V.Ravi, Technical Member: - (1.) THE appeal arises out of the order of the Assistant Registrar of Trade Marks, Ahmedabad dated 24th April, 2007 partially allowing application no.1182159 to proceed to registration subject to imposing colour limitation and also allowing application no. 1182160 to proceed to registration. Both the applications relate to Class 5 - one for S -device mark (creative) and the other for the same device with the word SAHAJANAND for pharmaceutical, sanitary and veterinary preparation, dietetic substances adapted for medical use, food for babies, plasters, material for dressing, material for stopping teeth decay, dental wax, disinfectants, preparations for destroying vermin; fungicides, herbicides, ayurvedic medicines etc.
(2.) WHILE refusing the opposition filed by the appellant, the Assistant Registrar held that the opponent's mark consist of the device of Moon and Star and their sale pertains only to hair dyes. It was further held that in all the bills furnished nowhere the device of MOON and STAR is visible. She also ruled that the mark of the applicant is a creative design and cannot be read as Moon & Star. Moreover, it was also held that the competing goods are totally different. There appears to be no clash in user between the two parties. At the hearing before the Asst. Registrar the counsel for the applicant/ respondent stated that the mark whenever used without SHAHJANAND is always used in red & blue colours and the applicant/respondent in order to remove the objection of the opponent is prepared to confine the use of the mark in two colours blue & red whenever used without words SAHAJANAND whereas the mark of the applicants when used with the words SAHAJANAND for which the opponents have no objection may be allowed to be used without colour restrictions.
(3.) BEING aggrieved by the above order, the appellant /opponent have preferred this appeal on the following short grounds: - a. the impugned order is contrary to law and facts of the case and suffers from non -application of mind. b. a bare glance would indicate that the competing marks are similar and partially admitted to be so by the respondent/applicant in their counter statement (Form TM -6) filed before the Registrar. c. the competing goods are cognate and allied in nature and are sold across the same counter. d. the impugned mark is devoid of distinctive character and is identical or deceptively similar to the appellants registered trade mark. Further, the respondent's mark has been used only six months prior to the date of filing as against the appellant's mark which has been in use since 1917. e. the respondents cannot get the benefit of Section 12 as its adoption and use is totally dishonest. f. the Asst. Registrar has erred in holding that "nowhere on their bills, the device of MOON & STAR is visible" as the Registrar had ignored the advertisements and other documents tendered by the appellant/opponent which are of the year 1919, 1924, 1932, 1937, 1951 and even of recent times. g. The findings of the Asst. Registrar that there appears to be "no clash in user of the opponent and applicant" is misplaced as the appellant's trade mark has acquired tremendous trans border reputation. She has ignored the voluminous documents filed by the appellant/opponent. h. The Registrar has failed to appreciate that the appellant/opponent is the registered proprietor of the several trade mark under no.82129; 82128; 521932 and 82131 all in Class 3. The oldest among these registrations pertain to the year 1943. i. The Registrar did not apply the ratio decidendi of the judgments "Om Textile Factory Vs Peosico Inc." - - 2006 (32) PTC 225, "SandysConfezioni S.P.A. vs Tata Engineering And Locomotive Co. Ltd." 2006(32)PTC 296(IPAB) and "Enfield India Ltd. Vs Deepak Engineering Syndicate" - 2006(32) PTC 397(IPAB). j. The Registrar has passed the impugned order mechanically without due care and caution while exercising her discretion. It is arbitrary, unreasonable and fanciful. The appellant therefore pray that the impugned order dated 24th April, 2007 be quashed/set aside and allow this appeal. The case of the respondent is summarized below: - a. the trade mark SAHAJANAND was first conceived and adopted in 1999 in respect of medical equipments and surgical instruments and accessories thereof falling in Class 10. These are used in health care industry. b. The impugned mark has been used since 29th August, 2002 and is also used by one of its sister concern SAHAJANAND BIOTECH Pvt. Ltd. for a variety of products falling in various classes including 3, 7 & 9 and 10. c. the respondent was the first to introduce indigenously manufactured coronary stent styled in Millennium Stent' in 1999 which is used by cardialogist in the treatment of coronary disease. d. they have applied for the impugned mark in various classes including class 5,10, 35 & 42. The respondents hold copyright registration in respect of the artistic work of the impugned mark under no 75176 of 2005. e. the competing marks are totally different. The respondent's marks are called as SAHAJANAND and/or SAHAJANAND with creative design of letter S. The appellant's trade mark is MOON & STAR. The competing marks are structurally different. f. the opponents are dealing in bleaching preparation and substances for laundry use, cleaning, polishing, souring and abrasive preparations, shops, perfumery, essential oil, cosmetics and hair dyes. g. the present appeal is completely vague, frivolous and is totally lacking in merit.;