Raghbir Singh, Vice-Chairman - (1.) CM (M) No. 61/78 and CM(M) No. 327/94 filed in the High Court of Delhi have been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TA/290/2004/TM/DEL and TA/89/2003/TM/DEL respectively.
(2.) Appellant in TA/290 M/s Bhagwant Lal Chaman Lal and Sons made an application, being No. 280750 to register in class 8 a trade mark consisting of the word 'OLDSPICE' (standing alone) in respect of safety razors. The said application was advertised in the Trade Marks Journal No. 579 dated 16.7.93 at page 389. M/s Shulton Inc, the respondent lodged a notice of opposition to the registration on the grounds that the impugned trade mark is deceptively similar to its trade mark Nos. 259664, 229254 and 211048 and the goods in respect of which the registration is sought for and many of the items of the respondent's registration are goods of the same description and, therefore, the registration is barred by Section 12(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The goods for which the registration is sought would lead to confusion and deception as the trade and the public, being familiar with the past use of the respondent's registered trade mark, would assume a connection in the course of trade between the appellant and the respondent. In conclusion, the respondent submitted that the mark offends the provisions of Sections 9, 11(a), 11(e) and 12(1) of the Act. The appellant filed its counter statement on 20.4.74 denying all the allegations contained in the notice of opposition of the respondent. Evidence in support from both sides was filed by way of affidavits. The matter was heard by the Assistant Registrar of Trade Marks, Delhi on 9.8.78, Learned Assistant Registrar first of all took up examination of the matter under Section 12(1) of the Act. The respondent is holding registration under No. 229254, 211048 and 259664. Registration Nos. 229254 and 211048 are subject to disclaimer of the two words "OLD SPICE". The similarity between the mark of the appellant and the respondent's two marks is only in respect of disclaimed words 'OLD SPICE'. His conclusion, therefore, is that the appellant's mark sought to be registered is identical to the respondent's registered trade mark No. 259664. But it was not deceptively similar to the registered trade mark Nos. 229254 and 211048 due to imposition of disclaimer of the words "OLD SPICE". In matter of nature of goods of the appellant and the respondent, he found that their goods arc not similar. However, while making the examination as to whether the rival goods are of the same description, he found that there is no material before him to show that the rival goods are produced by one and the same manufacturer or distributed by the same wholesale house and in the absence of evidence to show that the goods are produced by one and the same manufacturer he concluded that rival goods are not of the same description and in matter of Section 12(1) of the Act the appellant's registration is not prohibited. In matter of Section 11(a) his findings were that the respondent has discharged the preliminary onus of establishing that it is the prior user of the trade mark 'OLD SPICE' as on the date of application of the impugned mark. Thus, he found that the burden of proof stood shifted to the appellant to prove that the registration was not likely to deceive or cause confusion upon for registration. While relying upon the number of cases of High Courts he came to the conclusion that having regard to the user of the respondent's trade mark 'OLD SPICE' in respect of "After Shave Lotion", the use of the appellant's trade mark 'OLD SPICE' for safety razors is bound to create confusion and deception. In matter of his examination under Section 12(3) of the Act, he went into the period of user of the appellant and found that the appellant had claimed user of the mark for a period of about six months only and found that it was not a fit case to exercise discretion under Section 12(3) of the Act in favour of the appellant. In conclusion he allowed the opposition.
(3.) THE appellant in the appeal filed has taken the plea that the Assistant Registrar has given undue importance to the respondent's trade mark 'OLD SPICE' which in fact has been disclaimed and the statutory right of the respondent is limited to the picture of the 'SHIP' only. THE trade mark of the appellant is one word 'OLDSPICE', whereas the respondent's trade mark consists of two words 'OLD' and 'SPICE'. Thus, the marks of the appellant and the respondent are distinctive. THE respondent has no locus standi to raise objection under Section 11(a) of the Act. THE respondent is not an aggrieved person.;