S. Jagadeesan, Chairman - (1.) THE Appellants have preferred this Appeal against the order of the Assistant Registrar of Trade Marks, Chennai, dated 23.1.2004, directing the registration of the Trade Mark "Maharaja" brand of the respondents in Application No. 578456 in Class 30 and dismissing the opposition No. MAS 56450 filed by the appellants.
(2.) The respondents filed an application under No. 578456 in class 30 on 4.8.1992, for the registration of the Trade Mark "MAHARAJA" and a device of a man caricature. The said application was published in the Trade Marks Journal. The appellants filed their Opposition No. 56450 stating that the Trade Mark of the respondents sought to be registered is similar to that of the appellants' Trade Mark in respect of the same goods. The respondents' Trade Mark is neither adopted to distinguish nor capable of distinguishing the goods of the respondents, consequently, the impugned mark cannot be registered under Section 9 of the Trade and Merchandise Marks Act, 1958. Yet another objection of the appellants is that, the appellants had established use of the Trade Mark and thereby built a reputation associated with the said Trade Mark "MAHARAJA" and as such any use of the same mark on the goods covered by the impugned Trade Mark would certainly result in deception and confusion in the minds of the consumers as well as the public at large. Hence, the registration of the impugned mark is prohibited under Section 11 of the said Act. The further objection of the appellants is that the word "MAHARAJA" together with the portrait of Maharaja in the impugned mark is identical to that of the appellants' mark. The goods mentioned in the impugned application are also the same. The appellants are using the said Maharaja Trade Mark since 1980 and as such the registration of the impugned mark is barred by the provisions of Sub-section 12(1) of the said Act. The applicants had also disputed the proprietorship of the respondents within the meaning of Section 18(1) of the Act. The respondents filed their counter statement on 29.1.2001 denying the allegations made in the Opposition. Both the parties had filed their evidence. After hearing both the counsel, the Assistant Registrar of Trade Marks held that the objection of the Appellants under Section 9 cannot be sustained. Similarly, he also found the objections of the appellants under Section 11(1) cannot be sustained. Having found so, the Assistant Registrar imposed a condition for registration of the respondents' Trade Mark in order to distinguish from the goods of others during the course of the trade. The condition being that the respondents shall always use their Trade Mark "MAHARAJA" with full name and address of the respondents' firm in prominent feature on the label, sticker, etc. under Section 12 of the Act. The Assistant Registrar further held that the objections of the appellants under Section 12(1) of the Act also cannot be sustained. With regard to the proprietorship of the respondents, the Assistant Registrar found that the respondents have adopted the mark honestly and independently and in view of the evidence available on record, the respondents can very well claim the proprietorship of the Mark. Consequently, under impugned order dated 23.1.2004, the Assistant Registrar allowed the registration of the impugned Trade Mark of the respondents in application No. 578456 in class 30 and rejected the opposition No. 56450 of the appellants. Aggrieved by the same, the appellants have filed the present appeal.
(3.) IT may be pertinent to note that the appellants had also filed an application No. 581054 dated 15.9.1992, for registration of their mark "MAHARAJA" with the word "Maharaja" and the respondents had filed their objections. The Assistant Registrar of Trade Marks, by order dated 30.1.2004, allowed the registration of the appellants with a restriction in respect of the area of operation. The appellants filed O.A. No. 25/2004 challenging the condition of restriction in the area of operation and the respondents filed O.A. No. 24/2004, challenging the order of the Assistant Registrar permitting the registration of the appellants' Trade Mark. The discussion with regard to the earlier user in this appeal would dissolve the question of entitlement of the parties. The finding would cover the main issue involved in the other appeal O.A. No. 24/2004 as to the right of registration of the trade mark.;