S. Jagadeesan, Chairman - (1.) THE appellant has filed these appeals against the order of the Deputy Registrar of Trade Marks dated 07.03.1994 and 11.11.1994 respectively allowing the opposition filed by the second respondents in No. DEL 7267 and No. DEL 7219 of the respective appeals and refusing the registration of application No. 434294 filed by the appellant in class 9 under the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). THE appellant filed application No. 434294 for the registration of the trade mark 'USHA' in respect of switch gears, electric switch, electric main switch, metal clad switch fuse. THE said application was advertised in the trade mark journal No. 1004 dated 01.04.1991 at page 28, on 21st June, 1991 M/s. Chinar Trust, the second respondent in TA No. 96/2003 who also claimed that they are the sister concern of the second respondent Jay Engineering Works Ltd., in TA No. 111/2003 filed a notice of opposition opposing the application of the appellant for registration of the trade mark on the ground that they are registered proprietors of the trade mark 'USHA' under various registration numbers in respect of goods falling under classes 7, 9 and 11 and that they attained goodwill and reputation in the mark for their standard quality of goods. THE appellants copied their mark for the purpose of enjoying upon the goodwill and reputation attained by the respondents. THE goods in respect of which the appellant seeks registration are goods of similar description in respect where of the respondents use their trade mark. THE registration of the appellant's mark will be contrary to the provisions of Sections 9, 11(a), 11(e), 12(1) and 18(1) of the Act. On 20.08.1992 the appellants filed the counter statement denying the material averments stated by the second respondent in their opposition and further added that the appellants are engaged in the business of manufacturing and selling switch gears, electric switches, electric main switches and metal clad switch fuse units since the year 1969 and the word 'USHA' has been taken from the personal name of the appellant. THE parties led in evidence.
(2.) Similarly second respondent in TA No. 111/2003 M/s. Jay Engineering Works Ltd., filed their opposition on 29th May 1991 stating that they are the manufacturers and merchants in sewing machines, electrical fans, regulators and parts thereof with the trade mark 'USHA' and that they are the registered proprietors of the said trade mark. They are the registered owners of the mark under Copyright Act also and the word trade mark applied for by the appellant is identical with and/or deceptively similar to the second respondent's mark and as such the registration of the impugned mark is prohibited under Sections 9, 11 (a), 11 (b), 11 (e), 12(1) and 18(1) of the Act. The Deputy Registrar of Trade Marks separately considered the opposition filed by the second respondent in the respective appeals and ultimately by order dated 7th March, 1994 allowed the opposition DEL-7267 filed by the second respondent in TA No. 96/2003 and by order dated 11th November, 1994 allowed the opposition DEL-7219 filed by the second respondent in TA No. 111/2003 and consequently rejected the application No. 434294 of the appellant for registration of the impugned trade mark. Against the order of the Deputy Registrar of Trade Marks the appellant filed CM(M) No. 433/94 and 184/95 on the file of High Court of Delhi. These appeals have been transferred to this Board pursuant to Section 100 of the Trade Marks Act, 1999 and numbered as TA No. 96/2003 and TA No. 111/2003 respectively. As the issues involved in both the appeals are common and in respect of one application filed by the appellant for registration of the impugned trade mark, by consent of both the counsel the appeals were taken up for joint disposal.
(3.) WE heard Mr. Mohan Vidhani the learned counsel for the appellant and Shri Kulwant Rai Gupta learned counsel for the second respondent in TA No. 96/03 and Shri. N.K. Anand learned for second respondent in TA No. 111/03.;