S. Jagadeesan, Chairman - (1.) THIS appeal is directed against the order of the Assistant Registrar of Trade Marks, Calcutta, dated 23.9.1997, rejecting the application of the appellant for registration of their trade mark "BERKEFELD FILTER".
(2.) The appellant herein filed its application No. 495981 on 16.8.1988, for registration of the word mark "BERKEFELD FILTER" in respect of its goods water pipe system, particularly the sprinkling system and their various parts and components, mobile and stationary apparatus and the equipment for treating, particularly softening, purification, disinfection and degassing, removal of iron and/or decontamination of water and other liquids with the aid of filters, as well as their parts and components, filter elements, filter systems, essentially comprising a filtering substance, filter casings, regulating control and monitoring accessories and equipment, as well as their parts and components being goods included in class 11 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the 'ACT'). The said application was advertised before acceptance in the Trade Marks Journal No. 1089, dated 16.10.1994, at page 993. The third respondent, filed their notice of opposition on 15.2.1995, objecting to the registration of the impugned mark on the ground that they are the registered proprietors of the trade mark "BERKEFELD" under No. 323181, in class 11 in respect of filters for drinking water and parts thereof. The third respondent is using its trade mark since April, 1976 and as such, the registered trade mark is being identified and associated exclusively with the third respondent is respect of its goods. The registration of the impugned mark would cause confusion and deception during the course of trade and as such, the same is prohibited under Section 11(a) read with Section 12(1) of the said Act. Further, the adoption of the impugned mark by the appellant is with a view to trade upon the goodwill and reputation enjoyed by the third respondent in their registered trade mark and therefore, the appellant cannot claim its proprietory rights in terms of Section 18(1) of the Act. An objection was also taken under Section 9 of the Act. The appellant filed its counter on 27.9.1995, refuting all the averments of the third respondent and further stated that the words "BERKEFELD-FILTER" is the leading and memorable part of their trade name and that the said mark is already registered in a number of countries in the world and is being used internationally. The appellant also filed a request in Form TM 16 to amend the statement of user to read as "since the year 1984" and also they prayed for amendment of the specification of goods by way of another Form TM 16. The appellant further stated that the third respondent got the registration of its trade mark by committing a fraud and the appellant is actively considering to lodge rectification proceedings. The third respondent did not file any evidence under Rule 53, but, relied on the facts stated in the notice of opposition. The appellant filed its evidence by way of affidavit of Mr. Henrich Foge alongwith 5 exhibits. Thereafter, the matter was heard by the Assistant Registrar. Ultimately, the Assistant Registrar of Trade Marks, passed the impugned order rejecting the application of the appellant, however, giving an option to register its mark for the specification of the goods other than "Filters for Drinking water and parts thereof, mainly on the ground that the appellant has miserably failed to establish its prior use. As against the same, the appellant filed the appeal TMA 203/1998, on the file of the High Court of Calcutta. After the amended Trade Marks Act, 1999, came into force, the appeal was transferred to this Appellate Board and numbered as TA/301/2004/TM/KOL.
(3.) WE have heard Ms. Moushumi Bhattacharya for the appellant and Shri S.P. Choudhri for the third respondent.;