Delhi High Court
Hindustan Pencils Private Limited And ... vs M/S. Universal Trading Company on 31 October, 2000
Equivalent citations: AIR 2001 (NOC) 42 (DEL), 2001 CLC 235 (DEL), (2002) 1 ICC 801, (2002) 1 RECCIVR 94
Author: A.K. Sikri
Bench: Arun Kumar, A.K. Sikri
ORDER A.K. Sikri, J.
1. Appellants are aggrieved against judgment dated 19th October, 1984 passed by learned Single Judge in CO. 2/83. This appeal is directed against the aforesaid judgment. CO.2/83 was filed by the appellants under Section 107 read with Sections 46 and 56 of Trade and Merchandise Act, 1958 (here-inafter referred to as the Act, for short). In that petition appellants had prayed that Trade Mark No. 324345 under which respondents had got registered a trade mark in respect of mathematical instruments and water colour boxes (which are goods falling in class 16) should be removed and/or expunged from the register of trade mark and that in any case the following goods should be specifically expunged from the registration, namely, "compass, dividers, set square, Dee, protractor and foot rule". Learned Single Judge did not agree with the petitioners/appellants and dismissed the aforesaid CO. 2/83 filed by the petitioners. Before we deal with the merits of these appeals it would be appropriate to hurriedly scan through the relevant facts in FAO(OS) No. 6 of 1985.
2. The appellants are carrying on business as manufacturers of pencils and other stationary articles since the year 1957. They are the registered proprietor of the trade marks "NATRAJ" with the device of Natraj registered as per the details given below:-
i. Trade mark NATRAJ with the device of Natraj under no. 225923 dated 14th December, 1964 claiming user since 22nd July, 1961 in respect of writing pencils.
ii. Trade mark NATRAJ with the device of Natraj under no. 260456 dated 6th November, 1969 claiming user since 22nd July, 1961 in respect of pencils, refills for propelling pens and pencils, pen sharpeners, pens, fountain pens, erasers, pin clips and staples included in class 16.
iii. Trade mark NATRAJ with the device of Natraj under No. 283730 dated 27th October, 1972 in respect of pencils of all kinds, erasers, refills, for propelling pens and pencils, pencils, pencil sharpeners, pens, fountain pens, pins, clips, staples for stapling presses and pins.
3. The appellants are also the proprietors of the copyright registration Nos. A-25427/79 dated 17th October, 1979, A-25426/79, A-25680/79, A-25681/79, A-28337/80, A-33176//81 and A-31998/81 in which the word NATRAJ and the device of Natraj are prominently depicted. As per appellants version they are selling goods worth crores of rupees annually and spending huge amounts of money on advertisement. Various registrations of the appellants under the Act would reveal that appellants have been using the word "Natraj" alongwith device of "Natraj" in respect of various kinds of pens, pencils, sharpener, erasers, etc Admittedly, these registrations do not specifically cover mathematical instruments and water colour boxes which are the items/subject matter of present litigation. The respondent claiming itself to be the manufacturer of pencils got registered trade mark no. 324345 in Class 16 in respect of mathematical instruments and water colour boxes. Application for this purpose was made before the Registrar on 6th April, 1977 claiming user as from 1st January, 1974. This application was opposed by the appellants and on the opposition filed by the appellants proceedings thereon had started by the Registrar of Trade Mark. However, the appellants opposition was treated as abandoned vide order dated 27th February, 1981 passed by Registrar of Trade Mark. There being no other opposition certificate of registration granted to the respondent on 7th March, 1981. It is this registration, cancellation of which was sought by the petitioners by filing CO.2/83, as would be seen later. Coming back to the events as they occur chronologically, after obtaining the aforesaid registration respondent filed suit against the appellants seeking injunction restraining the appellants from using the trade mark and device in respect of boxes containing mathematical instruments in the tin containers bearing thereon the word "Natraj". Respondent pleaded that mark of these instruments infringed respondent's trade mark No. 324345 dated 7th March, 1981. Respondent was granted interim injunction and appellants were restrained from marketing mathematical instrument boxes with the trade mark and device of "Natraj". Order was passed by learned Single Judge of this Court (per D.R.Khanna, J). After arguments interim injunction was made absolute by order dated 20th December, 1982. Appellants at this stage filed CO.2/83 seeking cancellation of the aforesaid trade mark in favour of the respondent. Appellant also filed Special Leave Petition to Supreme Court against injunction order dated 20th December, 1982 passed by this Court. Supreme Court dismissed the Special Leave Petition and confirmed the order of this Court. However, it directed expeditious hearing of the rectification petition filed by the petitioner. The battle lines having been drawn and matter reaching back to this Court in the form of CO.2/83, learned Single Judge proceeded to hear the same and dismissed the said petition by the impugned judgment dated 19th October, 1984.
4. A perusal of the detailed judgment rendered by learned Single Judge would show that appellants herein sought rectification of the registration in favour of the respondent herein mainly on the ground that the appellants had been carrying on business of manufacturing of pencil and other stationary articles since 1957 and using the trade mark 'NATRAJ' in respect of pencil and other stationary articles since 1957. There were various trade mark registrations with the trade mark of 'NATRAJ' in favour of the appellants alongwith the device of Natraj and these registrations were in respect of various kinds of pens, pencils, sharpeners, eraser etc. Therefore, its goods had achieved unique and substantial reputation, goodwill and name under the above trade mark and the word 'NATRAJ' or the device of Natraj. In these circumstances, the registration of trade mark No.324345 in class 16 in respect of mathematical instruments and water colour boxes in favour of the respondent by the of Registered Trade Mark was not proper and the same was confusingly and deceptively similar to the trade mark registered in the name of the appellants. The respondent was not the proprietor of the trade mark in question, and therefore, it was not eligible for registration in respect thereof. It had obtained the registration of its trade mark by means of misrepresentation and fraud as it had not been using the same for a period of three years or more as on the date of the filing of the application although repeated by it in its application for registration filed before the Registrar of Trade Mark. The respondent, on the other hand, had argued that the application for rectification filed by the appellants was not maintainable inasmuch as the appellants had entered opposition of the trade mark when the application of the respondent for registration was pending before the Registrar but had abandoned the same. Moreover, according to the respondent, appellants had concealed certain facts from the Cour and this conduct of the appellants disentitled the appellants to get discretionary relief. It was also argued that the goods of the respondent in respect of which registration was granted i.e. mathematical instruments were different from the goods of the appellants which were pencils, sharpeners etc. Therefore, there was no question of any deception or confusion. It was also submitted that the respondent was honest concurrent user of the trade mark in question and there were other special circumstances in favour of the respondent, and therefore, respondent had the right to have the trade mark registered even when there was such a registration in favour of the appellants as well, in view of the provisions contained in Section 12(3) of the Act.
5. After considering rival contentions, the learned Single Judge dismissed the application filed by the appellants herein. The contention that registration of the trade mark had been improperly or fraudulently procured by the respondent was rejected. The learned Single Judge also did not find any merit in the contention of the appellants that the mark in question was not 'distinctive' to entitle the respondent to registration inasmuch as the claim of the respondent in its application for registration that the user of the said mark by it since 1st January, 1974 could not be doubted. The learned Single Judge also concluded that the goods of the appellants in respect of which appellants obtained registration of trade mark were different from the goods in respect of which respondent's trade mark was registered and it could not be said that use of the trade mark by the respondent was likely to deceive or cause confusion. The Court also accepted the submission of the respondent that there were special circumstances in favour of the respondent and further that as the respondent was a bonafide concurrent user of trade mark in question for long years, it was entitled to the benefit of Section 12(3) of the Act . We may point out at this stage that while coming to the aforesaid conclusions, the learned Single Judge referred to number of judgments on various aspects and in conclusion dismissed the application of the appellants.
6. Mr.Manmohan Singh, learned counsel appearing for appellants in support of the appeal, advanced almost the same arguments which were advanced before the learned Single Judge. His contention was that the conclusion arrived at by the learned Single Judge on various aspects argued before it were erroneous and needed to be upset. His submission was that although the various registrations of trade mark in favour of the appellants were in respect of pencils, staples etc. These were all stationary goods falling in class 16, and therefore, registrations cover geometrical boxes as well and would constitute the same class of goods. In support counsel referred to the definitions of 'trade mark' as contained in Section 2(b) 'package' as defined in section 2(l) as well as the definition of word 'mark' enumerated in Section 2(j) of the Act. His submission was that while dealing with the question of deception or confusion as mentioned in Section 11(a) one has to keep in mind that it is not in relation to goods but this deception or confusion is to be seen in relation to trade mark. He emphasised that the appellants had raised valid grounds for rectification which was not property considered by the learned Single Judge. According to the appellants, the main grounds for rectification are:
i) That the respondent is not the proprietor of the trade mark.
ii) That the respondent committed fraud upon the trade mark office in securing the registration of the trade mark in question.
iii) The registration of the trade mark in favour of the respondent was in contravention of Sections 9, 11(a), 11(e), 12 and 18 of the Act.
7. In support of the aforesaid grounds, the learned counsel formulated the following propositions:
1. The trade mark applied for by the respondent bearing the word NATRAJ word per se is prohibited under the mandatory provisions of Section 12(1) and is not registerable under the said provision. Section 12(1) is a mandatory provision. The language of the Act is that no trade mark shall be in respect of any goods or description of goods which is identical or deceptively similar to a trade mark which is already registered in the name of different proprietor in respect of the same goods or description of goods. It is an admitted position that the mathematical instrument box used by the respondent contains pencil, sharpener, eraser in which the appellants were registered proprietor of the trade mark. Physical user on the product is not required as contained in Section 2(2)(a) and (b) of the Act. The use of the above said item in geometrical box amounts to the same goods. Further, the goods in question used by the parties i.e. pencil, sharpener and eraser and mathematical instruments are the goods of the same description on the following reasons:
a) Both set of goods are sold by the same shopkeepers.
b) Both set of goods are purchased by the same consumers.
c) Both set of goods are used by the same consumers.
d) Trade channel is the same.
e) Many manufacturing companies who are manufacturing both set of goods from the same factory. Hence, the registration of the respondent is totally barred under section 12(1) of the Act being the same description of goods as well as the same goods mentioned earlier. The trade mark applied for by the respondent is prohibited under section 11(a) and 11(e) of the Act as the use of the said trade mark would be likely to deceive or cause confusion. Section 11(a) is also mandatory provision for prohibition of the trade mark applied for. Section 11(a) has nothing to do with the classification of the goods which is altogether independent provision and if the mark would be such which is likely to deceive and cause confusion the other side cannot obtain the registration under Section 11(a) of the Act. Section 11(e) of the Act mainly deals with the similar action like passing off law available on the subject. The learned counsel also relied upon the following judgments submitting that in these cases the Courts have prohibited the registration under Section 11(a) as well as granted the injunction on the question of passing off if the goods are different:
1) M/s. Jugmug Electric & Radio Co. (now known as Jugmug Electric Industries ) Vs. Telerad Private Ltd, ILR (1978) Delhi Vol.I page 667.
2) Corn Products Refining Co. Vs. Shangrila Food Products Ltd. .
3) Dalip Chand Aggarwal & Ors. Vs. M/s Escorts Ltd., New Delhi .
4) Players Trade Mark (Registration) 1965 RPC page 363.
5) L.R.C.International Ltd. & Anr. Vs. Lilla Edets Sales Co. Ltd. 1973 RPC page 560.
6) Dharam Pal Satya Pal Vs. Janta Sales Corporation 1990 Vol.II Arbitration Law Reporter 91.
7) Creative Handicrafts Vs. Sedana Electric Co. & Anr. 1988 PTC page 348.
8) Bajaj Electricals Ltd. Vs. Metals & Allied Products, Bombay & Anr. .
9) Surjit Singh Vs. M/s Alembic Glass Industries Ltd. .
10) Sunder Parmanand Lalwani & Ors. Vs. Caltex (India) Ltd. .
11) Lego System Aktieselskab & Anr. Vs. Lego M. Lemelstrich Ltd. 1983 Fleet Street Reports 155.
12) Kamal Trading Co. Bombay & Ors. Vs. Gillette U.K.Ltd., Middle Sex, England 1988 PTC page 1.
13) Kirloskar Diesel Recon Pvt.Ltd. & Anr. Vs. Kirloskar Proprietary Ltd. & Ors. .
14) Ceat Tyres of India Ltd. Vs. M/s Jay Industrial Services 1996 PTC page 16.
15) Essel Packaging Ltd. & Ors. Vs. Essel Tea Exports Ltd. 1999 PTC (19) 521.
8. It was further argued that the respondent is not the proprietor of the trade mark applied for within the meaning of section 18 of the Act. The respondent is not the proprietor of the trade mark as he was fully aware on the date of application that the trade mark NATRAJ and device of Natraj belonged to the appellants who have been using the said trade marks in a particular manner. It is a false claim to the proprietorship by the respondent. Even otherwise, the presence of the mark on the Register have no consequence in the present case. Reliance was placed on:
i) Corn Products Refining Co. Vs. Shangrila Food Products Ltd. note "C" for section 18.
ii) T.G.Balaji Chettiar Vs. Hindustan Lever Ltd. .
iii) Century Traders Vs. Roshan Lal Duggar & Co. & Ors. .
It was also argued that the trade mark of the respondent was also not distinctive with the goods of the respondent and is prohibited under Section 9 of the Act.
9. It was also submitted that the respondent was not entitled for the registration in Section 12(3) by claiming honest concurrent user and/or other special circumstances. Hence, the trade mark in question was liable to be rectified on the above said points. The benefit of Section 12(3) of concurrent user can only be given if the trade mark in question is being used by the party other than the proprietor of the trade mark as the honest concurrent user. In this case there is no honesty on the part of the respondent. Their copyrights have already been removed from the Register of Trade Mark. The respondent is also copying the exact device of NATRAJ, the colour scheme, get up and layout which they have copied from the products of the appellants. The trade mark is also identical after having full knowledge about the trade mark and copyright of the appellants the respondents have applied for the registration of the identical trade mark. The goods in question are sold in the same market and by the same shopkeeper. Therefore, there is no honesty on the part of the respondent to claim the concurrent user of the mark. In support reliance was placed on:
i) J.R.Parkington & Coy. Ltd. Vs. Frederick Robinson Ltd. 63 (1946) RPC page 171 at page 181:
"....In my judgment, the circumstances which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user. If the user in its inception was tained it would be difficult in most cases to purity if subsequently."
ii) Power Control Appliances and Ors. Vs. Sumeet Machines Pvt. Ltd. & Ors., 1995 PTC page 165 at page 182 paras 45 and 45:
"44. It is a settled principle of law relating to trade mark that there can be only one mark, one source and one proprietor. It cannot have two origins. Where, therefore, the first defendant-respondent has proclaimed himself as a rival of the plaintiffs his claim as joint owner is impermissible in law. Even then, the joint proprietors must use the trade mark jointly for the benefit of all. It cannot be used in rivalry and in competition with each other.
45. The plea of quasi-partnership was never urged in the pleading. As regards copyright there is no plea of assignment. The High Court had failed to note that the plea of honest and concurrent user as stated in section 12(3) of 1958 Act for securing the concurrent registration is not a valid defense for the infringement of copyright. For all these reasons we are unable to support the judgments of the High Court under appeal. We reiterate that on the material on record as is available at present the denial of injunction, once the infringement of trade mark, copyright and design is established, cannot be supported. Pending suit, there will be an injunction in favour of the appellants (the plaintiffs). All the civil appeals will stand allowed. No cost."
iii) T.G. Balaji Chettiar Vs. Hindustan Lever Ltd. .
iv) Dalip Chand Aggarwal & Ors. Vs. M/s Escorts Ltd., New Delhi .
On the other hand, the learned counsel for respondent, Mr. K.L. Aggarwal submitted:
1) Appellants had concealed material facts in filing the application for rectification and particularly the fact that it had filed the opposition to the respondent's application for registration but the same was abandoned. It was also submitted that against the order abandoning the appellants opposition, no review was filed under Section 97(c) of the Act nor any appeal was filed under Section 109(2) of the Act, and therefore, application for the rectification was not even maintainable.
2) Goods of the respondent in respect of which trade mark was registered were different than the goods in respect of which appellants enjoyed of the registered trade mark.
3) The word 'Natraj' or the device of Natraj was not invented by the appellants for the first time. In fact with the same word and device there were two earlier registrations in favour of some other parties which showed that appellants could not claim to be the inventor of the word or the device. In fact, the word 'Natraj' was a generic word and was not the invention of the appellants at all, and therefore, appellants could not claim exclusive use of the word and device Natraj.
The aforesaid circumstances created a bona fide belief in the mind of the respondent to adopt and use the trade mark/label "NATRAJ" with device of Natraj in respect of mathematical instruments.
4) The respondent was the bona fide concurrent user of the goods with word 'Natraj' and device in respect of mathematical instruments, and therefore, was entitled to the benefit of Section 12(3) of the Act.
5) There were special circumstances in favour of the respondent which would entitle the respondent to take the benefit of the provisions of Section 12(3) of the Act on this ground also. These special circumstances were noticed and accepted by the learned Single Judge which were again emphasised by the counsel for respondent.
6) In any case, the respondent had been using the trade mark in question for a long period since 1974 and the trade mark was also registered in its favour way back in the year 1981. Therefore, great hardship would be caused to the respondent in case the rectification application of the appellants is allowed at this stage and on this basis also, the learned counsel for the respondent made fervent plea to dismiss the appeal of the appellants. In support of his submission, learned counsel relied upon the following judgments and the ratio of each case:
1) , London Rubber Co. Ltd., Vs. Durex Products Incorporated & Anr:
a) There is no hard and fast rule for volume of user to make the mark distinctive. The said fact differs from cases to case.
b) Simultaneous registration of the same trade mark in respect of the same goods can be granted under Section 12(3).
c) Small traders are to be protected.
d) The provisions of Sections, 11, 9, 12(1) can not override the provisions of Section 12(3) of the Act.
2) , M/s Wattan Singh & Sons. Vs. The Registrar of Trade Marks & Ors.
a) This judgment deals with commercial use of the mark.
b) An honest and concurrent user of the mark.
c) The opposite party had the knowledge of the adoption of the said mark.
d) Section 12(3) was dealt.
3) 1991 PTC 204, M/s Hindustan Pencils Ltd. Vs. Aptudet Industries
a) In this case, the defendant was allowed to use the trade mark NATRAJ with the device of NATRAJ in respect of Chalks and Sealing Wax.
b) The goods were held to be different.
c) The provisions of Section 12(3) and 33 were considered.
d) The appellants concealed the fact of serving a notice on the defendant.
4) 1996 PTC 60 512 Vishnudas Trading as Vishnudas Kishendas Vs. Vazir Sultan Tobacco Co. Ltd.
a) The mark of the Registered Proprietor was rectified and confined to the goods cigarettes only. (Actual user of the actual goods)
b) The opposite party was allowed to use the same trade mark "CHARMINAR" in respect of `Chewing Tobacco'.
c) The registration of the same trade mark was allowed in respect of 'Chewing Tobacco' under Section 12(3) of the Act.
d) The goods 'Smoking Tobacco and 'Chewing Tobacco' were held to be the goods of different description.
e) The provisions of Sections, 9, 11(a), 11(e), 18 & 12(3) were dealt with.
5) ,Nestle's Products Ltd. & Ors. Vs. M/s Milk made Corporation and Anr.
The mark "MILKMAID was allowed to be used in respect of `Toffees and Biscuits' though the same trade mark was registered in the name of the appellants in respect of the `Condensed Milk.'
6) 1983 PTC 6 Shri Prem Chand Gupta of M/s Universal Trading Co. Vs. M/s Hindustan Pencils Pvt. Ltd.
a) The injunction was granted against the appellants.
b) The goods were held to be different.
c) The period of user since 1974 was upheld.
d) The appellants and respondents were the parties in the said case.
7) ,Gopal Hossiery Vs. The Deputy Registrar of Trade Marks and Ors.
a) The registration was granted under Section 12(3)
b) The rectification was dismissed.
d) Honest adoption upheld.
10. We have considered the rival contentions of both the parties and have also perused the record through which we were taken with the assistance of counsel for the parties at the time of arguments. For the purpose of this case, in appeal, it may not be necessary to deal with each and every contention of both the parties in detail. As pointed out above, learned Single Judge has elaborately dealt with substantially the same arguments in his lengthy judgment, and therefore, for the sake of brevity wherever we agree with conclusions of the learned Single Judge, it would be sufficient to rely upon the reasoning of the learned Single Judge in support of such conclusions rather than repeating the same. In fact, for the reasons recorded hereinafter we are of the opinion that this appeal has to fail and it warrants to be dismissed.
11. Before proceeding further, we may highlight the following conspicuous facts which stare at the face of the appellants:
a) The word 'Natraj' is not an invented word.
b) Of course, the adoption of the combination of the use of the word 'Natraj' with the device of Natraj may be an innovative thing in respect of which a person can claim trade mark or copy right. However, as would be seen hereinafter, it is not the appellants who started use of this word along with device of Natraj for the first time and cannot claim to be the inventor of the same.
c) The trade mark of the appellants in the word 'Natraj' along with device of Natraj relates to various kinds of pens, pencils, sharpeners, eraser etc. but admittedly none of the registrations in favour of the appellants specifically covers mathematical instruments and water colour boxes which items or goods are in dispute in the instant appeal.
d) When the respondent had applied for registration of the trade mark in question in its favour, the appellants had filed opposition thereto. However, for whatever reasons, this opposition was abandoned and the trade mark was registered in favour of the respondent by the Registrar of Trade Mark. Of course, it may be clarified here itself that it is not to suggest that the application for rectification is not maintainable on this ground. This fact is important to stress that because of abandonment of the opposition by the appellants, respondent's trade mark was registered which is continuing since 1981.
e) The appellants had started marketing boxes containing mathematical instruments in the tin containers bearing thereon the word 'Natraj' with the device of Natraj. Respondent filed suit for injunction against an interim injunction which was granted restraining the appellants from marketing instrument boxes with trade mark and device of Natraj way back in the year 1982 by order dated 20th December, 1982. The appellants' attempt to get the injunction vacated failed till Supreme Court. Resultantly, the said injunction continues even till date.
f) The respondent is using the trade mark in question since 1974 i.e. for last 26 years and the registration also stands in its name since March 1981 i.e. for almost 20 years.
g) There are two other persons who are also the registered proprietor of the same trade mark albiet in respect of some other stationary items which registration granted in their name prior to the registration of the appellants.
It is in the light of this discernible position based upon abovementioned egregious aspects, taken into consideration cumulatively, that the application for rectification filed by the appellants needs to be examined.
12. The learned Single Judge has held that the goods of the respondent and the appellants do not belong to same category, and therefore, there is no question of deception or confusion which may arise in the mind of the consumer. According to the learned Single Judge, even if both the sets of articles (namely pens, pencils, sharpeners etc. on the one hand and mathematical instruments and water colour boxes on the other hand) may be described as 'stationary goods' that is not enough. It is possible to bring such articles together under one particular description. However, monopoly created by registration is not to the user or device altogether but only in relation to goods in respect of trade mark is registered and used. It is also noticed in the impugned judgment that the appellants themselves recognised and conceded the position that their registration did not extend to some of the articles which may be described as stationary goods such as exercise books in respect of which registration was in favour of M/s Jai Dayal Kapoor Distributing Company and rubber bands in respect of which Brij Lal & Sons and both these companies were the holder of same trade mark namely 'Natraj' with device of Natraj in relation to exercise books and rubber bands. Therefore, stationary goods would encompass various items/articles and if the items are different there was no question of creating or causing confusion. According to the learned Single Judge, the mathematical instruments and water colour boxes were different from that of pencils and sharpeners etc. As mentioned above, learned counsel for the appellants had attempted to point out that this was an erroneous finding. On the other hand, learned counsel for the respondent had tried to establish that the finding of the learned Single Judge in this respect was proper and perfectly in order. However, it may not be necessary to go into this aspect in detail inasmuch as we are of the view that the respondent's case is covered by the provisions of Section 12(3) of the Act. On the facts of this case, we are of the opinion that respondent is the honest and concurrent user of the trade mark 'Natraj' with device of Natraj in respect of mathematical instruments and also that there are special circumstances which weigh in favour of the respondent.
13. As far as bonafide concurrent user of the trade mark in question is concerned, it has come on record that the respondent had been using the trade mark in question since 1st January, 1974. When the application for registration was made in the year 1977, the respondent had been using the trade mark in question for three years and four months. Normally continuous user of the goods over a period of about three years can be the basis on which one can claim that the mark was 'distinctive' to entitle the user to have the registration. The appellants had argued before the learned Single Judge as well as before us that the respondent's claim that it was using the said trade mark since 1st January, 1974 was not a true claim and various reasons were sought to be given in support of this argument. However, after dealing with all these arguments in detail, the learned Single Judge did not accept this contention and rightly so. The respondent had filed before the Registrar of Trade Mark as well as before the learned Single Judge, sufficient material to show user and this material was referred to by the learned counsel for the respondent at the time of arguments. We are in respectful agreement with the reasoning and conclusions arrived at by the learned Single Judge. It may also be relevant to point out at this stage that the word 'Natraj' with the device of Natraj in respect of stationary goods is not used by appellants or respondent alone. There are various other registered users. Two of them namely M/s Jai Dayal Kapoor Distributing Company and Brij lal & Ors. are in fact using the same trade mark and device even prior to the appellants. Therefore, it can be concluded that respondent in a bonafide manner started using the trade mark in question in respect of mathematical instruments in the year 1974 bonafide believing it was in respect of different goods than the goods for which registration had been obtained by the appellants. All the ingredients of bonafide concurrent user, therefore, stand established.
14. We also agree with the learned Single Judge that there are special circumstances which may permit the registration (or for that matter continuation of the registration in favour of the respondent) in respect of geometrical boxes of the respondent. The learned Single Judge stated the following circumstances:
(a) There are separate registrations under the same trade mark in respect of exercise books and rubber bands with the knowledge and concurrence of the petitioner and this created a bonafide impression on other trades that the petitioner's trade mark and user was confined only to pencils and the like;
(b) The application of the respondent in respect of geometry boxes was sought to be opposed by the petitioner but it was unable to substantiate the opposition and the opposition had to be eventually abandoned;
(c) The respondent has been using this trade mark thereafter in respect of geometry boxes till 1982 with no protest or objection from anybody, much less the petitioner itself;
(d) The petitioner, though registered as early as 1964, had confined the use of its trade mark only to pencils and allied articles and never used it in respect of instrument boxes.
15. In addition, counsel for respondent also pointed out another special circumstance namely injunction in favour of the respondent and against the appellants since 1982 whereby the appellants are injuncted from using the trade mark 'Natraj' with device of Natraj in respect of mathematical instruments. Section 12(3) of the Act makes registration permissible in cases of honest concurrent user or where there are special circumstances even in respect of identical trade mark or trade mark resembling each other relating to some goods or description of goods. It may also be emphasised that the application for registration of the respondent was opposed by the appellants, but no evidence was filed though several opportunities granted to the appellants and lastly the opposition was dismissed/abandoned. No review under Section 97(C) and no appeal under Section 109(2) were instituted by the appellants against the said abandoned order. Therefore, on this ground alone, the appeal of the appellants has to fail.
16. However, we may also add another ground which persuades us to dismiss this appeal. As already observed above, the application for registration of the trade mark in question was moved by the respondent before the Registrar of Trade Mark in the year 1977 and user of three years and four months was claimed by the respondent as on that date. Although the appellants filed opposition to this application, the same was abandoned and the respondent's trade mark was registered. The application for rectification filed in the year 1982 and as on that date respondent was using the trade mark for almost nine years. As of today he is in use of the said trade mark for more than 26 years. Respondent's business has expanded and prospered during this period. If the rectification application is allowed at this stage, it would definitely cause serious prejudice and hardship to the respondent and this ground also compels us not to exercise any discretion in favour of the appellants.( Refer: London Rubber Co. Ltd. Vs. Durex Products Incorporated & Anr.).
17. Before parting, we may however refer to one of the apprehensions expressed by the counsel for appellants. It was submitted by him that the appellants are using the trade mark 'Natraj' with the device of Natraj for last about 45 years and its goods had achieved remarkable distinction and respect in the minds of public at large. This was the lurement for many unscrupulous and mischievous minded persons to copy the device in respect of some or other stationary items. The appellants were forced to file cases against these persons who were infringing appellants copyright and the judgment of the learned Single Judge was coming in the way of the appellants. In fact this was one of the principle reasons for which appellants were vehemently arguing the present appeal and wanted judgment of the learned Single Judge to be set aside. We make it clear that such an apprehension of the appellants is not well founded. It goes without saying that in the present case, the registration of the trade mark in question in favour of the respondent is maintained due to the peculiar circumstances of this case including the special circumstances as pointed out above. Such a judgment cannot give leverage to any other party who may try to infringe the trade mark of the appellants. Any suit for injunction and/ or rendition of accounts filed by the appellants against any such third party will have to be decided on its own merit without being influenced by the judgment in the instant case.
18. For all these reasons, the present appeal fails and is accordingly dismissed. In the peculiar circumstances of this case, there shall be no order as to costs.