S. Jagadeesan, Chairman - (1.) THIS appeal arises out of the impugned order of the Deputy Registrar of Trade Marks dated 6.12.94 disallowed opposition No. Del-7978 of the appellant and directing the registration of the trade mark, of the Respondent No. 3 in application No. 487475 in class 23 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act.
(2.) The third respondent M/s. Aggarwal Wool Store filed application No. 487475 on 16.3.88 requesting for registration of the trade mark 'NIRMA' in respect of knitting yarn included in class 23. The said application was advertised in the Trade Marks Journal No. 1040 dated 1.10.1992 at page 732. The appellant herein M/s. Nirma Chemical Works filed the notice of opposition on 28.12.92 opposing the registration of the trade mark of the 3rd respondent on the ground that the mark applied for does not qualify the requisite conditions contemplated under Section 9 of the Act and that the word 'NIRMA' is originally invented and adopted by the appellant 20 years back and the same is their house mark in respect of their goods and the registration of the impugned trade mark will be contrary to the provisions of Sections 9, 11(a), 11(b), 12(1), 18(1) and 12(3) of the Act and as such the application is liable to be rejected under Section 18(4) of the Act. Third respondent filed their counter statement on 7.9.93 refuting the averments made by the appellant stating that the third respondent's goods 'knitting yarn' is quite distinct and of different character and nature from the appellant's goods. Hence, there is no likelihood of deception or confusion between the two marks on the basis of different description of goods. Further the third respondent is entitled for the benefit of Section 12(3) of the Act. The appellants filed evidence of user on 22.4.94 by way of affidavit dated 15.4.94 in the name of one Mr. Ambubhai Patel enclosing few un-attested photocopies of bills and advertisement cuttings. On 31.5.94 third respondent filed evidence by way of affidavit dated 11.5.94 in the name of Shri Vinod Kumar. The appellant also filed evidence of rebuttal and after the completion of the formalities the matter was heard by the Deputy Registrar of Trade Marks. In the impugned order the Deputy Registrar held that the word 'NIRMA' is a dictionary word and hence the appellant cannot claim monopoly of such word. He also found that the appellant's goods fall under class 3 whereas third respondent's goods fall in class 23 and as such the goods of both the parties are different and hence neither Section 9 nor Section 12(1) is attracted. He also found that the goods of the appellant as well as the respondents are distinctive in nature and as such Section 11 is also not attracted. Equally he held that the impugned trade mark 'NIRMA' being a dictionary word, any number of public is at liberty to adopt and use that mark within the relevant provision of the trade mark law and consequently Section 18(1) of the said Act has no role to play. Further, he held that the third respondent is entitled for the registration of the impugned mark under Section 12(3) since they have adopted the said trade mark bona fidely taking advantage of the name being a dictionary word. Consequently the Deputy Registrar under the impugned order rejected the opposition of the appellant and allowed the registration of the impugned trade mark of the third respondent. Aggrieved by the said order the appellant filed CM(M) No. 606/94 on the file of High Court of Delhi. After the Constitution of this Board the same was transferred pursuant to Section 100 of the Trade Marks Act, 1999.
(3.) LEARNED counsel for the appellant contended that appellants have registered their trade mark 'NIRMA' in respect of their business activities for manufacturing and/or marketing chemicals, washing and cleaning preparations, detergents, soaps and cosmetics and liquid blue, safety matches. For more than two decades they are carrying on the trade under the trade name 'NIRMA' and by virtue of the same they have built up a goodwill and reputation in the market for their goods. When that is so the respondent cannot be permitted to use the same mark for their goods though their goods are different in nature. He also drew our attention to the various judgments of different High Courts as well as the Apex Court, where the Courts have taken a view that if the owner of the registered trade mark already on record had built up a good reputation and also a goodwill in respect of their business, the same trade mark cannot be allowed to be used by any other, even in respect of different goods.;