S. Jagadeesan, Chairman:
1. Since both the appeals are arising out the common order of the Deputy Registrar of Trade Marks, at the request of both the counsel, the appeals are taken up for joint disposal.
2. These appeals are directed against the impugned order of the Deputy Registrar of Trade Marks, dated 22.3.1994, accepting the application No. 374835 of the first respondent for registration of the trade mark `COMEX' in respect of Nylon socks and thereby rejecting the opposition No. 4848 filed by the appellant. The appellant also filed application No. 358666 for registration of the trade mark `COMEX' in respect of underwears and Banians, viz., inner garments. The first respondent filed Opposition No. 7595. The Deputy Registrar of Trade Marks took the application of the first respondent for consideration stating that the conclusion in this application would cover the issue involved in the other application filed by the appellant.
3. We also deal in this order, the application filed by the first respondent to avoid any confusion in the disposal.
4. The first respondent filed application No. 374835 for registration of the trade mark `COMEX' in respect of Nylon Socks included in class 25 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). The appellant herein filed Opposition No. DEL 4848 stating that the appellant adopted the trade mark COMEX in the year 1975 in respect of Hosiery goods and has been in continuous use thereby attained goodwill and reputation in the market. The impugned mark is contrary to Sections 9, 11(a), 12(3), 19(1) and 18(4) of the said Act. The parties filed their respective evidence and after completion of the procedure contemplated under the Act, hearing was given.
5. Under the impugned order, the Deputy Registrar of Trade Marks accepted the application of the first respondent for registration and rejected the application of the appellant and as against the same, the present appeals have been filed in CM(M) 242/1994 and CM(M) 539/1994 before the High Court of Delhi, which stood transferred to this Appellate Board by virtue of Section 100 of the Trade Marks Act, 1999, and numbered as TA/315/2004/TM/DEL and TA/316/2004/TM/DEL.
6. We have heard the arguments of Shri S.K. Bansal on behalf of the appellant and Shri Hemant Singh on behalf of the first respondent.
7. The main contention of the learned counsel for the appellant is that the respondents are also not registered proprietors of the mark and their application for registration is also pending. Their claim is that they are the prior users since 1974 bonafidely and they are using the mark COMEX in respect of underwears and banians, i.e., inner garments. The first respondent is seeking registration in respect of nylon socks which is not manufactured by the appellant. The goods of the appellant and the first respondent being totally different, the interpretation put forth by the Deputy Registrar of Trade Marks in respect of sub-section (2) of Section 12 is totally incorrect. Further, the Deputy Registrar of Trade Marks at page 16 of the impugned order has found that the appellant committed fraud by claiming their mark COMEX as that of the registered one and on that ground the Opposition is liable to be dismissed. The said finding of the Deputy Registrar of Trade Marks cannot be sustained because when the appellant has produced a number of documents out of which only one contains the letter `R' that may not constitute any fraud. While so, it cannot be said that the appellant had committed any fraud or mis-representation deliberately claiming any benefit under the same. When there are a number of documents which do not make any reference in respect of the appellant' mark as registered, it has to be taken that the single document wherein it is mentioned as "Registered" must be an inadvertent mistake. Moreover, it ought to have been taken into consideration that the document was produced by the appellant himself and not by the first respondent. However, any mala fide claim was made through such document he could have retained the document without producing the same as part of evidence. The innocent production of the said document itself is a clear indication that there is some bona fide mistake in the printing of the letter `R' in the said document and hence the benefit of doubt ought to have been given to the appellant.
8. The learned counsel for the first respondent, however, contended that both the marks are same. There is no difference. The only claim of the appellant is that the goods are different and as such the appellant's mark is entitled for registration. Considering the distributing channel in respect of both the products being a common one, it is for the Appellate Board to consider whether there will be any confusion in the minds of the consumers in respect of the impugned trade mark as that of the first respondent. Only considering these matters, the Deputy Registrar of Trade Marks found that the registration of the impugned mark of the appellant cannot be granted.
9. We have carefully considered the above contentions of both the counsel.
10. There is no dispute that the first respondent is using the trade mark honestly and bonafidely since the year 1974 in respect of nylon socks. The appellant adopted the mark only in the year 1975 being the subsequent user. The Deputy Registrar of Trade Marks mainly proceeded on the basis of the earlier use and accepted the application of the first respondent for registration and rejected the opposition of the appellant. Consequently, the application filed by the applicant for registration of the identical mark in respect of hosieries also rejected.
11. When the word marks are identical without any slight difference, we do not find any irregularity in the findings of the Deputy Registrar of Trade Marks. The earlier use of the mark by the first respondent is not denied. The only argument on behalf of the appellant is that the first respondent is using the trade mark for nylon socks whereas the appellant is seeking registration in respect of hosieries, i.e., inner garments.
12. Though the learned counsel for the appellant tried to make out a case under Section 12(2) of the Act on the basis that the application of the appellant for registration being earlier point of time, the Deputy Registrar ought to have taken that application for disposal and kept the application filed by the first respondent pending which is later in point of time. This may be a procedural irregularity. The learned counsel for the appellant however, did not make out any case as to how the procedural irregularity has caused any injustice to him. Even assuming that the application filed by the appellant ought to have been taken for disposal, the Deputy Registrar of Trade Marks has taken into consideration all the materials available on record and found that the first respondent is the earlier user. It is not the case of the learned counsel for the appellant that the finding of the Deputy Registrar is vitiated due to non-consideration of any other material available on record.
13. With regard to the different goods, we are unable to appreciate the argument of the learned counsel for the appellant. It is true that the first respondent is using the trade mark COMEX for nylon socks since 1974 and the appellant is using the hosieries since 1975. In view of the well laid principles of the receipt Judgments, it is for us to consider whether there will be any confusion in the minds of the consumers. It is not the case of the appellant that the trade channels for the goods of the appellant is different from that of the first respondent. Normally, any textile store is a common trade centre for both hosieries and nylon socks. Hence, the trade channels being common, we have to find out whether the hosieries manufactured by the appellant with the trade mark COMEX would cause any confusion i
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n the minds of the consumers that they are the goods of the first respondent. We are of the view that both the marks being identical one without any difference, definitely, the consumers will be misled to presume the hosieries and nylon socks are from one source. In such circumstances, there cannot be any denial that the use of the same mark by two traders even though in respect of different products, definitely, will cause confusion in the minds of the consumers and also in the general trade. 14. Since, the Deputy Registrar of Trade Marks has elaborately discussed the issues, we are not inclined to repeat the same and for the reasons stated above, we concur with the findings of the Deputy Registrar of Trade Marks and consequently the appeals are liable to be dismissed. 15. Accordingly, both the appeals are dismissed. However, there will be no order as to costs.