784 of 1987 is disposed of in the aforesaid terms.
Even though the matter has been settled between the parties as early as 1988, now once again both the parties have entangled themselves in the
court litigation by opposing the registration of trademark of each other.
We perused the order of the Hon'ble High Court of Delhi. The contents of the compromise decree is that the respondents herein will not use the
trademark 'NEWMAN' written upside down in two lines, of which the appellants claimed to be the proprietors. The respondents further gave an
undertaking that they will not use the trade name 'NEWMAN' in the special logo script of the appellants or any other logo script, which is deceptively
similar that too is characterised by reverse reading. The respondent is entitled to use the word 'NEWMAN' in a different script. When the parties
have arrived at a compromise in the above terms, they are bound by the same in terms of Order 23 Rule 3 of CPC.
They have arrived at such a compromise. Now it is for us to consider whether the appellant has got any justification in opposing the respondent's
claim for registration of the impugned trademark. It is fairly conceded by the learned counsel for the appellants that the impugned trademark of the
respondents do not in any way contravene the terms of Compromise Decree dated 10.8.1988 in Suit No. 4784 of 87 before the High Court of Delhi.
In such circumstances, absolutely there is no merit in the appeal.
The learned counsel's request is only to expunge the findings in the order of the Registrar of Trade Marks relating to Section 11(a) and Section
12(1) of the said Act. As rightly pointed out by the learned counsel for the respondent that it is not the Registrar who entered into the discussion on his
own volition. Such discussion has been invited by the cantankerous attitude adopted by the parties. Hence even though such an elaborate discussion
may not be necessary for the disposal of the rival claims of the parties, the Registrar had discussed in detail only to avoid any unnecessary comment
from any quarters for non-consideration of the points raised by the parties. The learned counsel for the respondent has also fairly contended that the
whole issue could have been disposed of by the Registrar on the basis of the Compromise Decree.
Now the short question before us for consideration is whether the findings of the Registrar so far as it relate to Section 11(a) and Section 12(1) of
the said Act are to be expunged. At the outset, we make it clear that by expunging the findings, none of the parties are prejudiced because the rights
of the parties are governed by the Compromise Decree passed by the High Court of Delhi. In fact, as pointed out by the learned counsel for the
respondents, the appellants had raised all these issues in their opposition and argued. Consequently the Registrar was compelled to discuss the same.
Having raised those issues in the opposition, at least at the time of hearing, the learned counsel for the appellants ought to have represented that those
issues need not he considered in any detail, in view of terms of the Compromise Decree. But that was not done. On the contrary, arguments were
advanced elaborately on these issues before the Registrar and the Registrar is lift with no other option except to discuss the arguments in detail. We
are able to appreciate the anxiousness of the parties and their counsels in this case. As the rights of the parties had been crystalised in the
Compromise Decree, the lawyers ought to have confined in raising the issues as to whether the claim of the respondents for registration of their
trademark in any way contravene the Compromise Decree or not. It is purely the mistake of the counsel, who invited the unnecessary findings. Taking
into consideration all the circumstances of the present case, as well as the earlier compromise entered into between the parties ending in a court
decree, we are of the view that the elaborate discussion made by the Registrar is unnecessary so far as both the parties are concerned. Hence, we
accordingly expunge the findings of the Registrar of Trade Marks so far as it relates to Section 11(a) and Section 12(1) of the said Act. In other
respects, the order of the Registrar is confirmed.
The parties are advised not to entangle themselves in unnecessary litigation by resorting to object to the mark of each other even though the claim
of one party is in conformity with the terms of the compromise decree. Accordingly, the appeal is dismissed with the above direction. Taking into
consideration of the attitude of the appellants, we are inclined to impose cost. The appellant is directed to pay a sum of Rs. 10,000/- by way of costs to
the respondent.