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Judgment
S. Usha, J
The instant appeal has arisen out of the order of the Deputy Registrar of Trade Marks dated 24.11.1997 in opposition No. DEL-8420 against the
application No. 459083 allowing the opposition and refusing the application for registration of the trade mark consisting of the label mark 'Commando
XXX Rum' with device.
The Appellants herein filed an application for registration of the label mark 'Commando XXX Rum' with device in respect of rum in class 33 on
25.08.1986 claiming user since December, 1977 under application No. 459083 under the provisions of the Trade and Merchandise Marks Act, 1958
(hereinafter referred to as the Act). The said application was advertised before acceptance in the Trade Marks Journal No. 1066 dated 1.11.1993 at
page 831.
The first Respondent herein filed their notice of opposition on form TM-5 opposing the registration on the grounds that the mark was not distinctive
and so cannot be registered as per the provisions of Section 9 of the Act; that the impugned trade mark is deceptively similar to the Appellant's
registered trade mark and is in contravention of the provisions of Section 11(a),(b) and (e) of the Act and that the mark is not remittable under the
provisions of Sections 12(1) and 18(1) of the Act.
The Appellants herein filed their counter statement denying on Form TM-6 all the material averments on the grounds that the Appellants are true
and lawful proprietor of the trade mark; that the trade mark Commando (word per se) is registered under No. 459094 as of 25.08.1986 in class 33 and
the same is still subsisting and that the Appellant's goods bearing the impugned trade mark has obtained goodwill and reputation and is remittable under
Sections 9, 11(a), 11(b), 11(e), 12(1) and 18(1) of the Act.
The first Respondent had intimated to the Registrar of Trade Marks that they have no evidence and that they were only relying on the notice of
opposition in support of their case. The Appellants were called upon to file their evidence, but the Appellants did not file any evidence nor intimated
their intention to rely on the counter statement or the evidence filed before the Registrar in connection with the application.
On completion of the formal procedures, the matter was heard and decided by the Deputy Registrar for the reasons that the first Respondent had
relied on the notice of opposition in support of their case, whereas the Appellants had not filed any documentary evidence in support of their case nor
had intimated to the Registry that they relied on the counter statement in support of their case and that the burden to prove the case was always on
the applicant which was not done by due compliance and hence the Registrar had rejected the application for registration and allowed the opposition.
The Appellants being aggrieved by the said order, had filed an appeal against the order before the Hon'ble High Court of Delhi bearing CM(M) No.
392 of 1999 and the same has been transferred to this Board as per the provisions of Section 100 of the Trade Marks Act, 1999 and re-numbered as
TA/149/2003/TM/DEL.
The Appellants are the proprietors of the trade mark 'Commando' since 1977. They have been carrying on the business under the said trade mark
continuously without any interruption and thus have built up a valuable good will among the public. The Appellants filed the appeal on the following
grounds :
(a) The said trade mark 'Commando' word per se is also registered under No. 459094 in class 33 as of 25.8.1986 and the registration is still subsisting
and is in force. The impugned trade mark had acquired distinctiveness by long use and was remittable under Section 9 of the Act.
(b) The opposition to the impugned registration is not maintainable in view of the mandatory provisions of Section 12(1) of the Act.
(c) The first Respondent had not filed any evidence to support their opposition whereas the Appellants are the registered proprietors of the trade mark
commando word per se.
(d) The order passed under Rule 54 is wrong as the evidence is available with the Registrar of Trade Marks which was filed in the other application.
(e) The Appellants are the proprietors of the trade mark.
(f) The question of latches and acquiescence also does not apply to the grant or rejection of registration of a trade mark.
(g) The Appellants are the prior users of the trade mark.
(h) The Registrar has gone wrong in holding that the provisions of Rule 51 to 59 are mandatory.
On the above mentioned grounds, the Appellants prayed that the order of the Deputy Registrar be set aside and the application be registered.
This Board had vide order No. 85/08 dated 16th June, 2008 dismissed the appeal as it was devoid of any merits. Subsequently the Appellant filed
W.P. ( c ) 6569/2008 before the High Court of Delhi and the Hon'ble Delhi High Court had set aside the order of the order passed by this Board and
remanded the matter back with a direction to grant one opportunity to the Appellant to file evidence by way of affidavit
The matter was taken up for hearing in the Circuit Bench Sitting at New Delhi on 05.07.2010. Learned Counsel Shri Saurabh Kapoor appeared on
behalf of the Appellant. The Respondent was set expert on 19.5.2010.
The learned Counsel for the Appellant submitted that the Appellant had applied for registration of the label mark 'Commando XXX Rum' with
device under No. 459083 in class 33 on 25.08.1986 claiming user since December, 1977. The Appellant had made an application for registration of the
word mark 'Commando' which was granted registration. The counsel relied on the provisions of Section 16 and 11 of the Act.
The counsel further submitted that the Respondent even in the notice of opposition had not mentioned the date of user though had claimed that
they had been using the trade mark 'Commander' which was identical to that of the impugned trade mark. The Registrar failed to consider the
statement that the trade mark 'Commando' word per se in respect of goods falling in class 33 was already registered.
The counsel finally relied on the Judgments reported in (1) AIR 1978 Delhi 250 Century Traders v. Roshan Lal Duggar & Co and Ors. (2) 1996
114 PLR 59 Jai Prakash Gupta V. Vishal Aluminium Manufacturing Co. (3) 2009 (41) PTC 302 (Del.) Alkem Laboratories Ltd. v. Mega International
(P) Ltd. (4) AIR 1963 SC 449 Amritdhara Pharmacy v. Satya Deo Gupta.
We have carefully considered the arguments and have considered the documents filed by the Appellants as per the directions of the Hon'ble High
Court of Delhi in W.P No. 6569/08.
The trade mark qualifies for registration if the mark is distinctive or is capable of being distinguished. The mark acquires distinctiveness by user.
Here in this case, we find that the mark has acquired distinctiveness by use. The Appellants have filed documents like label approval given by the
excise authorities and the orders issued by the Excise and Taxation Commissioner and other invoices and Bills to prove their user.
The other issue as regards objection under Section 11 is also decided in favor of the Appellants. The Respondent had averred that their trade mark
was 'commander' which was deceptively similar to that of the Appellant's trade mark 'commando'. They had in fact not stated as to the date of user
from when they had adopted and started using the trade mark. Therefore, it is to be taken that the Respondent had adopted only subsequent to that of
the Appellant. The Respondent has not produced any document to prove their user nor have they appeared before us to substantiate the same. The
well settled principle of law is that prior user has more valid rights than the subsequent user. In fact priority in use prevails over a registered
subsequent user. In such a case the possibility of confusion does not arise. The Respondent being subsequent has to prove that if the mark is allowed
to be registered there will be every possibility of confusion. The Respondent has failed to prove the same. That apart, we are of the view that the
marks are not similar, when that be the case, there is no possibility of confusion or deception. Moreover, the Appellants were not before us to
substantiate their plea as to objecting the registration on any ground.
The Appellants herein have proved user since 1977 by way of documents and therefore the adoption could be considered to be honest. The
Appellants have established their user . In Kores (India) Ltd. v. M/s Khoday Eshwars & Son and Anr. 1984 A.L.R. 213 the learned Judge of the
Bombay High Court observed that, 'the degree of confusion is negligible and in my judgment there would be no public inconvenience by registration of
the mark of the Petitioners. In my Judgment, inconvenience which would be caused to the Petitioners far exceeds the inconvenience which may result
to the public if the mark of the Petitioner is not registered."" The above observation applies to the case on hand. There is no doubt that the Appellant's
trade mark namely 'Commando' is prior in point of time and if at all any confusion is caused it could be because of the Respondent's trade mark. Even
that does not arise, in our opinion, as the marks are not similar.
The next issue as regards registration under Section 18 of the Act, the Appellants are the proprietors of the trade mark 'Commando'. The
Appellants are the registered proprietors of the trade mark 'Commando' word per se under No. 459083 as of 25.8.1986. The trade mark has been
subsisting and still in force. The Appellants are therefore the proprietors of the trade mark and therefore they qualify for registration as per the
provisions of Section 18 of the Act.
Having answered all the issues in favor of the Appellants, we accordingly set aside the order of the Registrar. The appeal is allowed with no order
as to costs.