S. Usha,J. - (1.) THIS appeal arises out of the order dated 03.11.2003 passed by the Joint Registrar of Trade Marks, Mumbai in opposition No. BOM -56511 against application No. 541590 filed for registration of trade mark 'FEMINA' in class 3 in respect of "Bindis" under the provisions of the Trade Marks Act, 1999 (hereinafter referred to as the Act).
(2.) THE first respondent herein filed an application for registration of the trade mark 'FEMINA' in class 3 in respect of "Bindis" under application No. 541590 claiming user since the year 1983. The said application was advertised before acceptance under proviso to Sub -section (1) of Section 20 of the Act. The appellants herein had filed their notice of opposition to the said application. The appellants had opposed the registration of the application on the grounds that; a) they were prior users and registered proprietors of the trade mark 'FEMINA' in respect of hair oil for sale in the State of Maharashtra as early as 1975 under No. 306663B in class 3 in the name of the partnership concern i.e. Paras Products b) the trade mark 'FEMINA' was also registered under No. 508531 as of 14.01.1994 in the name of an individual, a partner in the partnership firm Paras Products in class 3; c) they were carrying on business of hair oil and attars under various trade marks like 'FEMINA', 'APNA' etc.; d) their mark is a well known mark by virtue of continuous and exclusive use; e) by the registration of the first respondent's mark, there is every possibility of confusion and deception being caused as the marks are identical; f) the first respondent are aware of the appellant's use of the trade mark and as such the first respondent's adoption is not honest and in such a case, it is not eligible for concurrent registration under the provisions of the Act; g) the first respondent's trade mark is, therefore, prohibited from registration under Sections 11(a), 11(b), 11(e), 12(1) and 18(1) of the Act. The first respondent filed their counter statement on Form TM -6 denying the various allegations made in the notice of opposition. The first respondent had also stated that they had been using the said trade mark continuously and exclusively since 1983. The affidavit of evidence were filed by both the sides and on completion of the formal procedures, the matter was set down for hearing before the Joint Registrar of Trade Marks.
(3.) THE Joint Registrar had passed an order dismissing the opposition No. BOM -56511 and allowing the application No. 541590 to proceed to registration with a condition to confine the sale in the State of Maharashtra only. The following were the grounds for allowing the application: a) the objection under Section 18(1) of the Act was rejected on the ground that the documents relied on by the appellant / opponent, namely, the two registration certificates bearing No. 508531 and 306663B were in the names of two persons i.e., one in the name of an individual and the other in the name of a partnership. So the proprietory right by use cannot be considered as no explanation was given as to how the appellants/opponent have acquired the rights in the mark and so do not qualify to be the proprietors of the trade mark. b) The objection under Section 12(1) of the Act was upheld for the reason that the two conditions under the provisions of Section 12(1) were satisfied, namely, that that the marks and goods were similar. c) The objection under Section 11(a) of the Act was also sustained as the appellants/opponents have proved prior user of the trade mark for hair oil and any subsequent use by the applicant / first respondent was likely to create confusion or deception. Therefore, the objection under Section 11(a) of the Act also was sustained. d) The first respondent has proved his user since the year 1983 with corroborative evidence and as both the appellants and the first respondent have been in the market for more than 14 years and no instance of confusion has been placed on record, the applicants / first respondent are entitled for registration under Section 12(3) of the Act.;