Raghbir Singh, Vice-Chairman - (1.) CM (M) No. 125/95 filed in the High Court of Delhi has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TA/106/2003.
(2.) Second respondent herein, M/s. Gupta Light House filed application No. 443514 for registration of the trade mark 'PRE/STAGE' in respect of pressure cookers included in class 21. The mark was advertised in the Trade Marks Journal No. 970 dated 1.11.1989 at page 981. A notice of opposition was filed by the appellant herein M/s. Prestige Housewares India Limited on 29.12.1989 on the grounds that it is the registered proprietor of the trade mark 'PRESTIGE' under No. 141602 dated 14.12.1949 in class 21 in respect of non-electric cooking and kitchen utensils none being of precious metal or coated therewith. The mark was originally registered in the name of Prestige Group UK Plc., England and subsequently by a deed of assignment dated 4.10.1985 was assigned to the appellant. TT Private Limited, Bangalore are the sole and exclusive licensee to manufacture and sell 'PRESTIGE' pressure cookers and kitchen utensils all over India and for export as well. Appellant submitted that the impugned mark 'PRE/STAGE' is almost identical with the trade mark of the appellant. Second respondent has copied the appellant's trade mark in its entirety. It causes confusion and public may assume that it is from the house of famous 'PRESTIGE' cookers. The appellant opposed registration of the mark under Sections 9, 11 (a), 11(e), 12(1), 12(3) and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). Second respondent filed his counter statement on 15.7.1992 denying all the material averments and particularly on the grounds that a notice of opposition is bad because of non-joinder or mis-joinder of parties and they have no locus-standi to institute opposition proceedings against him. They are the prior adopter and user of the trade mark 'PRE/STAGE' AND 'PRESTIGE'. They are using the mark from 1.4.1972 regularly and continuously. They are the honest adaptors and continuous users of the mark. The notice of opposition is false and incorrect. The assignment deed dated 4.10.1985 is void document in law. and cannot be relied upon. M/s TT Private Limited is not authorised sole and exclusive licensee to manufacture and sell; 'PRESTIGE' pressure cookers and kitchen utensils all over India. Appellant filed it's evidence by way of an affidavit alongwith enclosures on 10.10.1993. The enclosures included newspaper cuttings, photostat copies of certain agreements, bills issued by M/s TT Private Limited and copies of petitions pending in the Delhi High Court. The affidavit filed by the second respondent on 14.6.1994 was accompanied by copies of certificate of registration held by him for trade mark 'PRE/STAGE' under No. 283753 B dated 27.10.1972 in respect of gas lanterns, stove, blow lamps and parts thereof and a copy of certificate of registration for trade mark 'PRESTIGE' under No. 335436 B dated 7.4.1978 in respect of hurricane lanterns, stoves, blow lamps and parts thereof. Photostat copies of certain bills were also submitted alongwith the affidavit. This affidavit was accompanied by certain other affidavits filed by Shri Narain Malhotra, Shri Rajender Seth and Shri Shyam Lal Rastogi. Appellant filed their evidence in reply on 23.9.1994. Learned Deputy Registrar held the hearing at New Delhi on 16.4.1993, 11.11.1994, 9.12.1994 and on 20.12.1994. Learned counsel for the appellant submitted before the Deputy Registrar that the appellant is the registered proprietor of the trade mark 'PRESTIGE' under No. 141602 dated 14.12.1949 in class 29 in respect of non-electric cooking and kitchen utensils none being of precious metal or coated therewith. This mark was originally registered in the name of Prestige Group UK plc., England and by virtue of deed of assignment dated 4.10.1985 the present appellant became subsequent proprietors of the trade mark. The word 'PRESTIGE' forms an important feature of appellant's corporate name and trading style and is being used in distinctive special script. It has been advertised in various magazines having wide circulation and has also been advertised in television and radio and thus the mark has acquired immense goodwill and reputation throughout the world including India. M/s TT Private Limited are authorised sole and exclusive licensee to manufacture PRESTIGE pressure cookers and kitchen utensils all over India and for export as well. Learned Deputy Registrar examined the application under various sections of the Act. He agreed with the learned counsel of the appellant that the impugned mark is phonetically, visually and structurally and in matter of idea represented therein similar to that of the mark of the appellant. Deputy Registrar concluded that no doubt the second respondent's adoption and use amounts to commercial dishonesty. Learned counsel for the second respondent submitted before the Deputy Registrar that the respondent is registered proprietor of the trade mark 'PRE/STAGE and PRESTIGE' under No. 335436 B dated 7.4.1978 in respect of hurricane lanterns, stoves, blow lamps and parts thereof included in class 11 and No. 283753 B dated 27.10.1972 in respect of gas lanterns, stove, blow lamps and parts thereof respectively. Thus, the common law right accrue to them to defend their proprietorship of those marks.
(3.) LEARNED Deputy Registrar examined the matter under various sections of the Act. In matter of his examination under Section 12(1) of the Act he came to the conclusion that the rival marks appear to be deceptively similar and he further concluded that the marks also relate to the same goods and as such both the conditions laid down under Section 12(1) of the Act are met. Having disentitled the mark under Section 12(1) of the Act, he immediately moved to Section 12(3) read with Section 33 of the Act and concluded that the provisions of Section 12(3) override the generality of sections 12(1) and 11(a) of the Act and the respondent is entitled to get their mark registered under sections 33, 12(3) and 54(2) of the Act. Thus, he (overruled the objection under sections 12(1) and 18(4) of the Act. In matter of his examination under section 11 (a), he observed that the respondent has adduced evidence of user from 1.4.1977 whereas they had claimed user of their mark since 1972. He observed that the appellant has been able to show user only since 1985. Hence, he overruled the objection under Section 11 (a) of the Act. Simultaneously with his analysis of Section 11 (a) he cleared the proposal from the angle of Section 11(e) as well. In matter of Section 9 he put reliance upon the mark 'PRE/STAGE' and 'PRESTIGE' registered by the second respondent for other goods, namely, hurricane lanterns, stoves, blow lamps and parts thereof included in class 11 and gas lanterns, stove, blow lamps and parts thereof respectively. Thus, he overruled the objection under Section 9 of the Act on this ground. He also overruled objections under Section 18(1) of the Act. He ultimately cleared the application under Sections 54(2) of the Act as being overriding over Sections 12(1) and 11 (a) of the Act. In effect, the Deputy Registrar has allowed the registration to the impugned mark under Section 12(3) read with Sections 33 and 54(2) of the Act.;