JUDGMENT
Y.K. Sabharwal, J.
(1) The respondents were the applicants before the Assistant Registrar of Trade Marks, Delhi. They were trading under the name and style of New Era Electric Wares. On 14th April, 1967 the respondents made an application for registration in part ‘A’ of the Register a Trade Mark consisting the word “ESCORT”, in Clause 9, in respect of ‘Electric wires and cables’. The said application was advertised in the Trade Marks Journal and opposition was filed by the appellants, M/s. Escorts Ltd. (for short ‘Escorts’).
(2) In the opposition the Escorts pleaded that it was incorporated under the Indian Companies Act in the year 1944. They are a large manufacturing concern and are manufacturing various types of machinery and electrical goods. They pleaded that they are the registered proprietors of the trade mark ‘Escorts’ in various classes for various types of goods manufactured by them, the details of which were given in para 2 of the notice of opposition. It was claimed that they bad been manufacturing some of those goods since 1951. The trade mark ‘ESCORTS’ under No. 202188 was registered on 1st May 1961 under clause 9 for electric flat irons and electric kettles and other class of goods mentioned in the certificate of registration. The registered trade mark No. 202190 registered on 1st May, 1961 besides others, included electric hearing elements, heating tubes, water heaters and other items mentioned in the certificate of registration. It was pleaded that the mark applied for, namely, Escort under No. 241605 for ‘electric wires and cables’ is deceptively similar to their registered trade mark ESCORTS. Escorts further pleaded that the electric wires and cables are accessories to electrical goods and apparatus which they are manufacturing under their registered trade mark ‘ESCORTS’. In short, they founded their opposition mainly on Sections 11(a), (e), 12(1) and Section 18 of the Trade & Merchandise Marks Act. 1958 (hereinafter referred to as the ‘Act’). They also pleaded that the adoption of the mark by the respondent was not honest as their intentions were to trade upon the goodwill, reputation and name of the appellants. The mark was adopted in order to cause confusion in the market and deceive the public with a view to benefit from the reputation and goodwill of the mark ‘ESCORTS’.
(3) By the impugned order dated 28th November, 1972 the Assistant Registrar dismissed the opposition and directed the registration of the trade mark. Escorts are in appeal against the said order.
(4) With regard to the objection of the Escorts under Section 11(a) of the Act, the Assistant Registrar has found the objection of the appellants to be maintainable. In other words, the Assistant Registrar has come to The conclusion that the use of the mark by the respondent is likely to deceive or cause confusion. The Assistant Registrar has also come to the conclusion that the respondents’ mark is deceptively similar to the appellants’ (ESCORTS) registered trade mark. It has also been found as a fact by the Assistant Registrar that Escorts were using their mark prior to the date of the filing of the application of the impugned mark by the respondents. The Assistant Registrar further recorded the finding that on account of great reputation acquired by the appellants’ mark the use of an identical or deceptively similar mark by another person is bound to cause confusion or the deception among the trade and the general public.
(5) The Assistant Registrar, in spite of the aforesaid findings, granted registration to the respondents as he found that the respondents’ goods, namely, electric wires and cables cannot be considered as goods of the same description. He rejected the contention of the appellants that respondents goods were allied goods. Consequently, the Registrar found that although the applicant’s mark is deceptively similar to the opponent’s trade mark, the goods in respect of which the registration is sought are goods of different discription, and as such objection, under Section 12(1) of the Act was held to be not maintainable. The Assistant Registrar granted registration under Section 12(3) of the Act holding that the respondents have honestly adopted the mark and they have been using it on their goods openly and extensively since the year 1958.
(6) In this appeal, the contention of Mr. Anoop Singh, learned counsel for the appellant is that if the mark offends Section 11 of the Act, it cannot be registered under Section 12(3) of the Act. Reliance in placed upon the judgment inters the parties in F.A.O. No. 71 of 1967, ie:Af/5. Escorts v. Da Up ChandAggarwal& Ors,, decided on 19th December, 1974, affirmed in appeal by a Division Bench of this Court (Dalip Chand Aggarwal & Ors v. Mfs. Escorts Ltd: ).
(7) In view of aforesaid, after having found the objection under Section 11(a) of the Act to be maintainable, the learned Assistant Registrar could not grant registration under Section 12(3) of the Act. The registration granted by the impugned order has to be set aside.
(8) There is another reason for reversing the impugned order. It is well established that the onus lies heavily on the person applying for registration to prove, the honest concurrent user; the quantum of user having regard to the duration, area and volume of trade and to the goods concerned; the degree of confusion likely to be caused from the similarity of the marks and to bring the case under Section 12(3) of the Act. In the affidavit filed before the Assistant Registrar, the respondents mainly relied on the evidence filed with application No. 214458 and also the evidence filed in opposition No, DEL-334 for proving honest concurrent extensive user since 1958. The respondents were granted registration under the aforesaid number for electric irons, electric kettles soldering irons and elements irons and elements for electric irons and kettles and the opposition No. DEL-334 filed by Escorts was rejected by the Assistant Registrar by his order dated 30th December, 1966. It is this order which was subject matter of F.A.O. No. 71 of 1967 and the Division Bench judgment, referred to above, which reversed the order granting registration of mark ‘Escort’ to the respondents. This court came to the conclusion that the respondents are not entitled to registration under section 12(3) of the Act as the respondents had not proved the continuous user and the evidence filed by them was meagre, discrepant and scanty. In the present case also the main reliance before Assistant Registrar of Trade Mark, was on similarly evidence and for this reason also the same result has to follow. In view of the earlier judgment inter se the parties I do not consider it necessary to elaborately discuss the evidence produced before the Assistant Registrar in the present case. In view of the above, it is also not necessary to give a finding on the question as to whether the two goods are allied or not. The Division Bench after considering the case law on the subject came to the conclusion that Section 11(a) also covers the cases where the goods may not be of the same description but if it is likely to deceive and cause confusion, the registration would be refused. Therefore, it is not necessary to give a finding whether the two goods are of the same description or not. The sales of the Escorts run into crores of rupees. Escorts is a known manufacturing Company and has a reasonably known name. On the other hand user by the respondents was very limited. There is no absolute right to have the mark registered. On the facts and circumstances of this case it cannot be said that the respondents had extensive user to come within the purview of Section 12(3) of the Act.
(9) The result is that the appeal is allowed and the impugned order of Assistant Registrar is set aside. In the circumstances of the case there will be no order as to costs.