S. Jagadeesan, Chairman - (1.) THE appellant filed this appeal against the order of the second respondent dated 25.11.1994 rejecting the application of the appellants for registration of the trademark TARKO'.
(2.) The appellants filed the application No. 438802 on 7.6.1985 for registration of the trademark 'PARKO' in respect of electric juicers, electric mixers, electric heal converters, electric grinders, electric elements and electric accessories and apparatus, not included in other classes. The said application was advertised in the Trade Mark Journal No. 1011 dated 16.7.1991 at page 512. The first respondent herein, on 22.8.1991, filed their notice of opposition to oppose the registration on the ground that they have been marketing their goods under the trademark 'PARKO' for the last 25 years and that they are the registered proprietors of the trademark 'PARKO' under No. 222935 in class 11 and the same has been in use since 1963. Further, they have stated that the mark applied for by the appellants is identical with that of the first respondent's trademark and, therefore, it is not registrable under Sections 9, 11(a), 11(b), 11(c) 12(1) and 18(1) of The Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The appellants filed their counter statement denying all the material averments contained in the notice of opposition filed by the first respondent and further stated that the appellants are dealing in domestic electrical appliances and their goods are manufactured by third parties under the appellant's direct supervision and control and the appellants commenced sale of such items after stamping the same with their distinctive trademark 'PARKO' since 1984, This mark has been adopted honestly and bonafidely. The appellants filed evidence by way of affidavit and the first respondent also filed evidence of rebuttal. After the completion of the formalities, the matter was heard by the Registrar. Ultimately, under the impugned order, the Registrar rejected the application of the appellants herein for registration of the trademark 'PARKO' and allowed the opposition No. DEL 7366 of the first respondent on the ground that there is no honest use on the part of the appellants to get the benefit under Section 12(3) of the said Act and that both the trademarks are in every respect identical and as such, there will be confusion and deception in the minds of the public, consumers as well as the traders. Aggrieved by the said order, the appellants preferred an Appeal CM (M) 104 of 1995 on the file of High Court of Delhi, which was transferred to this Appellate Board and numbered as TA 105 of 2003. We heard both the counsels. Mr. Ajay Sahni, learned counsel for the appellants contented that the appellant's goods are related to electrical appliances, whereas the first respondent's goods are sanitary wares and as such, the goods of the appellants and that of the first respondent are not the same nor the description is identical. When the goods of both the parties are totally different and distinct, there is absolutely no chance or possibility of any confusion or deception. Further, he contented that the appellants are using the impugned trademark since 1984 and as such, the Registrar ought to have granted registration under Section 12(3) of the Act.
(3.) ON the contrary, Mr. Shailen Bhatia, the learned counsel for the first respondent vehemently contented that the appellants had committed fraud for the registration of the impugned trademark by stating that their goods were not included in any other classes and subsequently claimed the registration under class 9. In fact, the appellant's goods are specifically described as one falling under class 7 and class 11 as per the alphabetical index to the classification of goods issued by Government of India, Trade Mark Registry. The respondent's goods are in class 11. Hence, it cannot be said that all the goods of the appellants are of different description. When some of the goods of the appellants fall within the description of class 11, it has to be taken that the goods are similar or similar in description. In that case, the Registrar has rightly held that the appellant's mark is not registrable. He also contended that when the respondent's mark is a registered one and they are in the market since 1963, the appellant's adoption of the very same mark of the respondent cannot said to be bonafide. When the adoption itself is with mala fide intention, Section 12(3) is not applicable. Here again, the Registrar held rightly. It is also contented that even assuming the goods are of different kind, still, the reputation and goodwill built up by the first respondent all along cannot be permitted to be shared by the appellants by use of the same identical trademark. Allowing the use of the impugned trademark by the first respondent, would also cause confusion in the minds of the public as if the first respondents are manufacturing such goods that are being manufactured by the appellants. He also relied upon the judgment of the Delhi High Court in Daimler Benz Aktiegesellschaft v. Hybo Hindustan, AIR 1994 Delhi 239, which was confirmed by the Supreme Court and another judgment of the Delhi High Court in the case of Honda Motors Company Limited v. Charanjit Singh and Ors., 2003 (26) PTC 1 (Del).;