S. Jagadeesan, J. (Chairman) - (1.) THE appellants have filed this appeal against the order of the Assistant Registrar of Trade Marks dated 20.10.1997, wherein the appellants' application for registration of the Trade Mark was refused.
(2.) The label mark consisting of the letters 'LK' was sought to be registered in class 9 under application No. 450385-B by the appellants on 28.2.1986. After accepting in Part-B, the application was duly advertised in the Trade Marks Journal No. 1092 dated 1.12.1994 at page 1267. The third respondent herein, M/s. Himlite Products (India) filed their notice of opposition on 30.1.1995 objecting to the registration of the impugned mark on the ground that they are the proprietors of the Trademark 'LK' as they are using the same since 1979 in respect of motor starters and their spares, panel and switch gears. Further, their application No. 547421 for registration of the said trademark is pending. Due to the extensive use and wide publicity, the said trademark of the third respondent is being identified and exclusively associated with them relating to the goods produced by them. Hence the registration of the impugned trademark is prohibited in terms of Section 11(a) of the Trade and Merchandise Marks Act, 1958. The further objection is that the impugned mark is a letter mark and is prima-facie not distinctive without any evidence of use and therefore the registration of the same is objectionable under Section 9 of the said Act also. The appellant cannot claim the propriety right of the impugned mark as the same does not qualify for registration under Section 18(1) of the said Act. The appellants filed their counter statement denying the various averments of the third respondent and further stated that the impugned mark was adopted by them as early as 1979 and they also obtained the registration of the impugned mark in different countries all over the world. So far as India is concerned, the impugned mark is being used by the appellants since January 1986. Both the parties filed their evidence and the matter was taken up for argument. The Assistant Registrar after hearing both the counsels, under the impugned order, allowed the opposition No. CAL 2729 of the third respondent and rejected the application of the appellants for registration finding that the appellants failed to establish by letting any evidence of their use of the impugned mark since the year 1976 or 1979 or 1986 and also the visual impression of the impugned mark was not sufficiently distinctive for registration in Part B and as such does not qualify for registration under Section 9 of the said Act. The third respondent having reputation and goodwill in respect of their mark, the registration of the impugned mark would cause confusion and deception and as such, is prohibited in terms of Section 11. As against the said order, the appellants filed appeal in TMA 1 of 1998 on the file of Hon'ble High Court of Calcutta. The said appeal was transferred to this Appellate Board pursuant to Section 100 of the Trade Marks Act, 1999 and numbered as TA/300/2004.
(3.) WE heard Ms. Maushumi Bhattacharya, the learned counsel for the appellants and Ms. Sunita Goel, the learned counsel for the respondents on 25.8.2004 during our sitting at Kolkata and reserved orders. Subsequently the counsel on either side filed elaborate written arguments and the counsel for third respondent along with his reply written argument requested for a further hearing. So we listed the appeal on 6.12.2004 and heard Ms. Maushumi Bhattacharya for the appellant and Mr. A.M. Shah for the third respondent. The learned counsel for the appellants contented that the appellants obtained registration of their mark 'LK' in various countries throughout the world and they started the use of the same in India from 1986. Though it has been mentioned in the application that the use of the said trademark since 1986, the appellants filed evidence by way of an affidavit in the name of Mr. Hans Joachin Dohling along with the enclosures, which clearly establish the use of the impugned mark by the appellants since 1976. The Assistant Registrar of Trade Marks has referred to some portion of the affidavit and found that the appellants did not use the impugned trademark in India. Even if it is not used in India, having obtained registration in foreign countries and the appellants' goods being available in India, the appellants are entitled for the benefit of the transborder reputation and as such, the impugned mark ought to have been permitted to be registered. The third respondent's mark has not attained any distinctiveness. Further, the appellant's mark is not letter mark but logo mark. Apart from that, it is also contented that the goods of the third respondent falls under Class 7 and not under Class 9 and so there is no prohibition for registration of the impugned mark.;