S. Jagadeesan, Chairman - (1.) THE appellants herein filed this appeal against the order of the Assistant Registrar of Trade Marks dated 28.9.1998. THE respondents herein filed application Nos. 520377, 520380, 520378, 520376 and 520374 for registration of their trademark 'NEWMAN'. THE application No. 520377 is in respect of ropes, strings, nets, tents, awnings, tarpaulins, sails sacks, padding and stuffings and stuffing materials (hair capo, feather, seaweed, etc.), raw fibrous textile materials included in class 22. Application No. 520380 is in respect of gutta pareha, India rubber, balata and substitute, articles made from these substances and not include in other classes, materials for packing, stopping or insulting, asbestos, plastic in the form of sheets, blocks, rods and tubes being for use in manufactures included in class 17. Application No. 520378 is in respect of leather and imitation of leather, and articles made from these materials and not included in other classes, skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery included in class 18. Application No. 520376 is in respect of yarns and threads includes in class 23. Application No. 520374 is in respect of lace and embroidery riband and braid, buttons, press buttons, hooks and eyes, pins and needles, artificial flowers included in class 26. THE appellants herein filed their opposition in DEL-8789, DEL-8790, DEL-8791, DEL-8792 and DEL-8793 respectively stating that the registration of the impugned trademark claimed by the respondent would be in violation of the provisions contained under the Trade and Merchandise Marks Act, 1958, hereinafter called the Act, and mainly based upon the user as well as the registration of their trademark 'NEWMAN' in India and abroad. THEir trademark is
(2.) The respondents filed their counter to the opposition filed by the appellants. Ultimately, under the impugned order, the Assistant Registrar of Trade Marks disallowed all the oppositions filed by the appellants and allowed the applications filed by the respondents and ordered to proceed for registration. The appellants filed CM (M) 87 of 1999, before the High Court of Delhi. The same stood transferred to this Appellate Board by virtue of Section 100 of the Trade Marks Act, 1999 and numbered as T.A. No. 226/2004/TM/DEL. It is unnecessary for us to traverse the facts in detail because of the limited arguments advanced by the learned counsel for the appellant. The learned counsel for the appellant contended that the Registrar of Trade Marks has discussed as to whether the registration of the mark claimed by the respondent would in any way contravene Section 11 (a) and Section 12(1) of the said Act. After elaborate discussion, the Assistant Registrar of Trade Marks gave a finding in favour of the respondents on the ground that the respondents had earned a good reputation and goodwill by the use of the trademark 'NEWMAN' and as such the objections of the appellant have to be disallowed. The only contention of the learned counsel for the appellant is that in the earlier litigation, in a Suit No. 2784 of 87 on the file of Delhi High Court, the same parties had settled their differences of opinion and filed a Compromise Memo agreeing for certain terms. When there is a compromise decree between the parties, it is un-necessary for the Registrar to discuss in detail, with regard to the questions raised by the parties and he ought to have considered the rights of the parties only in conformity with the Compromise Decree. The other findings relating to Section 12(1) and Section 11(a) of the Act are irrelevant when the Compromise Decree is taken into consideration. Further, such findings would obstruct the rights of the appellants in future against even third parties. As such, the findings of the Registrar relating to Section 11(a) and Section 12(1) of the said Act can be expunged. Except this, no argument was advanced by the learned counsel for appellant on any other issue.
(3.) THE learned counsel for the respondent firmly contented that though the rights of the parties are covered by the Compromise Decree, the appellants raised the issues relating to Section 11(a) and Section 12(1) in their opposition and hence the Registrar is bound to give a disposal on those issues, otherwise he may be found fault on the ground that the issues raised in the opposition were not considered. Having invited a finding, that too, adverse to the appellants, now it may not be open to the appellant to seek for setting aside such findings unless it is established that the findings are unsustainable either on law or on facts. We carefully considered the above contentions of both the counsel.;