S. Jagadeesan, Chairman - (1.) THE appeal is against the order of the Assistant Registrar of Trade Marks, New Delhi, dated 29.9.1993, allowing the opposition filed by the respondents and rejecting the application of the appellant for registration of the Trade mark.
(2.) The appellant herein above filed an Application No. 421055 dated 25.4.1984, for registration of a trade mark "MARCONI" in Clause 9 in respect of the goods, viz., Record players, Ampligrams, Radiograms and Stereo Sound System, claiming user since December 1969. The said application of the appellant was advertised in the Trade Mark Journal dated 1.1.1990 at page 1230. The respondents hereinabove on 9.2.1990 filed a notice of opposition objecting to the registration of Trade Mark of the appellant contending that the respondents are carrying on an established business on manufacturing various electric goods under the Trade Mark 'MARCONI' and the same had been registered in India in class 9 under No. 367767, dated 22nd October, 1980 in respect of scientific, nautical, avionic, surveying, measuring, signalling, checking (supervision), life saving, teaching, radar, wireless, television, photography, cinematography, optical, electro-optical apparatus and instruments, taking machines, calculating machines, all being electrically operated. Video apparatus, tape recorders, parts included in class 9 of all the aforesaid goods. The word 'MARCONI' is also registered under No. 367768 dated 22nd October, 1980 in class 9 in respect of scientific, nautical, surveying and electrical apparatus and instruments (including wireless), telephonic, television and telegraphic instruments, sound and video recording and sound and video reproducing apparatus and instruments, tapes prepared for use as sound or video recording and re-producing media and cassettes and wallets, all for use with such tapes pre-recorded tapes and cassettes, cinematographic, optical, weighing, measuring, signaling, checking (supervision), Life saving and teaching apparatus and instruments, coin or counter freed apparatus, talking machines, cash registers, calculating machines, Fire extinguishing apparatus and parts and fitting for the aforesaid goods. The said Trade mark 'MARCONI' has also been registered in class 9 under Nos. 86285 and 86286, dated 20th September, 1943, under No. 214419, dated 21st March, 1963 and under No. 324592, dated 15th April, 1977, all in class 9. All the above trade marks are being periodically renewed and are valid and subsisting. The respondents further stated that they are using the said trade mark in India since the last several decades as registered mark since 1943 being renewed periodically and by the reason of the same, they developed reputation and goodwill in India as well as in the international market. Since the appellant applied for the registration of an identical mark in respect of similar and for the same description of the goods, the registration is prohibited under Sections 12(1) and 11(a) of the Trade and Merchandise Marks Act, 1958. The adoption of the impugned trade mark by the appellant is with dishonest intention. The objection of the appellant were under Sections 9, 11(a), 11(e), 12(1), 12(3) and 18(1) of the Act.
(3.) IN the counter statement, the appellants contended that they are in the business since the year 1969 and are using the trade mark 'MARCONI' without any interruption or hindrance. Further, the appellant filed a suit in the year 1984 in the Hon'ble High Court of Delhi and they had obtained a decree in their favour declaring that they are the proprietors of the impugned trade mark. It is also stated that the respondents acquiesced to the use of the impugned trade mark by the appellants since they had not taken any action against the appellants, knowing the use of the impugned trade mark by the appellants,;