S. Jagadeesan, Chairman - (1.) SINCE both the Appeals are arising out of the order of the Assistant Registrar of Trade Marks, Chennai, dated 30.01.2004, in Application No. 581054 in Class 30 filed by M/s. P. Doraisamy Gounder of Shanmuga Rice Mill and Opposition No. MAS 57677 filed by M/s. Mujeeb Modern Rice Mills, by consent of both the counsel, these appeals were taken up for joint disposal. For the purpose of convenience, we refer the rank of the parties as in O.A. No. 25/2004.
(2.) The appellants filed application No. 581054 in Class 30 for registration of the Trade Mark "MAHARAJA" with the device of man caricature on 15.9.1992 claiming the user of the said mark since 12.9.1979. Acceptance of the application was advertised and published in the Trade Marks Journal No. 1231 (S) dated 21.09.2000. The respondents herein filed their notice of opposition on 11.12.2000 on the following grounds: (1) That the respondents are using the Trade Mark "MAHARAJA" and the device of man caricature in respect of the goods raw and polished rice in South India since 1980 onwards. (2) The respondents originally conceived and coined the Trade Mark "MAHARAJA" in respect of their goods rice. (3) They also filed application No. 578456 in Class 30 and is already on record. (4) The respondents' mark being well known in the market, the registration of the appellants' mark is likely to cause confusion and deception during the course of the trade. (5) Hence, the registration would offend Section 11 of the Trade and Merchandise Marks Act, 1958. (6) The appellants are not the proprietors of the said Trade Mark in accordance with Section 18(1) of the said Act. The appellants filed their counter on 24.4.2001 denying the allegations made by the respondents in their notice of opposition and contended that they have adopted the mark honestly and independently. After hearing the arguments of the respective counsel, the Assistant Registrar of Trade Marks, found that the objection of the respondents under Section 9 cannot be sustained since the Trade Mark "MAHARAJA" and the device of man caricature do not have any direct reference to the character and quality of the goods and as such, the mark is distinctive under Section 9 of the said Act. However, the Assistant Registrar of Trade Marks upheld the objection of the respondents under Section 11 of the said Act finding that the respondents' mark is well known during the course of the trade. Similarly, the Assistant Registrar of Trade Marks upheld the objection of the respondents under Section 12(2) of the Act finding that the respondents are the prior users of the disputed Trade Mark. So far as the objection with regard to the proprietorship under Section 18(1) of the Act is concerned, the Assistant Registrar of Trade Marks overruled the same and found that the appellants are the proprietors of the Trade Mark. Having found so, the Assistant Registrar of Trade Marks imposed a condition that the appellants shall use the Trade Mark alongwith the name of the appellants' firm prominently also with the address for sale of goods, viz., rice in the State of Tamil Nadu only. Consequently, dismissed the opposition filed by the respondents and allowed the application of the appellants for registration with the said condition by order dated 30.1.2004.
(3.) AGGRIEVED by the same, the applicants filed the appeal O.A No. 25/2004/TM/CH, challenging the condition of restricting the area of operation, i.e. the sale within the State of Tamil Nadu. The opponents filed the appeal O.A. No. 24/2004/TM/CH against the order of the Assistant Registrar directing the registration of the applicants' Trade Mark.;