S. Jagadeesan, Chairman - (1.) THE appellant has filed this appeal against the order of the Deputy Registrar of Trade Marks, Delhi, dated 15.3.1995, rejecting the opposition of the appellant.
(2.) One Shri Satya Narain Gupta, Proprietor of M/s. Lal. Products, Kanpur, U.P., filed an application No. 371404 B on 24.1.1981, to register the trade mark 'LALA' word per se in respect of spices, hing, jeera, compounded asfoetidia, for cooking purposes, included in Class 30 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The said application was advertised in the Trade Marks Journal No. 882, dated 1.3.1986 at page 689. On 31.3.1986, the appellant herein M/s. P. Mittulaul Lala and Sons, Madras, filed their notice of opposition on the ground that the appellant is the registered proprietors of trade mark LALAH'S under No. 322245 in respect of curry powder and spices in powder form in class 30 and another mark under No. 358026 in respect in spices, spice powder, curry powder and condiments in class 30 and that the impugned mark is deceptively similar to that of the first respondent and the goods covered by the impugned mark are the same or of the same description. The further opposition is that the registration of the impugned mark will be contrary to the provisions of Section 11(a), 11(b), 11(e), 12(1), 12(3) and 18(1) of the said Act. The first respondent filed the counter statement denying all the material averments made in the opposition and further stated that the first respondent is the leading manufacturer and merchant of the goods with the impugned mark 'LALA'. The mark 'LALA' means "Seth" or an owner of a shop or a person commanding respect in the Society. The first respondent honestly adopted the impugned mark being a part of their trading style and they are using the impugned mark for the past 15 years of the date of application and, therefore, due to extensive, open and continuous use, they are entitled for registration under Section 12(3) of the said Act. The impugned mark is not deceptively similar to that of the appellant's mark and, therefore, the registration of the same will not in any manner contravene the provisions of Sections 11, 12 and 18(1) of the Act. Both the parties had filed their evidence by way of affidavits and also documents. The Deputy Registrar, after hearing the respective counsel, by order dated 24.9.1992, disallowed the opposition No. DEL-4529 of the appellant and accepted the application No. 371404 of the first respondent in class 30 for registration, dealing with the opposition of the appellant in respect Sections 9 and 11 of the said Act. The Deputy Registrar did not deal with the opposition of the appellant under Section 12 of the said Act on the ground that the counsel for the appellant had given up the said plea. The appellant herein filed an appeal CMM 41/1993, on the file of the High Court of Delhi. The learned Judge allowed the appeal and remanded the matter back to the Registrar for fresh hearing on the following terms: It is made clear that the petitioner before me i.e., the opponent before the Registrar has not actually given up his objection under Section 12. In fact, the trade mark of the opponent, i.e., the petitioner before me was registered earlier and normally no Registered Proprietor would give up such an objection under Section 12. Notes of arguments are furnished to me which were filed before the Registrar. In the circumstances, the order of the Registrar is required to be set aside since he had failed to consider the case under Section 12. The Registrar is required to consider the objection of the petitioner. Accordingly, the order of the Registrar is set aside. The matter is remitted back to the Registrar for reconsideration of the matter. Parties are directed to be present before the Registrar on 7th November, 1994 at 11.00 A.M. The petition is accordingly allowed. After the remand, the Deputy Registrar reheard the matter and passed the present impugned order over-ruling the objection of the appellant under Sections 9, 11(a), 11(b) and 11(e) of the said Act. Insofar as the objection of the appellant under Section 12(1) of the said Act is concerned, the Deputy Registrar upheld the same on the ground that both the impugned mark and that of the appellant are similar and appellant's goods as well as the first respondent's goods fall in class 30 with same description. However, the Deputy Registrar found that the first respondent is entitled for the benefit of Section 12(3) on the ground that the first respondent is using the trade mark "LALA" in Northern India and the word "LALA" is also commonly used in Northern India and further the first respondent has been using the impugned mark since 1971 in respect of only a few goods out of the goods registered under the appellant's mark and ultimately disallowed the opposition of the appellant.
(3.) AGGRIEVED by the same, the appellant filed an appeal CM(M)-320/95 on the file of the Delhi High Court which stood transferred to this Appellate Board by virtue of Section 100 of the Trade Marks Act, 1999, and numbered as TA/114/2003.;