S. Jagadeesan, Chairman - (1.) THE appellant preferred this appeal against the order of the first respondent dated 17.8.1994 where under the appellant's opposition No. DEL - 7729 in respect of second and third respondents' application No. 446013 for registration of the trade mark 'BSC' was disallowed.
(2.) Respondents No. 2 and 3 are carrying on business under the name and style Chane Machinery Works and they filed application No. 446013 on 25.11.1985 for registration of the trade mark containing an artistic device with words 'BSC' in respect of sewing machine parts. The said application was advertised in the Trade Marks Journal No. 1025 dated 16.2.92 at page 1417. The appellant herein on 18.5.92 filed a notice of opposition to oppose registration of the mark advertised on the following grounds:- (i) That the appellants are the registered proprietors of the trade mark 'Bata' under No. 132294 as of 20.1.1948. (ii) Appellants are also registered proprietors of trade mark 'BSC' in different classes in respect of footwear made of rubber, leather and other materials. The impugned mark seeking registration is identical with and / or deceptively similar to the appellant's registered trade mark BSC. BSC stands for Bata Shoe Company. (iii) The registration of the mark applied for is contrary to the provisions of Sections 9, 11 (a), 11(e), 12(1) and 18(1) of the Trade and Merchandise Mark Act, 1958 (hereinafter referred to as the Act). On 30.7.1993, respondents No. 2 and 2 filed their counter refuting the material averments in the opposition and further slated that they adopted the impugned mark in the year 1975 which is a composite trade mark in respect of sewing machine parts and that the impugned mark has attained goodwill and reputation in the market due to long user. Further, it was pleaded that the appellants are dealing in footwears and leather goods included in class 25, whereas respondents are dealing in sewing machine parts included in class 7. The parties filed their evidences by way of affidavits and documents and after the completion of the procedure, the Deputy Registrar heard counsel of respective parties. Ultimately under the impugned order the Deputy Registrar has overruled the objection of the appellant under Section 12(1) of the Act on the ground that the goods of respondents No. 2 and 3 are totally different from the goods of the appellant and further the impugned trade mark contains as artistic device with letters 'BSC' and the same device distinguishes the impugned mark from that of the appellant's mark. The Deputy Registrar further held that Sections 11 (a) and 11 (e) of the said Act are not attracted on the ground that the appellants have not established extensive use of the trade mark 'Bata* and 'BSC' as the sales statistics do not contain the particulars. He has also found that the appellant has not chosen to file the statistics for the rest of the period except from 1982 to 1992. He also overruled the objection under Section 9 of the Act on the ground that the impugned mark has distinct features to distinguish itself from the appellant's mark. The Deputy Registrar also overruled the objection of the appellant existing under Section 18(1) of the Act on the ground that the goods are different and consequently disallowed opposition DEL - 7729 filed by the appellant and directed to proceed with registration of application No. 446013 in class 7 filed by respondents No. 2 and 3. As against the same, the appellants preferred to file an Appeal CM(M) No. 171/95 on the file of High Court of Delhi at New Delhi which stood transferred to this Appellate Board by virtue of Section 100 of the Trade Marks Act, 1999.
(3.) WE heard Ms. Prathiba M. Singh learned counsel for the appellant and Shri Manmohan Singh learned counsel for respondents No. 2 and 3. Learned counsel for the appellant vehemently contended that the appellant is the registered proprietor of the trade mark 'Bata' and 'BSC' and the appellant is manufacturing footwear and leather goods. The appellant have registered the trade mark 'BSC' as mentioned below:- JUDGEMENT_26_TLIP0_20040.htm The appellant has got a very good reputation and goodwill and taking advantage of the same respondents No. 2 and 3 have adopted the impugned mark. The learned counsel further contended that the annual turnover of the goods under the trade mark 'BSC was Rs. 53,80,55,000 in the year 1982 and increased to Rs. 114,64,15,000 in the year 1992. Further the use of the impugned mark by respondents would also create confusion in the mind of the general public as if the appellants are the manufacturers of the sewing machine parts manufactured by respondents No. 2 & 3. The Deputy Registrar has totally failed to consider the relevant provisions and also committed a grave error in overlooking some of the evidences filed by the appellant, including the sale statistics.;