S. Jagadeesan, Chairman - (1.) THE appellant filed an application No. 403366 on 26th March, 1983 for registration of a trademark consisting the word 'SONA' in respect of goods TEA' in Class 30, for sale in the State of Haryana. THE said application was advertised before acceptance under proviso to Section 20(1) of the Trade and Merchandise Marks Act, 1958, (hereinafter called the Act) in Trade March Journal 991 dated 16.09.1990 at page 730. THE respondents filed their notice of objection on 17.12.1990 in opposition No. DEL - 7005, objecting the registration of the impugned mark of the appellant on the ground that the respondents are the registered proprietors of the trademark "SONA SPICES" logo in respect of spices and the same is identified and associated with the reason of its extensive use and publicity. THE registration of the impugned mark is prohibited under Section 9 of the Act since the same is neither distinctive nor capable of distinguishing. THE description of goods are the same and the impugned mark is bound to cause confusion and deception during the course of the trade and hence prohibited for registration under Section 11(a) as well as under Section 12(1) of the Act.
(2.) The appellants filed their counter statement on 6.5.1992 denying the averments of the respondents in their notice of opposition The Registrar of Trade Marks upheld the opposition under Section 9(1)(d) of the Act on the ground that the appellants failed to rely upon any evidence. On the same grounds, the opposition under Section 12(1) was also upheld. The Registrar further rejected the objection of the respondents under Section 18(1). The Registrar ultimately rejected the application of the appellant under the impugned order. While doing so, he further added that the grounds and reasons of refusing the impugned application should be supplemented and read alongwith order passed against the very same application in opposition No. DEL-7332 dated 9.5.1974. Aggrieved by the same, the appellant has filed an appeal in the High Court of Delhi as No. CM(M) 374 of 1994. This appeal has been transferred to this Appellate Board by virtue of Section 100 of the Trade Marks Act, 1999. The counsel for the appellant submitted that the application of the appellant for registration of their trademark was opposed by the respondent herein as well as two other parties namely. 1. M/s. Brooke Bond India Ltd., in opposition No. DEL-7032; and 2. M/s. Soongachi Tea Industries Private Ltd. The opposition No. 7032 filed by M/s. Brooke Bond India Ltd., was allowed and the application of the appellant for registration of the trademark 'SONA' was rejected. By another order, the opposition filed by M/s. Soongachi Tea Industries Private Ltd., in DEL-6927 was rejected and the application of the appellant for registration was allowed. Against these orders of the Registrar of Trade Marks, M/s. Soongachi Tea Industries Private Ltd., filed an appeal in CM(M) 342 of 1993 against the appellant herein on the file of the Delhi High Court and the appellant herein filed CM(M) 371 of 1994 against M/s. Brooke Bond India Ltd. Both these appeals were allowed and the application of the appellant for registration of the trademark was remanded to the Registrar of Trade Marks for fresh disposal on merits. The learned counsel for the appellant contended that since this impugned order makes a reference to the findings of the Registrar given in the opposition No. DEL-7032 stating that reasons for upholding the opposition in DEL-7032 have to be supplemented along with other reasons given in the impugned order under appeal and now that the order of the Registrar of Trade Marks in respect of upholding of the opposition No. DEL-7032 had been set aside by the Delhi High Court, in all fairness, this appeal must also be allowed and the matter has to be remanded back to the Registrar of Trade Marks, New Delhi with a direction to consider all the three oppositions together. He also pointed out that the evidences have been filed at the pre-advertisement stage and a memo has been filed to treat the evidences filed against one of the oppositions as evidence in respect of the other oppositions also. Hence the statement of the Registrar of Trade Marks that no evidence has been filed is not correct.
(3.) THE learned counsel for the respondent vehemently opposed the submission of the learned counsel for the appellant for the remanding of the case on the basis of the judgments of Delhi High Court in CM(M) 342 of 1993 and CM(M) 371 of 1994. He also argued on merits by referring to a number of Judgments. THE main contention of the learned counsel for the respondent opposing the submission of the learned counsel for the appellant is that the Registrar of Trade Marks has given a finding in certain aspects in favour of the respondent and now by seeking for a remand, the appellant is making an attempt to set aside such findings and further seeks for a fresh disposal with fresh evidence. Unless the order of the Registrar of Trade Marks is proved to be illegal, the findings of the well considered order cannot be set aside. THE last paragraph of the impugned order refers to the supplemental reasons, which means the reasons given for upholding the opposition DEL-7032 filed by M/s. Brooke Bond India Limited are, lending support to the upholding of the opposition in this case alongwith the supplemental reasons provided under the impugned order.;