Judgment:
(Circuit Bench Sitting at New Delhi)
Honble Shri Ms. S. Usha, Technical Member:
The appeal is arising out of the order dated 18th June, 2002 passed by the Deputy Registrar of Trade Marks disallowing the opposition No.DEL/T-1291/54058 and allowing the application No.519261B in class 25 to proceed for registration subject to the condition that the applicants shall substitute the words âNICE RUBBER INDUSTRIESâ in place of the word NICE appearing on the mark applied for under the provision of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act).
2. The respondent No.1 herein filed an application under No.519261B in class 25 on 1st November, 1989 for registration of a trade mark. N.R. in the form of a logo alongwith the word NICE in respect of footwears claiming user since 11th July, 1988. The trade mark was accepted for registration with the condition of disclaimer of the word NICE and associating the same with the registered trade mark No.519251. The said trade mark was advertised in the Trade Marks Journal No.1202 dated 1st July, 1999 at page 839.
3. The appellant herein filed their notice of apposition opposing the registration on the ground that the registration would be in contravention of the provisions of the Act. The respondent No.1 filed the counter statement denying all the material averments made in the notice of opposition. On completion of the formal procedure, the Deputy Registrar the respondent No.2 herein, passed the impugned order. The respondent No.2 herein had observed that the respondent No.1s trade mark consisted of a logo depicting the letters N.R. in a very special and particular manner along with the word NICE. As the respondent No.1 was the registered proprietor of the logo they had exclusive right to use the said logo as the trade mark. As the respondent No.1s trading style was NICE RUBBER INDUSTRIES, their adoption of the trade mark âNICEâ was bonafide. The respondent No.1, during the course of the argument before respondent No.2 had submitted that they would amend their trade mark by substituting their trading style âNICE RUBBER INDUSTRIESâ in the place of their trade mark âNICEâ and the same was accepted by the respondent No.2 as the identity of the mark as a whole is not altered. The amended trade mark as a whole is different from the appellants trade mark and also the respondent No.1s trade mark is distinctive in terms of section 9 of the Act.
4. Aggrieved by the said order the appellant herein filed the appeal before the Honble High Court of Delhi in CM(M) No.483 of 2002 and the same was transferred to this Appellate Board by virtue of the provisions of section 100 of the Trade Marks Act, 1999 and this Appellate Board re-numbered the same as TA/193/2003/TM/DEL.
5. The appellant is a partnership firm carrying a business of manufacturing and selling all kinds of footwears including those made of rubber, leather and other materials. The appellant had adopted and used the trade mark âNICEâ since 1971, openly, continuously and extensively. The appellants had also been using the trade mark âGRI NICEâ since 1978. The trade mark âGRI NICEâ has been registered in the name of the appellant in class 25 under No.398108 as of 26th November, 1982 and is still in force. The respondent No.1 filed the impugned application for registration claiming user since 11/07/1988. The prominent feature of the application was the word âNICEâ. The respondent No.2 passed the impugned order without an application on Form TM-16 to amend the application. The appellant filed the appeal on the following grounds that :-
(a) the impugned order is contrary to the facts and evidence on record;
(b) the impugned order is contrary to the provisions of law;
(c) the Learned Registrar had considered the matters which were not to be considered and omitted to consider those which were proper for consideration;
(d) the learned registrar ought to have allowed the apposition and refused registration;
(e) the respondent No.2 had not made any request during the course of argument to amend the trade mark and even if made, the respondent No.1 ought to file an application on Form TM-16 along with the amended label and the prescribed fee. The required procedure has not been followed;
(f) the respondent No.2 has not examined the appellants objections under sections 11(a), 11(e), 12(1) and 18(1) of the Act except for section 9 of the Act;
(g) the learned registrar ought to have considered the fact that the appellant has adopted the trade mark NICE in 1971 and had been using the same continuously and extensively;
(h) the Learned Registrar ought to have considered the fact that the respondent No.1 had not filed any evidence in support of his application;
(i) the application for registration has been filed on 01.11.1989 claiming user since 11.07.1988, the use of the mark is for a period of one year, three months and twenty days for which period the respondent No.1 has not filed any evidence. Accordingly, the respondent No.1 has never used the trade mark;
(j) in the absence of evidence, the mark having not acquired distinctiveness ought to have been refused registration under section 9 of the Act;
(k) the respondent No.1 has not discharged his duty of proving that the trade mark is registrable;
(l) the respondent No.2 ought to have considered the fact that the trade mark GRI NICE in class 25 has been registered in favour of the appellants as of 26.11.1982 itself;
(m) the respondent No.2s view that the respondent No.1 adoption was bonafide and honest cannot be relied on as the appellants are prior adopters and users of the trade mark;
(n) the respondent No.1 has not rebutted the same; the respondent No.1 has admitted that they are subsequent user and the respondent No.1 has not produced any document to prove their user;
(o) the Learned Registrar ought to have taken into consideration the well settled principle that disclaimer would not affect the likelihood of confusion or deception as it would not appear on the trade mark as used;
(p) the learned registrar ought to have examined the appellants objection under section 12(1) of the Act;
(q) the learned registrar ought not to have held that the substitution would not amount to substantial alteration of the trade mark originally applied for;
(r) even after substitution, the trade mark registration will be contrary to the provisions of sections 9, 11(a), 11(e), 12(1) and 18(1) of the Act;
(s) the learned registrar ought to have refused the application for registration in exercise of his discretion under the provisions of section 18(4) of the Act.
6. After transfer of this appeal to the Appellate Board from the Honble High Court, notice to the parties were issued by this Registry of this Appellate Board. Even after receipt of notice the respondent No.1 remained absent. The matter was therefore heard exparte. We have heard Shri Saurabh Banerjee, counsel for the appellant on 19.03.2009 in the Circuit Bench Sitting at New Delhi.
7. Learned counsel for the appellant submitted that they are the prior user of the trade mark âNICEâ. They have already registered the trade mark âGRI NICEâ as of 26.11.1982. They adopted the trade mark âNICEâ in the year 1971 and had been using the same continuously without any interruption.
8. The counsel further submitted that the respondent No.1 had filed two applications (1) the word NR and (2) NR with NICE. The first application was registered and the second application is now under challenge. The Registrar himself has recorded in the impugned order that the respondent No.1 has not filed any evidence in support of his application and to say that the mark has acquired distinctiveness within a short span of time is baseless.
9. The counsel also submitted that they adopted the impugned trade mark as early as 1971 and had obtained registration as early as 1982 itself whereas the respondent No.1 has adopted the trade mark on 11.07.1988 and filed an application for registration on 01.11.1989. The respondent No.2 therefore failed to consider the fact that the appellants were prior in use of the trade mark.
10. The counsel for the appellant brought to our notice the finding of the respondent No.2 i.e. the Deputy Registrar stating that the respondent No.1 had agreed to substitute NICE RUBBER INDUSTRIES in the place of NICE and the same was accepted. The counsel pointed out that the respondent No.1 had not followed the procedure to amend the application. No application on Form TM-16 was filed by the respondent No.1. The respondent No.2 had bye passed the procedure and on oral request allowed the amendment which is illegal.
11. The counsel further submitted that the respondent No.2 has not dealt with the other points as to the provisions of the Act, though raised by the appellant in the Notice of opposition.
12. We have carefully considered the argument of the counsel and have gone through the pleadings and documents.
13. The only issue that arises for consideration is whether the impugned order passed by the Deputy Registrar allowing the oral request for amending the application for registration and accepting the application for registration of the trade mark as amended is legally valid.
14. On perusal of the impugned order, it is found that the respondent No.2 has admitted that the respondent No.1 i.e. the applicant for registration has not filed his evidence in support of his application, in such a case it is clear that the applicant has not proved his case by material evidence. When that be the case, the finding that the trade mark is distinctive in terms of section 9 of the Act does not sustain.
15. We also find that the Registrar has not followed the necessary procedure contemplated under the Act. Where an application is to be amended the procedure is that an application for the same either to substitution or correction can be made only by an application on Form TM-16 along with necessary fees prescribed under the Act. On such an application being filed, an opportunity is granted to the other side to counter it and then an order is to be passed giving reasons either for accepting it or rejecting it. The Deputy Registrar had stated âthat the respondent No.1 during the course of argument desired to amend the application by substituting the words âNICE RUBBER INDUSTRIESâ instead of âNICEâ. Even if the said amendment is allowed the identity of the mark as a whole is not altered. It is well settled law that when an application for amendment is made and if there is any material alteration a fresh application has to be made by the applicant. The observation that the amended mark is registrable as the appellants are registered proprietor of the logo is not correct. A proceeding for making an alteration on substitution in the register of Trade Marks cannot be regarded as a purely administrative proceeding.
16. In Parison Fabrics Ltds App (1949) 66 RPC 217, p 222, âit has been held that once an apposition is entered, the Registrar has no jurisdiction to decide that the registration shall be allowed, upon a modification of the markâ. This view would squarely apply to the case on hand. If an applicant wants to amend his mark during opposition, the matter is no longer between the Registrar and the applicant. It is not between the applicant and the opponent, it is now in the interest of other people who may like to oppose the proposed version of the label.
17. In view of the above, we have no hesitation in setting aside the order of the Registrar and rejecting the application for registration. Therefore, the appeal is allowed with no order as to costs.