S. Jagadeesan, Chairman - (1.) SINCE the issues involved in both the appeals are common and the parties in both the appeals are also being the same, with the consent of the counsel for Sri Murugan Paints and Shri Krishna moorthy - party in person for M/s. Rockfort Paints and Chemicals, the appeals are taken up for joint disposal.
(2.) Rockfort Paints and Chemicals, having their business at the Industrial Estate, Mathur, Pudukotti District, the appellant in T.A. No. 8/2003, filed an application under No. 387862 on 20.3.1982, for registration of the word "Rockfort" along with device of fort in respect of paints, primer and varnish covered under class 2 of the Trade and Merchandise Act, 1958 (hereinafter referred to as the Act). The said mark was ordered to be advertised as accepted and the same was accordingly advertised in the Trade Marks Journal in No. 1052 dated 1.4.1993. Sri Murugan Paints Corporation, the first respondent in T.A. No. 8/2003, filed notice of opposition No. MAS 2863 on 17.5.1993, objecting to the registration of the appellant's mark "Rockfort" contending that neither the appellant nor their predecessor in title have continuously and extensively used the said mark ever since 5.2.1980. The first respondent acquired reputation and valuable goodwill to their trade mark "Rockfort" by reason of continuous and extensive use. The first respondent also objected for the registration of the appellant's trade mark on the ground that the same is identical with that of their trade mark and the goods are also of the same description. It is also objected on the ground that if the descriptive impugned trade mark is allowed to be used, it will result in confusion and deception in the course of the trade and as such, the registration of the appellant's trade mark is prohibited by Section 11 (a) and Section 11 (e) of the said Act. On 27.1.1990, Rockfort Paints and Chemicals, filed their counter statement generally denying the averments in the notice of opposition No. MAS 2863, filed by Sri Murugan Paints Company. Rockfort Paints and Chemicals further pleaded that they honestly adopted the mark "Rockfort" for their chemicals, paints and varnish in the year 1978 and they have been using the said trade mark continuously and extensively in respect of their goods.
(3.) THE evidence was filed by both the parties before the Registrar of Trade Marks. THE Assistant Registrar of Trade Marks, by his order dated 31.5.1996, allowed the opposition No. 2863, filed by Sri Murugan Paints Corporation and rejected the application No. 387862, of Rockfort Paints and Chemicals.;