Z.S. Negi, Vice-Chairman - (1.) THE appeal, bearing C.M. (M) No. 742 of 2000 on the file of the High Court of Delhi, is directed against the order dated 14.7.2000 passed by the Assistant Registrar of Trade Marks, New Delhi refusing application No. 472160 of the appellant No. 1 for registration and allowing the opposition No. DEL-8736 filed by the respondent No. 1. Upon transfer of the aforesaid appeal by the High Court of Delhi to the Intellectual Property Appellate Board in pursuance of the provisions of Section 100 of the Trade Marks Act, 1999, this Appellate Board has renumbered the same as TA/172/2003/TM/DEL.
(2.) The appellants, a corporation and a company, respectively, organised and existing under the laws of the State of Delaware of United States of America, are engaged in the banking and financial services all over the world. On 12.5.1987, the appellant No. 1 filed two application Nos. 472160 and 472163 for registration of trade mark PLUS SYSTEM and PLUS SYSTEM device (proposed to be used), respectively, both in class 16 in respect of paper and paper articles, cardboard and cardboard articles, printed matter, newspapers and periodicals, books, book-binding material, photographs, stationery, adhesive materials (stationery), artists' materials, paint brushes, typewriters and office requisites (other than furniture), instructional and teaching material (other than apparatus), playing cards, printers' type and clinches (stereotype). On 23.5.1988, the appellant No. 1 assigned all its rights, title and interest in and to the marks, registered or pending for registration, world over along with goodwill to the appellant No. 2. The Assistant Registrar of Trade Marks by his order dated 19.8.1998 allowed the application No. 472163 to proceed to registration because the opposition to registration filed by M/s. Godfrey Phillips India Ltd. was withdrawn by the opponent. By the aforesaid assignment dated 23.5.1988, the appellant No. 2, before the date of passing of the impugned order dated 14.7.2000, has become the beneficial owner of trade mark PLUS SYSTEM device under No. 472163. The other application No. 472160 was advertised before acceptance in the Trade Marks Journal No. 1074 dated 1.3.1994 at page 1433. The respondent No. 1 opposed the application for registration by notice of opposition No. DEL-8734 dated 2.6.1994 on the grounds that it carries on an established business of manufacturing and marketing of computers systems capable of use as office appliances and articles, other than furniture, technical publishing and drafting software; and providing out put on magnetic media and special stationery all being goods included in class 16; that it is the lawful owner of trade mark PLUS which is being extensively used by it in respect of the aforementioned goods since the year 1987; that the trademark applied for is identical to the trade mark of respondent No. 1; that the appellant No. 1 has no justification for adoption of the mark as the same is not adopted to distinguish the goods of the appellant No. 1 and that the mark has not been used and the goods of the appellant No. 1 are not available in India. The appellant No. 1 in the counter-statement has submitted that it has honestly and bonafidely adopted the mark for use in respect of goods specified in the application for registration without knowledge of existence of any identical or similar mark in respect of goods specified in its application; that the appellant No. 1 had obtained registration of trade mark PLUS SYSTEM in atleast 44 countries of the world much prior to 1987; that the goods in respect of which registration of mark is applied for are not at all similar to goods of the respondent No. 1 and that it is denied that the respondent No. 1 is the proprietor of PLUS SYSTEM trademark and the respondent No. 1 is confused as to whether it is the proprietor of the trademark GALAXT. Shri Subhodh Goel, the Managing Director of the respondent No. 1 filed affidavit dated 22.7.1995 in support of the opposition and the appellant No. 1 on 15.9.1997 wrote to the respondent No. 2 that it did not wish to file any evidence in support of its application but would rely on the facts stated in the counter-statement. The matter was set down for hearing and ultimately on 13.1.2000 the respondent No. 2 heard the matter wherein counsel for the appellant No. 1 appeared but none appeared for the respondent No. 1. The respondent No. 2 on 14.7.2000 passed the impugned order refusing the application for registration. Aggrieved by the said impugned order, the appellants have preferred the present appeal to set aside the impugned order dated 14.7.2000 and to allow the application No. 472160 on various grounds, inter alia, that the respondent No. 2 misdirected himself in the interpretation and application of the rules of evidence in considering the affidavit of Shri Subhodh Goel and the photocopies of invoices as sufficient evidence to establish use of the mark by the respondent No. 1 and merely on the basis of non-rebuttal of user claimed since 1987 by the respondent No. 1 he came to the wrong conclusion that the subsequent use of similar trademark in respect of similar goods by the appellants would create confusion amongst the consumers and, therefore, the application is hit by Section 11(a) of the Trade and Merchandise Marks Act, 1958; (hereinafter referred to as the Act) and that the finding of respondent No. 2 that since the appellants have not rebutted the evidence, hence the claim of respondent No. 1 on the similar trademark stand established is grossly erroneous and such a finding is perverse and clearly against the facts on record and law; that the appellants have bitterly failed to establish their claim to be the proprietor of the trademark applied for is perverse and without any basis and that the respondent No. 2 ought to have held that the respondent No. 1 failed to establish use of its trade mark PLUS and moreover, the appellants' trademark PLUS SYSTEM was visually and phonetically different entitling the appellants to get the trademark registered.
(3.) IT is transpired from the records that notices issued to the respondent No. 1 could not be served on it and as such the respondent No. 1 did not file counter-statement to the appeal. The appeal was listed for hearing on 6th August, 24th and 25th October, 2007 but the hearing notices addressed to the respondent No. 1 were received back undelivered with the postal remarks 'Left without Address'. The appellants filed M.P. No. 126/2007 for an order from this Appellate Board to the appellants to serve hearing notice on the respondent No. 1 through substituted mode of service. IT was brought to the notice of the Appellate Board that the respondent No. 1 did not attend the hearing before the Assistant Registrar of Trade Marks, and before the transfer of the present appeal, the High Court of Delhi had also permitted the appellants to take steps for substituted service through newspaper publication and thus the appellants effected service by publishing the notice in 'The Statesman. The Appellate Board allowed the M. P. No. 126/2007 and the appellants have published the notice of hearing in 'The Statesman' dated 22.12.2007 and 'Punjab Kesari' (Hindi) dated 22.12. 2007. The appeal came up for hearing on 8.1.2007 wherein Shri Sanjay Jain, Senior Advocate assisted by Shri C.A. Brijesh and Ms. V. Mohini, Advocates appeared for the appellants and none appeared for the respondents. Since notice for hearing has been published in two newspapers (English and Hindi), the notice of hearing is deemed to have been served on the respondent No. 1.;