Su Dagadu Teli And Sons vs Dagadu Bhau Telichandwadkar And Assistant Registrar Of Trade Marks

S. Usha, J

The original appeal has been preferred against the order of the Assistant Registrar of Trade Marks dated 14.07.2008 dismissing the opposition No.

BOM-135942 and accepting application No. 802387 in class 5 for registration under the provisions of the Trade Marks Act, 1999 (hereinafter referred

to as the Act).

The first Respondent herein filed an application for registration of trade mark 'Dagadu Teli Chandwadkar' under No. 802387 in class 5 on

15.05.1998. The user was claimed since February 1976. The Appellant herein filed their notice of opposition opposing the registration of the impugned

trade mark under Sections 9,11(a)(e) and 12(1) of the Act. The Assistant Registrar dismissed the opposition on the finding that the objection under

Section 9 of the Act was rejected as the first Respondent had user before the date of application and their mark had acquired distinctiveness; the

objection under Section 11 of the Act was also rejected as the first Respondent being the prior adopter and user of the trade mark, confusion and

deception was not possible; the objection under Section 12 of the Act was also rejected as the Appellants had not satisfied the requisites of Section 12

of the Act and exercising his discretionary powers under Section 18(4) of the Act,

Aggrieved by the said order, the Appellants preferred the appeal on the grounds that the second Respondent erred in holding that the word 'TELI' is

not a caste name but surname. The other averments of the Appellant was that they adopted the trade mark 'SU DAGADU TELI & SONS' for

manufacturing and selling all goods falling under classes 5, 30 and 31 since the year 1997. They had been using the said impugned trade mark

extensively, continuously and uninterruptedly throughout the country. The trade mark 'SU DAGADU TELI & SONS' is derived from the words - (1)

SU-SUKALAL (grand father the Appellant) (2) DAGADU TELI (great grandfather of the Appellant) and (3) TELI-the caste of the Appellant.

The Appellants have spent lakhs of rupees towards advertisement to popularise their trade mark. By virtue of extensive use, the mark has acquired

good reputation and goodwill among the public. The impugned order, therefore, be set aside and the appeal be allowed.

The first Respondent herein filed their counter-statement denying the averments made in the grounds of appeal. The appeal is without any merits

and is liable to be dismissed. The first Respondent is the registered proprietor of the trade mark - label mark-DAGDU TELI CHANDWADKAR

under No. 802836 in class 30 and are also copyright owners under registration No. A-65203/2003 and A-66956/2004. The Appellants are not the

manufacturers and sellers of all types of goods falling classes 5, 30 and 31 as alleged and they have not produced any evidence in support of the same.

No evidence filed by the Appellant to prove that they have spent lakhs of rupees to popularise their trade mark. The Appellants are trying to trade

upon the goodwill earned by the first Respondent by fraudulently adopting the identical trade mark. The objection that Teli is a caste name was not

raised before the Registrar of Trade Marks in the opposition proceedings. The first Respondent stated that their trade mark has acquired

distinctiveness by long and continuous use.

The Appellants claim to have adopted the trade mark for their business in the year 1997, whereas they had opened the shop only in the year 2002.

It is therefore clear that the Appellants are only trying to trade upon the goodwill and reputation earned by the Respondents. the appeal is devoid of

any merits and is liable to be dismissed.

We have heard both the counsel in the Circuit Bench Sitting at Mumbai on 9.06.2010. Learned Counsel Ms. Uttara L. Sawant appeared on behalf

of the Appellants and learned Counsel Shri R.H. Gajaria appeared on behalf of the first Respondent.

The learned Counsel for the Appellant relied on the provisions of Section 9(2) (b) of the Act submitted that the registration of the name of the caste

would affect the religious susceptibilities of that class. The only contention was that Teli is a caste name and ought not to be registered.

In reply the learned Counsel for the first Respondent submitted that there is no bar for registering a caste name. The marks are to be considered as

a whole and cannot be split only considering the word Teli. The Appellants have though stated that they belong to the same family no proof filed in

support of the said averment. The first Respondent in fact had their firm established in the year 1850 and the user of the mark is since the year 1959.

The provisions of sections, 9,11 and 12(1) of the Act is not attracted. The appeal, therefore, deserves to be dismissed.

We have heard and considered the arguments of both the counsel and have gone through the pleadings. The issue as to the objection under

Section 9 of the Act is though raised by the Appellant has not been substantiated by proper evidence. The only objection was that Teli being a caste

name cannot be registered as per the provisions of Sub-Section 2(b) of Section 9 of the Act. We also agree with the view of the Assistant Registrar

that if Teli is a caste name and cannot be registered, then the Appellants also cannot have their trade mark registered. The mark to be registered

ought to have acquired distinctiveness by use. The Appellants and the Respondents have not filed evidence as per the rules before the Registrar of

Trade Marks in the opposition proceedings as seen from the observation of the Registrar in the impugned order. The first Respondent use is from the

year 1976 which has not been disputed by the Appellants, whereas the Appellant's use of the trade mark is from the year 1997. The impugned trade

mark has been applied in the year 1998 claiming user since 1976. We therefore, hold that the mark has acquired distinctiveness by use and the

objection under Section 9 of the Act is rejected.

The objection under Section 11 of the Act is also rejected as the first Respondent is the prior user of the trade mark and the issues under Section

11 of the Act is not attracted.

When the Appellants are subsequent adopters and users of the trade mark, the adoption cannot be said to be honest. The objection under Section

12 of the Act is therefore rejected.

Having negatived all the objections of the Appellant, the appeal is dismissed upholding the impugned order dated 14.07.2008. There shall be no

order as to costs.