JUDGMENT
S. Jagadeesan, Chairman
1. Since the issues involved in both the appeals are common and the parties in both the appeals are also being the same, with the consent of the counsel for Sri Murugan Paints and Shri Krishna moorthy – party in person for M/s. Rockfort Paints and Chemicals, the appeals are taken up for joint disposal.
2. Rockfort Paints and Chemicals, having their business at the Industrial Estate, Mathur, Pudukotti District, the appellant in T.A. No. 8/2003, filed an application under No. 387862 on 20.3.1982, for registration of the word “Rockfort” along with device of fort in respect of paints, primer and varnish covered under class 2 of the Trade and Merchandise Act, 1958 (hereinafter referred to as the Act). The said mark was ordered to be advertised as accepted and the same was accordingly advertised in the Trade Marks Journal in No. 1052 dated 1.4.1993. Sri Murugan Paints Corporation, the first respondent in T.A. No. 8/2003, filed notice of opposition No. MAS 2863 on 17.5.1993, objecting to the registration of the appellant’s mark “Rockfort” contending that neither the appellant nor their predecessor in title have continuously and extensively used the said mark ever since 5.2.1980. The first respondent acquired reputation and valuable goodwill to their trade mark “Rockfort” by reason of continuous and extensive use. The first respondent also objected for the registration of the appellant’s trade mark on the ground that the same is identical with that of their trade mark and the goods are also of the same description. It is also objected on the ground that if the descriptive impugned trade mark is allowed to be used, it will result in confusion and deception in the course of the trade and as such, the registration of the appellant’s trade mark is prohibited by Section 11 (a) and Section 11 (e) of the said Act.
3. On 27.1.1990, Rockfort Paints and Chemicals, filed their counter statement generally denying the averments in the notice of opposition No. MAS 2863, filed by Sri Murugan Paints Company. Rockfort Paints and Chemicals further pleaded that they honestly adopted the mark “Rockfort” for their chemicals, paints and varnish in the year 1978 and they have been using the said trade mark continuously and extensively in respect of their goods.
4. The evidence was filed by both the parties before the Registrar of Trade Marks. The Assistant Registrar of Trade Marks, by his order dated 31.5.1996, allowed the opposition No. 2863, filed by Sri Murugan Paints Corporation and rejected the application No. 387862, of Rockfort Paints and Chemicals.
5. Aggrieved by the same, the said Rockfort Paints and Chemicals filed Appeal No. TMA/2/1997, on the file of the High Court of Judicature at Madras. The said appeal was transferred to this Appellate Board pursuant to Section 100 of the Trade Marks Act, 1999 and numbered as TA/8/2003.
6. Similarly, Sri Murugan Paints Corporation, filed separate application in No. 364655 on 6.8.1980, for registration of the trade mark “Rockfort”. The said application was accepted and advertised in the Trade Marks Journal No. 829, dated 16.2.1983. Rockfort Paints and Chemicals filed a notice of opposition No. MAS 1735 on 13.3.1984, stating that they are the proprietors of the trade mark “Rockfort” and have already applied for registration. Further, they opposed the registration of the mark stating that the mark sought to be registered by Sri Murugan Paints Corporation is prohibited under the provisions of Sections 11, 11(a), 11(b), 11(e) and 9 of the Trade and Merchandise Act, 1958. The said application No. 364655 of Sri Murugan Paints Corporation was dealt with by the Deputy Registrar of Trade Marks, who, by his order dated 14.12.1991, allowed the opposition No. MAS 1735, filed by Rockfort Paints and Chemicals and rejected the application. No. 364655 filed by Sri Murugan Paints Corporation for registration of the mark “Rockfort”.
7. Aggrieved by the same, the said Sri Murugan Paints Corporation filed Appeal No. TMA No. 3/1993, on the file of the High Court of Judicature at Madras. The said appeal was transferred to this Appellate Board pursuant to Section 100 of the Trade Marks Act, 1999 and numbered as TA. 2/2003.
8. For the convenience sake, the rank of the parties are referred to as shown in T.A. No. 8/2003/TM/CH.
9. Shri R. Krishnamurthy of M/s. Rockfort Paints Chemicals, the appellant appeared in person and contended that the first respondent firm Sri Murugan Paints Corporation, claimed to be a registered firm under the Partnership Act having three partners Smt. K. Kasturi, Shri Selvarajan and Shri V. Natarajan and produced the certificate which is at page 337 of the type set filed by the appellant. At page 431, there is an endorsement that there is nothing to show that the first respondent firm was registered as on 1990. He also advanced his argument with regard to the validity of the assignment made by the three partners of Sri Murugan Paints Company in favour of Sri Murugan Paints Corporation, having different partners S/Shri Selvarajan, Natarajan and Balasubramanian. The appellant also contended that though the Deed of Assignment refers to the three partners S/Shri Selvarajan, Natarajan and Smt. K. Kasturi of Sri Murugan Paints Corporation, the said deed was signed only by S/Shri Selvarajan and Natarajan. He also contended that Annexure-1, which is at pages 3 to 31 in the type set refers to the letters addressed to the appellant M/s. Rockfort Paints and also about the rates for supply of different paints and primes from 1978. An-nexurc-B are the bills available at pages 53, 55 and 57 of the type set which would go to establish the appellant’s trade since 1979 and thereby their use of the impugned, trade mark. The appellant also placed reliance on some of the letters. He further contended that the first respondent did not produce any evidence to establish their plea that they were in trade by using the disputed trade mark since 1978 and as such, the earlier user as claimed by them cannot be accepted. The Registrar of Trade Marks has totally overlooked the materials produced by the appellant before him and as such the impugned order is not sustainable.
10. The learned counsel for the first respondent contended that the District Judge, Pudukkottai, in application I.A. No. 2/1994 in O.S. No. 1/1994, found that the appellant had fabricated the documents and since that finding was not challenged by way of appeal, the same has become final and consequently, the evidence produced by the appellant cannot be relied upon for any purpose. On this plea, the appellant’ much argued on the validity of the assignment made by Sri Murugan Paints Company in favour of Sri Murugan Paints Corporation and also with regard to the discrepancy in the description of the designation of the partners of the first respondent firm. The Registrar, under the impugned proceedings, has categorically found that the appellant has failed to establish the claim, of prior user and consequently rejected the application for registration. He also contended that the contentions of the first respondent in respect of the validity of the assignment of the trade mark, etc., are of no relevance because it is a matter of one between assignee and the assignor. There is no public interest involved in the same. Consequently, the appeal is liable to be dismissed.
11. Shri Krishnamoorthy, the appellant, contended that the finding given by the District Judge, Pudukkotti, in an Interlocutory Application cannot be relied upon as final. When the Registrar of Trade Marks is a statutory authority to decide the question of registration of the trade mark under the Trade and Merchandise Marks Act, 1958, he has to independently consider the materials placed before him and give a finding with regard to the respective claims of the parties in respect of the prior user,
12. Both the appellant as well as the learned counsel for the first respondent conceded that the finding arrived at by this Board in T.A. No. 8/2003, automatically covers the issue involved in T.A. No. 2/2003 and as such, basing upon the result of T.A. No. 8/2003, the other Appeal T.A. No. 2/2003 can be disposed of. Hence, we take up T.A. 8/2003 for consideration.
13. There is absolutely no dispute that the trade mark “Rockfort” used by both the parties are the same and identical and also in relation to the same kind of goods, i.e., paints, etc. When that be so, there cannot be any divergent opinion that the use of the disputed mark would cause confusion as well as deception among the traders as well as public. Hence, it is for us to consider the claim of both the parties regarding prior user and decide the same. In order to decide this issue, it is necessary to refer to the documents in detail.
14. The question of burden of proof has no relevance in this case since both the appellant as well as the first respondent in T.A. 8/2003 filed their applications to register their trade mark “Rockfort” in their names. By virtue of the said applications, one has become the opponent in the other application and as such the burden of proof lies on both the parties equally. When that be so, we have to consider the evidence produced by both the parties as to the prior user and decide the issue.
15. The documents relied upon by the appellant can be divided into five sets of documents. The first set of documents are the SSI Certificate and the renewal thereon in the succeeding years. The second set of documents relate to the enquiries made by the appellant for the supply of raw materials and the replies received from various chemical companies offering their quotations. The third set of documents are the cash bills issued by the appellant. Apart from the above documents, reliance was also placed by the appellant on the allotment of site by the Tamil Nadu Small Industries Development Corporation as well as the letters received from the distributors prescribing their terms and conditions for distribution of the appellant’s products. The last set of documents are the printers’ bills for printing the cash bill books. We gave our anxious consideration to the documents produced by the appellant. In our view, the first two set of documents and also the other documents such as the allotment of site, printers’ bills and the correspondence for the distribution of the appellant’s products do not have any relevance in respect of the use of disputed trade mark Rockfort. By merely having the name Rockfort Paints and Chemicals and in the absence of any other document to establish the use of the said trade mark Rockfort on any product, we are unable to conclude that the appellant has been using the said trade mark since 1978 or 1979. Many of the documents of the appellant are of the year 1979.
16. Coming to the third category of documents, i.e. the cash bills issued by the appellant available at page 39 of their typed set, which is dated 5th July, 1979, the cash bill contains the name of the appellant and also the address. The bill had been issued in favour of a purchaser at Erode. The goods sold under the said bill is Rockfort brand aluminium paint – 3 litres. In the other bills which are available at pages 41 to 51 of the appellant’s typed set, there is no mention of the appellant’s name. In a white sheet of paper, only the name of the purchaser and the nature of goods had been mentioned. However, the appellant forcefully relied upon the seal of the Commercial Tax authorities at page 51 of their typed set to claim the genuineness of the bills and contended that even though the name of the appellant do not find a place, the bills have been issued in the regular course of business of the appellant and as such, they establish the appellant’s use of the disputed trade mark since 1979. So far as these documents are concerned, we have our own doubts. Normally, the cash bills or even the invoices should contain the name of the dealer. If the manufacturer himself deals with the product directly, then the bills must contain the name of the manufacturer himself. In the absence of the name of the dealer or manufacturer in any of these documents, the seal of the tax officials at page 51 of the type set of documents is of no use to support the claim of the appellant. Even assuming that these documents are carbon copies of the original bill, still they refer only to the year 1979. The application for registration of the Trade Mark was filed in 1982 and there is no material for the continuous use of the said Trade Mark by the appellant as on the date of application for registration. On an overall consideration of these documents, we are of the view that they do not lend any support to the appellant’s claim of earlier user. The solitary document, i.e., the cash bill which is available at page 39 of the type set alone, in our view, may not be a sufficient material to establish the claim of the appellant that they have been using the disputed trade mark since 1978 or much less 1979.
17. Coming to the documents produced by the first respondent in T.A. 8/2003, they have produced the cash bills which are available at pages 89 to 113 of the typed set filed by appellant. They have also produced the Printer’s bill available at page 115 of the same typed set, for printing the paint tin label Rockfort brand. Two other documents relied upon by the first respondent are the bills for the cost of 69 bundles of Rockfort Paints – 4 litre printed round tins in the size of 179 mm dia X 204 mm ht. and the cost of 113 boxes of Rockfort paints 1 litre round printed tins in the size of 109 mm dia. X 132 mm hi. 94 boxes containing 3384 tins and 19 boxes containing 855 tins. These documents are of the year 1984 available at pages 117 and 119 of the same typed set. So far as the bills of the first respondent which are available at pages 89 to 101, these arc in respect of the period from September to October, 1980, there is absolutely no dispute. In all these bills, the first respondent has referred to the goods trade mark Rockfort. So far as the bills available from pages 103 to 113, the appellant contended that the said invoices were concocted one for the purpose of creating evidence for the use of the trade mark. The invoices at pages 103, 105 and 109 do not contain the name of the purchaser and in the bill at page 113, there is some correction with regard to the name of the purchaser and as such the same cannot be relied upon. We are unable to concur with the contention of the appellant. So far as the document available at page 113 of the typed set, it is a dealer’s bill. The goods sold is Rockfort brand varnish tin. Of course, there is some correction with regard to the name of the purchaser. That has nothing to do with the trade mark because the name of the brand was not manipulated. So far as the other documents which do not contain the names of the purchaser, the invoices referring to the bill number, and hence perhaps the particulars might have been mentioned in the bills. Giving the overall consideration with regard to the available materials, we are of the view that the first respondent had established prior user of the trade mark Rockfort with substantial evidence. Consequently, we hold that the first respondent in T.A. 8/2003 has proved his case of user and is entitled for the registration of the trade mark Rockfort in their favour.
18. The appellant in T.A. 8/2003/TM/CH has pointed out some discrepancies with regard to the partnership concerned and also relied upon the endorsement at page 431 and disputed the existence of the predecessor of the first respondent. When he wants to rely upon the endorsement claiming to have been made by the official, we also perused page 431 of the typed set. There is no seal of any officer concerned below the endorsement. Only an initial is there. Unless the concerned person is examined, it cannot be taken conclusively that the endorsement found at page 431 to the effect that there is no record to show that the first respondent was registered in the year 1990 as genuine one. The first respondent has produced a certified copy of the Certificate of Registration before the Commercial Tax Officer. However, the appellant stressed the discrepancy of Sri Murugan Paint Company and Sri Murugan Paint Corporation and tried to make some gain out of it. We are of the view that these discrepancies have nothing to do with the use of the impugned trade mark by the partners of Sri Murugan Paint Corporation. Hence, we do not propose to make an elaborate discussion on this issue.
19. For the reasons stated above, T.A. 8/2003/TM/CH is dismissed and T.A. 2/2003/TM/CH is allowed. However, there shall be no order as to costs. Consequently, we direct the Registrar of Trade Marks to proceed with the registration of the trade mark ‘Rockfort’ of Sri Murugan Paints Corporation in Application No. 364655 dated 6.8.1980 and opposition of Rockfort Paints and Chemicals in MAS 1735 dated 13.3.1984 is rejected.