Decided on June 02,2006



Syed Obaidur Rahaman, Technical Member - (1.) THIS appeal is preferred against the impugned order of the Assistant Registrar of Trade Marks, Chennai dated 4.2.2005, by accepting the application No. 470142 in class 17 of the first respondent for registration of the trade mark word 'LOTUS' in respect of 'Tapes' included in Class-17' under the Trade and Merchandise Marks Act, 1958 and thereby rejecting the Opposition No. MAS 2831 filed by the appellant, the mark was accepted for registration and advertised in the Trade Mark Journal No. 1044 dated 1.12.1992 at page No. 944. The first respondent claims that the above said trade mark is continuously used by them since the year 1979 and made an application for registration on 1st April 1987. The appellant M/s. Dhanalakshmi Cottage Industries has filed opposition on 24th February, 1993 against the above said application, which was dismissed by the Assistant Registrar of Trade Marks by his order dated 4.2.2005. The respective parties have filed their evidence in support of their case. The appeal was taken up by this Board for hearing on 17th April, 2006. Mr. S.Y. Venkatanarasimhan, advocate, appeared for the appellant and Mr. G.S. Shivakumar, advocate, appeared for the respondent No. 1.
(2.) The learned Counsel for the appellant Shri S.Y. Venkatanarasimhan submitted that the appellant is engaged in the business of manufacturing and selling of cotton tapes of various of sizes and varieties users of them which includes for cot netting purpose (Newer tapes), tapes for textiles machinery, part of electrical motors as tapes for the purpose of covering the copper wire in the electrical motors and then choking the tape with insulating varnishing materials to protect the enamelled copper wire from excessive heat while in operation. The appellant has honestly and in the course of the trade adopted a distinctive trademark consisting of the words 'Red Lotus' with the device of red lotus to distinguish their products in the form of a circular label since 18.10.1977 onwards and doing sales ever since that date all over India. The learned Counsel for the appellant also submitted that they have honestly adopted the said trademark red lotus with device of lotus to distinguish their products from the other traders and due to maintenance of strict quality control, pic and length of the tapes and due to vast sales promotional network and due to honest trade practices, the said trade mark has become very popular all over India especially in North India and the purchasing public in general, the trading community in particular associate the said trade mark only with that of the appellant and much goodwill and reputation has accrued to the said trade mark and it has become a valueless property of the appellant. It is also submitted that the appellant has made two applications before the Registrar of Trade Marks at Madras for registration of trade marks - one in class 26 for Newer Tapes and the other in class 7 for the purpose of Textile Machinery and part thereof and part of electric motor and part thereof in Application Nos. 426268 in Class 7 and 426269 in class 26. When both the trademarks were advertised in the Trade Marks Journal, the first respondent opposed those trade marks in Opposition No. MAS 2305 to Application No. 426268 in class 7 and Opposition No. MAS 2306 to Application No. 426269 in class 26, which are still pending before the Registrar of Trade Marks at Madras.
(3.) IT is also submitted that since the appellant has made the application earlier to that of the first respondent, and since the user claimed by the appellant is earlier to that of the alleged user claimed by the first respondent, the appellant is the proprietor of the said trade mark under the provisions of Section 18(1) of the Trade Marks Act, 1958.;

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