JUDGMENT
S. Jagadeesan, Chairman
1. This appeal is against the Order of the first respondent dated 11.10.1996, rejecting the application of the appellant for registration of the trade mark ‘DOCTOR’.
2. The word per se “Doctor” brand was sought to be registered by one M/s. Adarsh Industries, by filing an application No. 482170 on 30.12.1987, in respect of toilet soap, washing soap, detergents, washing powder and cosmetics included in class 3 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act). During the pendency of the application, the appellant became the subsequent proprietor of the trade mark ‘Doctor’ registered under Nos. 142293 dated 7.2.1950, 239854 dated 6.1.1967 and 417329 dated 9.2.1984. On 10.4.1991, the appellant filed his request on Form TM 16 before the Registrar of Trade Marks, the first respondent herein, requesting to proceed with the application No. 482170 in the name of Pee Cee Soap and Chemicals Pvt. Limited. The said application was advertised in the Trade Marks Journal No. 1050, dated 1.3.1993 at page 1188 in the name of M/s. Adarsh Industries and associated with the appellant’s trade mark No. 239854 and others. The second respondent herein M/s. Kislin Cosmetics, filed their notice of opposition opposing the registration of the impugned trade mark stating that they are the bona fide proprietors in India and elsewhere inter-alia of the trade mark ‘Doctor’ which has been in actual use for the last 20 years and the said mark was adopted in the year 1971 and thereafter got registered under Trade Mark No. 371085, which has attained a goodwill and reputation in the market. The second respondent further stated that they are making attempts for export of the complete range of cosmetics, shampoo, powder, etc. under their trade mark ‘Doctor’. They have further stated that the impugned mark is deceptively similar to that of their mark and as such, the registration of the impugned mark would cause confusion and deception in the trade and in the public using the cosmetics and toilet preparations. Hence, the registration of the impugned mark will be violative of the provisions of Sections 9, 11(a), 11(e), 12(1) and 18(1) of the said Act.
3. The appellant filed their counter on 22.2.1994 denying all the averments of the second respondent in their notice of opposition and further stated that their predecessor has adopted the trade mark ‘Doctor’ in respect of washing soap and detergent in the year 1958 and since then, the trade mark is in continuous use in respect of washing soap. The present application filed by the appellant pursuant to a request in Form 24 dated 10.2.1989 and the trade mark ‘Doctor’ brand was assigned to the appellant. The appellants are also registered proprietors of the trade mark ‘Doctor Soap’ (label) under No. 142293; Doctor under No. 417329 in respect of detergents and Doctor soap (label) under No. 239854 in respect of washing powder. The impugned mark is distinguished and is exclusively associated with the goods of the appellant and they have attained goodwill and reputation in the market. At any rate, the appellant is entitled for registration of the impugned mark under Sections 12(3) and 33 of the said Act since the appellants are honest concurrent users. The second respondent, on 5.9.1994, filed the evidence of user and reputation by way of an affidavit by one Shri Parsa Lalwani, alongwith the attested copies of the bills and registration certificate. The appellant also filed the evidence on 11.1.1995, in respect of user of the mark applied for by way of affidavit by one Shri Mohinder Kumar Jain. After the completion of the formalities, the matter was heard by the first respondent and under the impugned Order, allowed the opposition No. DEL-8123 of the second respondent and refused registration of the application of the appellant. The first respondent, in the impugned Order upheld the objection of the second respondent under Sections 9, 11(a) and 11(e) as well as Sections 12(1) and 18 (1) of the Act. Aggrieved by the same, the present appeal has been filed in the High Court of Delhi in CM (M) No. 29/1997, which stood transferred to this Appellate Board, by virtue of Section 100 of the Trade Marks Act, 1999 and numbered as TA/131/2003-TM/DEL.
4. We have heard Shri N.K. Anand, the learned counsel for the appellant and Shri B.R. Bhale Rao, for the second respondent.
5. The learned counsel for the appellant contended that the appellant is honest and concurrent user of the impugned mark and as such, they are entitled for the registration under Section 12(3) of the Act. Further, the mark applied for being an associated one with the earlier registered mark, the same cannot be refused. He further contended that their already registered marks are pertaining to carbolic soap, detergents and washing soap, which are all included in the present impugned mark alongwith the toilet preparation and cosmetics. Hence, the objection of the second respondent is only in respect of the goods of toilet preparations and cosmetics. The sale statistics furnished in the affidavit of Shri Mohinder Kumar Jain filed on behalf of the appellant is restricted to soap and washing powder under the registered trade mark ‘Doctor’ for the period 1958 to 1993-94. The sale statistics in respect of other goods were not included. At any rate, the appellant being a registered proprietor of the identical trade mark in respect of the goods falling under class 3, the appellant is entitled for the benefit of registration of the impugned mark as an honest concurrent user. Hence, the rejection of the application by the first respondent is illegal and cannot be sustained. The learned counsel for the appellant further contended that the fresh application for registration of the same trade mark is only to expand the range of business by way of associated mark and it cannot be said that the appellant is seeking the registration of the impugned mark afresh.
6. On the contrary, the learned counsel for the second respondent contended that the second respondent is the registered proprietor of the trade mark in respect of toilet preparations and cosmetics. The second respondent being the registered proprietor of the trade mark ‘Doctor’ under No. 371085 in class 3, under trade mark Registration Certificate No. 152469, the registration of the impugned mark in respect of the same class of goods or the same description of goods would definitely create confusion and deception in the trade as well as in the public. So far as the manufacture of goods by the appellant in respect of the earlier registered trade marks are concerned, they being different from that of the second respondent’s products, the appellant can have the benefit of the same. When the second respondent is manufacturing the toilet preparations and cosmetics since 1971 and the sales statistics furnished in the affidavit of Shri Parsa Lalwani clearly establishes the volume of business of the second respondent since 1971, the Registrar of Trade Marks has correctly appreciated the evidence and rejected registration of the impugned mark of the appellant. Consequently, the appeal is devoid of any merit and is liable to be dismissed.
7. We have carefully considered the above contentions of both the counsel.
8. The undisputed facts are that the appellant has registered trade mark ‘Doctor’ under No. 142293 in respect of carbolic soap. They have also obtained registration of the same mark under No. 417329 to be associated with No. 142293 in respect of detergents. Similarly, they have also obtained registration of the same mark in No. 239854 associated with No. 142293 in respect of washing soaps, for sale in the States of Uttar Pradesh, Rajasthan and Madhya Pradesh. Now, by way of fresh application No. 482170-B, the appellant is seeking registration of the trade mark ‘Doctor brand’ to be associated with No. 239854 in respect of toilet soap, washing soap, detergent, washing powder, toilet preparations and cosmetics. The second respondent’s claim is that they are the registered proprietors of the identical trade mark under Registration Certificate No. 152469 in respect of the complete range of cosmetics, shampoo, powder, etc.
9. The evidence let in by both the parties establishes their plea. The second respondent adopted the trade mark ‘Doctor’ in the year 1971 and after extensive use for more than a decade, they got the registration of the said trade mark under No. 371085 as early as on 17.1.1984 in respect of shampoo, cosmetics, powder, included in class 3. The appellant has also obtained the registration of the same trade mark ‘Doctor’ in respect of carbolic soap, detergents, washing soap for sale in Uttar Pradesh, Rajasthan and Madhya Pradesh, falling under class 3 on 1.7.1951, 16.5.1991 and 1.10.1968 respectively. So far as these marks are concerned, the second respondent has no objection. The appellant, in the present application is seeking registration of the same trade mark ‘Doctor’ in respect of the goods for which the mark was already registered, alongwith fresh goods, i.e., cosmetics and toilet preparations. The only objection of the second respondent is that they being the registered proprietors of the same trade mark in respect of the same class of goods, i.e., toilet preparations and cosmetics, the appellant is not entitled for registration since the same is in violation of Section 11(a) of the Act. The Deputy Registrar of – Trade Marks, New Delhi, had elaborately considered this question and upheld the objection of the second respondent. We also entirely endorse the view of the Deputy Registrar of Trade Marks.
10. The goods for which the appellant has already obtained registration though falls under class 3, they are not the same goods as that of the second respondent. The appellant’s goods are carbolic soaps, detergents and washing soaps, which cannot be said to be cosmetics. The cosmetic items relate to improving the beauty especially that of the complexion. Since the second respondent has already obtained the registration of the same mark in respect of cosmetics, the registration of the impugned mark in respect of the same class of goods or the same description of goods would definitely cause confusion and deception in the trade.
11. The learned counsel for the appellant however pleaded that the fresh registration is sought for only to expand the business. Definitely, the appellant is entitled to expand the business but the restriction is that it cannot seek registration of the identical mark which already registered in favour of another proprietor and in respect of the same goods. The law of trade marks is mainly to take care of the identity of the goods with the proprietors of the trade mark and there can be only one proprietor in respect of a mark pertaining to the same goods or description of same goods. Hence, we are of the view that the appellant’s plea is of no avail. When once it is found that the registration of the impugned mark would cause confusion in respect of cosmetic goods, the same cannot be allowed. Hence, we affirm the Order of the Deputy Registrar and consequently the appeal is dismissed. There will however be no Order as to costs.