M.H.Mahendra,DRTM - (1.) ON 18th November, 1992 M/s. Kalyanpuri Flour Mills Private Limited, a company incorporated under the Indian Companies Act at 3-B, Berlie Street cross, Langford Town, Bangalore-560025 (hereinafter referred to as the Applicants) filed an application being Application No. 397696B to register a trade mark label containing the device of an elephant and the words APPU BRAND as its essential feature of the mark in respect of "Maida, sooji and atta being goods included in class 30. The said trade mark is stated to be proposed to be used on the date of application. The Registrar of Trade Marks raised a preliminary objection to the said application under Section 12(1) of the Act on the ground that the same is identical with jar deceptively similar to the registered trade marks and/or in prior pending applications in the records of the Register. But subsequently after hearing the Applicants attorney and clarifying that the impugned mark is different from the cited marks and on the Applicants converting the application into one for registration in part B of the Register, the application was ordered to be advertised before acceptance for registration in the Trade Marks Journal. The said application was eventually advertised before acceptance under proviso to Section 20(1) of the Trade & Merchandise Marks Act, 1958 in the Trade Marks Journal No. 1023 dated 16th January, 1992 at page 1313.
(2.) On 16th March, 1992 Mr. Jagmohan Kumar a sole proprietor trading as M/s. Jugal Kishore Harbanslal at 578-A, G.B. Road, Shradhanand Market, Delhi-110006 (hereinafter referred to as the 'Opponent') filed a notice of opposition to the aforesaid application inter alia on the following grounds :- (i) That the Opponent is the proprietor of the trade mark consisting of the device of an elephant and the words ELEPHANT BRAND in respect of 'Flour, gram flour, besan, rice, atta and gram dall and has been using the said trade mark since the year 1954; (ii) That the Opponent is the proprietor of the trade mark ELEPHANT BRAND in respect of 'Gram flour and gram dall (broken) under trade mark Nos. 292411 and 366084 both in class 30; (iii) The essential feature of the Opponent's trade mark is the device of an elephant and that the said device is exclusively associated in the minds of the public and trade as the products of the Opponent's alone; (iv) By reason of long, extensive and continuous use, advertisement as well as sales promotion work through different media and the superior quality of the goods sold under the trade mark ELEPHANT BRAND, great reputation and goodwill have accrued to the said trade mark; (v) Having regard to the established user and reputation associated with the Opponent's trade mark, the use of the impugned mark will result in deception and confusion and, therefore, the registration of the mark applied for will be contrary to the provisions of Sections 11(a) and 11(e) of the Act; (vi) That the mark sought to be registered by the Applicants under Application No. 397696B consists of the device of an elephant is identical with/deceptively similar to the Opponent's reputed and registered trade mark mentioned above; (vii) That the impugned mark is neither adapted to distinguish nor capable of distinguishing the goods of the Applicants and, therefore, it fails to qualify for registration under Section 9 of the Act; (viii) That the Applicants cannot claim to be proprietors of the trade mark within the meaning of Section 18(1) of the Act; and (ix) The registration of the impugned mark would be contrary to Sections 9, 11(a), 11(e), 12(1), 18(1) and 18(4) of the Trade & Merchandise Marks Act, 1958. The Applicants filed their counter statement on 25th September, 1992 denying the allegations of the Opponent and disputing the alleged similarity between the trade mark of the Applicants and of the Opponent and also stating that the goods in respect of which the Applicants seek registration are not the same goods or description of goods as those in respect of which the Opponent's marks are registered.
(3.) THE evidence in support of opposition consists of an affidavit dated 1st December, 1992 of Mr. Jagmohan Kumar, proprietor of the firm alongwith exhibits C-1 to C-45 and D-1 to D-3 collectively as per details contained in the said affidavit. THE evidence in support of application consists of an affidavit dated 21st April, 1993, of Mr. Vinod Kumar Bansal, Director of the Applicants' company alongwith Exhibits B-1 to B-19 and C collectively as per details contained in the said affidavit. THE reply evidence is again by way of an affidavit dated 14th June, 1993 of aforesaid Mr. Jag-mohan Kumar and accordingly the matter was set down for a hearing on 21st December, 1998 and in terms of Rule 59 the respective parties were requested to notify on form TM-7 their intention to attend the hearing.;