JUDGMENT
Syed Obaidur Rahaman, Technical Member
1. This appeal is preferred against the impugned order of the Assistant Registrar of Trade Marks, Chennai dated 4.2.2005, by accepting the application No. 470142 in class 17 of the first respondent for registration of the trade mark word ‘LOTUS’ in respect of ‘Tapes’ included in Class-17′ under the Trade and Merchandise Marks Act, 1958 and thereby rejecting the Opposition No. MAS 2831 filed by the appellant, the mark was accepted for registration and advertised in the Trade Mark Journal No. 1044 dated 1.12.1992 at page No. 944. The first respondent claims that the above said trade mark is continuously used by them since the year 1979 and made an application for registration on 1st April 1987. The appellant M/s. Dhanalakshmi Cottage Industries has filed opposition on 24th February, 1993 against the above said application, which was dismissed by the Assistant Registrar of Trade Marks by his order dated 4.2.2005. The respective parties have filed their evidence in support of their case. The appeal was taken up by this Board for hearing on 17th April, 2006. Mr. S.Y. Venkatanarasimhan, advocate, appeared for the appellant and Mr. G.S. Shivakumar, advocate, appeared for the respondent No. 1.
2. The learned Counsel for the appellant Shri S.Y. Venkatanarasimhan submitted that the appellant is engaged in the business of manufacturing and selling of cotton tapes of various of sizes and varieties users of them which includes for cot netting purpose (Newer tapes), tapes for textiles machinery, part of electrical motors as tapes for the purpose of covering the copper wire in the electrical motors and then choking the tape with insulating varnishing materials to protect the enamelled copper wire from excessive heat while in operation. The appellant has honestly and in the course of the trade adopted a distinctive trademark consisting of the words ‘Red Lotus’ with the device of red lotus to distinguish their products in the form of a circular label since 18.10.1977 onwards and doing sales ever since that date all over India.
3. The learned Counsel for the appellant also submitted that they have honestly adopted the said trademark red lotus with device of lotus to distinguish their products from the other traders and due to maintenance of strict quality control, pic and length of the tapes and due to vast sales promotional network and due to honest trade practices, the said trade mark has become very popular all over India especially in North India and the purchasing public in general, the trading community in particular associate the said trade mark only with that of the appellant and much goodwill and reputation has accrued to the said trade mark and it has become a valueless property of the appellant. It is also submitted that the appellant has made two applications before the Registrar of Trade Marks at Madras for registration of trade marks – one in class 26 for Newer Tapes and the other in class 7 for the purpose of Textile Machinery and part thereof and part of electric motor and part thereof in Application Nos. 426268 in Class 7 and 426269 in class 26. When both the trademarks were advertised in the Trade Marks Journal, the first respondent opposed those trade marks in Opposition No. MAS 2305 to Application No. 426268 in class 7 and Opposition No. MAS 2306 to Application No. 426269 in class 26, which are still pending before the Registrar of Trade Marks at Madras.
4. It is also submitted that since the appellant has made the application earlier to that of the first respondent, and since the user claimed by the appellant is earlier to that of the alleged user claimed by the first respondent, the appellant is the proprietor of the said trade mark under the provisions of Section 18(1) of the Trade Marks Act, 1958.
5. Now in this case, the objections are based under the provisions of Section 11(a), 11(e) and Section 18 of the Trade and Merchandise Marks Act, 1958. The appellant first raise the objection that the goods of the first respondent do not fall in class 17 at all. This objection had already been considered in the earlier two oppositions where the first respondent had stated that they had made an application to register their trade mark in class 17. Cotton tapes generally fall in class 26 and any special use of it may be classified in that particular class. Here the first respondent is manufacturing tapes for which special use is not given in the application, whether it is cotton tape or synthetic tape or any type of what material is not given in the application. If the tape produced by the first respondent is synthetic adhesive tape, where the adhesive material is embodied on the tape while selling, then it may fall in class 17. The appellant has gathered information that the first respondent is also producing only cotton tapes and that is the reason that first respondent have opposed the registration of the two applications. Hence, the goods mentioned in the application is cotton tape only and since the classification of the goods is in wrong class, the application should be dismissed in limini without further going into the merits of the application.
6. The grounds of opposition to the aforesaid application, the appellant states that the registration of the trademark is contrary to the provisions of Sections 11(a) to 11(e), since the appellant is the earlier user and adopter of the trademark. Since the goods of the first respondent and the goods of the appellant are same or goods of same description and the user of the trade mark may likely to cause confusion and deception on the market. The parties filed their respective evidence and after completion of the procedure contemplated under the Act, hearing was given.
7. Under the impugned order, the Assistant Registrar of Trade Marks, after careful consideration, rejected the appellant’s objection under Section 11(a) of the Act saying that in the present case, the appellant’s objection is mainly based on Section 11(a) of the Act. The appellant has invoked the Section on the ground of long user and reputation of their mark. Since the objection is based on the user and reputation to the mark, the onus is on to the appellant to establish such user and reputation. Once this onus is discharged, the burden of proving that the trademark sought to be registered is not likely to deceive or cause confusion is upon to the first respondent. Hence, the appellant was first respondent in opposition Nos. MAS 2305 to Application No. 426269 in class 7 and MAS 2306 to Application No. 426269 in class 26, both for word ‘Red Lotus’ and device of red lotus. Both these applications were refused by the Tribunal and the first respondent’s opposition was allowed. In this case also, the appellant miserably failed to establish long and prior user and reputation against the first respondent, and first respondent could prove his prior user and reputation of the mark ‘Lotus’ used by him since the year 1979. Accordingly the Assistant Registrar of Trade Marks rejected the appellant’s objection under Section 11(a) of the Act. Lastly, the only contention of the learned Counsel for the appellant is that goods do not fall under class 17 but the Assistant Registrar dealt with the case that goods fall in class 17 because it is “tape”.
8. The learned Counsel Shri G.S. Shivkumar appearing on behalf of the first respondent submits and relies upon in its counter statement and claimed that the Assistant Registrar of Trade Marks has correctly considered the orders passed in Opposition No. MAS 2305 to Application No. 426268 in class 7 and MAS 2306 to Application No. 426269 in class 26 before passing the order in respect of Opposition No. MAS 2831. It is claimed that the Assistant Registrar has taken into account the refused order passed by the Tribunal in respect of both Oppositions. In the counter statement, it is said that the Assistant Registrar has carefully considered the objection of the appellant based on the Section 11(a) of the Act, and found that the appellant has not established long and prior user and reputation against the first respondent. The Assistant Registrar has considered that the first Respondent proved the prior user and reputation of the mark work ‘LOTUS’ used by it since 1979. The findings are based on merits of the case. The first respondent in its counter statement also claimed that the Assistant Registrar of Trade Marks has also considered that the appellant has not adduced any positive evidence to establish its objection under Section 11(e) of the Act. It is claimed that the Assistant Registrar of Trade Marks has considered the evidence adduced by the first respondent and has come to the conclusion that the first respondent can claim to be the proprietor of the Trade Mark. It is clear in his order that the adoption of the Trade Mark by the first respondent is bona fide. The first respondent has pointed out before the Tribunal that three different user dates for the same application was stated and observed that the appellant has pursued a dishonest course of conduct. As regards the wrong classification, we have not found any irregularity in the finding of the Assistant Registrar. Otherwise also ‘The Registrar’s decision as to the class within which any goods fall is final and no appeal lies from his decision in the matter. It is his duty to allocate the class to new articles and materials as and when the necessity arises. “In determining the class in which a particular article should be allocated, the Registrar is often aware that the article possesses various properties which of themselves might possibly justify him allocating the goods to the class in which goods possessing one of these particular properties are placed, but the over riding consideration which has always influenced his decision is the question as to what the primary nature of the goods actually is.” (See page 49 of the Law of Trade Marks and Passing-off by Dr. S. Venkateswaran, Fourth Edition Reprint 1999)’.
9. Now, in view of the above, we have carefully considered the contentions of both the counsels. We appreciate that it is true that the first respondent is using the trademark word ‘LOTUS’ for its products, namely Tapes’ since the year 1979 and the said adoption is bona fide and the appellant claims ‘Red Lotus’ with device of Red Lotus to be his marks but failed to establish his claim. After careful consideration in all aspects, we came to the conclusion that the findings of the Assistant Registrar of Trade Marks is correct. Hence, we agree that the Assistant Registrar of Trade Marks has logically and rightly rejected the appellant’s objection.
10. Accordingly the appeal is dismissed. However, there will be no order as to costs.
