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Judgment
S. Usha, J
Appeal against the order passed by the Assistant Registrar of Trade Marks on 16th March, 2009 dismissing the opposition No. AMD 186675 and
allowing the application No. 876305 in class 11 to proceed to registration. The appeal herein has taken out Miscellaneous Petition to stay the operation
of the impugned order and to direct the 1st Respondent not to issue the certificate of registration under No. 876305 in class 11 to the 2nd Respondent
pending disposal of the main appeal.
The Appellant has been using the trade mark SAMRAT since the year 1975 and is holding registration of the trade mark SAMRAT under No.
306140 in class 7 dated 6th June 1975. The first Respondent herein has dismissed the opposition filed by the Appellant under No. AMD 186675 in
class 11 in application No. 876305 for the trade mark SAMRAT in class 11 with modification to the specification of goods to read as sanitary
apparatus and installations made of ceramics.
The Appellant has prima facie case and is likely to succeed in the main appeal. The balance of convenience is also in favour of the Appellant and
against the 2nd Respondent. The issuance of the certificate of registration to the 2nd Respondent shall be detrimental to the rights of the Appellant.
The impugned order is contrary to the provisions of the Act and is liable to be set-aside.
No prejudice shall be caused to the 2nd Respondent in case the impugned order is stayed by this Hon'ble Board. The Appellant shall suffer
irreparable loss or injury if certificate of registration is issued to the 2nd Respondent. It is therefore prayed that the operation of the impugned order be
stayed with the direction to the 2nd Respondent not to issue the certificate of registration to the 1st registration.
The counsel for the 2nd Respondent filed reply to the Miscellaneous Petition to stay the impugned order denying the various allegations made in the
miscellaneous petition. The Respondent had dealt with the miscellaneous petition stating the facts of the main appeal. The Respondent also denied that
the Appellant has been using the trade mark SAMRAT since the year 1975 and stated that the notice of opposition was filed by the Appellant on the
ground that the registration certificate issued in their favorer under No. 306140 in respect of different and similar goods was proposed to be used mark
as on the date of application for registration. The opposition was in fact filed only to delay the registration of the Respondent's trade marks.
The Respondent also denied that prima facie case has been made out by the Appellant and is likely to succeed in the main appeal. In fact the
balance of convenience is in favour of the 2nd Respondent and not in favour of the Appellant. The 2nd Respondent therefore prayed that the
miscellaneous petition to be dismissed with the direction to the 1st Respondent to issue the registration certificate to the 2nd Respondent.
We have heard both the counsel. Counsel for the Appellant submitted that the impugned application was made on 14.9.99 claiming user since 1.4.99
where there was use of only 5 months by which the mark cannot be stayed to have acquired distinctiveness. In fact, the Respondent had given the
letter R in the circle in the trade mark application which is an offence committed by the 2nd Respondent. The Appellant counsel stated that the
issuance of the registration certificate be stay pending disposal of the appeal.
In reply, the counsel for the 2nd Respondent submitted that there was no legal ground made out for grant of stay and prayed that the miscellaneous
petition be dismissed with costs.
We have heard and considered the arguments of both the counsel and gone through the records, it is well settled principles of law that the stay is
granted on a prima facie case being made out. The Appellant's have claimed user since 1975 which fact has been disputed by the Respondent which
in our considered opinion can be decided only after hearing both the parties on merits. By granting stay, we are of the opinion that the 2nd Respondent
will not be deprived of his common law rights. We are of the view that a prima facie case has been made out for grant of an order of stay. We
therefore stay the operation of the impugned order with the direction to the 1st Respondent not to issue the certificate of registration until disposal of
the appeal. The Miscellaneous Petition is therefore allowed.