Intellectual Property Appellate Board
Ram Kishan, Trading As Raj Lakshmi ... vs Ascot (S And F) International Limited ... on 16 November, 2006
ORDER S. Usha, Member (T)
1. Appeal filed against the order of the Assistant Registrar of Trade Marks, New Delhi disallowing opposition No. DEL-7756 and accepting application No. 450703 for registration in class 28.
2. The first respondent as a proposed user filed an application No. 450703 on 6.3.1986 for registration of trade mark 'ASCOT' in respect of gymnastic and sporting articles and parts and fittings therefor included in class 28 and balls. The said application was advertised as accepted in Trade Marks Journal No. 1025 dated 16.2.1992 at page 1438-39. The appellant herein had filed their notice of opposition. The main averment of the appellant in the notice of opposition was that they had been using the impugned trade mark 'ASCOT' since 1966 and have obtained registration of the same under No. 249603 in class 25 as early as 1968 itself. They also mentioned that their mark had attained great reputation among the public as it had been used continuously and extensively and as such had become distinctive of their goods and had raised objections under Sections 9, 11(a), 11(e), 12(1) and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act.)
3. The first respondent had filed their counter statement denying the entire facts and submitted that they had been using the impugned mark 'ASCOT' for many years and had obtained registration of the mark 'ASCOT' I many countries. They had also averred that they had been selling their goods bearing the trade mark 'ASCOT' in the international market. They also submitted that the impugned mark 'ASCOT' had been registered in various other classes also. They prayed that the opposition be dismissed as it was not prohibited for registration under the sections as claimed in the notice of opposition. The learned Assistant Registrar of Trade Marks set the matter for hearing after the formal procedures were completed.
4. The Assistant Registrar disallowed the opposition and allowed the application to proceed for registration on the grounds mentioned hereunder.
Learned Assistant Registrar found that registration of the mark was not prohibited under Section 12(1) of the Act as the goods are different, though the marks are identical. He also observed that even though the marks were identical and the goods were different, the question of deception and confusion does not arise and hence not prohibited under Section 11(a) of the Act. He further held that as registered proprietors of the trade mark 'ASCOT' in various countries the first respondent had a definite claim to be the proprietor of the mark applied for in terms of provisions of Section 18(1) of the Act. The learned Assistant Registrar allowed the plea of the first respondent under Section 12(3) of the Act as the impugned mark 'ASCOT' formed part of their trading style ASCOT (S&F) International Limited.
5. Aggrieved by the said order the appellant filed the appeal No. CM(M) 304/99 before the High Court of Delhi and the same has been transferred to this Board in terms of Section 100 of the Trade Marks Act 1999 and numbered as TA/145/2003/TM/DEL.
6. The matter was taken up for hearing in the Circuit Bench at New Delhi on 7.8.2006. Learned Counsel Shri Vijay K. Gupta appeared for the appellant and learned Counsel Shri Shailen Bhatia appeared for the first respondent. Both the counsel advanced common arguments in TA/145/2003/TM/DEL and TA/146/2003/TM/DEL as the main issues in both the matters were same. For the sake of convenience separate orders are being passed.
7. Learned Counsel for the appellant mainly contended that they are the prior users of the trade mark 'ASCOT' since the year 1966. They were also the registered proprietors of the trade mark as early as 1966 in class 25. He also contended that even though the mark applied for is under class 28 the goods are cognate and allied. Learned Counsel for the appellant forcefully argued that the impugned mark 'ASCOT' is identical with the mark on register and the class of purchasers are also one and the same.
8. Learned Counsel for the first respondent drew our attention to various Trade Mark journal advertisements of their mark which were pending registration. He also argued that as the goods were different, any possibility of confusion or deception will not arise. He also contended that in the appeals filed before the High Court of Delhi by the appellant, in their applications no stay was granted for issuance of the registration certificate which goes to prove that the appellant had no valid case. Learned Counsel for the first respondent relied on various judgments in support of his claim.
9. We have carefully considered the arguments of both the counsel. We observe that the mark applied for registration by the first respondent is only as a proposed user. The mark has thus not acquired distinctiveness. The appellant has been using the mark since 1966 whereas the first respondent has applied for registration of the impugned mark only as a proposed user. To qualify for registration under Section 9 of the Act the mark should be distinctive of the goods or if not distinctive it should be capable of being distinguished. Hence the claim of the first respondent under Section 9 of the Act does not sustain.
10. As the marks are identical, the possibility of confusion and deception arises between the marks and are prohibited for registration under Section 11(a) of the Act. The impugned mark 'ASCOT' is already registered by the appellant as early as 1966 itself. We, therefore, observe that the appellant's mark has become distinctive by their long user.
11. We find that the appellant's goods under the trade mark has gained good reputation among the public by long and continuous user. Eventhough the trading channel and goods being different, falling under class 28, the appellant's trade mark has to be safeguarded and protected. If the impugned mark is allowed to be registered it may lead the public to believe that the goods of the first respondent are from the appellant which will lead to confusion and deception.
12. We find it necessary to refer to the familiarly known "BENZ case" - Daimler Benz Aktiegesellschaft v. Hybo Hindustan. The learned Judge in that case held that the name Benz as applied to a car has a unique place in the world and there is hardly any one who is conscious of existence of the car / automobiles who would not recognize the name 'Benz' used in connection with cars. Thus the name 'Benz' used for under garments cannot be permitted. The above observations was also confirmed by the Supreme Court. Based on the above principles we also hold that the application for registration by the first respondent is to be rejected as the appellant's mark has gained goodwill and wide reputation among the public.
13. On perusal of the records and facts of the case we find that the appellants have been using the mark since 1966 whereas the first respondent has made his application in 1977 only as a proposed user. The appellants have obtained registration of the impugned mark 'ASCOT' as early as 1968 itself. The first respondent though claims to have obtained registration in about 70 countries, have not given their date of user but only states that they had been using the mark for many years without giving any specific date of user. Looking into the facts we are of the opinion that the appellant is the prior user than that of the first respondent. It is a well settled principle of law that priority prevails even over the registered user. Based on the above principles we find that the appellant being the prior user has valid rights than that of the first respondent, the application of the first respondent is liable to be rejected. Hence we disagree with the learned Assistant Registrar's opinion that the first respondent has a definite claim to have proprietary of the mark applied for in terms of provisions of Section 18(1) of the Act.
14. We, therefore, set aside the order of the Assistant Registrar of Trade Marks, New Delhi disallowing the opposition No. DEL - 7756 and accepting the application No. 450703 for registration of the trade mark 'ASCOT'. Accordingly the appeal is allowed. The parties shall bear their own costs.