Raghbir Singh, Vice Chairman - (1.) APPEAL No.1/1999 filed in the High Court of Gujarat at Ahmedabad has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and numbered as TA/275/2004/TM/AMD.
(2.) The first respondent filed an application for registration of a trade mark consisting of words 'UJALA KING' with a device of Sun in Class 3 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act), in respect of soaps under application No.401336. The user claimed under that application is since December, 1975. In due course, the mark was advertised in the Trade Marks Journal No.1078 (Supplement) dated 8.5.1994 at page 6, under proviso to Section 20(1) of the Act. The appellant gave a notice on 27.7.1994 to oppose the registration of the mark on the ground that it is the proprietor of a well known trade mark 'SUNLIGHT' and also of the trade mark 'SUN'. The said marks are registered in various forms. The impugned mark is deceptively similar to its registered trade mark 'SUNLIGHT'. The word UJALA is descriptive of the goods like Soaps. The impugned mark is neither distinctive nor capable of distinguishing the goods of the applicant. The first respondent had earlier made an application for the same mark under No.342707 which was refused registration vide opposition No.BOM-6129. That decision of the Registry is res-judicata in the present matter. It opposed the mark under sections 9,11, 12(1), 18(1) and 18(4) of the Act. The first respondent filed its counter statement and the evidence. In due course, similarly the appellant filed its evidence. The Assistant Registrar heard the matter on 4.8.1997 and he inferred that the opposition is based on sections 9, 1, 12(1) and 18(1) of the Act. He heard arguments of the learned counsel for the appellant and the first respondent. He concluded that, by virtue of long user since 1975, the mark acquired distinctiveness and, as such, qualifies for registration under section 9 of the Act. In the matter of its examination under section 11(a), after having heard both the counsel, he concluded that both the marks are distinct and he inferred that even the goods are different. The first respondent's product is washing soap and is meant for the poor class society whereas the 'SUNLIGHT' soap is a product which is being bought by the rich people because of its high price. So the objection of the appellant fails under Section 11(a) of the Act and accordingly the objection under Section 11(e) also fails. In the matter of its examination under Section 12(1), in relation to application of two tests thereof, his conclusion was that the rival goods are of the same description, but, however, he found that the mark does not meet the second requirement as the rival marks are totally different from each other in respect of get up, colour scheme, etc. Thus, he concluded that the opposition under Section 12(1) also fails. He found the mark to be eligible under section 18(1) of the Act. Having found the mark to be entitled for registration under Sections 9,11(a),11(e), 12(1) and 18(1) of the Act, he proceeded with the examination of the mark under Section 12(3) of the Act and found that, in any case, the mark is also eligible under Section 12(3) of the Act. His conclusion about the application of the principle of res-judicata in the matter is that the Tribunal which he was then for the time being presiding over is an independent Tribunal and the proceedings of the matter under opposition No.BOM-6129 are not binding upon that Tribunal. He mentioned that the circumstances in the Bombay case might have been different and in the present case, he has made a physical examination of the packing material as well as the products of both the rival marks and according to his findings and analysis he reached the conclusion that the rival marks are totally different from each other. Thus, he dismissed the opposition and ordered for the registration of the mark. In the appeal filed before the High Court of Gujarat and since transferred to this Board for consideration, there is a factual reiteration of the pleas culled out from the order of the learned Assistant Registrar. The appellant has at the outset taken the position that the respondent Assistant Registrar was wrong in not applying the principle of res-judicata in the present matter. The first respondent had made application No.342707 for registration of the same/identical mark which was advertised in the Trade Marks Journal No.852 dated 1.12.1984 (wrongly mentioned as "1.12.1994" in the appeal) and the Registrar in that case, by giving a detailed order dated 29.11.1983 had allowed the opposition and refused the registration of the mark. The second respondent in another opposition, being opposition No.AMD-705 to an application No.388282, by his order dated 23.5.1997 had applied the principle of res-judicata in a case of opposition. On merits, the appellant has reiterated the grounds of opposition taken by him before the Assistant Registrar and submitted that the Assistant Registrar has gravely erred on all counts in matter of his examination under Sections 9,11(a),11(e),12(1),12(3) and 18(1) of the Act.
(3.) THE matter was listed for hearing in the sitting of the Board at Ahmedabad on 22.12.2004. Shri Y.J. Jasani appeared for the appellant and Shri R.R. Shah appeared for the first respondent.;