S. Jagadeesan, Chairman - (1.) BOTH the appeals are filed against the order of the Registrar of Trade Marks, New Delhi dated 26.4.1993 allowing the application of the first respondent for registering their mark 'MRP' in respect of 'repair outfit for tyres' included in Class 12 and rejecting the opposition of the appellant herein. The appeal T.A. No. 77/2003/TM/DEL (CM(M)/296/93) was filed by the counsel for the appellant and T.A. No. 208/2003/TM/DEL (CM(M)/297/93) was filed by the appellants themselves.
(2.) The first respondent herein filed the application No. 438336 on 25.5.1985 for the registration of their Trade Mark 'MRP' in respect of 'repair outfit for tyres' included in Class 12. The Registry raised certain objections and after compliance thereof, the said application was advertised in Trade Marks Journal No. 943 dated 16.9.1988 at page 726. On behalf of the appellants, their counsel M/s. Kurian Associates filed a notice of opposition on 15.12.1988 in No. DEL-6074 raising the grounds that the appellants are having the registered Trade Mark 'MRF', having business in the name of 'MRF Limited' since 1961 and their trade mark is a registered one under No. 231949 in Class 12. The respondent's trademark is deceptively similar to the appellant's trademark and the goods for which registration is sought are the same or of the same description. Hence, the registration of the impugned mark is prohibited under Section 12(1) of the Trade and Merchandise Act, 1958, hereinafter referred to as the Act. Further, the impugned mark applied for registration is a colourable imitation and/or closely resembles the appellant's mark and, therefore, the registration offends Section 11(a) of the said Act. The first respondent's claim as user is not valid and as such they are not entitled for concurrent registration under Section 12(3). In all, the appellant's objection is that the registration of the impugned trademark of the respondent is prohibited under Sections 9, 11(a), 11(b), 11(e), 12(3) and 18(1) of the Act. The respondents have filed their counter statement on 5.6.1989 denying all the allegations of the appellants made in their opposition. On 28.11.1989, the appellants filed evidence in support of their opposition of trademark. On 24.1.1990, the first respondent filed evidence in support of the mark applied for registration. The Registrar of Trade Marks heard the respective counsels of both the parties and ultimately disallowed the opposition No. DEL/6074 of the appellants and directed the registration of the trade mark by allowing the first respondent's application No. 4383396 in Class 12. The Registrar in his impugned order found that the registration of the impugned trademark is prohibited under Sections 11(a) and 12(1) of the Act since the mark is almost identical with that of the appellant's mark 'MRF' and upheld the objection of the appellants. The Registrar of Trade Marks, however, over-ruled the objection of the appellants so far it relates to Section 9 and Section 18(1) of the said Act. The mark was directed to be registered under Section 12(3) of the Act finding that the first respondent is a bona fide user of their trade mark 'MRP' since 1978 and consequently they are entitled for the benefit of the concurrent registration. Aggrieved by the same, the appellant, through counsel, filed the appeal No. CM(M) 296 of 1993 and another appeal by themselves in CM(M) 297 of 1993 in the High Court of Delhi. Both the appeals were transferred to this Appellate Board pursuant to Section 100 of the Trade Marks Act, 1999 and numbered as TA/77/2003/TM/DEL and TA/208/2003/TM/DEL respectively.
(3.) SINCE both the appeals are against the same order of the Registrar of Trade Marks dated 26.4.1993, the disposal of one would follow the result of the other appeal. Hence, we take the T.A. No. 77/2003/TM/DEL for disposal.;