Intellectual Property Appellate Board
Mr. Sushil Jindal Trading As Sushil ... vs Jindal Electricals And Assistant ... on 13 February, 2008
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) directed against the order dated 15.5.2006 passed by the Assistant Registrar of Trade Marks, New Delhi whereby he allowed the opposition No. DEL-T-4847/96865 and refused the application No. 821212 for registration. The appellant has along with the appeal filed a Miscellaneous Petition No. 83/2006 for stay of operation of the impugned order dated 15.5.2006.
2. The appellant, a sole proprietor of the firm M/s Sushil Electricals engaged in the business of manufacture & merchant of industrial transformers, voltage stabilizers rectifiers, electrical accessories and control panel, filed an application No. 821212 on 28.9.1998 for registration of trade mark JINDAL with device of 'Se' logo claiming user thereof since 1.4.1993 in respect of goods mentioned here before, all being goods included in class 9. In the preliminary examination the objection raised under Section 9 of the Trade and Merchandise Marks Act, 1958 (in short the repealed Act) was overcome on the strength of evidence filed by the appellant and thereafter the application was advertised before acceptance in the Trade Marks Journal No. 1290(S) dated 8.3.2003 at page 149 subject to the condition that the registration of trade mark shall give no right to the exclusive use of the letter 'SE'. Thereupon, the respondent No. 1, which is engaged in the business of manufacturing and marketing of power rectifiers, electroplating rectifiers, voltage stabilizers, voltage controllers, transformers, battery chargers, etc., filed opposition No. DEL-T-4847/96865 opposing the registration of the aforesaid trade mark under Sections 9, 11 (a) & (e), 12(1)&(3) and 18(1) of the repealed Act. The respondent No. 1's plank was that it had adopted the trade mark 'Je JINDAL' in the year 1966 and started using the same in respect of goods of its manufacture in the year 1967. The appellant filed the counter-statement denying the material averments of the notice of opposition and claiming that it is bonafidely and concurrently using the trade mark since 1993 without causing any confusion. After both parties filing their evidence by way of affidavit in support of their application and opposition, respectively, the matter was heard by the respondent No. 2 on 21.12.2005. The respondent No. 2 by his impugned order refused the application for registration on the grounds that the trade mark applied for is deceptively similar to the trade mark of respondent No. 1; that the goods are also of similar description and the area of sale and sale channel is same, therefore, the trade mark applied for, if used in connection with the goods covered by the proposed registration, will be reasonably likely to cause confusion and deception amongst a substantial number of persons. The respondent No. 2 further held that the appellant has not submitted any evidence to show that there will not be any confusion or deception by registering the proposed trade mark and as such the trade mark suffered from triple identity. He did not uphold the appellant's claim of proprietorship in the mark by observing that if the appellant at the time of making the application had knowledge that a similar mark 'JINDAL' had already been used by another trader in relation to the similar goods, then the proprietorship claimed by the appellant is false and fraudulent.
3. The appellant has challenged the impugned order on the grounds inter alia, that the respondent No. 2 has not passed the order in accordance with law and with proper application of mind; that at the time of preliminary examination of the application the Registrar raised objection under Section 9 of the repealed Act and. after overcoming the objection on the strength of evidence filed by him at that stage the application was ordered to be advertised but while passing the impugned order the respondent No. 2 illegally and arbitrarily did not allow the benefit of registration; that the respondent No. 2 has seriously erred to hold that the impugned mark is deceptively similar to the mark of the respondent No. 1 and if the impugned mark is used, in connection with the goods to be covered by the application, will be reasonably likely to cause confusion and deception; that the respondent No. 2 has seriously erred by taking irrelevant and extraneous consideration in the exercise of discretionary powers under Section 12 of the Act and that the grounds on which the proprietary right in the mark of the appellant denied are irrelevant, extraneous and arbitrary manner. The respondent No. 1, by refuting material averments in the appeal, filed the counter-statement and evidence by way of affidavit dated 1.11.2006 of Shri Bharti Bhushan Jindal, the proprietor of the respondent No. 1 and thereafter the appellant filed rejoinder to the counter-statement on 14.12. 2006. During the pendency of the appeal, the appellant has filed Misc. Petition No. 4/2007 for taking on record the Annexures A-1, A-2 and A-3 to 7 filed along with the rejoinder and the respondent No. 1 has filed Misc. Petition No. 30/2007 for taking on record the additional documents filed along with the affidavit dated 1.11.2006 of Shri Bharti Bhushan Jindal.
4. The appeal along with all the miscellaneous petitions came up before us for hearing on 10.1.2008 when Shri Kuldeep Kumar and Shri N.K. Manchanda, Advocates appeared for the appellant and Shri D.K. Dingra and Shri M.K. Miglani, Advocates appeared for the respondent No. 1. When Shri Manchanda, learned Counsel for the appellant, commenced his argument on the miscellaneous petition of the appellant for taking on record the Annexures A-1 to A-3 to 7, Shri Miglani, learned Counsel for the respondent No. 1 submitted that the M.P. Nos. 4/2007 and 30/2007 may be allowed and the learned Counsel for the appellant after raising certain objection ultimately agreed that the two miscellaneous petitions can be allowed. Accordingly, M.P. Nos. 4/2007 and 30/2007 are allowed and the documents taken on record.
5. Shri Manchanda learned Counsel for the appellant contended that the records show that the respondent No. 1 had disclaimed the exclusive right in the word JINDAL and in the website of respondent No. 1, its trade mark has been represented as Je, and not the Je- JINDAL as claimed in its counter-statement. The non appearance of the word JINDAL as trade mark in their website and concealment of the said vital document from the Registrar in the opposition proceedings shows that the respondent No. 1 had an interest to secure unfair gain and advantage which amounts to fraud upon the tribunal. To prove his contention, the learned Counsel drew our attention to pages 32 to 36 of the documents filed by the respondent No. 1 in support of its case. Pages 32-33 is a photo copy of Trade Marks Journal Mega 4, dated 25.10.2003 containing application No. 939628 of the respondent No. 1 for registration of trade mark 'Je JINDAL' advertised under proviso to Section 20(1) of the repealed Act, page 34 is a copy of letter dated 22.7.2003 addressed to the Registrar forwarding therewith TM-16 (p.35) and intimating that the respondent No. 1 agrees to the conversion of application in Part-B of the Register for class 9 and page 36 is a copy of Trade Marks Journal No. 1346, Regular dated 16.6.2006 containing advertisement of application of respondent No. 1 for registration of Trade mark 'Je JINDAL'S' with disclaimer of word JINDAL. Learned Counsel further contended that the respondent No. 1 neither used the trade mark JINDAL in its business nor has any exclusive right in the word JINDAL as the word JINDAL had been disclaimed while obtaining registration of its trade mark, and otherwise also, the respondent No. 1 is not entitled to prevent the appellant from using the trade mark sought to be registered. By placing reliance on the judicial pronouncement in Om Prakash Gupta and Anr. v. Praveen Kumar and Anr. 2000 PTC 326, the learned Counsel asserted that the respondent No. 1 has not disclosed that the word JINDAL had been disclaimed by it while obtaining registration, therefore, the entire matter may be disposed of in favour of the appellant. Learned Counsel urged, by placing his reliance upon the decision in Jhaveri Industries v. Majethia Masala 2006 (33) PTC 394 (Bom.), to allow the appeal. In that case the plaintiff contending themselves to be owners of trade mark 'Badshah Rajwadi' filed a suit seeking injunction against the defendants on the ground that the defendants by using the mark 'Rajwadi' are passing off their own products as those of plaintiffs. The defendant contended that plaintiffs trade mark registration is for 'Badshah' and 'Rajwadi has been disclaimed and the court observed that the question of infringement would arise only if their trade mark 'Badshah Rajwadi was registered but undoubtedly, the plaintiffs have a registration for the word mark 'Badshah', whereas 'Rajwadi' has been disclaimed. Learned Counsel relying upon the decision in S.P. Chengalvaraya (D) v. Jaganath (D) 1994 Rajdhani Law Reporter (SC) 102, wherein it was held that it is the settled proposition of law that a judgment or decree obtained by playing fraud on the court is a nullity and nonest in the eyes of law, submitted that the impugned order dated 15.5.2006 of the Assistant Registrar of Trade Marks is liable to be set aside by this Appellate Board.
6. Shri Manchanda submitted that the respondent No. 2 has wrongly and illegally rejected the application for registration by pointing out that in response to the objection under Section 9 of the repealed Act raised by the Registrar at the time of preliminary examination of the application, the appellant filed the necessary evidence to establish that the mark applied for has become distinctive to the goods in respect of which registration is sought and after taking into consideration of such evidence and holding that the mark is adopted to distinguish the goods of the appellant the application for registration was ordered to be advertised before acceptance for registration and the application was accordingly advertised in the Trade Marks Journal. In view of this, the Registrar was also of the same view and was unable to sustain the objection under Section 9 of the repealed Act raised by the respondent No. 1 in its notice of opposition but while passing the impugned order the Registrar has not considered the same and has not given any benefit and wrongly and illegally refused the application of the appellant.
7. Shri Manchanda contended that the respondent No. 2 seriously erred to hold that the mark of the appellant is deceptively similar and the mark if used in connection with the goods covered by the proposed registration will be reasonably likely to cause confusion and deception amongst a substantial number of persons. The respondent No. 2 has failed to appreciate that the appellant has been continuously using the mark since 1st April, 1993 and is still using the mark in respect of goods for which registration is sought and there is not a single instance cited to show that there is or has been any confusion or deception amongst the consumers. He further contended that the appellant has acquired the right to trade through use in good faith before the commencement of the Act and as such the appellant is entitled for registration under Sub-section (11) of Section 11 of the Act.
8. Shri Manchanda submitted that Section 12 of the Act provide that in the case of honest concurrent use or of other special circumstance which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose. In the instant case, the appellant is the honest concurrent user of the trade mark and at the time of making application for registration the appellant had concurrently used the mark for over a period of five years and six years. The respondent No. 2 has not appreciated the submission made by the appellant and has not considered the honest concurrent user of the appellant and exercised his discretion in an arbitrary and fanciful manner.
9. Learned Counsel contended that the appellant has adopted the trade mark JINDAL from the surname of the proprietor, i.e. Sushil Jindal and Se from the first alphabets of the firm name and the same has been proved by the appellant by way of substantial documentary evidence filed before the Registrar in the opposition proceedings. The respondent No. 2, without appreciating the evidence, has erroneously passed the impugned order by denying the proprietary right of the appellant. Learned Counsel lastly contended that the appellant (Shri Sushil Jindal) was not working as an employee with the firm of the respondent No. 1 as has wrongly been averred by the respondent No. 1 in its counter-statement. He took us to page 112 of the documents filed by the respondent No. 1 in support of its case and pointed out that the name of employee entered at serial number 37 is Shri Sushil Kr. Gupta son of Sh. Chaman Lal Gupta not Shri Sushil Jindal son of Shri Chaman Lal Jindal and signatures of Shri Sushil Kr. Gupta and Shri Sushil Jindal do not match each other, hence, the averment made by the respondent No. 1 in its counter-statement is false and without any basis.
10. Shri Miglani learned Counsel for the respondent No. 1 submitted that the respondent No. 1 has honestly adopted the trade mark JINDAL from its trading style JINDAL ELECTRICALS in the year 1966 and started using the same in respect of goods of its manufacture on and from the year 1967. The respondent No. 1 is the proprietor of the trade mark Je-JINDAL, Je-JINDALS as well as the letters Je and the word JINDAL or JINDALS or both, used severally as well as jointly which are associated exclusively with the respondent No. 1 in respect of goods of its manufacture and trade and no body else. Learned Counsel further submitted that the question of concealment of disclaimer as alleged by the appellant does not arise in the case on hand. It is evident from the facts that neither the respondent No. 1 has any occasion to conceal the disclaimer of the word JINDAL nor the respondent No. 1. has played any fraud on the Registrar to secure any kind of unfair gain and as such the misconceived contention of appellant is not at all sustainable.
11. Shri Miglani submitted that the appellant without showing as to how its mark is distinctive or capable of distinguishing its goods from those of the goods of the respondent No. 1 has wrongly claimed that the Registrar having raised the objection under Section 9 of the repealed Act and there after having ordered for application to be advertised before acceptance has refused the benefit of registration. He further submitted that the statement of the appellant regarding objection raised at the preliminary examination of application and filing of evidence by it is ex parte against the respondent No. 1 and as such no notice can be taken about the same. The Registrar is not bound to adhere to any decision taken on the application before advertisement of application in the Trade Marks Journal. The appellant having filed the application for registration on the ground of earlier user or concurrent user of the impugned mark it for the appellant to establish the same but the appellant has utterly failed to so establish.
12. Shri Miglani submitted that the respondent No. 2 has rightly held the impugned mark is deceptively similar to the mark of respondent No. 1 and the goods also of similar description. The trade channel in respect of goods of both the parties and the area of sale are same. It was submitted that the get up of the impugned mark is similar to the mark of the respondent No. 1 as the appellant depicted the letter 'S' in upper script in such a way to give a look of letter 'J' and thereafter the letter 'E' is shown in lower script so that the letters 'Se' in the appellant's mark resembles with 'Je' in the respondent No. 1's mark. Further, the appellant depicted the word 'JINDAL' below the letters 'Se' in similar get up and design as that of the respondent No. 1's mark 'Je-JINDAL'. By placing reliance in the decision in Sandys Confezioni S.P.A. v. Tata Engineering and Locomotive Co. Ltd. 2006 (32) PTC 296 (IPAB) wherein it was observed that one should not strain to differentiate or distinguish the trade mark and obviously, this principle is to help the individual to identify the trade mark in respect of the goods easily in order to distinguish the proprietors and their goods; the applicant's mark though consisting of letters 'S' and T, for a look one has to strain too much to identify, the learned Counsel submitted that in the present case also one has to strain to distinguish or differentiate the competing marks. Further, relying on the judgment in the case of Shamlal and Ors. v. Parley Products Manufacturing Co. (P) Ltd. AIR 1967 MADRAS 116, the learned Counsel asserted that the appellant has failed to discharge the burden which lies on it to provide that a simultaneous, normal and fair use of the competing marks will not lead to confusion or deception among the members of the public More so the motive of the appellant is not honest.
13. Shri Miglani asserted that the appellant has dishonestly and deliberately copied the trade mark of the respondent No. 1 and there is no bonafide user of the impugned trade mark much less the wrong claim of honest concurrent user for the alleged period of five and one half years. The learned Counsel further submitted that the respondent No. 1 has through its counsel served a notice dated 2.5.2003 on the appellant to desist forthwith from using the impugned mark which is identical as well as deceptively similar to the mark of the respondent No. 1. He drew our attention to page 115 (Annexure G) containing a copy of reply from the appellant to the aforesaid notice admitting in para 19 thereof that the rival marks are identical and deceptively similar and even the appellant threatened that action for passing off, infringement, cheating, etc. will be taken against the respondent No. 1. When the adoption of mark is subsequent to the respondent No. 1 and dishonest and malafide, the question of honest concurrent cannot arise.
14. Shri Miglani, vehemently opposing the contention of Shri Manchanda that the appellant has adopted the trade mark JINDAL from the surname of the proprietor (Sushil Jindal), submitted that Shri Sushil Jindal, earlier under his surname Gupta was an employee with the respondent No. 1. By drawing our attention to pages 132 and 133 of the documents filed by the respondent No. 1 he submitted that Shri Sushil Kumar has obtained Passport No. Y 090647 dated 11.4.1986 issued at Chandigarh and added 'Jindal' surname in the Passport on 6.6.2003. It is, therefore, evident that the appellant has adopted the identical and deceptively similar mark to the mark of respondent No. 1 knowingly with malafide intention to trade upon the very well acquired reputation of the trade mark of respondent No. 1. He submitted that even otherwise the appellant has no right to use the trade mark JINDAL in view of existence of prior user of the trade mark JINDAL in relation to similar goods in the same local area and it is not the case of appellant that use of similar trade mark in respect of goods of similar description by the respondent No. 1 was not within his knowledge. The getup or design of lettering the impugned trade mark shows the same could not have been done so without keeping the trade mark of respondent No. 1 before the appellant. The learned Counsel by placing his reliance upon the order passed by this Appellate Board in Sudarsan Trading Co. Ltd. v. Registrar of Trade Marks and Anr. 2005 (31) PTC 491 (IPAB) asserted that the claim for concurrent user implies simultaneous and contemporaneous use which is lacking in the case of appellant. The learned Counsel relying on the decision in Alex Pirie and Sons Ltd.'s Appln. (1932) 49 R.P.C. 195 Ch. D., C.A. submitted that the respondent No. 2 has while exercising his discretion has taken into consideration the extent of the concurrent user, extent in time and quantity and the degree of deception from registration of the appellant's mark and, thereafter exercised the discretion adverse to the appellant. The learned Counsel for the respondent No. 1 while concluding his arguments urged that the order of respondent No. 2, except in respect of distinctiveness of the mark, be upheld and prayed for the award of compensatory cost.
15. We have carefully heard counsel for both the parties and perused the records relating to the appeal. The first issue before us is whether non discloser of disclaimer by the respondent No. 1 in the opposition proceedings amounts to fraud played on the tribunal? It is undisputed that the respondent No. 1 filed its notice of opposition on 28.4.2003; the respondent No. 2 heard the matter on 21.12.2005 and passed the impugned order on 15.5.2006. The respondent No. 1's trade mark with disclaimer was advertised before acceptance on 16.6.2006 that is to say the trade mark with disclaimer was advertised after passing the impugned order. There was no occasion for respondent No. 1 to disclose the disclaimer in between 28.4.2003 and 15.5.2006 i.e. during the opposition proceedings before the respondent No. 2 as the trade mark with disclaimer was not registered even on 16.6.2006 but only advertised before acceptance. Before the date of the said advertisement, the Act (Trade Marks Act, 1999) had come into force and the Act do not contain any provision for disclaimer. However, the Registrar has been empowered under Section 18 (4) of the Act to put such conditions or limitations while granting registration as it may deem fit in the facts and circumstances of the case. The averment of the appellant in para 2 of its rejoinder to the counter-statement that "since the exclusive rights in the word JINDAL have been disclaimed while obtaining registration" can not be accepted without any evidence to prove that the trade mark has been registered. In other words, when there is no trade mark registration with disclaimer, the question of non-disclosure or suppression of disclaimer does not arise and to this extent the impugned order cannot be disputed. When the question of discloser of disclaimer did not arise in this case we do not think it is necessary for us to deal with the purpose or effect of a disclaimer. The decisions in the cases of Om Prakash Gupta and Anr. (supra), Jhaveri Industries (supra) and S.P. Chengalvaraya (supra) will not be of any help to appellant as their facts are quite distinguishable. We do not see any merit in this contention of the appellant that the order has been obtained by playing fraud on the tribunal by the respondent No. 1. Therefore, the contention is not sustainable and the issue is decided against the appellant.
16. Coming to the issue that the Registrar having raised the objection under Section 9 of the repealed Act at the preliminary examination stage and after satisfying himself on the strength of evidence filed by the appellant ordered to advertise the mark before acceptance, the benefit thereof was not given to appellant by the respondent No. 2, it is undisputed that the aforesaid proceedings took place at the time of preliminary examination of the application when the respondent No. 1 was not a party to the proceedings. It is notable that before an application for registration is opposed, the matter is wholly between the applicant and the Registrar but once opposition is entered, the question of registration becomes inter parties and the Registrar is not bound by the ex parte decision given by him at the stage of advertisement. In this connection, we would like to refer to a judgment of the Trade Marks Registry, Bombay 1982 PTC 284 which followed the judgment of Marcos Bale Y Hnos' Appln. 65 RPC 17 more particularly to the following observations at Page 23:
But when an application which has been advertised as subject to certain conditions and limitations is subsequently opposed, the question of registration becomes a matter inter parties, where as previously it was a matter solely between the applicant and the Registrar. Thus in the opposition proceedings the Registrar may be called upon to review many issues which he has already decided ex parte.
Where in an opposition proceedings the opponent objected that the registration of trade mark would be contrary to the provisions of Section 9 of the repealed Act, it was incumbent upon the respondent No. 2 to consider the objection and decide the issue of distinctive character of the mark applied for registration. The evidence of distinctiveness filed at the time of preliminary examination of the application by way of affidavit dated 6.12.2001 of Shri Sushil Jindal, proprietor of the firm claimed in para 5 thus: "That due to long standing, use and publicity, the trade mark 'jindal' has become distinctive of the goods manufactured by My Firm and I sincerely feel that My Firm is entitled to the registration of Trade Mark JINDAL in favour." but there was not an iota of published/publicity material. In the copies of invoices, except logo and word JINDAL printed on the top, nothing is mentioned against the description of goods to show that the goods sold were the goods of its manufacture. The first invoice was dated 8.6.93 and the description of goods therein was MCB westing house, G.E.C. make, meaning thereby that MCB sold was of GEC make not JINDAL make. The sales figures for 1993-1994 to 1997-1998 (Rs. 4987650 for 93-94 and Rs. 8109800 for 97-98) were furnished but the copies of invoices filed were 21 for the years 1993-1994 to 1997-1998. There is no statement in the affidavit as to whether the firm had only 21 transactions during the years 1993 to 1998 or why all the invoices had not been filed. In the absence of such a statement, the possible inference that can be drawn is that the sales figures were inflated and therefore not reliable. This inference drawn that the sale figure were inflated gets support from the fact that the respondent No. 2 has in the impugned order recorded that the sales of the products under the impugned trade mark have risen from Rs. 675 in 1992-93 to Rs. 3209425 in 2002-03 (the sale figures for 1997-98 was Rs. 1601689), whereas sales figure furnished on preliminary examination stage referred to above was Rs. 4987650 for year 1993-94 and Rs. 8109800 for the year 1997-98. However, we have no opportunity to peruse the notice of opposition; counter-statement and affidavit evidence (along with documents) of Shri Bharati Bhushan Jindal referred to by the respondent No. 2 in its impugned order as the same are not found on the file received from the Trade Marks Registry, Delhi. The said file contains notice of opposition No. T-4758 in application No. 821212-B from Jindal Industries, Ludhiana. As per proviso to Sub-section (1) of Section 9 of the Act, it is possible to register a surname upon proof of its distinctiveness, but in view of the above discussion, we are unable to hold that the mark applied for registration by the appellant had become distinctive or acquired distinctive character on the date of application.
17. The next issue to be decided is whether the respondent No. 2 has seriously erred to hold that the appellant's mark is deceptively similar and reasonably likely to cause and deception among people. The impugned mark of the appellant consists of the word JINDAL and device of 'Se' logo Se (letter S designed to give a look of letter J) and the mark of respondent No. 1 is word JINDAL and device of 'Je' logo. The two competing marks visually and phonetically resemble so nearly that they will cause confusion or deception in the minds of public. Deceptive similarity of trade marks cannot be judged by placing the two trade marks side by side or by words going with the picture devices. It is general impression which the marks give to members of the public or the first impression one gets is the deciding factor. Again in deciding the similarity between the two marks, it is established on the basis of innumerable authorities that the question has to be approached from the point of view of an unwary purchaser of average intelligence and imperfect recollection. The goods to which the mark are applied must be considered and the nature of customers who would be likely to buy the goods must be kept in view and also any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks may be considered. For the purpose of deciding the question of similarity between the two marks, the marks have to be considered as a whole and the true test is whether in totality of the proposed trade marks are such that they are likely to cause confusion or deception or mistake in the minds of the persons accustomed to the existing trade mark. In the present case the two marks 'Je JINDAL' and 'Se JINDAL' are almost similar. The letter S is written in such a way that one has to strain too much to identify whether it is 'Se' or 'Je'. It has been observed by this Appellate Board in the Sandys Confezioni S.P.A.'s case (supra) that one should not strain to differentiate or distinguish the trade mark and obviously, the principle is to help the individual to identify the trade mark in respect of the goods easily in order to distinguish the proprietors and their goods. The prominent word JINDAL exists in both the marks. The marks are visually and phonetically similar. The goods are of similar description. The trade channel for the goods in relation to both the marks and the class of buyers is common. All these factors indicate that the confusion or deception is inevitable. Even the appellant in para 19 of its reply dated 23.5.2003 to cease and desist notice of the respondent No. 1 has admitted identical and deceptively similarity of mark which reads thus: "19. ...Rather the cause of action has occurred to my clients due to the adoption of the identical and deceptively similar trade mark by your clients and action for passing off, infringement, cheating, illegal threats, defamation will be taken against your clients." In our view this extracted admission of the appellant is true as nothing contrary to that has been shown or withdrawn by the appellant or specifically replied or controverted to the averment about the said admission made in para 25 of the affidavit of Shri Bharti Bhushan Jindal. Our above view gets support from the decision in Nathoo Lal v. Durga Prasad , wherein the Hon'ble Apex Court has held that what is admitted by a party to be true must be presumed to be true unless the contrary is shown. Further, the same Court in Narayan Bhagwantrao Gosavi Balajiwal v. Gopal Vinayak Gosavi and Ors. has held that an admission is the best evidence that an opposing party can rely upon, and though not conclusive, is decisive of the matter, unless successfully withdrawn or proved erroneous. The respondent No. 1 is in point of time prior adopter and user of the mark 'Je-JINDAL'. The Assistant Registrar of Trade Marks has, in our view, rightly held that having regard to the prior user of the respondent No. 1's mark in relation to the goods of similar description, he was of the opinion that the mark applied for, if used in connection with the goods covered by the registration proposed, will be reasonably likely to cause confusion and deception amongst a substantial number of persons. The Assistant Registrar of Trade Marks has also held that the appellant has not submitted any evidence that there will not be any confusion or deception by registering the impugned mark. We, therefore, do not see any reason to interfere with the finding of the Assistant Registrar. The contention of the appellant that he is entitled to get registration under Section 11 (11) of the Act holds no water as for getting the benefit under Section 11(11) it must be shown prior use before the commencement of the Act. The use was in good faith. Nothing has been shown during the course of argument or there is anything in the pleadings to show that the use of the impugned mark before the commencement of the Act was in good faith.
18. Section 12 of the Act provides that in the 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 similar (whether registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any as the Registrar may think fit to impose. By plain reading of the provision, the condition for enabling registration under that section is that in the opinion of the Registrar, there should be concurrent use or there should be other special circumstances which make it proper for him to permit registration with or without condition. In the present case, the appellant claimed to be honest concurrent user of trade mark Se JINDAL but the respondent No. 2 has held that the impugned mark suffered from the triple identity. The averment made by the appellant is that it had adopted the word JINDAL from the surname of its proprietor and Se from the first letters of the firm name Sushil Electricals, claiming use thereof since 1.4.1993. A mere concurrent use is not sufficient for the purpose of Section 12 of the Act but the concurrent use should be honest concurrent use. Honesty of adoption and user is the sine quo non for application of Section 12 of the Act. Where the adoption or subsequent user of the mark is proved to be dishonest, no amount of user will help the applicant. The claim for concurrent user implies simultaneous and contemporaneous use. The appellant's claim of user is 1.4.1993 in the town of Ludhiana (Punjab) and in the same town the respondent No. 1 has been using since the similar mark 'Je JINDAL' for goods of similar description since 1967. It is not the case of respondent No. 1 that the use of similar mark in respect of goods of similar description was not within its knowledge. The design and get up of lettering of device of Se logo cannot be said to be honest. Since the adoption of mark is not honest no amount of user can cure it. This Appellate Board in the case of Sudarsan Trading Co. Ltd. (supra) has observed thus: "The legal principles in relation to the availability of Section 12(3) are well settled and any exercise of the power by the Registrar for granting honest concurrent use under Section 12(3) is to be given in exceptional cases where honest and concurrent use has been proved by the applicant to the hilt. Here there is a position of "triple identity", namely, same goods, identical or substantially identical mark, and same area of use. However, the principles of law as contained in Section 12(3) is an exception to the general principles of trade mark law as explained above. The following propositions have been laid down in various cases for entitlement of honest and concurrent use.
i. The honesty of adoption and use.
ii. The quantum of concurrent user shown by the applicant having regard to duration, area and volume of trade.
iii. The degree of confusion likely to follow from the resemblance of the applicant's and opponent's marks, which is a measure of the public inconvenience.
iv. Whether any concrete instances of confusion have in fact been proved; and v. The relative inconvenience which would be caused to the parties and the extent of inconvenience which would result to the public if the applicant's mark is registered.
In the light of above discussion of the issue of honest concurrent use, we do not see any error committed by respondent No. 2 to uphold the objection raised by the respondent No. 1 under Section 12 of the Act on the ground that the impugned mark suffered from the principle of triple identity.
19. Coming to the issue of proprietary right of the appellant, it is notable that at the time of adoption of the impugned mark by the appellant there was an identical or almost similar trade mark being used in the same town by the respondent No. 1. The respondent No. 1 adopted and used the trade mark in 1967 and the appellant adopted and used the impugned mark in 1993. It is not the case of appellant that the use of similar mark for goods of similar description by the respondent No. 1 was not within its knowledge. The appellant has adopted design of letter S to give a look of letter J to bring its device of 'Se' logo closer to 'Je' logo of the respondent No. 1 and there is no explanation for so doing by the appellant. In such circumstances the adoption of impugned mark by the appellant can not be termed bonafide and honest adoption and where the adoption of trade mark is not bonafide and honest, the person making such adoption cannot claim to be proprietor thereof. Since we are satisfied that the afore mentioned facts suffice to hold that the adoption of impugned mark by the appellant is not bonafide and honest, it is not necessary for us to go into the issue of alleged employment of the appellant with the respondent No. 1. Even if we go in to this issue, we may neither be able to decide the issue on the basis of present records nor it will be within our domain to decide.
20. In view of the above, we are of the opinion that the appeal has no merit at all and accordingly the appeal is dismissed.
21. Since the appeal is dismissed, the stay petition bearing M.P. No. 83/2006 becomes infructuous. There shall be no order as to costs.