S. Jagadeesan, Chairman - (1.) THE appeal is directed against the order of the Assistant Registrar of Trade Marks Delhi, dated 4.7.1996, rejecting the application of the appellant for registration of the trade mark TOWER KING'.
(2.) Shri Babulal G. Jain, trading as M/s. Adinath Cable, filed an application No. 493478 B for registration of the trade mark POWER KING in respect of PVC insulated wires and cables included in class 9 of the Fourth Schedule of the rules framed under the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The said application was duly advertised before acceptance in the Trade Marks Journal No. 1074, dated 1.3.1994 at page 1243. The first respondent, M/s. Golden View Electrical Industries Pvt. Ltd., filed notice of their intention to oppose the registration of the impugned mark on 26.4.1994 on the ground that the impugned mark is violative of Sections 9, 11(a), 11(e), 12(1), 12(3) 18(1) and 18(4) of the said Act. On 10.2.1995, the appellant filed their counter statement denying the averments of the first respondent herein in their notice of opposition. The first respondent, on 21.4.1995, filed evidence in support of their opposition by way of an affidavit dated 19.4.1995 in the name of Shri Satish Kumar Chadha, Managing Director of the first respondent company alongwith the photo copies of documents Exhibits A-1 to A-198. The appellant filed their evidence on 31.5.1995, by way of an affidavit dated 3.5.1995 in the name of Shri Babulal G. Jain, alongwith photo copies of the documents Exhibits 1 to 12. On 30.6.1995, the first respondent filed their reply evidence by way of an affidavit of their Managing Director. The matter was listed for hearing by the Assistant Registrar on 16.8.1995 on which date, the Assistant Registrar of Trade Marks heard the respective counsel of either party and ultimately, under the impugned order allowed the opposition No. DEL-8650 of the first respondent herein and refused the registration of the application No. 493478 B of the appellant herein. The Assistant Registrar of Trade Marks, in the impugned order had specifically mentioned that the first respondent confined the dispute only with regard to issues in respect of Sections 9, 11(a), 12(1) and 18(1) of the Act. The Assistant Registrar had taken up the issue with regard to Section 11(a) of the Act and found that the first respondent has acquired a reputation and goodwill of their trade mark POWER KING in respect of their goods mainly being electric alternators and A.C. generating sets since 1973. He also found that though the appellant's goods falls under class 9 and the first respondent's goods falls under class 11 and the description of the goods are distinct, still, the goods of the appellant is having trade connection with that of the goods of the first respondent and as such, the registration of the appellant's mark would cause confusion and deception in the minds of the consumers as well as in the trade and consequently, upheld the objection under Section 11(a) of the Act.
(3.) WHILE dealing with the objection under Section 12(1), the Assistant Registrar relied upon the statement of the first respondent about the existence of the already registered mark under No. 317198 B in class 9 in respect of wires, cables, electrical switches, electrical fittings, coil holders, plugs, adopters, connectors, etc. which stood in the name of third party and held that the prohibition under Section 12(1) is attracted. So far as the objection under Section 12(3) is concerned, the Assistant Registrar held that the first respondent's mark was in use since 1975 whereas the appellant adopted the identical trade mark only in the year 1985 and as such, the appellant has adopted the impugned trade mark with full knowledge of the existing trade mark of the first respondent. Hence, there is no bona fide in the adoption and consequently the appellant is not entitled for the registration of the mark under Section 12(3). The Assistant Registrar further upheld the objection under Section 9 of the Act following the reason to uphold the objection under Section 11(a) of the Act. He also found that the appellant is not the proprietor of the trade mark as they adopted the first respondent's trade mark dishonestly and consequently the objection under Section 18(1) of the Act was also upheld and the application for registration was rejected. Aggrieved by the same, the appellant has preferred the appeal in CM (M) 366/1996 on the file of the Hon'ble High Court of Delhi which stood transferred to this Appellate Board by virtue of Section 100 of the Trade Marks Act, 1999 and numbered as TA/127/2003/TN/DEL.;