JUDGMENT
S. Jagadeesan, Chairman
1. The appeal is against the order of the Assistant Registrar of Trade Marks, New Delhi, dated 29.9.1993, allowing the opposition filed by the respondents and rejecting the application of the appellant for registration of the Trade mark.
2. The appellant herein above filed an Application No. 421055 dated 25.4.1984, for registration of a trade mark “MARCONI” in Clause 9 in respect of the goods, viz., Record players, Ampligrams, Radiograms and Stereo Sound System, claiming user since December 1969. The said application of the appellant was advertised in the Trade Mark Journal dated 1.1.1990 at page 1230.
3. The respondents hereinabove on 9.2.1990 filed a notice of opposition objecting to the registration of Trade Mark of the appellant contending that the respondents are carrying on an established business on manufacturing various electric goods under the Trade Mark ‘MARCONI’ and the same had been registered in India in class 9 under No. 367767, dated 22nd October, 1980 in respect of scientific, nautical, avionic, surveying, measuring, signalling, checking (supervision), life saving, teaching, radar, wireless, television, photography, cinematography, optical, electro-optical apparatus and instruments, taking machines, calculating machines, all being electrically operated. Video apparatus, tape recorders, parts included in class 9 of all the aforesaid goods. The word ‘MARCONI’ is also registered under No. 367768 dated 22nd October, 1980 in class 9 in respect of scientific, nautical, surveying and electrical apparatus and instruments (including wireless), telephonic, television and telegraphic instruments, sound and video recording and sound and video reproducing apparatus and instruments, tapes prepared for use as sound or video recording and re-producing media and cassettes and wallets, all for use with such tapes pre-recorded tapes and cassettes, cinematographic, optical, weighing, measuring, signaling, checking (supervision), Life saving and teaching apparatus and instruments, coin or counter freed apparatus, talking machines, cash registers, calculating machines, Fire extinguishing apparatus and parts and fitting for the aforesaid goods. The said Trade mark ‘MARCONI’ has also been registered in class 9 under Nos. 86285 and 86286, dated 20th September, 1943, under No. 214419, dated 21st March, 1963 and under No. 324592, dated 15th April, 1977, all in class 9. All the above trade marks are being periodically renewed and are valid and subsisting. The respondents further stated that they are using the said trade mark in India since the last several decades as registered mark since 1943 being renewed periodically and by the reason of the same, they developed reputation and goodwill in India as well as in the international market. Since the appellant applied for the registration of an identical mark in respect of similar and for the same description of the goods, the registration is prohibited under Sections 12(1) and 11(a) of the Trade and Merchandise Marks Act, 1958. The adoption of the impugned trade mark by the appellant is with dishonest intention. The objection of the appellant were under Sections 9, 11(a), 11(e), 12(1), 12(3) and 18(1) of the Act.
4. In the counter statement, the appellants contended that they are in the business since the year 1969 and are using the trade mark ‘MARCONI’ without any interruption or hindrance. Further, the appellant filed a suit in the year 1984 in the Hon’ble High Court of Delhi and they had obtained a decree in their favour declaring that they are the proprietors of the impugned trade mark. It is also stated that the respondents acquiesced to the use of the impugned trade mark by the appellants since they had not taken any action against the appellants, knowing the use of the impugned trade mark by the appellants,
5. The respondents filed evidence by way of an affidavit of Mr. Eric Albert Peachey along with Exhibits ‘A’ series and ‘B’ series. The appellant also filed evidence by way of affidavit of Mr. A.A. Nizami along with the copies of sales invoices Exhibits A.1 to A.11 and Annexure-B. After hearing both the counsels, the impugned order was passed by the Assistant Registrar of Trade Marks allowing the opposition filed by the respondents and rejecting the application of the appellant for registration on the ground that there is no honesty in the adoption of the impugned trade mark by the appellant and the trade mark is identical and similar to the respondent’s trade mark which would naturally cause confusion in the minds of the customers. Further, the Assistant Registrar held that the goods of both the parties also similar. Aggrieved by the said order of the Assistant Registrar, the present appeal was filed by the appellant on the file of the Hon’ble High Court, Delhi. In view of Section 100 of the Trade and Merchandise Marks Act, 1999, the appeal was transferred to the Appellate Board. We heard the appeal.
6. The learned counsel for the appellant contended that the Assistant Registrar erred in finding that the goods are similar and that the appellants adopted the impugned trade mark with dishonest intention by totally overlooking the judgment of the Delhi High Court, which is in their favour declaring that they are the proprietors of the said trade mark. The learned counsel for the appellant further contended that the respondents are not using their trade mark within India and they do not have any reputation or goodwill in India and as such it is not open to them to claim any right under the registration of Trade mark. He further submitted that ‘MARCONI’ is not an invented word, but the name of a scientist and nobody can claim proprietorship to that name.
7. Per contra, the counsel for the respondents contended that the appellants filed an application for the registration of the impugned trade mark as early as 1969 and subsequently the same was withdrawn. After quite some time, the appellant once again filed the application for the registration of the impugned trade mark, perhaps after creating evidence to claim the use of the trade mark. So far as the judgment of the Delhi High Court relied upon by the learned counsel for the appellant is concerned, it is contended that the respondents are not parties to the proceedings and moreover, in a matter of this nature, it is not open to the appellant to rely upon the earlier judgment wherein the respondents are not parties and the judgment is not in rem.
8. He contended that the Registrar, after careful consideration of the materials available on record, found that both the trade marks are similar and it would cause more confusion in the trade.
9. We have carefully considered the above contentions of both the counsel. The undisputed facts are that the appellant applied for the registration of the word trade mark “MARCONI” for the specification of the goods, viz., Record players, ampligrams, radiograms and stereo sound system. The respondent is the registered proprietor of the same trade mark. The appellant filed an application for the registration of the impugned trade mark as early as 1978 and the same was withdrawn. The appellant filed a suit in the Delhi High Court Suit No. 952/1984 against one Nirmal Electronics and the suit was decreed ex-parte on 13.10.1987.
10. The learned counsel for the appellant contended that the goods are not similar and further contended that the appellant honestly used the trade mark since 1969 and further in view of the judgment of the Delhi High Court in the Civil Suit No. 952/1984, the appellants are entitled for the registration and the opposition filed by the respondents has no merits. They also contended that withdrawal of their earlier application is no bar for the disposal of the present appeal since there is no bar in the statute with regard to the withdrawal application and filing of a fresh application at a future date.
11. While dealing with the above contentions, we have to keep in mind that there is no dispute with regard to similarity of both the trade marks, i.e., the registered trade mark of the respondents and the trade mark of the appellant claiming to be in use. The Assistant Registrar of Trade Marks found that the goods of both the parties also are identical. The description of the goods of the respondents were given above. Similarly the description of the goods of the appellant for which the registration of the trade mark is sought for, is also given above. A perusal of the same would establish that there is no doubt that the goods are of the same categories. The nomenclature may differ, but ultimately when the use of the goods are taken into consideration, the purpose relates to the controlling of sound system. We, therefore, concur with the finding of the Assistant Registrar of Trade Marks.
12. The next point for consideration is whether there is any honest adoption on the part of the appellant and the effect that the withdrawal of the earlier application and the judgment of the Delhi High Court decree.
13. The appellant filed an application under No. 342926 on 21st November, 1978, for the same mark in class 9 and had withdrawn the same later. After six years, the appellant once again filed application No. 421055 for the registration of the same
mark claiming the use since, 1969. As contended by the learned counsel for the appellant, there is no bar for withdrawal of the earlier application and filing of a fresh application later. However, the conduct of the party in both the circumstances are relevant to decide the issue. The appellant failed to give any reason for the withdrawal of earlier application filed in the year 1978. When that fact had been to-tally suppressed in the fresh application] naturally, the bona fides of the appellant is doubted. It also throws a doubt with regard to the evidence produced at present, especially in respect of the period 1969 to 1978. It is observed that most of the invoices’ are for the year 1975 and all the sales are made to only one customer i.e., M/s. National Music Emporium Delhi.
14. The registration of the trade mark by the respondents is as early as 1943. Subsequently, they obtained many registrations of the mark in class 9 for other goods also. When the respondents’ trade mark is a registered one, who are also having trade within India, the statement of the appellant that there is no similar trade mark in the trade is totally a false one, especially in the absence of any material to establish that the appellant made a honest effort to verify the use of the same trademark by any other trader. In the absence of such materials, we have to hold that the adoption of an identical registered trade mark cannot be considered to be an honest one. Here again, we concur with the findings of the Assistant Registrar that the appellant’s use of the same trade mark similar to that of the respondent is not bona fide. The appellants have not only dishonestly adopted the trade mark but also the trading style of the respondents.
15. Coming to the question of the judgment of the Delhi High Court in O.S. No. 952/1984, admittedly, the respondent is not a party to the said proceedings. The said suit was decreed ex-parte in favour of the appellant. The judgment is not in rem, because the use of the trade mark by each party has to be considered on the evidence produced by them independently. A decree with regard to the proprietorship of the said trade mark against an individual cannot be binding on others as universal, especially when dispute has to be decided with regard to the evidence of the particular case. .Hence, the claim of the appellant that they are the proprietors of the trade mark on the basis of the decree passed by the High Court. Delhi, cannot be sustained.
16. For all these reasons, the appeal is dismissed. Further, there is no order as to costs.
