Raghbir Singh, Vice-Chairman - (1.) THIS is an appeal filed by the appellants/opponents against the review decision dated 31st December, 2002 of Assistant Registrar of Trade Marks, Chennai under Section 97(c) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) in the matter of review of his earlier decision dated 9th November, 2001 dismissing the opposition No. MAS 3070 filed by the opponents to the respondents/applicants application for registration No. 474027 dated 22.6.1987 claiming use of the mark 'BB BABA's SULTAN' since July, 1984. The Assistant Registrar by his order dated 9th November, 2001 allowed the impugned application to proceed for registration subject to an amendment of goods to read as "Hosiery and readymade garments for sale in the States of Maharashtra and Tamil Nadu". The grounds for review taken by Respondents/applicants were as follows:- (i) That the Registrar has overlooked Section 33 of the Act, whereas the petitioners are the prior users and proprietors of mark 'BABA' on which opponents had filed opposition. (ii) That the Registrar has already overruled the opponents' objection raised under Section 12(1) of the Act and, therefore, the Tribunal should not have restricted the registration of the impugned trade mark to a limited area.
(2.) The learned Assistant Registrar, after hearing the applicants and the opponents in the original application, by his order dated 31st December, 2002, allowed the review application and ordered that the condition "Hosiery and readymade garments for sale in the States of Maharashtra and Tamil Nadu" as imposed in the impugned order dated 9th November, 2001 is withdrawn and modified the operative portion of the above order to read as under:- "It is hereby further ordered that Opposition No. MAS-3070 is dismissed and application No. 474027 in class 25 which was advertised before acceptance is accepted and allowed to proceed to registration." The appellants/opponents had filed an appeal under Section 109(2) of the Act in the Hon'ble High Court of Madras on 8th April, 2003 against the above review decision of the Assistant Registrar dated 31st December, 2002 which has been transferred to the Intellectual Property Appellate Board (IPAB). The appeal was heard by the Board on 31st December, 2003. At the hearing, Shri Rajnikanth Madhavan, Advocate appeared for the appellants and Shri A.A. Mohan, Advocate appeared for the respondents.
(3.) THE learned counsel for the appellants Shri Rajnikanth Madhavan submitted that the learned Assistant Registrar of Trade Marks has erred in allowing registration of the mark under Section 12(3) read with Section 33 of the Act withdrawing the limitation to the areas. THE burden of his contention is that the power to be exercised under Section 97(c) by the Assistant Registrar has to be in the nature of power conferred in Order 47 Rule 1 of the Civil Procedure Code which is not to be exercised in substitution of the power of appeal.;