S. Jagadeesan, Chairman - (1.) THE appellants have filed this appeal against the order of the Deputy Registrar of Trade Marks, Delhi dated 18.4.1995.
(2.) The appellants filed application No. 488236 on 29.3.1988 seeking the registration of the trademark 'TANU' with the logo of containing two letter 'T' in respect of their hosiery goods, socks, panties and brassieres included in class 25, claiming the user since March 1985. The appellants also claimed that the above trademark is associated with application No. 441024. The said mark was advertised in the Trade Marks Journal No. 1033 dated 16.6.1992 at page 343. The second respondent herein M/S. T.T. Industries have filed notice of opposition opposing the registration of the impugned mark on the following grounds:- 1. The second respondents have been carrying on their business of manufacturing and marketing of goods of hosiery such as ganjis, jangias, bra, socks, panties, etc., in the name and style 'T.T. Industries', which is their initial of trading style since 1968. The letter T.T. is the house mark of the second respondent and they also obtained copyright of the registration in various forms, designs and get up. 2. The Second respondents are also the proprietors of the following marks:- (a) Trade Mark No. 334423 as of 13.3.1978 advertised in the Trade Marks Journal No. 728 at page 826. (b) Trade Mark No. 266085 as of 3.8.1970 advertised in the Trade Marks Journal No. 674 at page 213. (c) Trade Mark No. 277801 as of 20.1.1972 advertised in the Trade Marks Journal No. 671 at page 125. (d) Trade Mark No. 334422 as of 13.3.1978 advertised in the Trade Marks Journal No. 740 at page 35, and (e) Trade Mark No. 432270 advertised in the Trade Marks Journal No. 994 at page 893. The abovesaid trade marks are registered, valid and subsisting. In addition to the abovesaid trademarks, the second respondent is also the sole proprietor of the trademark containing the letters and that the impugned mark is identical and/or deceptively similar to that of the second respondent and therefore, the same is not registrable under the provisions of Section 9, 11(a), 11(e), 12(1) and 18 of the Trade and Merchandise Marks Act, 1958. 3. The appellants filed their counter refuting the averments made by the second respondent and further stated that they adopted the trademark 'TANU' with the device of a logo, from their corporate name, in the month of March 1985 and that the impugned mark has become distinctive and associated with the goods of the appellant and the appellant has no connection with the trademark 'T.T.' of the second respondent and the same is not used by the appellant. Further, the mark applied for is not deceptively similar to that of the second respondent. The second respondent filed their evidence by way of an affidavit of one Mr. Rikhab Chand Jain. The appellants also filed the evidence of user and reputation by way of an affidavit by one Mrs. Harjeet Kaur, accompanied with Photostat copies of the Bills. The matter was heard by the Deputy Registrar of Trade Marks on 28.2.1995. After hearing both the counsels, under the impugned order, the Deputy Registrar allowed the opposition DEL 7802 of the second respondent and refused the application of the appellants for registration on the ground that the impugned mark closely resembles or is identical with that of the second respondent's trademark 'T.T.' and as such, the same cannot be registered as per Section 11(a) of the said Act. The Deputy Registrar also upheld the objection of the second respondent under Sections 11(e) and 9 of the said Act. The Deputy Registrar further held that the bar under Section 12(1) of the Act is also attracted and sustained the objection under Section 18(1) also. As against the said order, the appellant has filed appeal No. CM(M) 351 of 1995 on the file of the Hon'ble High Court of Delhi and the same was transferred to this Appellate Board pursuant to Section 100 of the Trade Marks Act, 1999.
(3.) WE have heard the arguments of Mr. V.P. Ghiraiya, on behalf of the appellants and Mr. Rajiv Bansal, on behalf of the second, respondent, during our circuit bench sitting at Delhi. The learned counsel for the appellants Mr. V.P. Ghiraiya contented that the appellants are carrying on the business under the name and style 'TANU Textiles' since 1985 and for the first time adopted the trademark 'TANU' from the corporate name with a device logo. The second respondent's mark is 'T.T.', which has its own distinctiveness and is not similar or identical to that of the appellants. The Deputy Registrar erroneously ordered that the trademark 'TANU' has no importance and only the logo is significant and if the logo is taken into consideration, the same is identical with the trademark of the second respondent. The learned counsel further contented that even assuming that the logo of the appellants had some significance, still the letters 'T.T.' in the logo of the appellants are not similar to the trademark of the second respondent and consequently, the reasoning of the Deputy Registrar to reject the appellant's application cannot be sustained. On the contrary, the learned counsel for the second respondent Mr. Rajiv Bansal contented that the impugned mark is similar to that of their mark. and when the goods are of the same or same description, there is every possibility of confusion or deception in the trade. The public may mistake 'TANU' with 'T.T.' and will think that the appellant's products are also manufactured from the second respondent's factory. Further, the second respondent initiated criminal proceedings against the appellants before the Additional Chief Metropolitan Magistrate of Kolkata and the appellants have given an undertaking in July 1985 by way of an affidavit that they will not use any of the trademark and copy righted work with the name 'T.T'. or 'T.Tex'/or any other deceptively or confusingly similar mark or marks. Having given such an undertaking in the Court of Law, it is not open to the appellants to seek for registration of the impugned mark.;