S. Jagadeesan, J. (Chairman) - (1.) THE appellant has filed this appeal originally on the file of the Delhi High Court at New Delhi in CM(M) 400/1995 aggrieved by the order of the second respondent herein dated 17.5.1995 rejecting their application No. 481358 in class 9 for registration of the trade mark 'COBRA'.
(2.) The appellant filed an application No. 481358 on 19.11.1987 for registration of the trade mark 'COBRA' in respect of voltage stabilizers and parts and fittings thereof included in class 9 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) and the same was advertised in the Trade Marks Journal No. 1024 dated 1.2.1992 at page 1354. The first respondent herein filed their notice of opposition on 16.3.1992 to oppose the registration of the mark stating that they are engaged in the business of manufacturing electrical apparatus and instruments, electric cables, electric conductors under the trade mark 'COBRA' which is a part and parcel of their trading style. The said mark of the first respondent was registered under No. 369325 and is being periodically renewed from time to time and is still valid. The said trade mark was originally owned by M/s. M.P. Electric Company of Bangalore who transferred the same on 5.12.1980 to M/s. Cobra Cables (India), who in turn, assigned the mark to the first respondent by instrument of assignment dated 15.1.1991 and thus the first respondent became the proprietor of the registered mark. The impugned mark since being identical, the registration of the same would cause confusion and deception and therefore it is not registrable under the provisions of Sections 9,11(a), 12(1) and 18(1) of the Act. The appellant filed their counter statement on 29.6.1993 denying all the material averments contained in the notice of opposition and further stated that they are using the impugned mark since 1978 and their goods are known to the trade and public on account of standard and as such, they have attained goodwill and reputation. The registration of the impugned mark is well within the provisions of the Act. The first respondent did not produce any evidence and they informed the Registrar as well as the appellant to that effect by their communication stating that they do not wish to file evidence under Rule 53(1), but rely upon the facts and statement made in the notice of opposition. The appellant filed evidence of their user by way of an affidavit in the name of one Mr. N.K. Jain, accompanied by Annexure-'A' consisting of statement of sale statistics from the year 1978-79 to 1992-93. Annexure-'B' series contain the unattested photostat copies of bills and Annexure-'C' contain the bills of printers and a few pages of telephone directory. After the completion of formalities, the matter was heard by the Deputy Registrar on 8.3.1995. Under the impugned order, the Deputy Registrar allowed the opposition No. DEL 7647 of the first respondent and refused registration of the trade mark of the appellant and rejected the application finding that the appellant did not produce any evidence to establish the user and as such, the appellant's mark has no distinctiveness in respect of their goods and also because of the non use, the mark is not registrable under Section 12(3) of the Act. He further held that the goods of the appellant and the first respondent are of same description falling in class 9 and the first respondent's mark being a registered one, the registration of the impugned mark in favour of the appellant would cause confusion and as such, the same cannot be registered. He also found that the registration will suffer from triple identity, that is, the marks are identical, the goods of both the appellant and the first respondent are same or of same description and the area of sale as well as the trade channel are also same. Aggrieved by the same, the appellant has filed the present appeal. We have heard the arguments of Shri A.K. Goel for the appellant and Shri K.G. Bansal for the first respondent.
(3.) THE learned counsel for the appellant with all force contended that the first respondent did not let in any evidence to establish their user by which their mark had attained distinctiveness and reputation among the traders. In the absence of any evidence of user, it is clear that the first respondent is not using the registered mark and their product is not in the market with such registered mark. In the absence of the registered mark of the first respondent in the trade, no question of confusion or deception would arise by the registration of the impugned mark which is in the market at least from 1984. Mere registration of the mark and without using the same will not give rise to any right for the registered proprietor to oppose the registration on the basis of the prohibition contemplated under Section 11(a) of the Act. It is also contended that by obtaining the registration and without using the said mark, it is not open to the registered proprietor to prevent the other from using the same. THE registration, coupled with the user alone gives a right to the registered proprietor to oppose the registration of identical mark and as such, the Deputy Registrar has committed a grave error in rejecting the application of the appellant.;