Judgment:
(Circuit Bench sitting at Kolkata)
Honble Shri Justice M.H.S. Ansari
1. The main appeal is directed against the order dated March 25, 2003 read with the order dated 11.4.2005 in the Review Petition asking review of the earlier mentioned order dated March 25, 2003. By the order dated March 25, 2003 the application of respondent for registration of the Trade Mark SKE under Application No.552741 in respect of plummer block cast iron being goods included in class 6 was allowed to proceed to registration subject to restriction of the goods for sale in the state of West Bengal only. Though, the user was claimed in the application for registration since July 1949, the application was accepted for registration subject to amendment of the statement of user to read as since 17.8.1974. Appellant before us was the opponent before the Registry and had filed its opposition on the ground that it is the registered proprietor of the mark âSKFâ which is also their house mark and is registered in various classes ie. in class 6, 7, 8, 9 and 12.
2. Instant application M.P.63/2005 is filed praying inter alia to stay the operation of the order appealed. Order sheet dated 12.2.2007 shows that notice of hearing issued by the Registry of this tribunal to the respondent had not returned (acknowledgment cards awaited). Matter was adjourned and fresh notice was directed to be issued to the respondent. From the record it appears that subsequent to the said hearing and adjournment acknowledgment cards have been received in the Registry showing service of notice upon the firm as well as its partners. However, the fresh notice issued by the Registry to the respondent intimating the date of hearing as 4.6.07 was returned with endorsement ârefusedâ. This court treated the service as complete and heard arguments of Shri Ajay Kumar Gupta, Ld. Counsel for appellant/petitioner in MP No.63/2005 none having appeared on behalf of the respondent.
3. From the order appealed against dated 25.3.2003, it is seen that the objections of appellant under Section 11 (a) and (e) were rejected. It was observed that appellant (opponent) âhave filed evidence to establish the use and reputation of their mark but there is not a single instance of confusion or deception have been brought to the notice of the tribunal and, therefore, the opponents have failed to make out the case under Section 11 (a) and (e) of the Actâ. With regard to the objections under Section 12(1), it was held that âin this case the goods of the opponents and the applicant are similar but the both the rival marks are not identical or deceptively similarâ.
4. While rejecting the objection under Section 18, it was held that the applicants have given convincing explanation for the adoption of the Trade Mark âSKE.
5. Though, Shri Ajay Kumar Gupta, Ld. Advocate has referred to several judgments in support of his various contentions, it would suffice in our view, if reference is made to two decisions as only a prima facie view is to be taken at this stage. To our mind, the order under appeal is mainly based on the ground that the rival marks are not identical or deceptively similar.
6. An earlier Division Bench of this Board in its order No.54/2005 dated 10.2.2005 considered the question of deceptive similarity between the appellants registered Trade Mark âSKF and the registration of Trade mark âSKE applied for in class 12. It was held that the rival marks are deceptively similar with two strong consonants S and K being at the first two places. It was further held that in its geometrical presentation, the letter E and F bear too much of resemblance leading to confusion. The Delhi High Court in Aktiebolaget SKF Vs. Rajesh Engineering Corporation 1997 PTC (16) Page 160 considered the Trade Marks âSKF and âSKI. It was held that it was manifest from the two trade marks that the first two letters thereof are common. Only the last letters in the two marks are different. Since the first two letters of the competing marks are identical they bear a close similarity. It was further held that there is a possibility and likelihood of mistake being committed by an average man of ordinary prudence and intelligence in identifying the trade mark SKI with the goods of the appellant.
7. The two decisions cited supra, support the contention of Shri Ajay Kumar Gupta that the rival marks are deceptively similar and there is a possibility and likelihood of mistake being committed in identifying the impugned Trade mark SKE with the goods of the appellant. The Ld. Assistant Registrar in the order under appeal has already held that the goods covered by the rival marks are similar.
8. We may also state here that with regard to the consideration of the objection under Section 18, if there is a owner of similar Trade Mark who has made an earlier assertion of proprietorship, as in the case of hand, where the opponent is the registered proprietor of the Trade Mark SKF, the claim of the respondent applicant being subsequent adopter and user cannot be said to be well founded nor adoption can be said to be honest. Any adoption or use of the Trade mark by the respondent applicant similar to the registered mark of the appellant, would not entitle the respondent to have better claim, prima facie respondent/applicant having taken the risk in adopting the mark without making proper enquiries as to whether anyone else have adopted the mark. Subsequent adoption and user of a mark deceptively similar to that of the appellant cannot militate against or take away the rights acquired by the appellant. A prima facie, case in our view has been made out for grant of interim order.
9. We are therefore inclined to pass an interim order in the instant MP No.63/2005 by directing the Registry not to issue the Certificate of Registration pursuant to the order appealed against dated March 25, 2003 in Application No.552741 and disallowing Opposition No.CAL-53410 in Class 6 if the Certificate of Registration has not already been issued.