AI Structured Summary
Not yet generated for this judgment
Judgment
M.H.S. Ansari, J
This appeal is directed against the Order No. TLA/22340 dated 10 October 2003 passed by the Assistant Registrar of Trade Marks.
On 12.2.1996, appellant herein applied for registration of trade mark ""SOLO"" in respect of 'games, sporting articles, sports equipment' under
application No. 698041 in class 28 as 'proposed to be used'. A preliminary objection was raised by the Registrar under Section 12(1) i.e. on the
grounds of deceptive similarity. The mark applied for by the appellant, was found identical with the earlier trade mark ""SOLOTOY"" cited in the
examiners report as the conflicting mark. Further, the goods being games, sporting article etc. set out in the application for registration were similar to
the goods 'play things' under the earlier mark on record, the application was accordingly rejected even before it was advertised. Being aggrieved
thereby this appeal is filed under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
Shri P.S. Mahapatra, Ld. Advocate for the appellant contended that the appellants are registered proprietors of the trade mark ""SOLO"" under No.
660008B registered in the year 1995. This registration is also in respect of class 28 goods namely, 'sporting articles'. The conflicting trade mark under
No. 499101 was also cited in the examination report issued in registration No. 660008B. The Ld. Assistant Registrar, however, allowed that
application to proceed for registration. The rival trade marks ""SOLO"" and ""SOLOTOY"" are both visually and phonetically different. Hence there
cannot be any cause of confusion or conflict in the market, it was contended.
Ld. counsel further contended that the conflicting trade mark ""SOLOTOY"" under registration No. 499101 has not been renewed since 10 October
1995. This fact, though brought to the notice of the Ld. Assistant Registrar, was ignored. It was urged that reliance could not be placed upon a trade
mark which is no longer valid as on the date of consideration of the application of the appellant herein.
We heard Ld. counsel for the appellant at Chennai on 20 August 2007. None appeared on behalf of the sole respondent. We also perused the
impugned order passed by the Ld. Assistant Registrar and also the documents referred to and relied upon by the Ld. Advocate for the appellant.
We find from the impugned order that the main ground for rejection of the application for registration even before it was advertised is that there is
an earlier trade mark ""SOLOTOY"" cited as the conflicting mark in the examination report. Both the marks as also the goods covered by the mark
applied for and the earlier registered trade mark are similar. This is the basis of the impugned order of rejection. It is the contention of the Ld. counsel
for the appellant that, as the rival mark has not been renewed then, technically it should be removed from the register. It is however not established
before us as to whether the earlier registered mark is in fact existing on the register or ceased to be operative. We have been denied the benefit of the
views of the Ld. Assistant Registrar on this aspect of the matter. The impugned order is silent on this factual aspect. We are therefore not in a
position to effectively adjudicate on this aspect of the matter.
We accordingly consider it appropriate that the matter should be remitted back to the Ld. Assistant Registrar for consideration of the application for
registration afresh. The appeal is accordingly allowed in part. The matter is remitted to Registrar who shall accordingly dispose of the application de
novo in accordance with law. However, in the facts and circumstances of the case there shall be no order as to costs.