G. N. Ray, J. - (1.) Leave granted. Heard learned counsel for the parties.
(2.) These appeals are directed against the common judgment dated October 11, 1990, passed by the Division Bench of Madras High Court in Trade Mark Second Appeal Nos. 1 and 2 of 1981, arising out of the judgment dated September 11, 1980 passed by a Single Bench of Madras High Court in AAO Nos. 582-83 of 1978. The respondent No.1 Company, namely, the Vazir Sultan Tobacco Co. Ltd., Hyderabad, has been manufacturing cigarettes under the brand name "Charminar". The said Company in 1942 and in 1955, under the then Trade Mark legislation obtained registration of Trade Mark in respect of "manufactured tobacco" falling in Class 34 of the 4th Schedule to the rules framed under the Trade Mark Act 1940 and 1950 Act. The respondent No.1 Company, however, did not manufacture anything other than cigarettes during all these long years. The appellant, namely Vishnu Das trading as Vishnudas Kishandas Zarda are manufacturing quiwam and 'Zarda' since 1973, and the appellant has been using the same trade mark, namely, "Charminar" on his bottles and boxes of quiwam and zarda. The device of trade mark 'Charminar' in the city of Hyderabad as used by the appellant is, however, different from the device being used by the respondent No.1 company. The appellant applied for registration of quiwam and zarda with trade mark "Charminar" under the Trade and Merchandise Marks Act 1958, and the Trade Marks Rules, 1959, framed under the said Act. The respondent Company raised objections that the trade mark sought by the appellant would conflict with the registered Trade Marks Nos. 9951 and 170427 which the respondent No.1 Company contained in 1942 and 1955. The Joint Registrar of Trade Marks, however, observed inter alia in the minutes dated September 24, 1973, about the objections of the respondent to the effect that the mark would conflict with registered trade marks Nos. 9951 and 170427. It was also observed that although the applicant had contended that such registration of trade marks was in respect of cigarettes but quiwam and zarda were goods of different specifications and such goods would not cause any conflict with the goods being manufactured by the respondent No.1 Company, since the registration was of the trade mark made in favour of the respondent in respect of "manufactured tobacco" which is its ambit would also take quiwam and zarda, the objection of the respondent No.1 Company under S.12(1) of the Trade Marks Acts, therefore, could not be waived. It was noted in the minute that the counsel for the applicant i.e. the appellant herein, had offered to apply for rectification of the said trade mark in favour of the respondent No.1 Company.
(3.) Accordingly, on October 15, 1973, the appellant filed two applications under Section 46 read with Section 56 of the Trade and Merchandise Marks Act, 1958, before the Registrar of Trade Marks, Madras for rectifying the registration of the existing trade mark held by the respondent No.1 Company mainly on the ground of non user of the same in respect of quiwam and zarda by the respondent No.1 Company. The proceedings before the Registrar of Trade Marks continued from 1973-76 but the respondent No.1 Company though contested the said applications could not dispute or refute the allegation of the appellant that the respondent No.1 Company had never, manufactured any other article of tobacco except the cigarettes. The said applications made by the appellant were ultimately disposed of by the Assistant Registrar. Trade Marks, Madras on August 31, 1976 by allowing the applications for rectification. The Assistant Registrar Trade Marks ordered that the Registrar, Trade Mark bearing Nos. 9951 and 170427 would be rectified by making the entries relating to specification of goods to read as "cigarettes".;