Knipex-Werk , A German Company vs Assistant Registrar Of Trade Marks, Trade Marks Registry

Z.S. Negi, J

This appeal under Section 91 of the Trade Marks Act, 1999 is directed against the order dated 19.7.2007 passed by the Assistant Registrar of

Trade Marks, Chennai whereby he has rejected the application on Form TM-57 for review of refusal of application No. 642053 for registration.

The appellant, a German company established in 1982 and engaged in the manufacturing and marketing of hand tools and implements, applied for

registration of trade mark 'Knipex' in class 8 in India on 5.10.1994 and the examiner raised objection under Section 9 of the of the Trade and

Merchandise Marks Act, 1958 (hereinafter referred to as the Act) citing the existence of a conflicting trade mark 'KNIPEX' and directed the

appellant to file reply to the report within a month's time.

The appellant on 15.3.2000 filed a reply to the examination report along with a request on Form TM-56 for extension of time for filing the reply. In

response to the objection under Section 9 of the Act as raised by the examiner it was submitted that the trading style of the applicant is KNIPEX-

WERK, which is different from the trade mark and hence the trade mark was distinctive. A request on Form TM-16 dated 15.3.2000 with the

requisite fee for amending the user details to read as used since 1981 and a user affidavit dated 21.2.2000 to this effect were filed. Thereafter, the

appellant received the respondent's order of refusal under official letter No.TLA/4531 dated 3rd June, 2003 stating that the application is refused

registration on the grounds of objection raised under Section 12(1) of the Act can not be waived.

The appellant filed the Review Application on 1st July 2003 under Section 97(c) of the Act read with Rule 115 of the Trade Marks Rules, 2002

(hereinafter referred to as the Rules). The Assistant Registrar of Trade Marks passed impugned order on 19th July, 2007 whereby he rejected the

Review Petition. It is stated that the finding of the respondent that the applicant has resorted to filing the Review in order to circumvent the official fee

for appeal is without any basis and in total denial of the remedies available to the appellant under the Act and such a finding is contrary to provisions of

the Act. It is further stated that the respondent erred in not giving an opportunity to the appellant to present evidence on the registrability and strength

of the trade mark KNIPEX.

In the meantime a letter was sent to the Registrar of Trade Marks, New Delhi by the proprietor of the conflicting trade mark Knipex, namely,

Bawa Industries Pvt. Ltd. withdrawing its trade mark application No. 587500 in class 8 and accordingly, the Deputy Registrar of Trade Marks, New

Delhi has passed an order recording the withdrawal of the Trade mark application No. 587500 and ordering that the same is treated as withdrawn.

Such a withdrawal has occurred in pursuance of the Opposition filed by the appellant vide Opp. Del-176049 against TMA 587500. The very basis of

rejecting the appellant's trade mark application by the respondent was the existence of the conflicting trade mark, namely, TMA 587500 and the fact

that the same has been treated as withdrawn, clearly paves way to the appellant's trade mark application being registered.

The matter came up before us for hearing when Ms. Shobana Komal, Advocate appeared on behalf of the appellant and the respondent remained

unrepresented. The learned Counsel submitted that the respondent erred in not giving due weightage to the fact that appellants trademark, apart from

being, inherently distinctive, has also acquired sufficient reputation internationally including India on account of its extensive world wide use. The mark

is distinctive and inherently capable of distinguishing the goods of the appellant from the goods of the others. Moreover, the ground of refusal was the

objection raised under Section 12(1) of the Act cannot be waived and now on account of the withdrawal of the only application pending for the

registration of conflicting trade mark cited in the Examination Report, the appellant's trade mark has every right to be registered. The objection under

Section 12(1) raised by the respondent ceases to exist in view of the conflicting mark having been withdrawn by the applicant concerned.

Moreover, the mark has been used in India since 1981 vide an exclusive distributor of the appellant namely M/s Krishan Brothers, New Delhi. She

further submitted that the respondent has failed to take into account that the inherent registrability of the mark has been well recognised in view of the

user affidavit filed by the appellant enumerating the details of use of the mark from 1981 onwards in India including some annexures in the form of

invoices evidencing use of the mark.

After carefully hearing the learned Counsel and after going through the available records, we are of the opinion that the main ground on which the

application has been refused registration no longer exists. It is noticed that the Deputy Registrar of Trade Marks, New Delhi has ordered on 25.7.2007

that the application No. 587500 is treated as withdrawn and opposition No. Del-176049 abates. We do not think it necessary to go into the other

contentions or averments in the matter lest it may influence the lower tribunal in deciding the matter.

In view of the above, we set aside the impugned orders dated 3.6.2007 and 19.7.2007 passed by the Assistant Registrar of Trade Marks and

remand the matter back to Registrar with the direction that the application No. 642053 in class 8 filed on 5.10.1994 be proceeded from the

advertisement stage and thereafter in accordance with law.

However, there shall be no order as to costs.