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Judgment
S. Jagadeesan, J
1 . This appeal arises out of the order of Deputy Registrar of Trade Marks dated 28.7.1992 disallowing opposition No. DEL 4123 of the appellant
herein.
The facts of the case are that the first respondent herein filed its application under No. 365580 on 1.9.1980 for registering the trade mark
'TEFLON' in respect of synthetic textiles, fibres and filaments included in class 22 of Fourth Schedule of the Trade and Merchandise Marks Act, 1958
(hereinafter referred to as the said Act). The said application, before acceptance under proviso to section 20 subsection 1 of the said Act, was
advertised in Trade Marks Journal No. 823 dated 16.5.1983 at page 1101. On 5.1.1985 the appellant herein filed a notice of opposition stating that they
are the proprietors of the trade mark 'TUFLON' for fishing lines and the registration is proceedings under No. 339710 in class 28 and under No.
349395 for fishing nets in class 22. The first respondent herein is the registered proprietor of the trade mark ' 'TUFLON' under No. 322468 for twins
and cords. Since the goods of the first respondent are of the same description and the impugned trade mark is also similar, the registration of the same
will be in violation of sections 9, 11(a), 11(b), 11(e) , 12(1) and 18(1) of the said Act. On 16.5.1984 the first respondent filed the counter statement
denying the material averments contained in the notice of opposition and also further stated that the first respondent is the proprietor of the mark
'TEFLON' under No. 237465 dated 8.9.1966 in class 17 in respect of plastics in the form of sheets, rods, tubes, tapes, filaments (non-textile) shaped
pieces. They are the proprietors of the same mark under No. 242147 dated 16.5.1967 in class 2 in respect of resinous coatings, solutions, and
emulsions to impart nonstick finish to metal surfaces and also proprietor under registration No. 242148 dated 16.5.1967 in class 21 in respect of
cooking utensils and kitchen utensils and also under registration Nos. 258487 dated 31.7.1969 in class 1 in respect of resinous molding powders and
extruding compositions and solutions and emulsions and resinous plastic material. All the trade marks are still valid and subsisting and the said mark
has been registered in more than 50 countries throughout the world. It is also stated by the first respondent that the impugned mark is not similar to the
mark and thus the registration will not contravene any of the provisions of the said Act.
Appellant filed evidence by way of an affidavit in the name of Shri D.N.Majumdar, Senior Vice President of the company accompanied by a list of
documents constituting 'A' series along with advertisement cuttings and five Photostat copies of the bills. Thereafter the first respondent filed evidence
in support of the impugned mark by way of an affidavit in the name of one Mr. David J.Hellmann, Assistant Secretary of their company along with
annexure 'A' and 'B'. After completion of the formalities the matter was listed for hearing on 16.7.1991 on which date the advocate for the first
respondent alone appeared and there was no representation on behalf of the appellant. The Deputy Registrar after considering the evidence available
on record along with the arguments of the learned counsel for the first respondent, disallowed the opposition of the appellant, finding that the impugned
mark applied by the first respondent is distinctive under section 9 of the said Act and the marks are not similar and identical and are distinguishable
and as such the prohibition under section 11(a) of the said Act is not attracted. Consequently section 11(e) also goes. The Deputy Registrar further
overruled the objections under section 18(1) of the said Act on the ground that the first respondent is the prior user of the mark and consequently they
are also entitled for the benefit of sections 12(3) and 33 of the Act. While doing so, the Deputy Registrar upheld the objection of the appellant under
section 12(1) of the said Act in respect of the impugned mark.
Aggrieved by the said order of the Deputy Registrar, the appellant filed the appeal in CM(M) 400 of 1992 in the High Court of Delhi at New Delhi.
By virtue of section 100 of the Trade Marks Act, 1999 the said appeal was transferred to this Board and numbered as TA/312/04.
5 . We have heard the arguments of learned counsel Ms. Anjula Chopra for the appellant and learned counsel Ms.Pragya Bhushan and Shri
A.K.Gupta for the first respondent.
6 . The main contention of learned counsel for the appellant is that the first respondent filed application No. 365580 for registration of the impugned
mark 'TEFLON' claiming user as proposed one in respect of synthetic textile fibres and filaments. Hence admittedly they are not as prior users. The
Deputy Registrar of Trade Marks confused himself with the use of the first respondent's mark in foreign countries and mistook the use of the same in
foreign countries as the use in India. The appellant had proved the use of their mark since 1976 and the statement of sales statistics mentioned in the
affidavit of Mr.Majumdar would clearly establish their user for long time and also the reputation obtained on the use of the mark of the appellant. The
Deputy Registrar had rejected the evidence by way of affidavit filed on behalf of the appellant on the ground that the same cannot be accepted in the
absence of any verification. The first respondent themselves have stated that they did not use the mark in India as there was a ban on import and as
such the user claimed by the first respondent cannot be accepted. So the registration of the impugned mark extending the benefit under section 12(3)
of the Act is totally vitiated.
7 . On the contrary, learned counsel for the first respondent contended that but for the restriction and ban on import, the first respondent could have
used the registered mark in respect of synthetic textile fibres and filaments in India. However, the Deputy Registrar has given a finding with regard to
the prior adoption and use on the basis of their mark in respect of their different goods for which the registration were made. The first respondent
having used the impugned mark is entitled for the registration and consequently there is no infirmity in the impugned order of the Deputy Registrar.
8 . We have carefully considered the above contentions of both the counsel. The Deputy Registrar has categorically found that the impugned mark
offends section 12(1) of the said Act. When the marks are identical and the goods are of same description, section 12(1) is attracted. Having held that
the impugned mark attracts prohibition under section 12(1) of the said Act, it is not clear as to how the Deputy Registrar has found that the goods of
the first respondent are distinctive under section 9 of the said Act. So far as the objections under section 9 is concerned, the Deputy Registrar has
totally failed to consider and discuss the same and gave his finding in a cryptic manner.
Coming to the finding of the Deputy Registrar that the first respondent was using the trade mark since 1966 is concerned, here again the Deputy
Registrar has totally overlooked the statement of the first respondent in their counter statement in paragraph 6(viii) wherein it is clearly stated as
follows:-
We deny the contents of paragraph 10 of the notice of opposition and submit that it is incorrect for the opponents to state that the applicants do not
have present and definite intentions to use the trade mark 'TEFLON' in India. We submit that we shall use the trade mark 'TEFLON in India as and
when the same is feasible for our company to use the said trade mark in India and we deny that our application does not qualify under the provisions
of section 18 of the Act"".
This statement of the first respondent alongwith their statement made in the application that the mark as proposed user is definitely more than enough
to come to the conclusion that the first respondent is not using the mark in India.
So far as violation of section 11 of the said Act is concerned, we are of the view that phonetically and visually the impugned mark is similar to that
of the registered mark of the appellant. Only the second letter is changed. When the goods are of the same description falling under class 22 and the
trade channel being the same, definitely there will be confusion and deception and as such the prohibition imposed under section 11(a) of the said Act
is very much attracted.
1 1 . Even in respect of entitlement of the first respondent for registration under section 12(3) of the Act, the Deputy Registrar has not given any
reason. He also failed to discuss the evidence available on record in respect of the use of the mark by the first respondent along with other factors
such as bonafide and concurrent use. The prime requirement to invoke the benefit under section 12(3) sine quo non is the concurrent user on the date
of the application, coupled with bonafide. When the first respondent has candidly admitted their non use at the time of application we are at loss to
understand as to how the Deputy Registrar gave the benefit of section 12(3) to them.
Before parting with the appeal, we have to mention that the attorneys Remfry and Sagar of New Delhi had sent a bunch of papers by way of
additional evidence along with the application under Order 41 Rule 27 read with section 151 of the Code of Civil Procedure to the Appellate Board
with a covering letter dated 20.1.2005 which was received by the Registry on 24.1.2005, on behalf of the respondent. The application for production of
additional evidence is admittedly made under Order 41 Rule 27 of Code of Civil Procedure, which is numbered as M.P. No. 16/05
The scope of the provision contained in Order 41 Rule 27 is well known. Without multiplying the authorities we may refer to one judgment of the
Supreme Court in the case of Mahavir Singh and Ors. v. Naresh Chandra and Anr., (2001 (1) SCC 309) wherein the Supreme Court observed thus:-
Before we proceed further we would like to refer to the scope of an application under Order 41 Rule 27 CPC. Section 107 CPC enables an
appellate court to take additional evidence or to require such other evidence to be taken subject to such conditions and limitations as are prescribed
under Order 41 Rule 27 CPC. The principle to be observed ordinarily is that the appellate court should not travel outside the record of the lower court
and cannot taken evidence on appeal. However, section 107(d) CPC is an exception to the general rule, and additional evidence can be taken only
when the conditions and limitations laid down in the said rule are found to exist. The court is not bound under the circumstances mentioned under the
rule to permit additional evidence and the parties are not entitled, as of right, to the admission of such evidence and the matter is entirely in the
discretion of the court, which is, of course, to be exercised judiciously and sparingly. The scope of Order 41 Rule 27 CPC was examined by the Privy
Council in Kessowji Issur v. Great Indian Peninsula Rly. Co. in which it was laid down clearly that this rule alone can be looked to for taking additional
evidence and that the court has no jurisdiction to admit such evidence in cases where this rule does not apply. Order 41 Rule 27 CPC envisages
certain circumstances which additional evidence can be adduced:-
(i) the court from whose decree the appeal is preferred has refused to admit evidence which ought to have been admitted, or
(ii) the party seeking to produce additional evidence, establishes that not withstanding the exercise of due diligence, such evidence was not within his
knowledge or could not, after the exercise of due diligence, be produced by him at the time when the decree appealed against was passed, or
(iii) the appellate court requires by any document to be produced or any witness to be examined to enable it to pronounce judgment, or for any other
substantial cause.
In the present case, it is not the case of either party that the first situation is attracted. So far as the second circumstance noticed above is concerned,
question of exercise of due diligence would not arise because the scientific equipment concerned from which examination is sought to be made itself
was not in existence at the time of trial and so that clause is also not attracted. In the third circumstance at the time of trial and so that clause is also
not attracted. In the third circumstance, the appellate court may require any document to be produced or any witness to be examined to enable it to
pronounce the judgment, or for any other substantial cause. The expression ""to enable it to pronounce judgment"" has been the subject of several
decisions including Syed Abdul Khader v. Rami Reddy wherein it was held that when the appellate court finds itself unable to pronounce judgment
owing to a lacuna or defect in the evidence as it stands, it may admit additional evidence. The ability to pronounce a judgment is to be understood as
the ability to pronounce a judgment satisfactory to the mind of the court delivering it. It is only a lacuna in the evidence that will empower the court to
admit additional evidence (see Municipal Corporation of Greater Bombay v. Lala Pancham). But a mere difficulty in coming to a decision is not
sufficient for admission of evidence under this rule. The words "" or for any other substantial cause"" must be read with the word ""requires"", which is
set out at the commencement of the provision, so that it is only where, for any other substantial cause, the appellate court requires additional evidence
that this rule would apply as noticed by the Privy Council in Kessowji Issue v. G.I.P.Rly. it is under these circumstances such a power could be
exercised.
None of the circumstances enunciated under this provision is made out in this case. The affidavit of Mr. Sanjay Gupta, Company Secretary and
Managing Counsel of E.I. Dupont (India) Private Limited sworn on 20.1.2005 filed in support of the application under Order 41 Rule 27 of the Code of
Civil Procedure clearly reveals that the evidence with regard to use of the mark in India is subsequent to 1993, after filing of the appeal in the High
Court of Delhi. When the evidence relates to the period subsequent to the date of the application for registration of the trade mark as well as
subsequent to the date of filing of appeal cannot be taken as additional evidence.
For the reasons stated above, we are of the view that the impugned order of the Deputy Registrar cannot be sustained and consequently the same
is set aside and the appeal is allowed and M.P 16/05 is dismissed. No cost.