(Circuit Bench Sitting at Kolkata)
Hon?ble Shri Syed Obaidur Rahaman, Technical Member:
This miscellaneous petition is filed by the appellant/applicant for stay of the order dated 23rd August, 2006 passed by the Deputy Registrar of Trade Marks, Kolkata, whereby he disallowed the opposition and allowed the application for registration.
2. The fact of the case is that the appellant is the registered proprietor of the trade mark GANESH and label mark GANESH BRAND and using the said trade mark since 1920 continuously, exclusively and openly in respect of Mustard Oil (edible). The appellant/petitioner filed an opposition against the application for registration and said opposition was dismissed by the Deputy Registrar.
3. The case of respondent No.1 is that they have been using the trade mark GANESH since 1980 in respect of the Ghee for sale in the states of West Bengal, Orissa, Bihar, Jharkhand and Assam. The application No.1219021 dated 30.7.2003 made for registration of trade mark and the application was advertised under proviso to sub-section (1) of section 20 of the Act. The said application was allowed by the Deputy Registrar of Trade Marks on 23 August, 2006 for registration.
4. The miscellaneous application came up before us for hearing on 3.3.2009 at Circuit Bench Sitting at Kolkata. Shri A.K. Goel, learned counsel appeared for the appellant and Shri Arunava Mukherjee, Advocate appeared on behalf of the respondent No.1.
5. Learned counsel for the appellant submitted that the trade mark which is registered in the year 1948 is being used by appellant since 1920. This mark is reputed and well known all over India in respect of Mustard Oil (edible oil) but without going through the section 11 (10), the Registrar allowed the application. The counsel for the appellant relied upon the following two judgments namely:
(i) 2008 (38) PTC 373 (IPAB) Ganesh Zarda Factory Vs. Kishore Zarda Factory & Anr. ? The learned counsel relied upon the paragraph Nos.12, 19, 21 and 22.
?12. Learned counsel for the appellant relied on the following judgments in support of his claim:-
(a) 2007 (34) PTC 392 Delhi Ansul Industries v. Shiva Tobacco Company was relied on in support of his contention that honest adoption at the initial stage itself has to be established to take the benefit of concurrent registration under section 12(3) of the Act.
(b) 2002 (24) PTC 226 Bombay (DB) Bal Pharma Ltd. v. Centaur Laboratories Pvt. Ltd. balance of convenience is not in favour of a person who consciously or without taking necessary steps to assure himself of the existence of a mark uses it.
(c) 1995 PTC 165 (SC) Power Control Appliances & Ors. Vs. Sumeet Machines Pvt. Ltd & Ors. ? The well settled principle of law is that one mark, one source and one proprietor.
(d) AIR 1978 Delhi 250 ? Prior user gets a valid right than the registered proprietor.
(e) 1986 (1) SCC 465 : 1986 (6) PTC 71 (SC) ? American Home Products Corporation v. MAC Laboratories ? reputation of trade mark need not be proved in case of registered proprietor.?
19. We shall first deal with the first issue, namely whether the trade mark ?KAVI? is entitled for registration as per the provisions of Section 12(3) of the Act. It is worthwhile to quote the provisions of Section 12 of the Act.
?12. Prohibition of registration of identical or deceptively similar trade marks ? (1) Save as provided in sub-section (3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of different proprietor in respect of the same goods or description of goods.
(2) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the Registrar may defer the acceptance of the application or applications bearing later date until after the determination of the proceedings in respect of the earlier application, any may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any,
(3) In case of honest concurrent user or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.?
Sub-section (3) of Section 12 is an exception to sub-section (1) of section 12, Sub-section (1) of Section 12 provides that no trade mark shall be registered in respect of goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered. Hence the goods or description of goods must also be similar in respect of marks already registered. Sub-section (3) of Section 12 empowers the Registrar to register the trade mark if there is honest concurrent use or of special circumstances in respect of the same goods or description of goods. Sub-section (3) of Section 12 also provides that the Registrar may permit registration even if the trade marks are identical. Honest concurrent use or special circumstances is decided on the question of volume of use which depends on the facts of each case, In considering the length of use to arrive at as a concurrent user, the quantum of production and sale is not necessary, there may be also be interruption in the use but what is required is a constant use in the commercial sense.
21. We strongly disagree with the following findings of the Registrar in the impugned order:-
?In view of the aforesaid evidences, as discussed above, the applicants commenced the use of the mark applied for on 16th April, 1977 while opponents commenced the use of the trade mark KAVI in respect of chewing tobacco on 10th March, 1977. Thus, the applicants commenced the use of the mark applied just about one month subsequent to the opponents. It cannot be believed that during the one month period from 10th March, 1977 to 16th April, 1977 the opponents goodwill of their goods under the trade mark KAVI became so high that it tempted the applicants to copy their trade mark. The peculiar circumstances of the matter in hand is that word KAVI being a common word was adopted by the applicants independently without any knowledge of the same in respect of the use of the opponents. Thus, the very adoption of the mark applied for by the applicants and its subsequent use by the applicant does not appear to be tainted with dishonesty in view of the above discussed circumstances. As regards the concurrency of the use of both the trade marks the evidence on record indicated that the applicants had been using the mark applied for namely; KAVI in respect of chewing tobacco since 16th March, 1977 i.e. for about more than 13 years as on the date of application which is 9th August, 1990. In view of the aforesaid discussion, their exists the element of honest concurrent use of the mark applied for in terms of provisions of section 12(3) OF THE Act. Hence, the applicants are entitled for concurrent registration under section 12(3) of the Act.?
22. It is admitted by the first respondent as well as the Registrar that the appellant has been using the trade mark since 10.3.1977 prior to that of the first respondent. The well settled principle of trade mark law is that priority prevails even over a registered user. Based on the above principle, in our view, the appellant?s right as a prior adopter and user of the trade mark is more valid than that of the first respondent and the appellant?s rights are to be protected.
In this above cited case it was held that priority prevails even over a registered user.
(ii) 2005 (30) PTC (IPAB) Prestige Housewares India Limited Vs. Registrar of Trade Marks & Anr. ? In this cited case, it was held that Deputy Registrar cannot give direction for registration on the ground of honest concurrent user.
6. At the time of hearing learned counsel for the appellant has handed over a xerox copy of Registration Certificate of the Trade Marks in respect of Edible Oils issued by the Trade Mark Registry and another xerox copy of Trade Mark Journal in respect of No.414296 advertised before acceptance under section 20(1) proviso to be associated with No.120542 (60) (Delhi) for Edible Oils using since 1920 in respect of Ganesh Brand Prag Oil Mills Aligarh.
7. The appellant also handed over the document regarding Trade Mark Journal No.1327 Suppl. (4), Janyary 24, 2005 advertised GANESH Trade mark before acceptance under section 20(1) proviso application No.1219021 dated 30 July, 2003 GIRIDHAR MIMANI trading as N.N. Agencies No.6, Burtolla Street, Kolkata Manufacturer and Merchants, user claim since 4th January, 1980 in respect of Ghee for sale in the state of West Bengal, Orissa, Bihar, Jharkhand and Assam.
8. Learned counsel for the appellant also submitted that the mark is well known in India and one of the oldest reputed mark in India. If the respondent mark is allowed for registration of the trade mark GANESH, the appellant would be cost great prejudice and irreparable loss which shall not be compensate in the monitory terms, so the appellant prayed before the Hon?ble Board to stay the registration of the trade mark GANESH which issued in favour of the respondent No.1 and may be a date fixed for hearing the appeal as early as possible.
9. The learned counsel appearing on behalf of the respondent No.1 submitted that their marks is very well known and they are using these marks since 1980 onwards continuously, exclusively and openly in respect of the Ghee and also submits that the goods are different from the appellant?s goods. The appellant are using this mark in respect of goods edible oil and the respondent No.1 are using the mark in respect of ?Ghee?. The respondent No. 1has nothing to do with the goodwill and reputation of the appellant mark. The appellant is not dealing in the goods like Ghee since 1920. The goods are to
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tally different. The counsel for the respondent No.1 further submitted that the trade mark GANESH is common name which everybody has right to use, nobody can monopolise in such type of common name or word. The respondent No.1 is filly entitled to use this mark. Therefore, the miscellaneous petition for stay as prayed for has no merit. So the miscellaneous application for stay should be rejected instantly. 10. After hearing both the counsels and perusal of the documents and case laws which placed before the Appellate Board, we are of the view, that the trade mark GANESH was used by the appellant for the last 90 years. It is evident from sales figure given in the petition by way of bills and a chart of sales figure and a chart of advertisement annexed with the petition, from it is proved that the business activities of petitioner/appellant all over the India. We are satisfied that mark is well known mark in India. We are also satisfied on prima facie that the appellant mark is a well known mark in India. In view of the above the impugned order dated 23rd August, 2006 passed by the Deputy Registrar of Trade Marks is stayed till the hearing of the main appeal.