Delhi High Court
Maekawa Bearing Manufacturing Co. Ltd. vs Onkar Bearing Industries And Ors. on 19 November, 1997
Equivalent citations: 1997VIAD(DELHI)939, 69(1997)DLT940
Author: N.G. Nandi
Bench: N.G. Nandi
JUDGMENT N.G. Nandi, J.
(1) This appeal under Section 109(2) of the Trade & Merchandise Act (hereinafter referred to as "the Act") is directed against the order under Section 21 of the Act dated 1.6.1995, rejecting the opposition to the registration of the trade (2) The facts leading to the filing of the present appeal, shortly stated, are that Omkar Bearing Industries and others applied for registration of Trade Mark "MBS" in respect of bearings included in class 7 vide Application No. 428265. The present appellant Maekawa Bearing Manufacturing Company Limited opposed the registration sought and filed notice of opposition vide No. DEL-7680 contending that they are the registered proprietors in India of the trade mark "MBS" in respect of bearings of all kinds in Classes 7 and 12. The Deputy Registrar of Trade Marksdis allowed the opposition No. DEL-7680 and allowed the registration of the mark vide Application No. 428265 in Class 7, further directing the opponents to pay cost of Rs. 105.00 to the applicants. It is this order, which is sought to be challenged by the appellant/original opponents in this appeal.
(3) It is contended by Mr. Chawla, learned Counsel for the appellant that the unsigned vouchers be left out but the other vouchers and the affidavit ought to have been considered for the purpose of deciding the opposition; that the appellant is a registered proprietor of trade mark "MBS" since 1985 and the application for the same was filed on 11.4.1978; that the respondent applied for the registration of the mark "MBS" on 10.4.1984; that how does the respondent get mark "MBS"; whether the adoption of the mark "MBS" can be said to be honest concurrent user. As against this it is submitted by Mr. Bhalerao, learned Counsel for the respondent that the respondent has been using the mark "MBS" since 1970 i.e. for over more than 25years. Relying on Sections 12(3) and 33 of the Act, it is contended that the user of the mark "MBS" by the respondent is an honest concurrent and that there is no reason to interfere with the exercise of discretion by respondent No-2. In this regard,reliance is placed on the decision .
(4) Section 12 of the Act contains a prohibition of registration of identical or deceptively similar trade marks. Sub-section (3) thereof provides that "in case of honest concurrent use or for other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other(whether any such trade mark is already registered or not) in respect of the same goods or description of goods subject to such conditions and limitations, if any, as the Registrar may think fit to impose".Thus, it will be seen from the above reproduced Sub-section (3) of Section 12 of the Act that in case of honest concurrent use, if in the opinion of the Registrar, if IT is found proper so to do, he may permit the registration by more than one proprietors of trade marks which are identical or nearly resemble each other in respective of the fact whether any such trade mark is already registered or not, inrespect of the same goods or description of goods on conditions and limitations, IF any, thought fit to be imposed by the Registrar. Thus, it is the discretion with the Registrar to permit the registration by more than one proprietor of the trade marks,which are identical or nearly resemble each other irrespective of previous registration of such mark.
(5) It is found on evidence that the applicants have been using the trade mark "MBS"in respect of manufacturing and selling bearings of all descriptions since1.4.1970 and that there has been no complaint from the public in relation to the goods under the rival marks even after the user of the mark by the applicants for over 25 years. In the case of Gopal Hossiery v. The Deputy Registrar of Trade Marks and Others , relying on the decision , it has been held that "where an application for registration of trademark was made by the applicant, and the trade mark was though identical with an already registered trade mark by another proprietor, the claim for registration based on honest concurrent user without any interference by the opponent for a period of 13 years, the discretion exercised by Registrar under Section 12(3) in permitting registration of trade mark applied for was not open to challenge when the opponent who objected to the registration of trade mark had in fact taken steps in the past against other traders who tried to copy his trade mark, had not taken any steps against the applicant in the period of 13 years".
Section 33 of the Act provides that "nothing in this Act shall entitle the proprietor or a registered user of a registered trademark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior - (A)to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or(b) to the date of registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title ofhis;whichever is the earlier, and the Registrar shall not refuse (on such use beingproved) to register the second mentioned trade mark by reason only of the registration of the first-mentioned trade mark."
Even independent of the contention of the appellant/opponent that the Appellant has been using the mark "MBS" prior to April, 1978 and that he applied for registration on 11.4.1978 and has been granted registration on 22.4.1985, the discretion exercised by respondent No.2 cannot be regarded in any manner perverse or arbitrary.
(6) It is suggested that respondent No.", has been using the mark "MBS" since over more than 25 years, not suggested at the same time that he was in the know of or aware of the mark used by the appellant. There is nothing to suggest that the user of the trade mark "MBS" by respondent No. 1 was not innocent, honest and bona fide nor it is suggested that the origin or the adoption of the mark "MBS" by respondent No. 1 is tainted and, therefore, respondent No. 2 cannot be said to be not justified in exercising the discretion by permitting the registration of mark sought by respondent No. 1 and, therefore, the exercise of discretion under Section 12(3) of the Act cannot be regarded in any manner perverse or arbitrary while rejecting the opposition to the registration of mark "MBS" sought by respondent No. 1. I do not find any reason calling for the interference in the exercise of discretion under Section12(3) of the Act by respondent No. 2.
(7) In the result, the appeal fails.