S. Usha, Technical Member - (1.) THE appellant herein filed an application for registration of the trade mark Sony under application No. 512242 in class 18 in respect of brief cases and luggage carriers on 21.6.1989 claiming user since 1.4.1985. The said application was ordered to be advertised before acceptance in the Trade Marks Journal No. 1084 dated 1.8.1984 at page 542. The second respondent herein opposed the said registration on the following grounds: i) The second respondents are the registered proprietors of the trade marks under various classes as early as 1962. ii) Second respondents are the registered proprietors of the trade mark Sony under No. 397944 in class 18 in respect of leather and leather articles. iii) As the goods covered under the impugned registration is also the same, the registration would be contrary to the provisions of Section 12(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) iv) The second respondent's mark has been used in many countries and thus enjoy a good reputation all over the world. v) Goodwill and reputation has accrued to the second respondent's trade mark by way of use, advertisement and sales promotion activities and also by reason of superior quality of the goods. vi) The mark does not qualify for registration under Section 9 of the Act as the impugned registration is an exact imitation of the second respondent's trade mark. vii) The second respondent's trade mark which is a well known trade mark throughout the world has acquired high reputation and the impugned registration would be contrary to the provisions of Section 11(a) and (e) of the Act. viii) Second respondent prayed that the registrar exercises his discretion and pass suitable orders. After completion of formal procedures the Registrar heard the matter and passed the impugned order on 29.10.2001.
(2.) LEARNED Assistant Registrar passed the order based on the objections under Sections 11, 12 and 18 of the Act, Learned Registrar had found that the marks being identical and the goods also being the same, there was every possibility of confusion and deception being caused in the course of the trade. He had also held that the second respondent had filed sufficient documents to prove their extensive use by way of advertisement and sales and had held that the registration of the impugned mark shall be contrary to the provisions of Section 11(a) and (e) of the Act. Learned Assistant Registrar had also rejected the objection under Section 12(1) of the Act on the finding that the goods are of the same description and as those for which the second respondent have registered their trade mark in class 18 and that the question of likelihood of confusion would be analogous under Section 12(1) of the Act.
(3.) WITH regard to the objections under Section 18 of the Act, the Registrar held that a person can claim to be the proprietor of the mark by way of use or by way of registration of the mark. Here, the appellants who are subsequent in use cannot claim to be the proprietor of the trade mark and rejected the objection under Section 18(1) of the Act.;