Topps Company Inc., A Corporation Duly Organized And Existing Under The Laws Of Delaware vs Kanwel Foods Pvt. Ltd. And The Deputy Registrar Of Trade Marks, Trademarks Registry

Z.S. Negi, J

The appellant has preferred this appeal under sections 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) against the order dated

9.10.2006 passed by the Deputy Registrar of Trade Marks whereby he allowed the opposition No. KOL-198936 and refused registration of the

appellant's application No. 1216048.

The appellant has stated that it filed an application No. 1216048 on July 21, 2003 for registration of the trade mark TOPPS' in class 30 in respect of

candy and confectionery and the application was advertised in the Trade Marks Journal No. 1328 Suppl (1), dated 7.2.2005. Thereupon, the

respondent No. 1 filed a notice of opposition dated June 30, 2005 (numbered as KOL-198936) objecting the registration on the grounds, inter alia, that

it is the owner of the mark 'TOPPS' , which is pending registration in classes 29, 30 and 32; that the respondent No. 1 and its predecessors have been

using the said mark since the year 1986; that by virtue of long, extensive and continuous user/publicity of the mark the said mark has come to be

exclusively associated with the respondent No. 1 and its goods and the appellant has been aware of the use and reputation of the mark of the

respondent No. 1; that the mark for which, and the goods in respect of which, registration is sought by the appellant is identical to the mark and goods

of the respondent No. 1 and such mark is liable to cause confusion and deception in the trade and that the registration of the appellant's mark would be

contrary to Section 18(1) of the Act. After completion of procedural requirements, the matter was set down for hearing on 25.9.2006 and the

respondent No. 2 passed the impugned order dated 9.10.2006.

Aggrieved by the impugned order, the appellant has preferred the present appeal. The respondent No. 1 filed the counter-statement dated 22.3.2007

and the appellant sought extension of time for filing reply to the counter-statement on the ground that the parties are contemplating an amicable

settlement in the matter and expect the terms to be finalised within few weeks' time. During the pendency of the appeal, the appellant has filed a

miscellaneous petition being MP. No. 143/2007 praying for to allow the present appeal in terms of mutual settlement arrived at between the appellant

and the respondent No. 1. Annexing a notarised copy of 'Consent Letter' dated 16.10.2007 from the respondent No. 1, the appellant has extracted the

contents of the said letter in paragraph 3 of the miscellaneous petition, as under:

(a) Applicant's/Appellant's use and registration of TOPPS' in respect of ""confectionery, namely, candies, chocolate, bubble gum, chewing gum"".

(b) Applicant's/Appellant's use and registration of TOPPS' to cover trading Card, stickers, card games and T-Shirts.

(c) Instant appeal being allowed subject to (i) amendment of the existing specification of goods under Application No. 12160418 from ""candy and

confectionery"" to read more precisely as ""confectionery, namely, candies, chocolate, bubble gum, chewing gum""; and (ii) withdrawal of (cross)

Opposition No. MAS-201599 filed by applicant/appellant against Respondent No. l's Application No. 1272280 for the mark TOPPS' in class 30.

It is stated in paragraph 4 of the miscellaneous petition that Opposition No. MAS-201599 filed by the applicant/appellant against the Application No

1272280 of the respondent No. 1 has already been withdrawn vide letter dated 31.10. 2007 addressed to the Registrar of trade Marks under intimation

to the Agents on record of the respondent No. 1.

We have heard the learned Counsel on behalf of the appellant and have gone through the documents filed in support of the miscellaneous petition. It

is found that a notarised copy of consent letter dated 16.10.2007 on the letter head of respondent No. 1 addressed to the appellant and a notarised

copy of letter dated 31.10.2007 addressed to the Registrar of Trade Marks, Chennai requesting him to treat the opposition No. MAS-201599 (sic

MAS-201559) as withdrawn with no order as to costs and M/s. Remfry & Sagar, Attorneys-at-Law, representing the appellant have vide its letter

No.VGR/CMA/hkc/T82-954 dated 4.3.2008 forwarded a request on Form TM-16 to the Registrar of Trade Marks, Kolkata for amending the

classification of the goods in terms of the mutual settlement. We find that the said letter dated 31.10.2007 and the request on Form TM-16 have been

received by the Trade Marks Registries, Chennai and Kolkata, on 1.11.2007 and 4.3.2008, respectively.

After hearing the learned Counsel for the appellant and going through the documents produced by the appellant in support of the miscellaneous

petition on hand, we are of the opinion that the conditions specified under clause (c) in paragraph 3 above has been complied with by the appellant and

therefore we are inclined to allow the prayers made in the miscellaneous petition.

Accordingly, the Miscellaneous petition is allowed and consequently the appeal is allowed in terms of the mutual settlement between the appellant

and the respondent No. 1; set aside the impugned order dated 9.10.2006 passed by the Deputy Registrar of Trade Marks and direct the Registrar of

Trade Marks to amend the specification of goods under application No. 1216048 in class 30 in accordance with Sub-clause (i) of clause (c) of

paragraph 3 above, and to proceed further in the said application in accordance with law. There shall be no order as to costs.