Raghbir Singh, Vice-Chairman - (1.) THE appellants/opponents filed Opposition No. MAS-3053 dated 27th April, 1994 to trade mark application No. 513952 of the respondents/applicants to register the trade mark label containing the device of an elephant head with a garland in its trunk and the expression "ELEPHANT HEAD BRAND" as its essential feature in respect of lungies and sarees included in class 24, which was filed on 26th July, 1989. THE respondents/applicants claimed to have been using the trade mark from 1st June, 1965 on the date of the application. THE opponents claimed that they are the proprietors of the trade mark label containing the device of an elephant and/or elephants and the words 'ELEPHANT BRAND' in respect of textiles piece goods including lungies and handkerchiefs and have been using the said trade mark for the past several years under registered trade mark Nos. 157473, 165215 and 310619, all registered in class 24. THEy claimed that by virtue of long, continuous and extensive use, wide publicity and sales promotion work and also the high quality of goods sold under the distinctive elephant device and the trade mark 'ELEPHANT BRAND' enormous goodwill and reputation HAVE accrued to their said trade marks. THEy further claimed that the impugned trade mark is hit by Sections 11(a), 11(b), 11(e), 12(1), 12(3), 9 and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). Respondents/applicants filed a counter statement on 13th March, 1995 denying the allegations of the opponents and disputing the alleged similarity between the trade mark of the opponents and of the applicants and also stating that they have adopted the trade mark 'ELEPHANT HEAD BRAND' with the device of elephant head with a garland in its trunk which is being used by them since the year 1965 in respect of lungies and sarees and as such they are entitled to registration of the mark under Section 12(3) of the Act. Appellants/opponents led evidence through an affidavit dated 20th November, 1995. THE Respondents/applicants filed evidence through an affidavit on 28th November, 1997 and also requested to treat the evidence filed by them earlier in respect of another application No. 365872 (since abandoned) as part and parcel of the evidence of the subject application. THE case was heard by the Deputy Register on 31st July, 2000 and by his order dated 19th March 2002 he dismissed the opposition and ordered that the application be proceeded to registration subject to condition to be notified in the Trade Marks Journal that the device of elephant is common to the trade. THE present appeal is against the order of the Deputy Registrar dated 19th March 2002. Ms Gladys Daniel, Advocate appeared for the appellants but none appeared for the respondents.
(2.) The issues in this manner relate to Sections 9, 11(a), 11(b), 11(e), 12(1), 12(3) and 18(1) of the Act. The learned Deputy Registrar has rightly rejected the contention that the registration of the impugned trade mark offends the provisions of Section 9 of the Act. the opposition is also based upon the contention of similarity between the two trade marks which aspect needs examination under Sections 11 and 12 and Section 9 is in no way concerned with that. The learned counsel for the appellants has objected to the registration of mark under the provisions of Section 12(1) of the Act. She pointed out that the condition of disclaimer over the usage of the device of an elephant imposed earlier on the application was subsequently cancelled by way of corrigenda in the Trade Mark Journal No. 1097 dated 16th February, 1995 when their opposition was pending. This is incorrect for the reason that when such disclaimer had been imposed on the appellants' similar mark, which is registered prior to the present application, how the same has been cancelled in the case of the respondents' application. Apparently there is not much of dissimilarity between the expressions 'ELEPHANT BRAND' and 'ELEPHANT HEAD BRAND'. Further, the goods for which these marks are used are also the same. Hence, the appellants' objection under Section 12(1) is sustained. But the applicants' claim is also based upon the provisions of Section 12(3) of the Act which provides that in case o'f honest and concurrent user of other special circumstances, which in the opinion of the Registrar, make it proper to do so, he may permit registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose. He has to exercise the discretion keeping in view either or both of the guidelines provided by the Legislature, namely, "honest concurrent user" and "other special circumstances". In London Rubber Co, Ltd. v. Durex Products, PTC (Suppl)(1) 246(SC), para 22 J: Mudholkar accordingly relied upon the following in Kerly on Trade Marks at p. 164.5 namely: - "The words 'or other special circumstances' were held in Hold & Co., (leeds) Ltd., Applications, (1957) RPC 289, to include any circumstances peculiar to the application in relation to the subject matter of the application and this includes use by an applicant of his mark before the conflicting mark was registered or used."
(3.) HOWEVER, there had been an earlier attempt in this matter by the respondents to register the trade mark vide application No. 365872 in class 24 as of 9th September 1980 for which an Opposition had been filed by the appellants in 1987. The application had been abandoned under Section 21(2). HOWEVER, the applicants immediately thereupon filed a fresh application for registration of the very same trade mark on 26th July, 1989 which was numbered as 513952 claiming user from 1.6.1965, which is the trade mark presently under dispute.;