S. Jagadeesan, Chairman - (1.) THIS appeal is against the Order of the first respondent dated 11.10.1996, rejecting the application of the appellant for registration of the trade mark 'DOCTOR'.
(2.) The word per se "Doctor" brand was sought to be registered by one M/s. Adarsh Industries, by filing an application No. 482170 on 30.12.1987, in respect of toilet soap, washing soap, detergents, washing powder and cosmetics included in class 3 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). During the pendency of the application, the appellant became the subsequent proprietor of the trade mark 'Doctor' registered under Nos. 142293 dated 7.2.1950, 239854 dated 6.1.1967 and 417329 dated 9.2.1984. On 10.4.1991, the appellant filed his request on Form TM 16 before the Registrar of Trade Marks, the first respondent herein, requesting to proceed with the application No. 482170 in the name of Pee Cee Soap and Chemicals Pvt. Limited. The said application was advertised in the Trade Marks Journal No. 1050, dated 1.3.1993 at page 1188 in the name of M/s. Adarsh Industries and associated with the appellant's trade mark No. 239854 and others. The second respondent herein M/s. Kislin Cosmetics, filed their notice of opposition opposing the registration of the impugned trade mark stating that they are the bona fide proprietors in India and elsewhere inter-alia of the trade mark 'Doctor' which has been in actual use for the last 20 years and the said mark was adopted in the year 1971 and thereafter got registered under Trade Mark No. 371085, which has attained a goodwill and reputation in the market. The second respondent further stated that they are making attempts for export of the complete range of cosmetics, shampoo, powder, etc. under their trade mark 'Doctor'. They have further stated that the impugned mark is deceptively similar to that of their mark and as such, the registration of the impugned mark would cause confusion and deception in the trade and in the public using the cosmetics and toilet preparations. Hence, the registration of the impugned mark will be violative of the provisions of Sections 9, 11(a), 11(e), 12(1) and 18(1) of the said Act. The appellant filed their counter on 22.2.1994 denying all the averments of the second respondent in their notice of opposition and further stated that their predecessor has adopted the trade mark 'Doctor' in respect of washing soap and detergent in the year 1958 and since then, the trade mark is in continuous use in respect of washing soap. The present application filed by the appellant pursuant to a request in Form 24 dated 10.2.1989 and the trade mark 'Doctor' brand was assigned to the appellant. The appellants are also registered proprietors of the trade mark 'Doctor Soap' (label) under No. 142293; Doctor under No. 417329 in respect of detergents and Doctor soap (label) under No. 239854 in respect of washing powder. The impugned mark is distinguished and is exclusively associated with the goods of the appellant and they have attained goodwill and reputation in the market. At any rate, the appellant is entitled for registration of the impugned mark under Sections 12(3) and 33 of the said Act since the appellants are honest concurrent users. The second respondent, on 5.9.1994, filed the evidence of user and reputation by way of an affidavit by one Shri Parsa Lalwani, alongwith the attested copies of the bills and registration certificate. The appellant also filed the evidence on 11.1.1995, in respect of user of the mark applied for by way of affidavit by one Shri Mohinder Kumar Jain. After the completion of the formalities, the matter was heard by the first respondent and under the impugned Order, allowed the opposition No. DEL-8123 of the second respondent and refused registration of the application of the appellant. The first respondent, in the impugned Order upheld the objection of the second respondent under Sections 9, 11(a) and 11(e) as well as Sections 12(1) and 18 (1) of the Act. Aggrieved by the same, the present appeal has been filed in the High Court of Delhi in CM (M) No. 29/1997, which stood transferred to this Appellate Board, by virtue of Section 100 of the Trade Marks Act, 1999 and numbered as TA/131/2003-TM/DEL.
(3.) WE have heard Shri N.K. Anand, the learned counsel for the appellant and Shri B.R. Bhale Rao, for the second respondent.;