S. Jagadeesan, J. (Chairman) - (1.) WE have heard Shri Mohan Vidhani for the appellant and Ms. Anjula Chopra for Shri Hemant Singh for the second respondent.
(2.) The appellant has filed this appeal against the order of the Assistant Registrar of Trade Marks, dated 13.1.1997, rejecting their application No.496135 B in Class 12 for registration. Admittedly, the second respondent herein filed a suit No.356.03.99 in the District Court, Delhi and obtained a decree for injunction restraining the appellant herein from using the impugned trade mark 'SERVO'. The learned counsel for the appellant fairly represented that in view of the injunction granted by the City Civil Court by the decree dated 24.5.2004, the appellant cannot use the impugned mark and the appellant has also failed to prefer any appeal against the said decree and consequently the decree in the civil suit covers the rights of the parties.
(3.) EVEN though there is a decree against the appellant for injunction, the principles governing the infringement and the principles governing registration being different, it is necessary for us to consider whether the impugned order of the Assistant Registrar is valid and legal. The appellant filed the application No. 496135 B for registration of the trademark 'SERVO FILTERS' in respect of air, oil, fuel and hydraulic filters included in class 12, claiming the user as proposed one. The said application was advertised in the Trade Marks Journal No. 1038 dated 1.9.1992 at page 607. The second respondent herein filed their notice of opposition stating that the registration of the impugned mark will be in violation of the provisions of the Trade and Merchandise Marks Act, 1958, especially section 9, 11(a), 11(e), 12(1) and 18(1). The second respondent further stated in the notice of opposition that they are using the mark 'SERVO' since 1974 in respect of lubricating oil and greases. The said mark was registered in the name of the second respondent as early as 12.1.1972 in respect of industrial oil and greases. The goods of both the parties are similar and the appellant is adopting the registered mark of the second respondent with malafide intention and consequently, the impugned mark cannot be registered. Thereafter, the appellant filed counter along with the evidence and the second respondent also filed the reply with rebuttal evidence.;