Raghbir Singh, Vice-Chairman - (1.) CM (M) No. 406/94 has been transferred from the High Court of Delhi in terms of Section 100 of the Trade Marks Act, 1999 and numbered as TA/93/03/TM/DEL.
(2.) Respondent, M/s Balbir and Sons (Agencies), filed application No. 412036 for registration of trade mark 'BALBI BLACK LABEL' in respect of liquors including brandy, whisky and gin and the same was advertised before acceptance in the Trade Marks Journal No. 974 dated 1.1.90 at page 1251. Appellant, M/s Kalyani Breweries Ltd., filed a notice of its intention to oppose the registration on 29.3.90 on the grounds that it is the registered proprietors of the trade mark 'KALYANI BLACK LABEL' under No. 308 in class 32 in respect of beer, but which in the course of trade is sold under the trade mark 'BLACK LABEL' and it is asked by, the customers as BLACK LABEL BEER. Thus, the word 'BLACK LABEL' has acquired a great reputation in the market for the appellant. Beer, though being in class 32 of the Fourth Schedule, and wine etc., being in class 33 of the Fourth Schedule, are sold from the same counters and asked for by the same class of customers. Thus, both the products by the established use of the trade are bound to be regarded as goods of the same class. The mark 'BALBI BLACK LABEL' applied for is confusingly and deceptively similar to the appellant's well known trade mark 'BLACK LABEL'. Thus, the registration of the trade mark applied for is contrary to provisions of Sections 11, 12 and 13(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The respondent filed their counter statement on 9.2.91 denying the averments of the appellant in opposition. Appellant filed certain evidences of user and reputation by way of an affidavit by Shri V.S. Venkatraman, Secretary of the Appellant Company on 25.5.92. The affidavit was accompanied by 17 unattested photocopies of bills. Deputy Registrar of Trade Marks took up the matter for hearing on 5.5.93. His conclusions are based upon the examination of the matter under Sections 11(a), 12(1) and 18(1) of the Act. In matter of his examination under Section 12(1) of the Act, he concluded:- (i) The prefixes in the mark 'KALYANI BLACK LABEL' and 'BALBI BLACK LABEL' being 'KALYANI' and 'BALBI' respectively, are distinct and dissimilar and the suffix 'BLACK LABEL' is identical and/or deceptively similar to each other and the prefixes being essential feature of the mark have greater significance and weight than all suffixes. Thus, the condition relating to the mark being identical with or deceptively similar to the similar mark registered in the name of a different proprietor is not satisfied; (ii) Appellant's goods are in respect of beer and the respondent's goods are in respect of liquor, including brandy. Hence rival goods are of the same description falling in different classes and thus, goods being similar, the condition relating to goods being of the same description under Section 12(1) of the Act is met. Thus, the impugned mark meets the requirements of Section 12(1) having not been disqualified on both the grounds in relation to deceptive similarity of the marks and the similarity of the goods.
(3.) IN relation to his examination under Section 11(a) of the Act, he took on record the affidavit filed by Shri V.S. Venkatraman, Secretary on 25.5.92 wherein the sale figures under the trade mark 'KALYANI BLACK LABEL' had been depicted from 1979-80 to 1990-91. IN the same context he relied upon the affidavit dated 18.11.92 of one Shri Balbir Singh for the respondent wherein respondent has shown user of the mark 'BALBI BLACK LABEL' from the 1980-81 to 1991-92. The respondent is the registered proprietor of the trade mark 'BALBI' word per se under No. 298112 as of 1.8.74 in respect of liquors, including brandy, whisky and gin. He concluded that the respondent has succeeded in proving the user of the mark applied for since 1974 in relation to the word per se 'BALBI' and since 1981 to 1991-92 in relation to the impugned mark BALBI BLACK LABEL'. Thus, he found that the opposition under Section 11(a) is not maintainable.;