ORDER
Z.S. Negi, Vice-Chairman
1. This is an appeal under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) against the order dated 7.2.2007 passed by the Assistant Registrar of Trade Marks, Chennai thereby allowing the application to proceed for registration and disallowing the opposition to the application for registration. The appellant had also along with the appeal filed a Miscellaneous Petition No. 78 of 2007 for stay of registration of mark/label sought by the respondent No. 1 and for early hearing of the appeal.
2. M/s. Prag Ice & Oil Mills (a partnership firm), the predecessor in title of the appellant was using the trade mark GANESH in respect of mustard oil (edible) since 1920. The said predecessor in title of the appellant, obtained registration of trade marks GANESH under No. 120542 dated 30.3.1946 in class 29 in respect of mustard oil (edible) and GANESH BRAND with device of lord Ganeshji (label) under No. 414296 dated 12.12.1983 in class 29 in respect of edible oil and the said registrations are valid and subsisting. Later on, by way of a family settlement in 1993, the said trade marks along with the goodwill of the business, factory and all sales depot, etc. came under the share of Shri A.N. Aggarwal, one of the partners of M/s. Prag Ice & Oil Mills. Shri A.N. Aggarwal floated a public limited company, namely, Prag Oil Mills Ltd. and assigned the aforementioned trade marks on 17.6.1993 in favour of the said company; hence the company (appellant herein) is the subsequent registered proprietor of the aforesaid trade marks.
3. The respondent No. 1 claiming user since 28.7.1989 filed the application No. 548620 dated 9.4.1991 for registration of the trade mark consisting of the word VIGNESH BRAND along with the device of Vignesh with lord Krishna and other features (label) in class 29 in respect of coconut oil (edible) and the said application was advertised in the Trade Marks Journal No. 1103 dated 16.5.1995. Thereupon, the appellant filed notice of opposition on the grounds, inter alia, that the appellant is carrying on the old and established business of manufacturing of, and trading in, of edible oils including mustard oil since 1993 and before 1993 the predecessor in title of the appellant was carrying on the same business by using the mark GANSH since 1920; that the predecessor in title of the appellant was the registered proprietor of the trade marks-GANESH and GANESH BRAND with device of lord Ganeshji (label) in class 29 in respect of edible oils, and since 1993, the appellant is the registered proprietor thereof; that the appellant being the first adopter, originator and registered proprietor of the trade marks has the exclusive right to use thereof in exclusion of others including the respondent No. 1; that the adoption of pictorial device of lord Ganeshji and word VIGNESH BRAND by the respondent No. 1 is with malafide intention and to make illegal profit by trading upon the goodwill and reputation of the appellant’s goods under the label of GANESH BRAND; that by the slavish imitation of appellant’s mark/label, the respondent No. 1 cannot claim to be the proprietor of the impugned mark/label applied for registration and that the impugned label has been applied in respect of identical or allied or cognate goods or goods of same trade description, having same trade channel, therefore, the confusion or deception among customers or trade is inevitable leading to passing off the respondent No. 1’s goods as that of the appellant’s goods.
4. After completion of the procedural formalities, the matter was set down for hearing on 11.2.2005. The respondent No. 2 has passed the impugned order on 7.2.2007 and the appellant aggrieved by the said impugned order has preferred this appeal on the grounds, inter alia, that the impugned order is bad in law in as much as the same has been passed without taking into consideration of the relevant provisions of the Act as a bare perusal of the order reveals that principle of Sections 9, 11(a) and (e), 12 and 18 of the Trade and Merchandise Marks Act, 1958 (in short repealed Act) have been applied while dismissing the opposition which tantamount that the respondent No. 2 has failed to exercise jurisdiction statutorily vested in the tribunal and this shows gross reluctance in passing the impugned order; that the impugned order has been passed in contravention of the statutory obligation cast under the provisions of Sub-section (3) of Section 159 of the Act and as such the impugned order is liable to be set aside on this ground alone; that the respondent No. 2 has wrongly held that the impugned mark/label VIGNESH BRAND is different from the registered mark/label with device of lord Ganeshji of the appellant as the word VIGNESH is synonymous name of lord GANESH and besides pictorial device of lord Ganeshji in the competing labels, the labels VIGNESH BRAND and GANESH BRAND are structurally, visually and phonetically similar and the respondent No. 1’s coconut oil(edible) is similar/allied/cognate to the appellant’s edible oils including mustard oil having same trade channel and same purpose of use and that the respondent No. 2 has wrongly waived the objection under Section 9 of the repealed Act, without taking the provisions of Section 9(1)(a) of the Act into account.
5. The miscellaneous petition was heard by the Appellate Board on 1.11.2007 wherein, with the direction for listing the appeal for hearing on 17.12.2007, the following order was passed:
Ld. Registrar is permitted to proceed with all other formalities excepting the issue of certificate for registration until further orders or till disposal of the appeal. M P No. 78 of 2007 in OA/30/2007/TM/CH is accordingly ordered in terms of above.
Accordingly, the appeal came up before us for hearing on 17.12.2007 when Shri. A.K. Goel, Advocate appeared for the appellant and Shri Rajesh Ramanathan, Advocate appeared for the respondent No. 1. At the outset, the learned Counsel for the respondent No. 1 submitted that the appeal cannot be argued on merits as the respondent No. 2 has not passed her order on the basis of the provisions of the Act. He submitted that though the application for registration and opposition thereto were filed under the provisions of the repealed Act, the provisions of the repealing Act (Act) came into force on the 15th day of September, 2003 and Sub-section (3) of Section 159 of that Act mandates that the provisions of the repealing Act (Act) shall apply to any application for registration of trade mark pending at the commencement of the repealing Act (Act) and to any proceedings consequent thereon and to any registration granted in pursuance thereof. Learned Counsel further submitted that the matter may be remitted to the Registrar of Trade Marks for deciding the matter in accordance with the provisions of the Act. Learned Counsel for the appellant has expressed his agreement with the submission made by the counsel for the other side.
6. After having heard both counsel and after perusal of the impugned order dated 7.2.2007, we are in agreement with the submission made by learned Counsel for the parties that the matter is required to be remanded to the Registrar of Trade Marks. It is abundantly clear form the impugned order that the provisions of the Act have not been taken into consideration by the respondent No. 2 and as such the impugned order passed by the respondent No. 2 in violation of the legislative intent of the Act. We are refraining ourselves from making any observations on the merits of the impugned order and the appeal lest our observation may influence the tribunal in deciding the matter. The only unpleasant observation we are constrained to make is about the delay in passing of the impugned order as the respondent No. 2 had heard the matter on 11.2.2005 and order was passed about two years thereafter, that too without recording any reason for passing such a delayed order. We expect that this time the tribunal will expeditiously dispose of this matter.
7. Accordingly, we set aside the impugned order date 7.2.2007 passed by the respondent No. 2 and direct the Registrar of Trade Marks to decide the matter afresh in accordance with law. Since the impugned order is set aside the stay order dated 1.11.2007 ceases. Let a copy of this order be forwarded to the Registrar of Trade Marks for compliance. There shall be no order as to costs.