S. Jagadeesan, J. (Chairman) - (1.) THE appeal is against the order of the Deputy Registrar of Trade Marks dated 11.5.1993. THE first respondent herein M/s Hero Agricultural Industries filed application No. 343449 on 5.12.1978 for registration of the mark 'HERO' in respect of wheels and axles for animal driven vehicle and parts thereof included in class 12. THE said application was advertised in the Trade Marks Journal No. 834 dated 1.3.1984 at page 1484. THE appellant herein M/s Hero Cycles Private Limited filed a notice of their intention to oppose the registration of the mark on 24.5.1984 on the ground that they are the registered proprietors of the similar trade mark 'HERO' word per se in No. 159344 in respect of cycle parts not included in other classes; No. 235780 in respect of scooters, motor cycle and parts thereof included in class 12; No. 257601 in respect of bicycles and No. 286730 in respect of tyres and tubes for cycles. THE appellant further opposed the registration on the ground that the goods are of the same description and as such the registration of the impugned mark is prohibited under sections 11(a), 12(1) and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). On 19.10.1984 the first respondent filed counter statement refuting all the material averments mentioned in the notice of opposition and also contended that they adopted the impugned mark honestly and the trade channel between the rival parties are different and the consumers are also different. On 27.12.1984 the appellant filed evidence (which is wrongly mentioned as 27.2.1984 in the order of the Deputy Registrar) by way of affidavit dated 13.12.1994 in the name of Shri O.P. Munjal, Director of the company and thereafter the first respondent filed evidence. After completion of the formalities the matter was heard by the Deputy Registrar and ultimately under the impugned order disallowed the opposition DEL-4221 of the appellant and accepted the application of the first respondent for registration, finding that the goods of the first respondent being different and the use and purpose of the rival goods are also different and as such there will not be any confusion in the trade and consequently sections 11(a) and 12(1) of the Act are not attracted. So far as the objections under section 18(1) of the Act is concerned, the Deputy Registrar held that the first respondent is the proprietor by user and as such the objection under the said provision also cannot be sustained. Aggrieved by the said order, the appellant filed the appeal under CM(M) 321/93 on the file of High Court of Delhi at New Delhi which stood transferred to this Board by virtue of section 100 of the Trade Marks Act, 1999 and has been numbered as TA/321/93.
(2.) The appeal was taken up for hearing on 16.2.05 in the sitting of the Board held at New Delhi. We have heard Shri M.K. Miglani learned counsel for the appellant and Shri Hemant Singh learned counsel for the first respondent. Learned counsel for the appellant contended that there is no dispute that the appellant's registered marks are similar to that of the impugned mark of the first respondent and further the goods fall under class 12. Wheels and axles as parts of cycle and motorcycle falling under class 12 are that of the appellant. The first respondent is also seeking for the registration of the identical mark in respect of wheels and axles for animal driven vehicles. There is absolutely no evidence in respect of difference between the rival goods. When the burden of proof lies on the first respondent to establish that there will not be any confusion or deception in the trade, the Deputy Registrar has proceeded on inference and the first respondent did not produce any evidence to that effect. Apart from this, the Deputy Registrar has come to the conclusion that section 11(a) of the Act was not attracted mainly on the ground that the goods are different without any evidence to that effect and hence the findings of the Deputy Registrar cannot be sustained.
(3.) ON the contrary, learned counsel for the first respondent contended that the Deputy Registrar had exercised his discretion in favour of the first respondent giving out valid reasons. Hence in appeal it is not for the appellate authority to take a different view and substitute the reasons. The appellate authority has to consider as to whether the reasoning of the original authority is correct or not. Even assuming that a different view is possible that may not empower the appellate authority to set aside the order. He further contended that the registered marks of the appellant are in respect of cycle parts and there is no specific mention of wheels and axles. Hence the generic term cycle parts may not give rise to an inference that the appellant is manufacturing wheels and axles.;