Raghbir Singh, Vice Chairman - (1.) THESE appeals filed in the High Court of Delhi as CM(M) 536/94 and 369/99 have been transferred to this Board in terms of section 100 of the Trade Marks Act, 1999 and have been numbered as TA/99/2003 and TA/323/2004 respectively.
(2.) For the purpose of convenience, parties herein are being referred to as "Monika" and "Sarvodaya" being the first word of full nomenclature of the respective parties. Sarvodaya filed application No. 487390 B on 15.3.1988 for registration of trade mark 'VISHAL' in respect of pressure cookers included in class 21. In due course the mark was advertised in the Trade Marks Journal No. 1028 dated 1.4.1992 at page 38. Monika gave notice of opposition on 4.5.1992 opposing the registration of the mark on the basis of sections 9,11(a), 11(e) and 12(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). In due course the counter statement and the evidence by affidavit were filed and the Deputy Registrar held the hearing on 10.8.1994. From the order of the Deputy Registrar it appears that the objections under section 12(1) of the Act seems to have been dropped. Learned Deputy Registrar instead of making specific examination under the relevant sections, that is , sections 9, 11(a), 11(e) of the Act proceeded to examine the matter in a generalized form. There is no specific examination under section 9 of the Act as to the distinctiveness of the mark and as to how the mark was evolved. Nothing deterred him to make examination under section 18(1) of the Act as to the proprietorship of the mark in spite of the fact having been not asked by Monika. He relied upon the evidence produced by the Sarvodaya as to the user of the mark since 1984 -1985 to 1992-1993 on the basis of affidavit dated 9.2.1994 filed by Shri Jai Prakash Gupta. He reached the conclusion that the affidavit dated 4.1.94 by the Monika in the name of Mohinder Pal bears the sale figures from the year 1982-83 to 1992-93. The goods mentioned therein are masala danis only. Thus he reached the conclusion that Monika has never sold pressure cookers (non-electric) and thus their opposition cannot be sustained. In conclusion, he rejected the opposition filed and allowed the application for registration of the mark.
(3.) MONIKA filed appeal No. CM(M) 536/94 in the High Court of Delhi on 26.11.1994 against the decision of the Deputy Registrar. The main grounds in the appeal that have been taken are that the Deputy Registrar should have made examination under section 9 of the Act that 'VISHAL' being a personal name is registrable only on evidence of long and established use at the time of filing of the application. The Deputy Registrar has failed in that regard. However, while not examining the matter under section 9 of the Act and thus disallowing the opposition of MONIKA, the Deputy Registrar in sidelines has mentioned that the bills produced by Sarvodaya numbering 042 to 326 bear no printed particulars of Sarvodaya. Hence those bills cannot be considered as evidence towards registration of the impugned mark. In addition the trade mark 'VISHAL' has been added subsequently. The bills bearing numbers 37 and 38 consist of the trade mark 'VIDEOCON' pressure cookers. Hence these bills cannot be considered. Thus the decision of the Deputy Registrar is riddled with contradictions. Bills filed by Sarvodaya, particularly since 20. 5.1987, are bogus, fabricated and manipulated. The Deputy Registrar while making examination under section 11(a) of the Act has acknowledged that the MONIKA has filed adequate evidence by way of affidavit since 1982-83 to 30..6.1993 and the sale figures have been corroborated / proved on the basis of certified copies of bills kept on record. Having acknowledged that Sarvodaya's bills were of the period later to the period to which the MONIKA's invoices evidence relate, the Deputy Registrar should have held that the MONIKA is the prior user of the trade mark 'VISHAL. MONIKA filed certified copies of the invoices obtained from the Delhi High Court and Sarvodaya had just filed photo copies of invoices since 20.5.1987. This fact should have been taken into consideration while deciding the case. While examining the matter under sections 11(a) and 11(e) of the Act, the Deputy Registrar should have taken into consideration that masala danis and pressure cookers (non-electric) are goods of same description and thus there is every likelihood of confusion and deception within the meaning of sections 11(a) and 11(e) of the Act. MONIKA being prior adopter and user of the trade mark 'VISHAL' for utensils for kitchen, the Deputy Registrar should have gone into the meaning and scope of section 18 of the Act for the purpose of examination of impugned application of Sarvodaya. The Deputy Registrar should have proceeded in the matter on the assumption that the onus to prove that the mark 'VISHAL' was not likely to cause confusion or deception within the meaning of section 11(a) of the Act was on the Sarvodaya. The Deputy Registrar should have exercised his discretion under section 18(4) of the Act in favour of MONIKA. Counter affidavit to the appeal was filed on 13.1.1995 by Sarvodaya, controverting all the material submissions of MONIKA. A rejoinder was filed by MONIKA.;