Raghbir Singh, Vice Chairman - (1.) CM (M) 350/90 has been transferred from the High Court of Delhi in terms of section 100 of the Trade Marks Act, 1999 and numbered as TA/306/2004.
(2.) First respondent filed application No. 331661 on 16.12.1977 for registration of trade mark containing letters 'SKE' in class 12 in respect of timing chains for use in automobiles. Appellant filed their notice of opposition on 20.4.1981 based upon the provisions of sections 9, 11(a), 11(e), 12(1), 12(3) and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The grounds taken for the opposition are that the appellant is the registered proprietor of trade mark 'SKF' and device of ball bearing under registration NO. 231861 as of 20.10.1965 in class 12 in respect of axle boxes containing anti-friction bearings for land vehicles and parts thereof included in class 12. Appellant have applied for registration of trade mark 'SKF' logo type under No. 320666 as from 25.11.1976 in class 12 in respect of bearings for vehicles, bearing units and axle boxes for land vehicles, brake drums and discs, crank shafts etc., and user therefore is claimed since 1968. Appellant is the registered proprietor of many other trade marks in class 7 as of 30.9.1942. The letters 'SKF' are distinctive and exclusively identified with the goods of the appellant because of continuous and extensive use in India. The trade mark 'SKF' forms an essential feature of its corporate name and trading style. A cursory look at the impugned mark 'SKE' reveals its visual similarity to that of the appellant's mark 'SKF'. The letter 'E' is so close to letter 'F' that it is likely to be mistaken. The first respondent adopted the mark 'SKE' with dishonest intention to trade and benefit from the reputation and valuable goodwill of the appellant. The rival goods are sold over the same shops and over the same counters and to the same class of purchasers. On 2.5.1983 the first respondent being the applicant filed their counter statement denying all the material averments of the appellant. Appellant filed their evidence by way of an affidavit dated 15.12.1983 and 20.12.1983. First respondent filed his evidence of user on 23.1.1979 by way of affidavit by Shri Sardari Lal, partner of the firm.
(3.) HEARING was held by the Deputy Registrar of Trade Marks on 29.6.1990 where none appeared on behalf of the first respondent. At the outset the learned counsel for the appellant had taken objection that the first respondent had claimed his user since January, 1972 in the counter statement, but they have not adduced any evidence of distinctiveness since that year. They have not been served with any copies of evidence filed in this regard, if any, under Rule 54 of the Trade and Merchandise Marks Rules, 1959. In spite of the submissions of the learned counsel for the appellant, the Deputy Registrar chose to rely upon the evidence of distinctiveness and put reliance upon that and came to the conclusion that the mark 'SKE' has acquired distinctiveness. Thus the Deputy Registrar concluded that the mark qualifies for registration under section 9 of the Act and accordingly overruled the opposition raised under section 9 in this regard.;