M.H.Mahendra,DRTM - (1.) ON 28th December, 1987, S/Shri Issac Joseph, James P. Jacob, Marykutty Abraham, Jose M. Thomas, T.T. Kuncheria, Jose K. Nadakkal, Vincent K. Nadakkal, N.K. Kuriakose and Anthony Kavalakattu, partners trading as Lunar Rubbers, partnership firm at Mani Industrial Estate, Olamattam, Toduphuzha, Kerala (hereinafter referred to as 'the Applicants') filed an Application being Application NO. 483274 in class 25 for registration of a label containing the device of a dog and the words HIS MASTER'S CHOICE as its essential feature of the mark in respect of 'Hawai chappals being goods included in class 25'. The said trade mark was proposed to be used in respect of the said goods on the date of application. The Registrar of Trade Marks raised preliminary objection to the aforesaid application under Section 9 of the Act that the mark is not adapted to distinguish the goods of the Applicants, but after hearing in the matter and the Applicants on producing a certificate of incorporation issued by the Registrar of Companies, Cochin, Kerala and amending the name of the Applicants to read as 'Lunar Rubbers Private Limited, the application was ordered to be advertised as accepted for registration in Part A of the Register subject to disclaimer of the words DELUXE and CHOICE appearing on the label. The said application was eventually advertised as accepted for registration in Trade Marks Journal No. 1128 dated 1st February, 1996 at page 3043.
(2.) M/s. EMI Records Limited, a company incorporated in England at 135, Blyth Road, Hayes, Middlesex, England (hereinafter referred to as "the Opponents") filed a request on form TM-44 for extension of time for one month for filing notice of opposition and followed by a notice of opposition on 24th May, 1996 to the aforesaid application mainly on the following grounds :- (i) That the Opponents are the proprietors of the trade mark containing the words "HIS MASTER'S VOICE' and the device of a dog under trade mark Nos. 11713, 11714 and 11716 in class 9, 9 and 11 respectively as per the particulars given in para 3(a), 3(b) and 3(c) of the notice of opposition ; (ii) That the Opponents1 trade mark 'HIS MASTER'S VOICE' is used in India through their Registered user i.e. The Gramophone Company of India Ltd., Calcutta ; (iii) By virtue of extensive registrations, vast publicity and extensive use and also high standard of quality of goods sold under the trade mark device of dog and the words 'HIS MASTER'S VOICE' the Opponents enjoy much valuable reputation and goodwill throughout the world including India and have also exclusively associated by the members of public and trade with the Opponents and their products only; (iv) Having regard to the established user and reputation associated with the Opponents' trade marks, the use of the Applicants mark will result in deception and confusion and, therefore, the impugned mark is prohibited under provisions of Section 11(a) and 11(e) of the Act; (v) That the impugned trade mark is neither adapted to distinguish nor capable of distinguishing the goods of the Applicants and, therefore, the registration of the impugned mark is contrary to Section 9 of the Act; (vi) That the Applicants have dishonestly and with mala fide intention copied the Opponents' trade mark namely device of dog with the words HIS MASTER'S VOICE in its entirity and the adoption of the impugned mark is dishonest and they cannot claim to be proprietor of the trade mark within the meaning of Section 18(1) of the Act; (vii) That the registration of the trade mark applied for by the Applicants will be contrary to Sections 9, 11 and 18 (1) of the Trade & Merchandise Marks Act, 1958 ; and (viii) The Opponents therefore seek that the Registrar should exercise his discretion adversely to the Applicants and refuse the application mentioned above. The Applicants filed their counter statement on 17th July, 1997 denying the allegations of the Opponents and stating that before adopting the trade mark HIS MASTER'S CHOICE, they caused a thorough search to be made in the Trade Marks Registry and in the market and satisfied themselves that it did not resemble any existing trade mark in relation to Hawai chappals and allied products by any other person and no other person has used a similar mark in respect of boots and shoes trade. The Applicants further deny the allegations of the Opponents and stating that the Opponents are admittedly engaged in the manufacture and sale of instruments and devices for recording, reproducing, transmission or reception of sounds whereas the Applicants are renowned manufacturer and merchants inter alia of rubber goods in general and that the said mark is sought for registration in respect of goods which are different character and application. Besides, the marks are different and the trade channels are different and the purpose for which the respective goods are used again are totally different and the idea conveyed by the marks are also different and thus it is incorrect to say that the use of the impugned mark for Hawai chappals will confuse in any way or cause confusion and deception among any class of people including traders and consumers or indicate any connection with the Opponents' goods, trade or business.
(3.) THE evidence in support of opposition consists of an affidavit dated 20th March 1998 of Ian Hanson, Director of Opponents' company alongwith Exhibits A,B,C, D and E collectively as per details contained in the said affidavit. THE evidence in support of application consists of an affidavit dated 17.9.1998 of Mr. Issac Joseph, Managing Director of the Applicants' company alongwith Exhibits A,B, C-1 to C-166, D, E-1 to E-2 collectively as per details contained in the said affidavit. THE evidence in reply is again by way of an affidavit dated 26.4.1999 of the aforesaid Ian Hanson. THE matter was set down for a hearing on 17th January, 2000 and in terms of Rule 59 the respective parties were required to notify on form TM-7 their intention to attend the hearing. THE Opponents and Applicants both notified their intention to attend the hearing in terms of Rule 59 of the Trade & Merchandise Marks Rules, 1959. However, the hearing was adjourned to 6th March, 2000 on the request made by the Applicants due to Diabetic Neuropathy.;