Bombay High Court
Atul Kumar Manilal Shah, Proprietor, ... vs Nasik Hing Supplying Co., Nasik And Anr. on 11 April, 2002
Equivalent citations: 2002(3)MHLJ568
Author: J.A. Patil
Bench: J.A. Patil
JUDGMENT J.A. Patil, J.
1. The petitioner who is the proprietor of M/s Annapurna Udyog Bhandar, Ahmedabad has filed this petition under Section 109 of the Trade and Merchandise Marks Act, 1958 (for short, "the Act") and challenged the order dated 3-4-2002 passed by respondent No. 2-Assistant Registrar of Trade Marks, Bombay in the matter of Application No. 502658 in class 30 filed by respondent No. 1 and in the matter of opposition No. BOM-9977 filed by the petitioner. The respondent No. 2 dismissed the opposition filed by the petitioner and directed the application filed by the respondent No. 2 to proceed for registration. The relevant facts in brief, are as under :--
2. The petitioner and respondent No. 1 both have been manufacturing and marketing Asafoetida (commonly known as 'hing'). The petitioner has been manufacturing asafoetida since 1970 in the State of Gujarat. The respondent No. 1 has however, been carrying on the same business since prior to the petitioner i.e. 1967. The respondent No. 2 was granted registration No. 273848 for the brand name Annapurna in class 30 by the Trade Mark Registry Bombay for the Nashik District in the State of Maharashtra. The petitioner was granted registration No. 363800 by the Trade Mark Registry Bombay for his product "Annapurna 222" for sale in the State of Gujarat only. Thereafter, the petitioner was granted, another Registration No. 389162 for his product, "Annapurna 111"
for sale in the State of Gujarat only. The petitioner again applied for registration of his product "Annapurna 151" and was granted registration No. 389163 by the Trade Mark Registry Ahmedabad for sale of asafoetida all over India except Nasik District. It appears that respondent No. 1 also applied for registration of its' trade mark for enlarging the territorial limitations. The said application was made before the Trade Mark Registry Bombay.
3. It appears that respondent No. 1 put certain advertisements in the newspapers in Gujarat seeking distributionship for the sale of his product. The petitioner, therefore, filed suit No. 5115/1993 in the City Civil Court at Ahmedabad inter alia praying for an order restraining the respondent No. 1 from using the Trade Mark Annapurna in the State of Gujarat. In that suit, ad-interim injunction was granted in favour of the petitioner on 6-11-1993 and respondent No. 1 was restrained from using the said Trade Mark in the State of Gujarat. On 11-2-1994, the ad-interim order of injunction came to be confirmed and respondent No. 1 was restrained from selling, offering for sale or advertising or reproducing or manufacturing asafoetida, a compound asafoetida bearing the label Annapurna containing the word Annapurna and/or a device of goddess Annapurna deceptively similar to the petitioner Trade Mark "Annapurna". Thereafter, respondent No. 1 appears to have taken out a Notice of Motion for vacating the interim injunction granted against it and that Notice of Motion came to be allowed on 28-9-2001 whereby the interim injunction granted in favour of the petitioner and against the respondent No. 1 came to be vacated. The petitioner thereafter, filed an appeal in the Gujarat High Court against the order of vacating the interim injunction but, the Learned Single Judge of that High Court by his order dated 6-12-2001 dismissed the appeal. Both the learned Counsel informed me that Suit No. 5115/1993 filed in the City Civil Court, Ahmedabad is still pending.
4. As already stated, respondent No. 1 applied for registration of enlarging the territorial limitations to the Trade Mark Registry Bombay and it's Trade Mark was advertised in the Trade Mark Journal on 8-4-1994. Thereafter, the petitioner filed a notice of opposition being No. BOM-9977 for opposing the Registration in favour of the respondent No. 1. The Assistant Registrar (respondent No. 2) after allowing both the parties to lead evidence and hearing them, passed the impugned order on 3-4-2002, whereby he dismissed the petitioner's opposition and allowed the application of respondent No. 1 for registration of the Trade Mark Annapurna in Class 30 for the entire territory of India. It is this order which is challenged by the petitioner in this petitioner.
5. I have heard Shri Bookwalla, the learned Counsel for the petitioner and Shri B. F. Shah, learned counsel for the respondent No. 1. Shri Bookwalla submitted that the impugned order is factually incorrect insofar as it states that the petitioner sales are restricted to the city of Ahmedabad only. Referring to various advertisements appearing in Gujarati Newspapers published from other places such as Baroda, Jamnagar, Navsari, Surat, Bhavnagar, Rajkot, Shri Bookwalla submitted before me that the petitioner sells asafoetida also all over Gujarat. Shri Bookwalla further submitted that as a matter of fact, business of respondent No. 1 has been very small and that there is no evidence in the form of bills or invoices showing sale of asafoetida during the period from 1982 to 1986 and from 1992 to 1998. Shri Bookwalla further contended that the respondent No. 1 failed to prove the concurrent use of the said Trade Mark so also it also failed to prove prior use of the said Trade Mark. According to Shri Bookwaila, both the Trade Marks are identical and the goods are also the same. Therefore, confusion is bound to be caused in the minds of unwary buyers. Hence, according to him, the provisions of Section 11(e) of the Act becomes applicable to the present case and the Assistant Registrar, should not have allowed the application filed by the respondent No. 1. Lastly, Shri Bookwalla submitted that while allowing the application of respondent No. 1, the Assistant Registrar should have at least put some territorial restriction by excluding the State of Gujarat. Shri Shah on the other hand fully supported the impugned order and laid emphasis on the fact that respondent No. 1 is the prior user as well as prior registered proprietor in respect of the Trade Mark Annapurna. Mr. Shah further submitted that the present case squarely falls within the ambit of Section 33 of the Act and that the provisions of Sections 11, 12(12) and Section 18 are not applicable. He further submitted that once it is shown that respondent No. 1 is the user of the Trade Mark prior in point of time, then the fact that petitioner has voluminous business in the same goods become irrelevant. He further submitted that it is also not necessary for respondent No. 1 to establish that it has sales all over India.
6. It is material to note that this is a case where both the parties had already obtained registration of identical or similar trade mark "Annapurna" in respect of the same goods i.e., Asafoetida. As already pointed out, the petitioner has obtained three registrations viz. Registration No. 363800 for the production of "Annapurna 222" Registration No. 389162 for the product "Annapurna 111" and Registration No. 389163 for the product "Annapurna 151". The former two are only for the sale in the State of Gujarat whereas the third is for the entire territory of India excluding the Nasik District in the State of Maharashtra. By the impugned order, the respondent has been granted registration No. 502658 in respect of the identical Trade Mark for the same goods and it is for the entire territory of India. It is therefore, obvious that outside the District of Nashik, asafoetida is being sold or will be sold under a similar or identical Trade Mark with the result that there is bound to be some confusion in the mind of unwary buyers. The product of the petitioner is likely to be mistaken as that of the product of respondent No. 1 and vice versa. Therefore, the question which arises is whether the respondent No. 1 could have been legally granted registration of the same Trade Mark for being operated in the entire territory of India including the State of Gujarat.
7. It appears that before the Assistant Registrar objections were raised by the petitioner under Sections 11(a), 11(e), 12(1), 12(3) and 18(1) of the Act. But all these objections were overruled by the Assistant Registrar who held that there is no dishonesty on the part of respondent No. 1 in seeking registration of the same Trade Mark for the territories of the entire India other than the district of Nasik in the State of Maharashtra for which it had already been registered. He further held that the earlier registration of the State of Maharashtra in the name of respondent No. 1 constitutes a special circumstance in it's favour.
8. Section 11 of the Act prohibits registration of certain marks. For our purpose, Sub-clause (a) and (e) are relevant and they read as under:--"A" Mark"
(a) the use of which would be likely to deceive or cause confusion or (b) ..... (c) ..... (d) ..... (e) which would otherwise be disentitled to protection in a Court, shall not be registered as a "Trade Mark".
The Deception or confusion contemplated by Clause (a) on account of the use of a Trade Mark sought to be registered may be on account of existence of an identical or deceptively similar Trade Mark already existing. However, the preexisting Trade Mark may not have been registered though it might be in use. Section 12 and Section 12(1) is more specific and it prohibits registration of identical or deceptively similar Trade Marks. The term "deceptively similar" is defined in Section 2(a) as a mark shall be deemed to be deceived similar to any mark of it so nearly resembles other mark as to be likely to deceive or cause confusion". Section 12(1) reads as under:--
"Save as provided in Sub-section (3), no Trade Mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a Trade Mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods."
9. In other words, what Section 12(1) aims to prohibit is registration of identical or deceptively similar mark to the Trade Mark which is already registered in the name of a different proprietor in respect of the same goods. In the case of hand, the petitioner as well as respondent No. 2 both have obtained registration of the identical Trade Mark in respect of the same goods i.e. Asafoetida. However, prior to the passing of the impugned order, the areas of operation of the Trade Marks of both the parties were different. So far as respondent No. 1 is concerned, it's Trade Mark was in operation or limited only to the area of Nashik District whereas the petitioner is concerned, his Trade Mark for the product of "Annapurna 151" is operative for the entire territory of India excluding the Nasik District. The result of the impugned order is that respondent No. 1 is allowed to sell its goods under the identical Trade Mark for the entire territory of India in which the petitioner has already been selling some goods under the identical mark excluding the area of Nashik District. Thus, there is parallel operation of two identical Trade Marks for the same goods throughout the territory of India excluding the area of Nashik District.
10. Sub-section (3) of Section 12 is an exception to the General Rule stated in Sub-section (1) of Section 12 of the Act and reads as under :--
"In case of honest concurrent use or of 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."
11. It is true that the petitioner has obtained Registration No. 389163 for his product Annapurna 151 for the entire territory of India excluding the area of Nashik District on 23-5-1995. However, it cannot be ignored that respondent No. 1 has been using the Trade Mark since 1967 for the same product and has also obtained Registration No. 273848 for the same Trade Mark in Class 30 for Nashik District. It is not that respondent No. 1 has started manufacturing and marketing" Asafoetida after the petitioner obtained registration of the Trade Mark "Annapurna" is prior in point of time. So also the use and registration of the trade mark Annapurna by respondent No. 1 is obviously prior in point of time than the petitioner who obtained registration No. 363800 for "Annapurna 222" and registration 389162 for the product Annapurna 111 in 1980 and 1982 respectively. The Registration of the Trade Mark in respect of the product "Annapurna 151 by the petitioner is dated 23-5-1995. It will thus be seen that this is a case of honest and concurrent use where respondent No. 1 has been carrying business of selling and marketing asafoetida under the identical Trade Mark. The special circumstance in favour of respondent No. 1 is the fact of it's having obtained registration No. 273848 on 28-4-1971 though it is limited for the area of Nashik District. The aforesaid discussion will make it clear that the present case does not fall under Section 11 but it falls under Section 12(3) of the Act.
12. Shri Shah, the Learned Counsel for respondent No. 1 submitted that the present case is squarely covered by Section 33 which makes provision for saving vested rights. Section 33 reads as under :--
"Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark 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 of a predecessor in title of his;
which is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second-mentioned trade mark by reason only of the registration of the first-mentioned trade mark.
13. It will thus be seen that Section 33 puts limitation or restriction on the right of a registered proprietor or registered user of Trade Mark. It contemplates two persons. The first is the registered proprietor or registered user of a Trade Mark and the second is a person who may be called as an unregistered proprietor or user. In substance, Section 33 states that the registered proprietor of a Trade Mark cannot restrain as unregistered proprietor from using identical or nearly resembling the registered Trade Mark if the use of the Trade Mark by the unregistered proprietor is being made continuously since prior to the use of registered trade mark or registration of the trade mark by the registered proprietor. Section 33 enjoins the Registrar not to refuse registration of the unregistered Trade Mark which is identical with or nearly resembling with registered trade mark on the ground of the existence of the registration of the first trade mark. Thus, the Section seeks to protect the vested right which an unregistered proprietor of an identical or nearly resembling trade mark has acquired on account of the prior and continuous use thereof.
14. Shri Bookwalla relied upon certain decisions to which reference will have to be made. The first is London Rubber Co. Ltd. v. Durex Products, 2 SCA 211. It is the case under the Trade Marks Act 1940 wherein the respondents had made an application in 1946 for registering mark "Durex" used by it on the packing of the contraceptive manufacturing and marketed by it. The registration was disputed by the appellant on the ground that it has been using the same trade Mark "Durex" in India since 1932 and it's registration was renewed in 1954 for a period of 15 years. The Dy. Registrar of Trade Marks overruled the objection and admitted the mark "Durex" to registration as sought by the respondent. The appellants filed an appeal before the High Court which came to be dismissed. Thereafter, they filed an appeal in the Supreme Court contending that as both the marks were identical, the registration ought to have refused under Section 8A of the Trade Marks Act. It was also contended that the requirements of Section 10(2) of the said Act were not satisfied. It may be pointed out that Section 8A and Section 10(2) of the Trade Marks Act, 1940 are identical to Section 11(A) and Section 12 of the Act. I do not think that this decision is of any help to the petitioner. Because what was ultimately held was allowing the respondent to have registration for the same mark. It is material to note that in the said case, the goods for which the respondents had sought registration was different. The Supreme Court observed "In our opinion, there is hardly any likelihood of confusion of deception because the respondent's goods are confined to contraceptives for use by women which can only be used with medical assistance while the appellants contraceptives are essentially for men."
15. The second case relied upon by Mr. Bookwalla is the case of "BULER" Trade Mark 1975 RBC 275. It is the case decided by the High Court of justice, Chancery Division wherein the facts were that an application was made for registration of a devise mark containing the word "BULER" for certain items in class 14 under Section 12(2) of the Trade Marks Act, 1938. The application was opposed by the proprietor of a mark "BULOVA" which was already registered in respect of all goods in class 40. The applicants claimed to have used their mark continuously and substantially in connection with watches and parts of watches since May, 1954. The evidence on record establishes that the applicants retails sales were over three times and the number of watches sold over was 17 times respectively than those of the opponents. The applicants watches were cheaper than the watches of the opponents. The opponents alleged many instances of actual confusion but there was no direct evidence of confusion from the public. The honesty of the applicants user of the mark of "BULER" was not attacked by the opponents. The Assistant Registrar however, refused to register the mark "BULER" as sought by the applicants on the ground that there was some risk of confusion and that the evidence about the applicants user prior to 1962 was not clear. He also held that 3 1/2 years user by the applicant before the application was not considerable in length and turnover. The Assistant Registrar, therefore, refused to exercise his discretion in favour of the applicant. The appeal filed by the applicant was however, allowed and it was held that the risk of confusion of the two marks was slight. It was further held that once the honesty of the applicant is established and it is otherwise just in all circumstances, it is an additional circumstance that the mark should be registered, the degree of confusion and even the instances of actual confusion are relatively unimportant. In considering the extent of concurrent use, the Court held that the length of user and relative safes figure of the parties were relevant but primary concern being relevant position of the parties in United Kingdom. It was held that since the applicants user was many times greater than that of the opponents, they were entitled to registration even by the standard of some previous case. The previous user of 3 1/2 years was comparatively short.
16. The purpose for which Shri Bookwalla has relied upon this decision is to make out his point that in the instant case, the sales of the petitioner are much more than those of the respondent No. 1. For this purpose, Shri Bookwalla took me through the compilation of bills, invoices and lorry receipts produced by respondent No. 1 before the Assistant Registrar and pointed out certain discrepancies therein. He pointed out that the same bills of the same date were produced twice. He further pointed out that one or two instances wherein there is discrepancy of dates of the invoice and the lorry receipts. For instance, the invoice dated 26-3-1996 bearing No. 1184 is for the sale of Rs. 25,552/ and the buyer is one Panjwani of Korba in Madhya Pradesh. The lorry receipt of this consignment is at pg. 150 and it mentions the same bill No. 1184 but, it is dated 20-3-1996. Similarly, bill No. 1185 dated 26-3-1993 is for Rs. 14,625/- in the name of Khodiyar Marketing, Raipur, Madhya Pradesh and the lorry receipt in respect of the consignment is at Page 139. It mentions the same bill No. 1185 but, it is dated 28-3-1996. These are only illustrative instances which according to Shri Bookwalla create reasonable doubt about their genuineness and authenticity. Shri Bookwalla also drew my attention to the copy of letter dated 2-3-1989 (page 132 of the compilation) addressed on behalf of ABC Agencies Ernakulan to respondent No. 1 which states". I will be glad if you can supply the hing (yellow powder) in the brand name of Ganesh, picture of Ganpaty on the master label and inter label." Thus, according to Shri Bookwalla this letter indicates the respondent No. 1 even wanted to go for a trade mark "Ganesh". It is not possible to draw any such inference from the above recital. On the contrary, it appears to me that it is only a query made by ABC Agencies to assess the possibility of respondent No. 1 sending his goods in the brand name of Ganesh. Therefore, not much reliance can be placed upon this letter. The exercise of Shri Bookwalla in taking me through all the details has been to show that respondent No. 1 has very limited sales both in Nashik District as well as outside it.
17. Shri Shah learned counsel for the respondent No. I however, pointed out that the petitioner did not produce any bill to establish as to what has been his sales. He only filed an affidavit dated. December 1988 and in Para 4 of the said affidavit, year wise figures of the Sales of the goods under the Trade Mark Annapurna for the years 1977-1978 to 1992-1993 have been given. The total sales for these 15 years have been worked out at Rs. 2,66,46,054/-. However, in the absence of any supporting bills or invoices, the said figure of sales cannot evoke any credit.
18. Mr. Bookwalla referred to various advertisements given by the petitioner in different newspapers published in the State of Gujarat and pointed out that during the period from 1977 to 1993, the total expenses made by the petitioner have been Rs. 21,20,324/-, which figure, according to him, is indicative of the high sales and business of the petitioner. The submission of Mr. Bookwalla cannot be said to be altogether without any substance. But it cannot be ignored that many a times the hype of advertisement proves to be a flop so far as response from the consumer public is concerned. Apart from that even assuming for the sake of argument that the sales of the petitioner have been comparatively very higher than those of the respondent No. 1, yet that fact by itself would not disentitle respondent No. 1 from claiming protection. In the instant case, respondent No. 1 is trying to protect his vested interest, which was accrued of by it by virtue of prior registration of the trade mark "Annapurna". In this respect it will be advantageous to make a reference to the observations made by the Calcutta High Court, which were endorsed by the Supreme Court in London Rubber Co, Ltd., case (supra). They are as under :--
"Even so, if there is honest concurrent use I should think the small trader is entitled to protection of his trade mark. Trade mark is a kind of property and is entitled to protection under the law, irrespective of its value in money so long as it has some business or commercial value. Not merely the interest of the public but also the interest of the owner are the subject and concern of trade mark legislation."
19. Mr. Bookwalla further relied upon the decision of a division bench of the Delhi High Court in Dalip Chand Agarwal v. Escorts Ltd., , wherein it was observed that the extent of the business along with the extent of the business interest of the opponent and the interest of the public have all to be correlated in deciding whether applicant's mark should be registered or not and if the Court is in any doubt that if the mark will cause confusion, registration will be refused. In that case, the facts were that the Escorts Company which was incorporated in 1944, obtained registration of the Trade Mark which consisted of the word "Escorts" in 1961. This Trade Mark related to goods amongst others to electric irons, electric kettles, soldering irons and elements of electric irons etc. On 23-3-1963, the appellant applied for the registration of the same trade mark in respect of the same goods. It was not disputed that the items for which the appellant had sought registration were already covered by the registration earlier obtained by the respondents. The Assistant Registrar allowed the registration sought for by the appellant, holding that his case was covered by Section 12(3) as well as by Section 33 of the Act. In appeal filed by the respondents, the order of the Assistant Registrar was set aside and in further appeal before the division bench, the dismissal was maintained. I do not think that this decision helps Mr. Bookwalla in any way for the simple reason that it is not a case of prior use by the appellant (Dalip Chand), who had applied for the registration of the same trade mark. But on the contrary, it was a case of prior use and registration by the respondents (Escorts Company).
20. Mr. Shah, the learned counsel for respondent No. 1 relied upon the decision of by the learned Single Judge of this Court (R. P. Bhatt, J) in Geoffrey Manners and Co. Ltd. v. Megapharma Laboratories, 1977 IPLR 9, wherein the facts were that the applicants had sought to register the trade mark "Megavite" for a medicinal and pharmaceutical preparation. The opponents opposed the registration of the said trade mark on the ground of prior registration and extensive use of their trade mark "Megavit". The applicants contended that the use of their trade mark "Megavite" was anterior in point of time to that of the opponents' registration or use of the trade mark "Megavit". The applicants, therefore, claim protection of the provisions of Section 33 of the Act. The Joint Registrar held that the applicants were entitled to registration of the trade mark "Megavite" in view of the provisions of Section 33. The opponents appealed to the High Court, but the learned Single Judge dismissed the appeal, observing that the object of enacting Section 33 was to permit users and registration of a trade mark by its proprietor even though a subsequent user of the same or nearly resembling trade mark had obtained prior registration. It was further held that the operation of Section 33 should not be limited to an objection under Section 12(1), but also be normally extended to an objection under Section 11(a) of the Act based on the similarity of marks. It was further held that where the objection is taken under Section 11(a) and if the conditions of Section 33 are fulfilled, the Registrar may exercise his discretion under Section 18(4) of the Act, whether or not to permit the registration of a trade mark. The learned Judge also held that Section 33 has been enacted for the specific purpose of saving the rights of proprietors of marks, whose user has been anterior in point of time to that of the proprietor of registered trade mark.
21. The next decision relied upon by Mr. Shah, is Indo-Pharma Pharmaceutical Works Pvt. Ltd. v. Pharmaceutical Company of India, (1977) Vol. LXXX The Bombay Law Reporter 73. That was a case of infringement action instituted by the plaintiff company, which was the proprietor of trade mark, which consists of the word "Butacortindon" in respect of medical and pharmaceutical preparations and the same was registered on 16-3-1963. The firm which was also a manufacturer of pharmaceutical preparations had obtained registration of the trade mark consisting of the word "Butacort", registered in the same class in respect of the pharmaceutical preparation for sale to the hospitals of the Government of Gujarat. In the suit the plaintiffs complained that the defendant firm was trying to sell its pharmaceutical preparation under the trade mark "Butacort" to persons other than the hospitals of the government of Gujarat and that such action on the part of the defendant firm amounted to an infringement of the plaintiffs registered trade mark. The plaintiffs, therefore, sought injunction to limit the sale of defendant firm other than to the hospitals of the government of Gujarat. In reply, the defendant firm contended that the Dy. Registrar of Trade Marks had held in the opposition proceedings that the defendants were prior users and therefore, they were entitled to registration under the provisions of Section 33 of the Act. It was also contended on behalf of the defendant firm that such prior users and continuous users of the trade mark by them entitled them to the protection under Section 33 of the Act. The learned Single Judge (S. K. Desai, J), explained the provisions of Section 33 and held that the user which is protected by Section 33 against interference or restraint, is user and not such user which in fact existed on the date of the first registration of the trade mark whose owner or proprietor has moved the Court, complaining that another person is using an identical or a deceptively similar trade mark. The learned Judge further held that if continuous and prior use, as explained in the section, is proved, the proposition must fail and the relief of injunction must be refused by the Court. It was held that the section does not provide for the opposition to fail partially only and succeed partially. Similarly the section does not suggest that in the suit some limited relief may be granted despite proof of prior continuous user. In short, it was held by the learned Judge that Section 33 of the Act, confers absolute protection or immunity on a person who is able to prove or establish continuous user prior to the date of registration of the trade mark of the other person, who seeks to restrain him.
22. Reference may also be made to a division bench decision of this Court in Kanshiram Surinderkumar v. Thakurdas Deoomal Rohire, , wherein the facts were that the appellants had obtained registration of the trade mark consisting of the word "Amar" in respect of the textile piece goods on 25-3-1964. Thereafter, the respondents applied on 21-5-1965 for registration of the very same trade mark in their name in respect of the same goods. It appears that on coming to know about the registration of the said mark in the name of the appellants, the respondents made an application under Section 56(2) of the Act for rectification of the register, by deleting the said mark "Amar", which was registered in the name of the appellants. The respondents contended that the registration of the said trade mark in the name of the appellants was in contravention of Section 11(a), as the respondents were the proprietors of the said mark before it was registered in the name of the appellants and secondly the said mark of the appellants being identical to their mark, was likely to deceive or cause confusion. The appellants opposed the application for rectification and denied that the respondents were the proprietors of the said trade mark and that the mark was contrary to the provisions of Section 11. The appellants further pleaded acquiescence on the part of the respondents in the use of the said Trade Mark and further contended that their (appellants) case fell under Section 12(3) on the basis of honest concurrent use. The Joint Registrar allowed the respondents application and directed rectification of the register by removing the trade mark "Amar", which was registered in the name of the appellants. In appeal, the learned Single Judge upheld the decision of the Joint Registrar. The appellants then carried the matter before the Division Bench but without any success. The Division Bench pointed out the distinction between Section 12(3) and Section 33 of the Act. It was observed that Section 12(3) is an evident exception to Section 12(1), which prohibits the registration of a mark identical to the mark already registered, whereas Section 33 is a sort of defence to the person who has vested rights in the prior use of a mark identical with that of the registered mark. It was further held that the identical mark which does not fall under either Section 12(3) or Section 33 of the Act, the protection contemplated by these two provisions, cannot be extended and the identical mark cannot be registered because of the provisions of Section 11(a). It will thus be seen that in that case, the appellants had sought protection under Section 33 even though they were not prior user. This is, however, not so with the case on hand. As already pointed out, that respondent No. 1 has been manufacturing and marketing its product in the brand name "Annapurna" since 1967, whereas the petitioner started manufacturing and marketing the same product in the same brand name since 1970. Moreover, it was respondent No. 1 who has obtained registration of the trade mark much prior to the obtaining of the registration by the petitioner. It is not material that the registration obtained by respondent No. 1, was initially restricted to the area of Nasik district. What is relevant for the purpose of claiming the protection under Section 33 of the Act, is the anterior use of the same trade mark in point of time prior to registration of the trade mark. Respondent No. 1 fulfils both the conditions contemplated by Section 33. It cannot, therefore, be denied that respondent No. 1 has obtained a vested right in the trade mark "Annapurna" in respect of "Asafoetida". In view of this position, the learned Assistant Registrar was right in dismissing the opposition filed by the present petitioner and allowing the application of respondent No. 1 for registration of the trade mark "Annapurna" in respect of the "Asafoetida" for the entire territory of India.
23. Mr. Bookwalla pointed out that the petitioner was granted registration of the Trade Mark for his product "Annapurna 151" for sale all over India except Nasik district. He therefore, submitted that the Assistant Registrar should have taken into consideration this fact and restricted the registration of respondent No. 1 excluding the territory of Gujarat. In my opinion the case of respondent No. 1 falls under both the Sections, i.e. Section 12(3) and Section 33 of the Act. Section 12(3) gives a discretion to the registrar to allow registration of the trade mark subject to such conditions and limitation as he may think fit to impose. However, under Section 33, the registrar does not have any discretion to impose any condition or limitation while granting registration. The vested right claimed under Section 33, if proved, is absolute and the registrar has no option. He is enjoined not to refuse registration of the trade mark by reasons only of the registration of the same trade mark in the name of another person. Naturally the larger right under Section 33 will prevail over the smaller right under Section 22(3). Therefore, the submission made by Mr. Bookwalla in this respect does not appear to be proper and correct.
24. In the result, the petition is dismissed.
25. On the oral request of Ms. Swapnila Rane holding for Mr. Bookwalla for the petitioner, the operation of this order is stayed for a period of 6 weeks. C. C. expedited.