S. Jagadeesan, Chairman - (1.) THE appeal is directed against the order of the Assistant Registrar of Trade Marks, Delhi dated 14.10.1996 rejecting the appellant's application for registration of the trade mark.
(2.) The appellants S/Shri Sitaram Rawal and Madanlal Rawal trading as M/s Lakshmi Electrical Industries (India) filed application No. 509937 dated 5.5.89 in class 11 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the said Act) for registration of trade mark 'EAGLE' word per se in respect of heaters, fans, room heaters, immersion rods, geysers, toaster, hot plates for cooking, gas electric oven, fan regulators and parts of the aforesaid goods included in class 11 claiming user of the mark since 1978. The said application was advertised before acceptance in the Trade Mark Journal No. 1073 dated 16.2.1994 at page 1332. The first respondent herein Shri Subash Chancier Gupta proprietor of M/s Classic Cable Industries filed notice of opposition for the registration of the impugned mark on the ground that the same is violative of Sections 9, 11, 12 and 18 of the said Act. The Appellant filed their counter statement on 2.3.95 refuting the statement of the first respondent in their notice of opposition. First respondent on 19.6.95 filed evidence in support of his opposition by way of his affidavit alongwith few supporting documents. The first respondent also filed affidavit of Shri Jagdish Prasad Gupta, sole proprietor of M/s Payal Electricals and Shri Bhajan Lal Singhal alongwith some photocopies of sale bills separately with each affidavit. The appellants also filed evidence on 27.9.1995 by way of an affidavit in the name of Shri Sitaram Rawal, one o the partners of the firm. He also filed six affidavits from various dealers. The first respondent also filed his reply evidence by way of an affidavit and after completion of the evidence the Assistant Registrar heard the counsel for the respective parties. Ultimately under the impugned order the Assistant Registrar of Trade Marks allowed the opposition No. DEL 8689 of the first respondent herein and refused registration of the application No. 509937 of the appellant herein. The Assistant Registrar has found that the registration of the impugned mark is prohibited under Section 12(1) of the said Act only in respect of fan regulators on the ground that among the appellant's goods as well as the goods under the registered trade mark of the first respondent, only fan regulators is of same description and rest of the goods under the impugned trade mark are not of the same description. The Assistant Registrar found that the registration of the impugned mark is violative of Section 11(a) of the said Act since the first respondent has acquired sufficient reputation by use of the mark 'EAGLE' from the year 1977. The Assistant Registrar further held that the first respondent's goods are mainly switches, wires and cables etc., which have a definite connection with the appellant's goods, namely, heaters, fans, room heaters, immersion rods, geysers, toaster, hot plates etc., which are included in class 11 and as such the registration of the impugned mark is prohibited under the provisions of Section 11(1) of the Act. He further held that the appellant is not entitled for the benefit of registration under Section 12(3) of the said Act also on the ground that the adoption of the trade mark by the appellant is not bona fide. On the same reasoning the Assistant Registrar found that the registration of the impugned mark is violative of Section 18(1) of the said Act. Aggrieved by the same, the appellant preferred an appeal in CM (M) No. 10/97 on the file of High Court of Delhi which stood transferred to this Board pursuant to Section 100 of the Trade Marks Act, 1999 and numbered as TA/130/03. We have heard learned counsel Shri M.R. Bhalerao on behalf of the appellant and learned counsel Shri Mohan Vidhani on behalf of the first respondent during the sitting of the Board held at New Delhi on 14.9.2004.
(3.) LEARNED counsel for the appellant contended that the appellants are already the registered proprietors of the trade mark 'EAGLE' under trade mark No. 412979 in respect of electric irons, video apparatus and instruments, radio, television, tape recorders all being goods included in class 9. The application was filed on 11.11.83 and registration was granted on 13.6.1992 and as such the appellants are the registered proprietors of the said trade mark 'EAGLE' since 11.11.1983. The present application was made under class 11 as the class of goods are different. The first respondent had also obtained assignment of the registered trade mark 'EAGLE' from earlier proprietors under the trade mark No. 326163 in respect of electric switches. The first respondent's predecessor also applied for registration of the same trade mark in respect of certain other goods. The first respondent himself filed two more applications for registration in respect of electric fans, ceiling rose, air regulators, electric fixture and fittings, electric lamp holders, domestic electric appliances, heater and kettle elements on 22.2.93. The appellant being the registered proprietor of the same trade mark in respect of goods falling under class 9 and the use of the same was not disputed by the first respondent, the Assistant Registrar had strained himself on the question of use and found that the registration of the impugned mark will be violative of Section 11(a) of the said Act. The first respondent's registered mark is only in respect of electric switches and the appellant is not seeking registration of the impugned mark under class 11 in respect of electric switches. The goods of the appellant being totally different, the registration of the impugned mark ought to have been allowed. Even in respect of the question of Section 12(3) of the said Act the Assistant Registrar had misdirected himself in finding that the adoption of the trade mark by the appellant is not bona fide which leads to the conclusion that the Assistant Registrar has failed to keep in mind that the appellant is also a registered proprietor in respect of the same trade mark relating to the goods under class 9. Further when the first respondent claims that they have adopted the trade mark in respect of other goods, even then as per the findings of the Assistant Registrar only fan regulators could form the same class of goods. In that case the Assistant Registrar ought to have allowed the registration without forgetting the fact that one cannot claim monopoly of the mark in respect of different kinds of goods within a particular class and as these aspects have been totally missed the notice of Assistant Registrar, the impugned order is liable to be set aside.;