Decided on November 16,2006



S. Usha, Technical Member - (1.) 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.
(2.) 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 tiled 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.
(3.) 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.;

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