PRABHA SRIDEVAN,CHAIRMAN - (1.) THESE Appeals are filed against the order, dismissing the Opposition filed by the appellant herein and ordering the registration of the marks as detailed below for the Cycle Brand Three in One agarbathis. O.A. No.33 of 2009 Application No.540605. Opposition No.MAS -51640 Application No.540606. Opposition No.MAS -51639 Application No.540607. Opposition No.MAS -51638 Application No.544494. Opposition No.MAS -51642 O.A. No. 34 of 2009 Application No.540603. Opposition No.MAS -51648 Application No.540605. Opposition No.MAS -51647 Application No.540606. Opposition No.MAS -51643 Application No.540608. Opposition No.MAS -51644 O.A. No.35 of 2009 Application No.540598 Opposition No.MAS -58033 Application No.540602. Opposition No.MAS -58034 Application No.540600. Opposition No.MAS -58035 Application No.540599. Opposition No.MAS -58036 Application No.540601. Opposition No.MAS -58037 Application No.540604. Opposition No.MAS -51645 Application No.540607. Opposition No.MAS -51646 Application No.540609. Opposition No.MAS -51649 Application No.544494. Opposition No.MAS -51772 The respondent's Trademark "Three in One" was advertised in different languages in1997, without association with any other mark, claiming user from 3.7.1987. Trademark No.544494 advertised a month later. In English language, in association with the earlier mark 426521. The appellant herein raised the issue of registrability of the mark "Three in One". The grounds raised are under Section 9, 11 and 18 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as 'the Act')
(2.) THE learned counsel for the appellant submitted that the mark is not only descriptive, but also generic. According to the learned counsel, the respondent is not using the words "Three in One" independently, but along with other words as "Cycle Brand Three in One". The learned counsel submitted that using "Three in One" means three types of agarbathis are packed in one carton and this is commonly used with relation to agarbatthis as "Two in One" or "Three in One" or "Four in One". These are several incense cartons belonging to different proprietors, which will establish this fact. The respondent's mark is one such type and it is Cycle Brand Three in One. But, they are trying to monopolize the words "Three in one" which is oppressive and it cannot be stretched beyond limit. The respondent cannot have monopoly over these words. The result of the registration of Three in One would be that no one can use these words to describe their goods, even when they put agarbathis of three different fragrances in one packet. The learned counsel submitted that the mark is barred under Section 9 of the Act. The learned counsel submitted that all the applications in various languages are highly descriptive and common to the trade. The learned counsel submitted that the impugned orders should be set aside. The learned counsel referred to the order of this Board in the case of (Shalimar Agarbatti Company Vs. N.Rango Rao & Sons) reported in 2004 (29) PTC 247 (IPAB). That was a case, where the applicant Shalimar sought to remove the mark belonging to the respondent Cycle Brand "Three in One". Before this Board in that case, the respondent herein had submitted that he had been using the said trademark for nearly two decades, without asserting any exclusive right in respect of the words "Three in One". The learned counsel further submitted that after having obtained favourable orders on the basis that he has not asserted any exclusive right in respect of the words "Three in one", the respondent cannot be allowed to circumvent that judgment, by applying for registration of the mark "Three in One", as it would amount to travesty of justice. The learned counsel submitted that in Para No.14 of the counter statement in O.A.No.70 of 2009, which is heard along with this appeal, in Para No.24, this specific ground has been taken. The respondents had replied to the above para by stating that, that order passed in respect of registration of agarbathis carton containing the words Cycle Brand Three in one was in respect of a peculiar colour scheme. But this application is for the registration of the trademark "Three in One" words per se in different languages and therefore, the earlier order will not prevent the respondent from filing a separate application for registration of the trademark "Three in One". The learned counsel submitted that this is nothing but rank dishonesty. The fact that there is a turnover of several crores of rupees will not make the descriptive mark to have distinguishing feature or become distinctive. Before the Bench which heard the matter in 2004 (29) PTC 247 (IPAB) (cited supra), the appellant had brought to the notice of the Board that the present applications had been filed by the respondent.
(3.) THE learned Senior Counsel for the respondent submitted that the statement before the Board was made in a different context. The respondent has a huge turnover, for which, evidence had been produced before the Registrar. They had also applied for registration under the Copyrights Act in A -52016 and A -520662, 52621 of 1992. The learned Senior Counsel submitted that the previous case would not bind the Registrar in the present case. The appellant Shalimar Agarbathi Company had accepted the order passed by the Board and the order had become final. No evidence had been filed to prove their case. After allowing the order to become final, the appellant cannot raise the same issue. He prayed that the appeal must be dismissed. In reply, learned counsel for the appellant submitted that under Copyrights Act, registration is for the independent label and not for the words per se.;