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Judgment
S. Usha, Technical Member
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 registrable 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 registrable 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 registrable 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.
The matter was taken up for hearing in the Circuit Bench at New Delhi on 28.5.2008. Learned Counsel Shri Saurabh Kapoor appeared on behalf of
the appellants. Though the notice for appearance was duly served on the first respondent, none appeared.
Learned Counsel for the appellant mainly contended that they had adopted and started using the trade mark 'Commando' since the year 1977.
Apart from the present impugned trade mark label, they had the trade mark 'Commando' word per se also registered under No. 459094 as of
25.08.1986. He further contended that the Registrar had only stated that the evidence was not filed in support of application and no other reason
given.
Learned Counsel for the appellant brought to our notice the Trade Marks Journal advertisement filed as Annexure A to the appeal memo. He
submitted that the other trade mark was registered based on the evidence produced before the Registrar and that when the documents were available
in the same office the same could have been verified by the Registrar.
Learned Counsel for the appellant drew our attention in this context to the passage from Law of Trade Marks and Passing Off by P. Narayanan
Sixth Edition at page 110.
Applicants not filing evidence under Rule 51 Rule 51 does not say what is to happen if no evidence is adduced in support of the application or if
intimation had not been sent that he does not propose to adduce any evidence and intends to rely on the facts stated in the counter statement. The rule
being procedure, failure to comply with it cannot be taken to deprive the applicant of his right to prosecute the application though it may lead to the
inference that the applicant has nothing to say against the evidence adduced by the opponent under Rule 50 and that he has no evidence in rebuttal of
the opponents' evidence.
It has been held under the 1958 Act that the expression ""evidence in support of the application"" used in Rule 54 will include evidence in rebuttal of the
case of the opponent and, therefore, it is incumbent upon the applicant dealing with the evidence in support of the opposition to rebut any case that
might have been set up by the opponents under that rule. It follows that if affidavit evidence in support of the application is not filed by the applicant
under Rule 54 it should be taken that he has no evidence in rebuttal to the case put forward by the opponent or his evidence in support of the
opposition.
The omission to file affidavit evidence under Rule 54 will not, however, prevent the applicants from proving their case that on the date of the
application they had the intention to use the trade mark and, therefore, they are entitled to file an application under Section 18.
The next contention of the appellant was that the first respondent i.e. the opponent before the Registrar had not given the actual date of user in
their notice of opposition. The counsel also pointed out to para 2 of the notice of opposition and submitted that the first respondent only have stated
that they have been carrying on business for the last several years and no specific averment in this regard.
The first respondents have not filed any opposition to the other application for trade mark 'Commando' word per se was the other contention of the
learned Counsel for the appellants. The learned Counsel for the appellant also submitted that the Deputy Registrar had not dealt with the
distinctiveness acquired by the appellant's trade mark as per Section 9 of the Act and no finding in that regard was given by the Registrar.
Learned Counsel for the appellant pointed out to para 9 of the counter statement on Form TM-6 filed before the Registrar and submitted that he
had mentioned that the word mark 'Commando' was already registered under No. 459094 in class 33 which was not considered by the Registrar. The
learned Counsel for the appellant also submitted that the opposition itself was not maintainable in view of the provisions of Section 12(1) of the Act
was one of the grounds of this appeal. The appellant relied on the judgment reported in 2000 PTC (24) FB Hastimal Jain trading as Oswal Industries
v. Registrar of Trade Marks in support of his case that the rules to extend time to file evidence is only directory and not mandatory.
We have heard the counsel for the appellants and have gone through the pleadings.
The only issue that arises for our consideration is whether the order passed by the Deputy Registrar as regards the provisions of Rule 51 to 59 of
the Trade and Merchandise Marks Rules, 1959 are mandatory. Rule 54 which is relevant for our present purpose is extracted below:
Evidence in Support of Application.- Within two months from the receipt by the applicant of the copies of affidavits in support of the opposition or
of the intimation that the opponent does not desire to adduce any evidence in support of its opposition, the applicant shall leave with the Registrar such
evidence by way of affidavit as he desires to adduce in support of his application and shall deliver to the opponent copies thereof or shall intimate to
the Registrar and the opponent that he does not desire to adduce any evidence but intends, to rely on the facts stated in the counter statement and or
on the evidence already left by him in connection with the application in question. In case the applicant relies on any evidence already left by him in
connection with the application, he shall deliver to the opponent copies thereof.
We shall only deal with Rule 54 which is relevant here in the instant case. On a plain reading of Rule 54 clearly mentions that the affidavit of evidence
in support of application shall be filed within two months from the receipt of copies of the affidavit in evidence in support of opposition or of the
intimation that the opponent relies on the notice of opposition and does not desire to adduce any evidence. The applicant shall deliver copies of the
affidavit of evidence in support of application to the opponent leaving with the Registrar the affidavit of evidence or shall intimate to the Registrar that
he desires not to file any evidence and relies on the facts stated in the counter statement or he relies on the evidence filed at the time of hearing of the
application when it was accepted for advertisement.
The appellants herein have neither filed their evidence affidavit nor have they intimated the Registrar about their intention to rely on the facts given
in the counter statement or the evidence filed in connection with the application for registration. Generally, it is a well established principle that in an
opposition proceedings, the onus is on the applicant to satisfy the Registrar the applicant's prior use and also that there will be no confusion among the
public if the mark is registered. It is also clear that the burden of proving that the mark for which registration is sought is entitled for registration is on
the applicant, by evidence. The burden to prove the case by the opponents shifts on to the opponents only after the burden to prove is: discharged by
the applicants.
In this case, we observe that the appellants have not complied with the requirements of Rule 54. of the Rules. The main contention of the
appellants was that they had already obtained registration in respect of a similar word mark and that evidence was already available in the office of
the Registrar of Trade Marks. In such a case, it is for the appellant to have intimated to the Registrar of his desire, which has not been complied with.
The decision relied on by the appellants is not relevant to the case on hand. The judgment is where the Registrar has powers to extend time for
filing evidence on an application and such rule is said to be directory and not mandatory. Hence in this case, question of extension of time does not
arise where no such application was filed. The passage from the book Law of Trade Mark and Passing Off by P. Narayanan is also not relevant. The
passage deals with the evidence to be filed by the applicant in rebuttal to the opponent's evidence.
We are, therefore, of the view that the appeal is devoid of any merit and has to be dismissed. Accordingly, the appeal is dismissed upholding the
order of the Deputy Registrar dated 24.11.1997. However, there shall be no order as to costs.