Z.S. Negi, Vice-Chairman:
1. This is an appeal under section 109 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) against the order passed on the 11th day of November, 1998 by the Assistant Registrar of Trade Marks, New Delhi disallowing the opposition No. DEL 8139 filed by the appellant herein and accepting the application No. 508460 for registration of trade mark of 1st respondent herein.
2. The 1st respondent M/s. Kishore Zarda Factory had filed application No. 508460 on 11th April, 1989 at the Trade Mark Registry, New Delhi for registration of a numeral mark `100' in respect of chewing tobacco claiming user of the mark since February, 1970. The application was advertised before acceptance in the Trade Mark Journal No. 1051 dated 16th March, 1993.
3. On 31st May, 1993 M/s. Hari Chand Shri Gopal filed a notice of opposition opposing the registration of the 1st respondent's mark under sections 9, 11(a) & (e), 12(1) & (3) and 18(1) of the Act claiming that the opponent firm is the registered proprietor of the trade mark `100' under No. 274897, dated September 10, 1971, in class 34 in respect of chewing tobacco, that the firm is engaged in the manufacture of chewing tobacco under various trade marks of which the numeral mark `100' is one of them, that the trade mark `100' has been in use by the firm since the year 1950, that the trade mark `100 has acquired a vast reputation and goodwill amongst the purchasing public and is exclusively associated with the firm's goods and business and that the trade mark `100' propounded for registration is identical and also goods in respect of which the applicant/1st respondent seek registration are identical to the goods in respect whereof the firm's trade mark `100' is registered and used and as such the adoption and use of the impugned trade mark by the applicant/1st respondent is likely to deceive or cause confusion in the course of trade. The 1st respondent filed counter statement on 26th April, 1994 and the appellant filed evidence in support of opposition on 5th December, 1994. Thereafter, the 1st respondent filed evidence in support of the application and the appellant filed reply evidence on 9th April, 1996. The case was heard by the 2nd respondent on 2nd November, 1998. By his order dated 11th November, 1998, the 2nd respondent disallowed the opposition No. DEL-8139 filed by the appellant and accepted the applicant No. 508460 on the grounds of long and extensive use, and honest and concurrent user without any interference by the opponent.
4. The applicant filed before the Hon'ble High Court of Delhi an appeal C.M. (Main) No. 38 of 1999 under section 109 of the Act and also an application C.M. No. 462/99 in CM(Main) No. 38 of 1999 under Order 41, Rule 5 read with section 151 of the Code of Civil Procedure, 1908, for stay of operation of order dated November, 1998 in respect of opposition No. DEL-8139, pending hearing and disposal of the appeal. The said appeal and application were transferred to the Intellectual Property Appellate Board (IPAB) in pursuance of section 100 of the Trade Marks Act, 1999 and numbered as TA/141/2003/TM/DEL. This appeal was heard by the IPAB on 4.5.2006.
5. We have heard the arguments of Shri N.K. Anand, the learned counsel for the appellant and Shri Ajay Sahani, the learned counsel for the 1st respondent.
6. During the course of hearing, the learned counsel for the appellant submitted that the dispute in appeal relate to the adoption and use of numeral mark `100' by the 1st respondent in respect of chewing tobacco on the basis of the appellant's prior use and prior registration of the trade mark `100' under No. 274897. He pointed out that the application of the 1st respondent for registration of numeral mark `100' in respect of chewing tobacco was barred under section 12(1) of the Act which prohibits registration of an identical and/or deceptively similar mark which is already registered in respect of the same or same description of goods. The 2nd respondent vide his order dated 11th November, 1998 held that the provisions of section 12 (1) of the Act shall undoubtedly be a bar to the registration of the impugned mark but, however, observed that the 1st respondent has used the impugned mark along with word `HALCHAL' from 1970 onwards. The 2nd respondent has erroneously held that there was particularly no use of the appellant's mark in the State of Uttar Pradesh ignoring that the appellant's right to the numeral mark `100' by virtue of registration were not territorial and the said mark had extensively been used by the appellant throughout India. The learned counsel further submitted that under the provisions of section 18(4) of the Act, the 2nd respondent has ordered that the 1st respondent shall boldly represent his trading style on the containers or wrappers of the goods while using the impugned mark but this condition should ought to be recorded and notified as under:-
"It is condition for registration that the applicants shall boldly represent their trading style on the containers and wrappers of the goods while using the numeral mark 100."
The learned counsel for the appellant also submitted that the 2nd respondent erred in granting the benefit of section 12(3) of the Act to the 1st respondent on the ground of so-called use of the mark for the last 28 years (as recorded in the impugned order) without appreciating that the relevant date for deciding the date of registration of the trade mark is the date of application for registration, i.e. in the present case 11th April, 1989 and not the year 1998. Further, the 1st respondent is the registered proprietor of word HALCHAL under No. 218544 in class 34 as well as owner of Copyright consisting of word HALCHAL and numeral 100 and that it is undisputed that the 1st respondent was using the numeral 100 along with the word HALCHAL. Although section 12(1) of the Act was a bar to the registration of the impugned mark, the composite use of HALCHAL-100 made up the mind of the 2nd respondent while allowing the application to proceed for registration.
7. We have carefully considered the submissions of the learned counsel for the appellant. It is noticed that the above submissions of the learned counsel corroborate with the order of the 2nd respondent. We are of the view that the submissions made by the learned counsel for the appellant has a force. We are of the view that apparently the impugned mark is similar and is for similar goods as that of the mark and goods of the appellant. However, the learned counsel for the appellant has lastly proposed that in view of the circumstances, the opponent/appellant will not oppose registration of application of the applicant/1st respondent if the learned counsel for the 1st respondent agrees that there should be a condition for registration that the applicant/1st respondent would use the numeral mark `100' as a suffix to the word HALCHAL.
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The learned counsel for the applicant/1st respondent expressed his agreement with the proposal of the learned counsel for the opponent/appellant. 8. Considering all the circumstances, we are of the view that the application No. 508460 if allowed to proceed for registration with limitation and condition hereinbefore specified would make the impugned mark distinctive. Hence, we modify the impugned order of the 2nd respondent by directing the 1st respondent to modify the numeral mark `100' by getting registration in respect of the composite mark `HALCHAL-100'. We also direct the 2nd respondent to notify the condition imposed by him in his order dated 11th November, 1998. Accordingly, the appeal is partly allowed. There will be no order as to costs.