M.C.Gupta,DRTM - (1.) A label mark consisting of the word 'SOCIETY' with the words TOUR ACES' was sought for registration in class 30 under Application No. 633470 dated 11.7.1994 by the above named Applicants. The mark was claimed to be used sine 1.4.1994. Eventually the application was advertised before acceptance under Section 20(1) proviso vide Trade Marks Journal No. 1251 dated 16.7.2001 at page 1651.
(2.) On 5.8.2001 a notice of opposition on Form TM-5 was lodged by the above named Opponents objecting to the registration of the impugned mark on the following grounds: That the Opponents are carrying on business of manufacturing and marketing and exporting of tea under various trade marks and are registered proprietors of the word 'SOCIETY' and label under Nos. 498406 and 530893 as of 1988 and 1990 respectively and that an application under No. 577911 in class 30 is already advertised and is pending under opposition and that the Opponents registered trade mark 'SOCIETY' label and word are extensively used and advertised throughout the country and, therefore, are exclusively identified and associated with the Opponents and hence under these circumstances, the registration of the impugned mark, which is practically identical to the aforesaid registered trade mark of the Opponents, is likely to cause confusion or deception during the course of trade and, therefore, prohibited for registration under Section 11 read with Section 12 of the Act. That the very adoption of the impugned mark by the Applicants consisting of the word 'SOCIETY' is nothing but a dishonest attempt on their part of the Applicants to trade upon and benefit from the goodwill and reputation already enjoyed by the Opponents in their registered trade mark hence they cannot claim its proprietary rights under Section 18(1) of the Act. The Opponents took objections to the registration of the impugned mark under Sections 9,11,12 and 18 of the Act and also prayed for exercise of the direction, adverse to the Applicants, under Section 18(4) of the Act.
(3.) IN the counter-statement filed on 13.6.2002 the Applicants denied the various averments of the Opponents and stated that the word 'SOCIETY' is adopted in respect of 'dalmut' in February, 1971 and is being used continuously and extensively. It is stated by the Applicants that the impugned mark was accepted for registration at the pre-advertisement stage only after consideration of the evidence of use and reputation. Rest of the counter-statement contains 'mere denial of the Opponents' averments.;