Intellectual Property Appellate Board
Binny Limited vs Mahavir Polymers Private Limited And ... on 5 February, 2004
Equivalent citations: 2004(28)PTC449(IPAB)
JUDGMENT
Raghbir Singh, Vice Chairman
1. By this petition, the appellants challenge the order dated 29th June, 2001 of the Assistant Registrar of Trade Marks, Chennai. The appellants/applicants had filed an Appeal (TMA/7/2002) before the Hon'ble High Court of Madras which has been transferred to Intellectual Property Appellate Board (IPAB) in pursuance of Notification No. S.O. 1150 (E) dated 1st October, 2003 under Section 100 of the Trade Marks Apt, 1999.
2. The facts that are relevant and material for deciding this case are that notice of opposition No. MAC-3248 by the first respondents filed on 24th February, 1995 objecting to the registration of the trade mark 'BINNY' under application No. 513891 dated 25th July, 1989 by the above named appellants/applicants in class 25 in respect of hosiery, readymade garments, under garments, wearing apparels, articles of clothing, brassieres, socks and stockings for wear claiming user of the mark therein from the year 1944 was allowed under above referred order dated 29th June, 2001 of the learned Assistant Registrar. The opponents claimed use as manufacturers of all kinds of footwear and marketing the products throughout India under their distinct lable 'BINNY' since 1st February, 1979. They claim that their label 'BINNY' has been registered as a trade mark in respect of foot-wears under No. 384898 dated 2.1.1982 under the provisions of the Trade and Merchandise Marks Act, 1958 and as a copyright under No. A-29194/80 under the Copyright Act, 1957. They also claimed that the impugned trade mark was advertised as accepted with the condition; of association with the applicants' registered trade mark Nos. 241063B dated 15th March, 1967 and 355901B and pending application No. 459347. They further claimed that in rectification proceedings filed by them vide MAS-325 under Sections 46 and 56 of the Act, a rectification has been carried out vide Assistant Registrar's order dated 23rd August, 1993 and the registered trade mark no. 241063B has been removed from the Register and another rectification proceedings filed by them under MAS-362 for non use against the appellants' subsequent registered trade No. 355901B under Sections 46 and 56 of the Act, is still pending.
3. Appellants/applicants had vide application dated 15th April, 2002 prayed the Hon'ble High Court of Madras to condone delay of 188 days in filing appeal before that Hon'ble High Court which was allowed. Respondents No. 1 vide their letter dated 26th December, 2003 sent to this Board has requested to dismiss the petition of condonation and the appeal. However, the Hon'ble High Court has allowed condonation of delay and so we took up for consideration the appeal against the Assistant Registrar's order dated 29th June, 2001 at the hearing before the Intellectual Property Appellate Board (IPAB) on 30th December, 2003. Shri A.A. Mohan, Advocate appeared for the appellant but none appeared for the respondent.
4. The learned counsel for the appellants Mr. A.A. Mohan has brought to the notice of this Board that an appeal against the decision of the Assistant Registrar rectifying the register in relation to Trade Mark No. 241063B under Section 46 of the Trade and Merchandise Marks Act, 1958 was decided by the High Court of Madras on 17th July, 1998 wherein the Hon'ble High Court had set aside the orders of the Assistant Registrar. He filed a photo copy of the orders of the Hon'ble High Court. In view of this, the present factual position is that the registration of the trade mark 'BINNY' under No. 241063B in favour of the appellants is still valid and alive on the register of trade marks. Since a new situation has arisen, wherein a new fact of the matter, though existing when the Assistant Registrar passed orders allowing opposition and refusing registration on 29th June, 2001, has been made available now, it shall not be appropriate to ignore the same. The ends of justice can only be met when due note thereof is taken while taking a decision about the registrability or otherwise of the trade mark.
5. The learned Assistant Registrar has examined the notice of opposition under Sections 9, 11(a), 11(b), 11(e) and 18(1) of the Trade and Merchandise Marks Act, 1958. While dealing with the contentions under the various sections of the Act, he has heavily relied upon the rectification order dated 23rd August, 1993 of the Assistant Registrar of Trade Marks, Chennai in matter of registered trade mark No. 241063B regarding non-use of the mark 'BINNY'. This rectification order of the Assistant Registrar has been set aside by the Hon'ble High Court of Madras on 17th July, 1998. In view of this, the appellants are the registered proprietors of the trade mark 'BINNY' under No. 241063 in class 25 in respect of ready-made garments. We would now consider the order of the Assistant Registrar dated 29th June, 2001 under Section 11 (a) of the Act. The Assistant Registrar has considered the evidence of user filed by the respondents and has come to the conclusion that they have been using the mark since 1st February, 1979. He has held that the appellants even though they have claimed user from the year 1944 had not adduced any evidence regarding the same. The goods of the appellants are hosiery, ready-made garments, under garments, wearing apparels articles of clothing, brassieres, etc. for wear; whereas the goods of the respondents are foot wear. As far as rival marks are concerned, they are identical. We do not agree with the findings of the Assistant Registrar that even though the goods are different in nature, they have some kind of trade connection. On the assumption that they have trade connection, the Assistant Registrar has held that objection under Section 11(a) has been sustained. We do not agree with the above findings. It has already been held in Darnell's application, (1957) RPC 177 at 179 that the boots, shoes and slippers on the one hand and stockings and socks on the other hand are goods of different description in view of the fact that they are made in different factories by different processes from different sorts of materials. The nature of the goods are also different. However, both are articles of attire underworn in close association by the user. Stocking and socks are sold in the same shops as boots and shoes. But boots and shoes are not sold in hosiery shops. As the goods of the appellant and that of the respondents are goods of different description, there cannot be any deception or confusion in the minds of the public while purchasing the goods. In this case, it is also pointed out that the appellants had opposed the registration of the respondents' trade mark application No. 384898 in class 25 for registering the trade mark 'BINNY' in respect of foot wear under No. AMD-79. While deciding the above opposition filed by the appellants, the Assistant Registrar by his order dated 22nd November, 1991 had refused the opposition on the ground that the goods are different and the respondents' application then proceeded to registration. Now the respondents cannot come up with a different contention that the goods are of the same description. Hence, the objection of the respondents in this case under Section 11 (a) is not sustained in view of our findings that the goods are of different description.
6. As regards Section 18(1) of the Act, the Assistant Registrar has held that the respondents are the registered proprietors of the trade mark under No. 384898 as they are the proprietors of the trade mark 'BINNY'. It is seen from the records that the appellants have first registered the trade mark 'BINNY' in class 25 for ready-made garments under No. 241063 dated 15th March 1967 and they have claimed user since the year 1944. The appellants have claimed that they could not file evidence of user from 1944 due to the long closure of the appellants' company. They have also stated that they have adopted the trade mark 'BINNY' from their trading style also. As the appellants are the first adopters and users of the mark 'BINNY' and in view of the fact that they are the registered proprietors of the trade mark under No. 241063 dated 15th March, 1967, which is much earlier to the date of registering of the mark by the respondents under No. 384898 dated 2nd January, 1982 wherein the respondents have claimed user from 1.2.1979 only, we hold that the appellants are the proprietors of the trade mark 'BINNY'.
In view of the above, the appeal is allowed. There is no order for costs.