S. Jagadeesan, J. (Chairman) - (1.) M/s. Hotel Hilltone Private Limited, the first respondent herein filed application No. 494536 for registration of the trademark 'HILLTONE' along with device of a 'rock' and the word 'hotel' in Class 30 of the fourth Schedule of the Rules framed under the Trade and Merchandise Marks Act, 1958 in respect of 'sweets, namkins, snacks, confectionary preparation made of flour, rice, cereals and pulses, bread and cakes'. The said mark was advertised in the Trade Mark Journal No. 1040 dated 1st October, 1992 at page 743. On 1.2.1993, the appellant herein M/s. Hilton International Company, gave notice of their intention to oppose registration of the trademark on the ground of its violative of Sections 9, 11(a), 11(e) and 18(1) of the said Act. The first respondent filed their counter statement and also grounds in rebuttal of the objections taken by the appellant. The appellant filed evidence in support of their opposition by way of an affidavit in the name Mr. John Geoffrey Chester along with the documents exhibiting the worldwide Directory of Hilton Hotels as exhibit JGC 1; list of the pending and registered trade marks of Hilton International Company in the various countries all over the world as exhibit JGC 2; photocopies of some advertisement as exhibit JGC 3, photocopies of various press releases as exhibit JGC 4; photocopies of some correspondence in respect of appointments of Hilton reservation service contact office in India as exhibit JGC 5, photocopies of the certificates of registration of trade mark 'HILTON' in various countries as exhibit JGC 6. By way of additional evidence, the appellant also filed Annual Reports and Accounts for the year 1988 under exhibit 1 along with the affidavit dated 24.2.1994. They also filed the photocopies of Hilton International Consumer Report and photocopies of various overseas press cuttings. The first respondent filed evidence in support of the registration by way of an affidavit in the name of Shri Vinod Kumar Agarwal and also the documentary evidence for the use of the mark along with the Certificate of Registration of the earlier Mark No. 396750. When the matter was fixed for hearing on 7.6.1995, the first respondent filed an Interlocutory Petition dated 21.4.1995 seeking permission to file additional evidence and the same was fixed for hearing along with the main case. The appellant filed a petition for adjournment and since the adjournment was opposed by the counsel for the first respondent, the matter was heard ex parte. Further, the Assistant Registrar of Trade Marks has taken into consideration all the affidavits filed by way of evidence in support of the opposition of the appellant and ultimately under the impugned order dismissed the opposition No. AMD 558 of the appellant and ordered the application of the first respondent to proceed for registration subject to its association with their Trademark 396750 with further condition that the first respondent shall have no exclusive right on the word 'Hotel'. Aggrieved by the said order, the appellant preferred an appeal on the file of the High Court of Gujarat in Ahmedabad in Appeal No. 1 of 1996 and the same was transferred to this Board in compliance of Section 100 of the Trade Marks Act, 1999 and numbered as TA/259/2004./TM/AMD.
(2.) The appellant also filed a Miscellaneous Petition No. 127 of 2004 seeking permission to avail additional evidence consisting of various letters etc., running to 106 pages. We heard the appeal during our sitting at Ahmedabad on 20.12.2004. Shri Yagnesh J. Trivedi, learned counsel appeared for the appellant and Shri R.R. Shah, learned counsel appeared on behalf of the first respondent. The learned counsel for the appellant contented that the Assistant Registrar of Trade Marks has disposed of the matter without giving an opportunity to the appellant by rejecting their request for adjournment. When the first respondent filed an interlocutory Application on 21.4.1995 seeking permission to file additional evidence, naturally the appellant will be entitled for some time to file the counter and also the rebuttal evidence. The refusal of the adjournment by the Assistant Registrar is not justifiable. Further, taking advantage of the absence of the appellant's counsel, the counsel for the first respondent argued the matter before the Assistant Registrar by withdrawing the interlocutory application filed for the production of the additional evidence. This conduct of the learned counsel for the first respondent is also not in good taste especially when the appellant has filed application for adjournment in Form TM-56 seeking time to file counter for the Interlocutory Application filed by the first respondent. The appellants ought to have been informed earlier about the intention of the first respondent to withdraw the said Interlocutory Application. Hence the matter is required to be remitted back for fresh disposal giving an opportunity to the appellant. Apart from this, the learned counsel for the appellant argued on merits and contented that the appellant has registered their mark internationally and as such their mark has become an honourable one. Copies of the advertisements published in the international magazines and other publications produced by the appellant would definitely establish the trans-border reputation of the appellant in India. The Assistant Registrar, by way of alternative relief held that the first respondent is entitled for registration under Section 12(3) of the said Act, which is totally contrary to the provisions of the Act. He also contented that the additional evidence produced along with the petition MP 127/2004 being the correspondence and certain valid piece of evidence to establish the use of the appellant's mark in India, in the interest of justice, the additional evidence must be taken on file to decide the claim of the appellant.
(3.) THE learned counsel for the first respondent, however, contented that the additional evidence produced along with the MP 127 of 2004 cannot be taken on file since the same is not in accordance with Order 41 Rule 27 of CPC. THE additional evidence had been produced along with the verified petition without any affidavit from the party. THE affidavit is a necessary compliance because the delay on the part of the appellant in producing such documentary evidence, which is already available with them, must be explained. THE failure on the part of the appellant to file any affidavit would make the petition seeking leave to file additional evidence, liable to be dismissed as laid down by the Division Bench of Madras High Court in the case of K.L. Rajakrishnan v. Parthas Textiles, Kottayam 1997 PTC (17) (DB) at page 227 para 38 to 40. His further contention was that the appellant never used their trademark in India and the trans-border reputation was also not pleaded. Consequently there is no need to interfere with the impugned order.;