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Judgment
S. Usha, J
OA/33/2007/TM/KOL
1 . The appeal arises out of the order dated 30.03.2007 passed by the Deputy Registrar of Trade Marks, dismissing the opposition No. CAL-195578
and allowing the application No. 1241691 in Class 25 to proceed for registration with a direction to file an application on Form TM-16 for amending the
specification of goods and also confirming the sales to the State of Jharkhand under the provisions of the Trade Marks Act, 1999 (hereinafter referred
to as the Act).
2 . The respondent herein filed an application for registration of the words ""ANURADHA SHOPPEE"" under No. 1241691 in class 25 on 07.10.2003.
The user wa claimed since 12.08.2003. The said application was advertised in the Trade Marks Journal No. 1328 (S-2) dated 04.02.2005 at page
2261.
The appellant herein filed their notice of opposition objecting to the registration on the ground that they are engaged in the business of manufacturing
of readymade garments including hosiery, clothing, woolen garments etc. since 03.10.1971 under the trade mark ""ANURADHA"". They are the
registered proprietor of the trade mark in class 35. The impugned trade mark ""ANURADHA SHOPPEE"" is almost identical to th appellant's trade
mark ""ANURADHA"". The appellants are prior adopter and user of the trade mark. The user of the impugned trade mark is likely to cause confusion
and deception among the public. The registration is prohibited under S.9 and 12 of the Act. The respondent has claimed false use. The registration
was objected to by the appellant under s. 11, 12 and 18 of the Act.
4 . The respondent herein filed their counter statement stating that the word ""ANURADHA"" was coined and adopted by their predecessors in title in
October, 1971. As dispute arose between the appellant and the respondent, the matter was referred to Arbitration and on 18.07.2003 an Arbitration
Award was passed. The respondents are using the impugned trade mark with the knowledge of the appellants.
5 . The Registrar passed the impugned order on the finding that there were various property disputes between the parties. The appellant herein i.e.
Mr. Sanjay Kumar More had admitted before the Arbitrators that in view of the fact to avoid TDS interest on loan the business was converted into a
proprietorship and hence MRs. Chanda Devi More retired from the business. Considering the fact that the arbitration award came to be passed on
18.07.2003, both parties had the right to use the trade mark ""ANURADHA"" subject to payment of some amount as mentioned in the arbitration ward.
The objection under S. 11 & 12 of the Act is not accepted as there is no evidence. In view of the fact that the disputes have been settled between the
parties before the Arbitrator, the Registrar has exercised his discretion in favour of the respondent and allowed the application to proceed to
registration confining the sale to the State of Jharkhand.
OA/41/2007/TM/KOL
6 . This appeal arises out of the order dated 23.04.2007 passed by the Deputy Registrar of Trade Marks staying the proceedings in Opposition No.
Kol-196496 to application No. 1226374 in Class 25 until the rights of the parties is decided by the Competent Court.
7 . The appellant herein filed an application for registration of the trade mark 'ANURADHA"" under No. 1226374 in Class 25 on 26.08.2003. The user
was claimed since 01.10.1971. The said application was advertised in the Trade Marks Journal No. 1327 Supplementary (IV) dated 24.01.2005 at
page 1905.
The respondent herein filed their notice of opposition objecting to the registration on the ground that they are a well known manufacturer and
merchant inter alia of clothing of all kinds, footwear and headgear and are using an identical mark ANURADHA since October 1971 and also that an
opposition No. 1241691 is pending. The Arbitration Award passed on 18.07.2003 stated that the applicant i.e. appellant was supposed to pay Rs. 15.0
lakhs to the respondent herein. The applicant would only be the owner of the Bank More shop along with its assets and liabilities and was never given
right to manufacture and market any goods under the impugned trade mark. Therefore the claim of user was false. The impugned trade mark was not
distinctive. The registration was prohibited under the provisions of the Act.
9 . The appellant herein filed their counter statement stating that they are in the business of clothing and wearing apparels since 1971 and are using the
trade mark continuously and extensively.
On completion of the pleadings the Registrar passed the impugned order. The Registrar observed that there is a dispute between the parties with
regard to the validity of assignment of rights. This dispute has to be decided by the competent court. In the interest of justice, the proceedings be
stayed till the final settlement of the dispute with regard to the payment of amount as per para 2 of the Arbitration Award.
Aggrieved by the said orders the appellant is before us on appeal. These are cross applications filed by the parties for registration of the trade
marks. In view of the fact that the parties are one and the same in both the appeals and almost similar trade marks the counsel advanced common
arguments.
The learned counsel for the appellant submitted that they are the prior adopters and users of the trade mark ""ANURADHA"" since the year 1971.
The counsel then drew our attention to the finding of the Registrar in the impugned order and submitted that by a deed of dissolution the respondent
had relinquished all her rights in the business and therefore cannot claim proprietorship in the business. The counsel further submitted that the
Registrar had not considered the other objections raised by them.
The grievance of the counsel in OA/41/2007/TM/KOL was that the matter was not fixed for hearing on that day as no notice was given to them.
Even without fixing the matter that day the Registrar proceeded to hear and decide the matter. The counsel, therefore, prayed that the appeals be
allowed setting aside the impugned order.
14 . The learned counsel for the respondent No. 2 in reply submitted that the appellant had admitted before the Arbitrators that the deed of dissolution
was only for the purpose of avoiding TDS on loan amount. Both the appellant and the respondent had been using their respective marks without any
interruption. The counsel further submitted that they had been using the trade mark to the knowledge of the appellants.
We have heard and considered the arguments of both the counsel and have gone through the documents and pleadings.
We shall first deal with OA/33/2007/TM/KOL regarding grant of registration for the trade mark ""ANURADHA SHOPPEE"" under No. 124691 in
Class 25. The applicatio is filed on 07.01.2003 claiming user since 12.08.2003. The appellant was carrying on business along with one MRs. Chanda
Devi More. In the year 1996 there had been a dissolution by which the said Chanda Devi had relinquished all her rights in the business. The appellant
had admitted before the Arbitrators marked as Exhibit D at para 15, ""In 1996 with consent of my Bhabi and Mother M/s ANURADHA was made
proprietorship in favour of myself. Reason for doing the same was to avoid T.D.S. on interest on loan, to reduce income tax liability, to avail full limit
under Sec.88"". This will only show that both the appellant and the respondent had been carrying on the business together.
17 . The Registrar had also held in the order that it appears that there was no practical dissolution of the firm by the deed of dissolution. The dispute
has been solved by the Arbitrators and an award had been passed by which the trade mark was to be used. The opponent i.e. the appellant has not
proved his case for rejecting the application for registration. The appellant having allowed the respondent to use the trade mark cannot now object to
the same. Both had been carrying on business within the reach of the other. The marks are not similar in our opinion. The Registrar has therefore
allowed the registration confining the sale to the State of Jharkhand.
For the reasons stated above, we do not think it necessary for us to interfere with the order of the Registrar. We, therefore, dismiss the appeal and
direct the Registrar to proceed with the registration after considering the request on Form TM-16 in accordance with law.
We shall now deal with OA/41/2007/TM/KOL. This is a case where the Registrar has stayed the proceedings. In our opinion the dispute between
the parties have been settled by the Arbitration Award. According to the Award, one party must pay to the other for the use of the trade mark. In
case of failure to pay, the same shall be paid with interest. When there is a default clause, the party is compensated by money for any default. But the
default will not affect the right relating to the trade mark. The provisions of the Act as regards assignment or transmission do not apply to this case.
If the payment is not made, that shall be paid with interest as per the award clause.
The Registrar's observation/finding that there is an assignment and unless the dispute is settled by the competent authority the matter shall be
stayed is not correct. In fact, if the amount is not paid within the specified time, the defaulter is to pay with interest. We, therefore, think it is a fit case
to be remanded back to the Registrar for hearing the matter afresh after giving sufficient notice to both the parities. The appeal is disposed off
accordingly.
In view of the above, the appeal under OA/33/2007/TM/KOL against application No. 1241691 in class 25 is dismissed and the registration granted
is upheld. The appeal under No. OA/41/2007/TM/KOL against application No. 1226374 in class 25 is remanded back to the Registrar of Trade Marks
for dealing the matter in accordance with law.