Raghbir Singh, Vice Chairman - (1.) THE appellant/applicant filed an application No. 520424B on 28th November, 1989 for registration of a trade mark label consisting of CF monogram and the word 'CLASSIC as its essential feature of the mark in respect of lighting fixtures included in class 9. THEy claimed to have been using the mark since 1st January, 1982. THE said mark was advertised in the Trade Marks Journal No. 1106 dated 1st July, 1995.
(2.) On 25th September, 1995 M/s. Classic Electrical Limited of Bombay filed a notice of opposition No. MAS 3363 to the aforesaid application on the grounds that they are the proprietors of the trade mark 'CLASIC in respect of electrical fittings for fluorescent lamps included in class 9, electrical bells and buzzers, transformers, electric chokes, electric switches, elec-cut-outs, electric plugs and sockets, electric connectors, electric connection and electric contact devices all being goods included in class 9, electric switch holders, starters, electric flat irons, electric wires and electric cables, electronic and electrical instruments under registered trade mark No. 410712B dated 16th September, 1983 in class 9 and have been using the said mark since the year 1978. The opponent also claim that they are the proprietors of the trade mark consisting of word 'CLASSIC' in classes 11, 9 and 11 under trade mark Nos. 410710, 625186 and 625187 respectively. They further claimed that having regard to the establishment user and reputation associated with their trade mark, the use of the applicant's mark will result in deception and confusion. They also claim that the impugned mark sought to be registered under application No. 520424B is identical with or deceptively similar to the opponent's trade mark mentioned above and the goods covered by the applicant's present application and the opponent's goods are also goods of the same description. The mark submitted for registration is neither adapted to distinguish nor capable of distinguishing the goods of the applicants and the same fails to qualify for registration under Section 9 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The registration of the impugned mark is prohibited under provisions of Sections 9, 11(a), 12(1) and 18(1) of the Act. The appellant/applicant filed his counter statement on 19th March, 1996 in support of application denying all the allegations of the opponent including disputing the similarity between the trade mark of the opponent and the applicant. They claimed that they had been continuously and extensively using the mark since 23rd December, 1982 which was wrongly mentioned as 1.1.1982 in the Trade Marks Journal and claimed entitlement to its registration under Section 12(3) of the Act. The Deputy Registrar of Trade Marks heard the case on 29th April, 2002. The opponent did not attend the hearing nor there was any communicate from them. The applicant was represented by Shri V. Balakrishnan, Registered Trade Mark Agent at the hearing. The Deputy Registrar identified the matter to be heard as relatable to Sections 9, 11(a), 11(e), 12(1), 12(3) and 18(1) of the Act. His findings in the matter are that since "CLASSIC" is a descriptive or laudatory word and hence is not as such prima facie distinctive under Section 9 of the Act. The learned Deputy Registrar held the impugned mark was deceptively similar to the opponent's trade mark 'CLASIC and the rival goods are the same and the goods of the same description. He concluded that Section 12(1) constitute a clear bar to the registration of the applicant's mark. In matter of Section 12(3), the Deputy Registrar has come to the conclusion that on the basis of evidence filed, the appellant/applicant has used the mark 'CLASSIC' since December, 1982 on a moderate scale. By reason of that use, the word 'CLASSIC' has not lost its primary significations as a descriptive word and also not acquired secondary signification as denoting his goods only. On this score also, he decided as against the appellant/applicant. In matter of opposition under Section 11, in view of absence of any evidence regarding use and reputation of the opponent's mark, the learned Deputy Registrar did not sustain the objection of the respondent/opponent under this section. In the result, he allowed opposition No. MAS-3363.
(3.) THE present appeal is being pursued for registration under Section 9 on the ground that the opponent's registered trade mark is also 'CLASIC' and so they should have been estopped from setting up a plea that the same trade mark of the appellant is prohibited from registration under Section 9 of the Act. THE application should have been allowed under Section 12(3) as an honest and concurrent user which provides for a discretionary power in the Registrar to allow to an applicant who is an honest concurrent user of an identical or nearly resembling mark to be registered.;