AI Structured Summary
Not yet generated for this judgment
Judgment
S. Usha, Technical Member
Appeal filed against the order of the Assistant Registrar of Trade Marks, New Delhi disallowing the opposition No. DEL-7707 and accepting
application No. 331741 for registration in class 25.
The first respondent filed an application on 19.12.1977 for registration of trade mark 'ASCOT' in respect of track suits and shoes included in class
25 vide application No. 331741 as a proposed user. The said application was advertised as accepted in Trade Marks Journal No. 1022 dated 1.1.1992
at page 1240. The appellant herein had filed their notice of opposition. The main averment of the appellant in the notice of opposition was that they had
been using the impugned trade mark 'ASCOT' since 1966 and have obtained registration of the same under No. 249603 in class 25 as early as 1968
itself. They also mentioned that their mark had attained great reputation among the public as it had been used continuously and extensively and as such
had become distinctive of their goods and had raised objections under Sections 9, 11(a), 11(e), 12(1) and 18(1) of the Trade and Merchandise Marks
Act, 1958 (hereinafter referred to as the Act).
The first respondent had filed their counter statement denying the entire facts and submitted that they had been using the impugned mark 'ASCOT'
for many years and had obtained registration of the mark 'ASCOT' in various countries. They had also averred that they had been selling their goods
bearing the trade mark 'ASCOT' in the international market. They also submitted that the impugned mark 'ASCOT' had been registered in various
other classes also. They prayed that the opposition be dismissed as it was not prohibited for registration under the sections as claimed by the appellant
in the notice of opposition. The learned Assistant Registrar of Trade Marks set the matter for hearing after the formal procedures were completed.
Learned Assistant Registrar heard the counsel for the first respondent and as there was no representation for the appellant, an ex parte order was
passed. The Assistant Registrar disallowed the opposition and allowed the application to proceed for registration on the grounds mentioned hereunder.
Learned Assistant Registrar found that registration of the mark was not prohibited under Section 12(1) of the Act as the goods are different, though
the marks are identical. He also observed that even though the marks were identical and as the goods were different, the question of deception and
confusion does not arise and hence not prohibited under Section 11(a) of the Act. He further held that as registered proprietors of the trade mark
'ASCOT' in various countries the first respondent had a definite claim to be the proprietor of the mark applied for in terms of provisions of Section
18(1) of the Act. The learned Assistant Registrar allowed the plea of the first respondent under Section 12(3) of the Act as the impugned mark
'ASCOT' formed part of their trading style ASCOT (S&F) International Limited.
Aggrieved by the said order the appellant filed the appeal No. CM(M) 311/99 before the High Court of Delhi and the same has been transferred to
this Board in terms of Section 100 of the Trade Marks Act, 1999 and numbered as TA/146/2003/TM/DEL.
The matter was taken up for hearing in the Circuit Bench at New Delhi on 7.8.2006. Learned Counsel Shri Vijay K. Gupta appeared for the
appellant and learned Counsel Shri Shailen Bhatia appeared for the first respondent. Both the counsel advanced common arguments in
TA/146/2003/TM/DEL and TA/145/2003/TM/DEL as the main issues in both the matters were same. For the sake of convenience separate orders
are being passed.
Learned Counsel for the appellant mainly contended that they are the prior users of the trade mark 'ASCOT' since the year 1966. They were also
the registered proprietors of the trade mark as early as 1966 in class 25. He also contended that the mark applied for is under class 25 as that of the
respondent. Learned Counsel for the appellant forcefully argued that the impugned mark 'ASCOT' is identical with the mark on register and the class
of purchasers are also one and the same.
Learned Counsel for the first respondent drew our attention to various Trade Mark journal advertisements of their mark which were pending
registration. He also argued that as the goods were different, any possibility of confusion or deception will not arise. He also contended that in the
appeals filed before the High Court of Delhi by the appellant, in their applications no stay was granted for issuance of the registration certificate which
goes to prove that the appellant had no valid case. Learned Counsel for the first respondent relied on various judgments in support of his claim.
We have carefully considered the arguments of both the counsel. We observe that the mark applied for registration by the first respondent is only
as a proposed user. The mark has thus not acquired distinctiveness. The appellant has been using the mark since 1966 whereas the first respondent
has applied for registration of the impugned mark only as a proposed user. To qualify for registration under Section 9 of the Act the mark should be
distinctive of the goods or if not distinctive it should be capable of being distinguished. Hence the claim of the first respondent under Section 9 of the
Act does not sustain.
As the marks are identical, the possibility of confusion and deception arises between the marks and are prohibited for registration under Section
11(a) of the Act. The impugned mark 'ASCOT' is already registered by the appellant as early as 1966 itself. We, therefore, observe that the
appellant's mark has become distinctive by their long user and have gained reputation among the trade and public. The consumers being the same,
same trade channels and same trade outlets for both the products, there is every possibility of confusion being caused to attract disqualification under
Section 11 of the Act.
With regard to Section 12 of the Act, we are of the view that the marks being identical as well as the goods of the first respondent fall in the same
class 25 of the IV Schedule, we find that the mark is prohibited for registration as per the provisions of the Act.
On perusal of the records and facts of the case we find that the appellants have been using the mark since 1966 whereas the first respondent has
made his application in 1977 only as a proposed user. The appellants have obtained registration of the impugned mark 'ASCOT' as early as 1968 itself.
The first respondent though claims to have obtained registration in about 70 countries, have not given their date of user but only state that they had
been using the mark for many years without giving any specific date of use. Looking into the facts we are of the opinion that the appellant is the prior
user than that of the first respondent. It is a well settled principle of law that priority prevails even over the registered user. Based on the above
principles we find that the appellant being the prior user for valid rights than that of the first respondent, the application of the first respondent is liable
to be rejected. Hence we disagree with the learned Assistant Registrar's opinion that the first respondent has a definite claim to have proprietary of
the mark applied for in terms of provisions of Section 18(1) of the Act.
We, therefore, set aside the order of the Assistant Registrar of Trade Marks, New Delhi disallowing the opposition No. DEL 7707 and accepting
the trade mark 'ASCOT'. Accordingly the appeal is allowed. The parties shall bear their costs.