ORDER
J.H. Joglekar, Member (T)
1. These five stay applications arise out of the same impugned order and are, therefore, being disposed of by this common order.
2. The appellants manufactured rubber roll pipes and were availing of the benefit of Notification No. 1 /93 as amended. Their goods were found to be affixed with a sticker bearing the trade names “Parkman-T” as also “Shree Laxmi”. The appellants were using this trade mark from 1993. Another unit, namely Parker Polymer Industries, Palghar, was affixing similar goods manufactured by them with the trade name “Parkman PAL”. In the belief that the present applicants were using a brand name of another person which activity would deny the benefit of the cited notification in terms of para 4 thereof; show cause notice dated 1-11-1994 was issued seeking to recover duty on such goods cleared without payment of duty. Thereafter four more show cause notices were issued covering different periods. The Assistant Commissioner confirmed the duties amounting to Rs. 9,05,490/- and also imposed a total penalty amounting to Rs. 25,000/-. The assessee then filed an appeal. The Commissioner in the impugned order examined the relevant provisions in the cited notification. He upheld the order of the Assistant Commissioner on the following observations :-
“There is no doubt from the reported fact that the trade mark “Parkman” without the reference to “T” or “PAL” (used respectively by the appellant and the original user M/s. Parkman Polymer Industries from 1993) is the most prominent marking on the subject goods. This marking would immediately strike the eyes of the person purchasing the goods, rather than the subsequent addition of “T” and “PAL”. Appellants have also not produced any evidence countering the findings of the Assistant Commissioner that the said trade mark “Parkman” was used by the said another company functioning under . the name of Parkman Polymer Industries, Palghar and that the said company had been using the trade mark “Parkman” from a time previous to the setting of appellant’s unit. They have also contested the reported fact that they had been using the marking “Parkman” only initially on that product till 1993 when the suffix “T” was also added. Any claim by the appellants on the uniqueness of the said trade mark “Parkman T” as distinct from the trade mark “Parkman PAL” is not relevant considering the prominence of marking “Parkman”. The said trade mark “Parkman” was used as its own original trade mark by another company registered under the name of Parkman Polymers Ltd., which had been in business for a period longer than the appellant’s unit and had been using the trade mark “Parkman” in marking of its goods. Appellant’s claim that some other units manufacturing similar product have also been using the mark “Parkman” on their product is also of no significance in the present case which need to be considered only with reference to the law applicable in the present case on the application of the undisputed reported facts.”
3. The assessee then filed five appeals and the present stay applications seeking stay and waiver of the duty confirmed and penalty imposed.
4. We have heard Shri S.P. Sheth, Advocate for the applicants and Shri V.K. Suman for the revenue.
5. Shri Sheth placed reliance on the circular of the Board bearing No. 52/52/94-C.E., dated 1-9-1994. The issue of this circular was that manufacturers of locks in the small sector were using names or marks on their products which marks were freely available and were not the marks owned by any particular person. Such marks were freely available and any manufacturer could use them. The doubt about the availability of the benefit of the cited notification to such manufacturers was referred for advice to the Law Ministry. The Law Ministry stated that in such a situation where the names did not belong to any person the use of such names could not prevent benefit of the notification being given to all users. In the circular the Board had extended the scope of this advice to all goods specified in the subject notification.
6. Shri S.P. Sheth demonstrated that the name “Parkman” did not belong to the other assessees by referring to the correspondence of the present applicants with the Trade Marks Registry. The trade mark which is the centre of controversy in the present proceedings has been applied for registration by the present applicants vide their letter dated 10-11-1997. We have seen a copy of the application.
7. We find that the application by itself is not sufficient to establish that the trade mark claimed for registration was not in use by any other person when this application was made. Shri Sheth submitted that it takes a considerable time in getting the formal registration. He was not able to advise us as to the rights of the applicants under that Act during the pendency of such application.
8. We have taken note of the learned Advocate’s submission that the prefixes and suffixes added to the phrase “Parkman” are material inputs and that the distinguishing phrases would not go to create an impression in the mind of the buyer about the connection of the other manufacturers with the goods manufactured by the present assessees. We have seen the impressions of the different trade marks or brand names put on record in the appeal memorandum. The assessee’s brand name is oval in shape and part from the name shows two roll pipes. The comparative brand name used by M/s. Parkman Polymer Industries on the other hand is a perfect circle and the name “Parkman” has been shown in an ornamental font. In addition the identification of the product is shown by the present applicants to be “rice mill rubber roll pipe” and the other unit has “paddy dehusking roll”. Looking at these two stickers together prima facie it appears that they are not suggestive of the same goods being manufactured by two different assessees.
9. Reference was made to a large body of case law about distinction being made between two identical or similar trade marks on the basis of additions or subtraction of certain parts. Although that would have to be gone into in detail at the time of final hearing of the appeal, at this stage the appellants have made a prima facie case in their favour. We therefore allow the applications and grant unconditional stay of the operation of the order impugned.