S. Usha, Member (T) - (1.) THE instant appeal arises out of the order dated 16.08.2007 passed by the Deputy Registrar of Trade Marks disallowing the opposition No. MAS-161811 to application No. 939087 in class 25 and allowing the application to proceed for registration under the provisions of the Trade Marks Act, 1999 (in short the Act).
(2.) The respondent No. 1 filed an application for registration of the trade mark "DOTCOM" on 13.07.2000 under application No. 939087 in class 25 in respect of clothing, footwear, headgear claiming user of mark as a proposed to be used. The said application was advertised before acceptance under Section 20(1) proviso in the Trade Marks Journal No. 1303 (S-III) at page 321 on 28.09.2003. The appellant filed a notice of opposition on the ground that they are engaged in the business of manufacturing and marketing of silk sarees and textile piece goods readymade garments of all kinds for the past many years. The impugned mark is common to internet and is required by everyone. The respondent No. 1 filed their counter statement denying all the material averments made in the notice of opposition. On completion of the formal procedures the Deputy Registrar heard and passed the impugned order with a finding that the opposition has been filed with no substance and to delay the registration. The applicants are already registered proprietors of the identical trade mark in class 24. Considering the facts and circumstances of the case, the opposition was dismissed and application was allowed for registration.
(3.) AGGRIEVED by the said order, the appellants filed the appeal on the grounds hereunder: (a) the impugned order is contrary to law and facts of the case; (b) the Deputy Registrar erred in rejecting the objection under Section 9 of the Act for the following reasons: (1) the Registrar failed to appreciate the fact that the impugned trade mark is not only common to opponent's business but common to all business; (2) the Registrar failed to appreciate that the trade mark of the respondent No. 1 DOTCOM had not acquired distinctiveness as on the date of application for registration i.e. on 13.07.2000; (3) the respondent No. 1 did not file cogent evidence to prove its user whereas the onus is cast on them to prove the distinctiveness; (4) the Registrar failed to appreciate that the trade mark of the respondent No. 1 is neither distinctive nor capable of being distinguished; (5) the mark is hit by the provisions of Section 9(1) (a), 9(1)(b), and 9(1)(c)of the Act; (c) the Registrar erred in rejecting the objection under Section 11 of the Act for the following reasons that- (i) the Registrar ought to have considered that the respondent No. 1 has failed to file proof of use of the impugned trade mark; (ii) the Registrar ought to have considered that word "Com" preceded by the symbols of a Dot represented as a com is common to every business, as com is used as part of their internet address and all commercial websites register their domain names with the suffix "com"; (iii) the Registrar ought to have appreciated that various persons carrying on textile business are using the word "Com' as part of their website and by granting registration to applicant would mean that other than the applicant/respondent No. 1 cannot use the word "com"; (iv) the Registrar ought to have considered that the impugned trade mark "Dot Com" is both visually and phonetically similar to the applicant's www.nallis.com which may cause confusion as to the trade origin; (v) the Registrar failed to consider that the respondent No. 1 was not using the impugned trade mark "DOTCOM"; (d) the Registrar erred in granting registration under Section 12 of the Act as the respondent No. 1 failed to establish honest adoption and concurrent use of the mark; (e) the Registrar has rejected the objection under Section 18 of the Act failing to consider the fact that the applicant/respondent No. 1 is not the proprietor of the trade mark; (f) the Registrar passed the order mechanically and the order suffers from non-application of mind; (g) the exercise of discretion is arbitrary, unreasonable and fanciful; (h) in the interest of justice, equity and good conscience the opposition be allowed.;