Raghbir Singh, Vice-Chairman - (1.) THESE two appeals filed as TMA 6 and TMA 7 of 1998 in the High Court of Judicature at Madras have been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and have been numbered as TA/16/2003 and TA/17/2003.
(2.) Two applications were filed by respondent No. 1 for registration of device of "BUNNY" alone under application No. 471287 and the words 'BUNNY BRAND' alongwith the device of 'BUNNY' under application No. 471288 in respect of fireworks in class 13. The appellants filed their opposition in relation to both the applications on the following grounds:- (a) That the opponents are registered proprietors of device of bunny under No. 291606 and 322428 in respect of non-medicated confectioneries, bread, biscuits (not for animals), cakes, etc. in class 30 and their application No. 495415 in class 13 has been accepted for registration and is about to be advertised in the Trade Mark Journal; (b) that since the rival marks are similar and the goods in question are the same and, or are of the same description, Section 12(1) of the Act acts as a bar to the registration of the impugned mark; (c) that having regard to established use and reputation associated with opponents' mark 'BUNNY', the impugned application would lead the public to wonder whether it is also one of their marks and, therefore, the registration of the impugned mark is hit by Sections 11 (a), (b) and (e) of the Act; (d) that applicants were fully aware of the opponents' 'BUNNY' mark and, therefore, the adoption by them is dishonest and as such the impugned mark is neither adopted to distinguish nor capable of distinguishing the goods of the applicant under Section 9 of the Act; (e) that the applicants are not and never were the proprietors of the mark within the meaning of Section 18(1) of the Act; (f) that opponents have also filed Suit No. C.S. 836 of 1989 against the applicants in the High Court, Madras; (g) that this is a fit case for exercise of Registrar's discretion adversely to applicants under Section 18(4) of the Act; (h) in view of the foregoing registration of applicant's mark would be contrary to Sections 9, 11(a), 11(e), 12(1), 18(1) and 18(4) of the Act. The Assistant Registrar heard both the applications together and decided on all grounds in the matter in favour of the applicant and ordered that both the applications shall proceed for registration. However, while dealing with the issue under Section 12(1) of the Act, he was of the view that the marks applied for are identical with or deceptively similar to the registered trade mark of the opponent but the goods in respect of the rival marks are totally different in nature, composition, character and usage. Thus, in conclusion, he held the matter under Section 12(1) also in favour of the applicant.
(3.) THE principal issues raised in the appeal are that the Assistant Registrar erred in holding that the registration is permissible under Section 12(1) of the Act since the appellant had also applied for registration as a defensive trade mark in all the 34 classes. THE findings of the Assistant Registrar under Section 11(a) of the Act are also equally unsustainable since the appellant's mark had attained long-user and great popularity and reputation beyond question.;