S. Jagadeesan, J. (Chairman) - (1.) THIS appeal arises out of the order of Deputy Registrar of Trade Marks dated 28.7.1992 disallowing opposition No. DEL 4123 of the appellant herein.
(2.) The facts of the case are that the first respondent herein filed its application under No.365580 on 1.9.1980 for registering the trade mark 'TEFLON' in respect of synthetic textiles, fibres and filaments included in class 22 of Fourth Schedule of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the said Act). The said application, before acceptance under proviso to section 20 subsection 1 of the said Act, was advertised in Trade Marks Journal No.823 dated 16.5.1983 at page 1101. On 5.1.1985 the appellant herein filed a notice of opposition stating that they are the proprietors of the trade mark 'TUFLON' for fishing lines and the registration is proceedings under No.339710 in class 28 and under No.349395 for fishing nets in class 22. The first respondent herein is the registered proprietor of the trade mark ' 'TUFLON' under No.322468 for twins and cords. Since the goods of the first respondent are of the same description and the impugned trade mark is also similar, the registration of the same will be in violation of sections 9, 11(a), 11(b), 11(e) , 12(1) and 18(1) of the said Act. On 16.5.1984 the first respondent filed the counter statement denying the material averments contained in the notice of opposition and also further stated that the first respondent is the proprietor of the mark 'TEFLON' under No.237465 dated 8.9.1966 in class 17 in respect of plastics in the form of sheets, rods, tubes, tapes, filaments (non-textile) shaped pieces. They are the proprietors of the same mark under No.242147 dated 16.5.1967 in class 2 in respect of resinous coatings, solutions, and emulsions to impart nonstick finish to metal surfaces and also proprietor under registration No.242148 dated 16.5.1967 in class 21 in respect of cooking utensils and kitchen utensils and also under registration Nos. 258487 dated 31.7.1969 in class 1 in respect of resinous molding powders and extruding compositions and solutions and emulsions and resinous plastic material. All the trade marks are still valid and subsisting and the said mark has been registered in more than 50 countries throughout the world. It is also stated by the first respondent that the impugned mark is not similar to the mark and thus the registration will not contravene any of the provisions of the said Act. Appellant filed evidence by way of an affidavit in the name of Shri D.N.Majumdar, Senior Vice President of the company accompanied by a list of documents constituting 'A' series along with advertisement cuttings and five Photostat copies of the bills. Thereafter the first respondent filed evidence in support of the impugned mark by way of an affidavit in the name of one Mr. David J.Hellmann, Assistant Secretary of their company along with annexure 'A' and 'B'. After completion of the formalities the matter was listed for hearing on 16.7.1991 on which date the advocate for the first respondent alone appeared and there was no representation on behalf of the appellant. The Deputy Registrar after considering the evidence available on record along with the arguments of the learned counsel for the first respondent, disallowed the opposition of the appellant, finding that the impugned mark applied by the first respondent is distinctive under section 9 of the said Act and the marks are not similar and identical and are distinguishable and as such the prohibition under section 11(a) of the said Act is not attracted. Consequently section 11(e) also goes. The Deputy Registrar further overruled the objections under section 18(1) of the said Act on the ground that the first respondent is the prior user of the mark and consequently they are also entitled for the benefit of sections 12(3) and 33 of the Act. While doing so, the Deputy Registrar upheld the objection of the appellant under section 12(1) of the said Act in respect of the impugned mark.
(3.) AGGRIEVED by the said order of the Deputy Registrar, the appellant filed the appeal in CM(M) 400 of 1992 in the High Court of Delhi at New Delhi. By virtue of section 100 of the Trade Marks Act, 1999 the said appeal was transferred to this Board and numbered as TA/312/04.;