Judgment:
D.K. Deshmukh, J.
1. By this petition, the Petitioner challenges the order dated 22nd December, 1993 passed by the Asst. Registrar of Trademarks. By that order the Asst. Registrar has disallowed the opposition filed by the Petitioner to the application submitted by the Respondent No. 1 for registration of their trade mark.
2. The facts that are material and relevant for deciding this Petition are that the Petitioner is a partnership firm doing business of manufacture and sale of ready-madegarments and various like articles made from leather and imitation of leather. The Respondent is a company incorporated under the Laws of France. The Petitioner started using the trade mark Newman written in a particular style, so that the New and Man were written one under other and they were written in such a style that if the words are read up side down they also read as Newman. According to the Petitioner, the Petitioner started using that trade mark since April, 1979. In 1988, the Respondent No, 1 filed a civil suit before the Delhi High Court. The Respondent No. 1 in that plaint claimed that the Respondent is engaged in the manufacture and sale of various articles of clothes under the trademark Newman since January, 1969. It was claimed that the trade mark Newman is depicted in a characteristic Logo script so designed that the trade mark New Man appears upright whether viewed normally or even upside down. The characteristic Logo script was created in the year 1968 by the French designer in the course of his employment and under a contract of service with the firm 'Companies d'Esthetique Industrially' on the commission of the Plaintiff/Respondent No. 1. It was claimed that the said firm has assigned copyright in the said logo in favour of the Plaintiff by deed of assignment dated 25-1-1985. The Respondent No. 1 claimed that they have a copy right in the said design and the mark. It was claimed that the trade mark Newman of the Respondent No. 1 is registered in several countries. The names of those countries were disclosed in paragraph 7 of the plaint. The Respondent No. 1 also disclosed their sale figure from 1973 to 1986. They also disclosed the expenditure incurred by them on advertising the mark from 1976 to 1986. They claimed that their mark was extensively advertised in various magazines having circulation in various countries including India. They claimed that their trade mark has acquired international reputation and recognition. It was claimed that the Petitioner, who was the Defendant in the suit was using an identical and deceptively similar trade mark and, therefore, it was further claimed that the Defendant has adopted and is using an identical logo script as the stylist logo, which has earned for the Plaintiff great international reputation and recognition. The Respondent No. 1, therefore, claimed a permanent injunction restraining the Petitioner/Defendant from using their trade mark. In the suit before the Delhi High Court a compromise was reached between the parties and consent terms were filed and a decree was passed in terms of the consent terms filed by the parties by the Delhi High Court. As a result of the consent terms, the Petitioner agreed not to use the trade mark of the Respondent 'Newman' in the peculiar logo script, but he was entitled to use the word Newman in a different script. It appears that the Petitioner had applied for registration of his trade mark 'Newman' in the logo script, which was similar to the logo script of the Respondent No. 1. However, after the consent terms were entered into, he applied for amendment of his application and he was permitted to do so. The application filed by the Petitioner for registration of the trade mark wasopposed by the Respondent No. 1, however, subsequently that opposition was given up. Ultimately, by order dated 11th August, 1999, the trade mark of the Petitioner 'Newman' was registered. The registered trade mark of the Petitioner 'Newman' is written in a different style and is in consonance with the consent terms filed by the parties before the Delhi High Court. It appears that the Respondent No. 1 had applied for registration of their trade mark 'Newman' written in their peculiar style and that trade mark was registered in Class 25 on 16-8-1983 and that registration was secured by the Respondent even before the trade mark of the Petitioner was registered on 11th August, 1999. The Respondent No. 1 had made an application for registration of their trade mark 'Newman' written in the same peculiar style, but with a different background of a triangle in the year 1985. After that application was filed, the Petitioner lodged an objection to that application. The main objection of the Petitioner was that registration of the trade mark of the Respondent is likely to cause deception and confusion in the public mind, because of the use of identical trade mark by the Petitioner. That objection has been overruled by the Registrar by the order impugned in this Petition and he has directed registration of the trade mark of the Respondent No. 1. It is this order which is challenged in the present petition.
3. The learned Counsel appearing for the Petitioner submits that the opposition filed by the Petitioner has been rejected by the Registrar mainly on the basis of compromise which was recorded by the Delhi High Court between the parties. The learned Counsel submits that while considering an objection under Section 11(a) of the Trade Marks Act the Registrar has to take into consideration public interest and has to decide whether by permitting an identical trade mark to be registered, public interest is likely to be adversely affected. The learned Counsel submits that for consideration of an objection under Section 11(a) of the Act, a question that the Petitioner could not have raised that objection because of the consent terms is not relevant. The learned Counsel submits that the Petitioner has been using the trade mark from 1979, whereas the Respondent No. 1 has not been using the trade mark by manufacturing and selling the goods under that trade mark in India. The Petitioner being a prior user of the trade mark was entitled to object to the registration of the trade mark of the Respondent No. 1 and therefore, the Registrar was not justified in rejecting the objection. The learned Counsel submits that the Registrar was also not justified in saying that though the words of the marks are same, but because of the different style in which they are written there is no room for confusion or deception of the public. The learned Counsel relied on following judgments:-
(i) Ciba Ltd. Basle Switzerland v. M. Ramalingam and S. Subramaniam Trading, : AIR1958Bom56 ;
(ii) National Sewing Thread Co. Ltd. v. James Chadwick and Bros. Ltd., : [1953]4SCR1028 ;
(iii) The judgment in the Court of appeal in the matter of Dewhurst's application for registration of Trade mark (1896) 13 RPC 288.
4. The learned Counsel appearing for the Respondent No. 1 on the other hand, submits that the Petitioner could not have raised an objection to the registration of the trade mark of the Petitioner, because he was estopped from doing so by virtue of the consent terms entered into in the Delhi High Court. The learned Counsel further submits that when the Respondent No. 1 started using the trade mark of the Petitioner, proceedings were taken up against him for stopping him from doing so. In those proceedings, compromise was entered into between the parties and the Petitioner was allowed to use the mark 'Newman' in a different style. The learned Counsel relying on the judgment of the Supreme Court in the case of Byram Pestonji Gariwala v. Union Bank of India & Ors., : AIR1991SC2234 submits that the consent terms arrived at between the parties operate as res-judicata between the parties. The learned Counsel also relies on a judgment of the learned Single Judge of this Court in the case of State of Goa v. Placido Braganza : 2001(4)BomCR395 . The learned Counsel further submits relying on the provisions of Section 11(a), Section 12(3), Section 33 and Section 18 of the Trade Marks Act that even if the marks are identical or similar, if the adoption of the Respondent is proper and honest, in exercise of the discretion vested in the Registrar under Section 18(4) of the Act, he can permit registration of the trade mark. The learned Counsel relies on the judgment of the learned Single Judge of this Court in the case of Geoffrey Manners & Co. Ltd. v. Megapharma Laboratories 1976 IPLR 9. The learned Counsel further submits that it is clear from the order passed by the Registrar while permitting the registration of the trade mark of the Petitioner, that the trade mark of the Petitioner has already been registered in the same class. The learned Counsel, therefore, submits that registration of the same trade mark only with the difference of background was not likely to make any difference, because in any case, under the registered trade mark the Petitioner is entitled to manufacture and sell the goods. Only because the Petitioner is changing the background will not change the situation and will not disentitle the Petitioner to the registration of the trade mark. The learned Counsel further submits that an appeal against the order of the Registrar can be filed by a person who can be said to be aggrieved by the order made by the Registrar. As a result of the consent terms filed before the Delhi High Court the Petitioner is estopped from preventing the Respondent from using the trade mark in their peculiar style and, therefore, he cannot be said to be a person who is aggrieved by the registration of the trade mark of the Respondent.
5. Now, it is clear from the facts stated above that the Petitioner started using the trade mark 'Newman' writing in the style which is peculiar to the Respondent and, therefore, to prevent him from doing so, suit in the Delhi High Court was filed.Before the Delhi High Court, the parties entered into the consent terms. Clauses 1 to4 of those consent terms are relevant. They read as under:
1. The Plaintiffs are using
i. The trade mark NEWMAN represented in a special logo script characterised by reverse reading, as shown in ANNEXURE A.
ii. The said trade mark NEWMAN is represented on two lines with the wordNEW appearing above and the word MAN appearing below.
iii. A triangle.
iv. The metallic aspect of the above triangle, i.e. the metallic tabs, made inthe shape of a triangle.
v. A triangle coloured in yellow.
2. Although items (ii) to (v) are not the subject matter of the present suit, and the defendants are not using the same, however, for the purpose of reaching an amicable settlement the defendant hereby undertakes that it will not use any of the features (ii) to (v) or any feature deceptively similar to any of the said features:
3. The defendant agrees and undertakes not to use the trade name NEW MAN under the special logo script of the plaintiff or any other logo script, which is deceptively similar thereto or is characterised by reverse reading. However, the defendant shall be entitled to use the word NEW MAN in a different script. A specimen of the logo currently used by the defendant is annexed marked Annexure B.
4. The defendant shall have time upto 31st October, 1988, to effect the aforesaid changes and dispose of all packing materials, stationery articles etc. carrying the impugned features.
6. It is clear from the perusal of the above consent terms that the Petitioner admitted that the Respondent is using the trade mark Newman in a special logo script characterised by reverse reading. The Petitioner also undertook not to use any of the features, which are mentioned in paragraph 1 of the consent terms. But the Petitioner was permitted to use the word Newman in a different script. The Petitioner acted on this compromise and applied for amendment of his application for registration and he amended his trade mark which was in consonance with the consent terms entered into between the parties. The Respondent No. 1 also acted on the consent terms and, therefore, though they had submitted an opposition to the application filed by the Petitioner for registration of his trade mark, they did not contest that application. The Registrar while registering the trade mark of the Petitioner observes thus:-
'Apart from the above, it may also be clarified that the occupants have claimed user of their mark in various countries of the world since 1973-1986. Similarly, the advertising and publicity expenses for the years 1976-1986 are also mentioned on the record, it may not be out of place to mention that theOpponents have also produced certificate of registration of the trade mark consisting of the word 'NEWMAN' under No. 409327 B in class 25 as of 16-8-1983 in respect of clothings including boots, shoes and slippers included in class 25. This certificate has been issued by the Trade Marks Registry, Bombay. Hence, the Opponents are prior adopter and user of their trade mark 'NEWMAN' say, since 16-8-1983, whereas the Applicants are found to be the real user of their mark since the date of amendment of the mark applied for.'
7. Thus, the Registrar as a fact found that the trade mark of the Respondent No. 1 was registered even before the trade mark of the Petitioner was registered. The learned Counsel for the Respondent has produced before me copies of the trade mark, which was registered as well as the trade mark, the registration of which has been ordered by the impugned order. Comparison of the two shows that the only change is that now the words 'NEWMAN' are being written in a triangle. If the trade mark of the Respondent is already registered and if that trade mark can be used by the Respondent and the Petitioner is not entitled to oppose that user, then, in my opinion, there is no question of the Respondent not being permitted to register the same trade mark by now writing it in a different back ground.
8. It is further to be seen here that the Petitioner has admitted in the consent terms that the Respondent No. 1 are using the trade mark. In the counter affidavit filed in this petition, the Petitioner has stated that the Petitioner was allowed to use the mark NEWMAN by the Respondent No. 1. Therefore, really speaking the Petitioner was not entitled to oppose the application for registration submitted by the Respondent No. 1. It is true that in terms of the provisions of Section 11(a), the Registrar has to see whether there is an objection raised by anybody or not and whether registration of the trade mark is likely to deceive or cause confusion. But that objection has to be considered by the Registrar in the light of the provisions of Section 12(3) and Section 33(3) of the Act. Considering this situation, therefore, in my opinion, the learned Single Judge of this Court in the judgment in the case of Geoffrey Manners has rightly held that in case the Registrar finds that the person who has applied for registration of the trade mark is a prior user of the trade mark, he has to consider the question whether the registration of that trade mark will result in confusion or deception to the public, because Section 18(4) of the Act confers discretion on the Registrar to permit registration of the trade mark. No doubt, this discretion of the Registrar has to be used in public interest and if the Registrar finds that by permitting registration of the trade mark the public interest is not likely to be adversely affected, the Registrar would be entitled to do so. Following observations from that judgment in my opinion are pertinent:-
'If this be the correct position in law, the next question which I have to consider is whether on the facts of the present case, the Joint Registrar ofTrade Marks was right in coming to the conclusion that the Respondents were also entitled to registration of their trade mark. Mr. Mehta, has urged that the Joint Registrar has erred in law and his exercise of discretion to that extent is vitiated. He contended that the Joint Registrar erred in observing that he was bound to register the Trade mark of the Respondents as no objection could be taken under Section 11(a). No doubt, the Joint Registrar has observed that the operation of Section 33 is not limited to an objection under Section 12(1) of the said Act but also clearly extends to an objection under Section 11(a) of the Act. However, he has not held that the operation of the entire Section 11(a) is limited but he has held that the operation is limited only to the extent based on similarity of marks. If the Order of the Joint Registrar is to be understood in the light of his observations that Section 33 is limited to an objection under Section 11(a) to the extent of similarity of marks, I am of the opinion that he was justified in so observing. To put it shortly, he has ignored the provisions of Section 11(a) and when he has ignored the provisions of Section 11(a) of the said Act, he has applied his mind on the basis as though there was no identical or nearly resembling trade mark already on the Register. Considered in the light, he has, in the present case, considered the provisions of Section 11(a) and held that although the marks are identical he in his discretion should still permit registration which he has done, under the provisions of Section 18(4) of the said Act. Under Section 18(4) he has to consider the provisions of Section 11 of the said Act including Section 11(a). The exercise of discretion can be under Section 18(4) as well as under Section 12(3) of the said Act. Under Section 12(3) the Registrar has to consider the question of honest and concurrent user but he can consider the same even under Section 18(4) of the said Act. Section 18(4) as I pointed out earlier, is wider in its terms and all factors are to be taken into consideration by the Registrar, which would also in my opinion include at least the question of honesty of user. The concurrent user is irrelevant because under Section 33 of the said Act, the provisions of Section 12(1) are to be entirely ignored and, therefore, if the decision of the Joint Registrar is viewed in this light, he is entitled to exercise his discretion whether to permit registration or not.'
9. It is clear that so far as the trade mark of which the registration was sought, the Respondent No. 1 was a prior user. The Petitioner started using the trade mark of the Respondent. He was stopped from doing so and he was permitted by the Respondent to use the words written in different style. In my opinion, therefore, the Respondent No. 1 could not have objected to the registration of the trade mark of the Respondent No. 1. If the Petitioner was not entitled to raise an objection to the application of the Respondent No. 1 for registration of the trade mark, in my opinion, he would not be entitled to maintain an appeal, because that objection has beenrejected. In terms of the compromise between the parties really speaking the Petitioner had no locus to object to the application for registration filed by the Respondent No. 1. The Petitioner has filed this petition being aggrieved by the rejection of his objection. But if he was not entitled to lodge an objection itself, it cannot be said that rejection of that objection entitles him to present this petition. The net result of the order which is impugned in this petition is that he registration of the trade mark of the Respondent No. 1 has been granted.
As observed above, an identical trade mark of the Respondent No. 1 is already registered and in my opinion, therefore, there would be hardly any change in the situation by permitting the registration of the trade mark of the Respondent No. 1, which is identical, the only difference being of the background.
10. Taking over all view of the matter, therefore, in my opinion, as the Registrar has in his discretion permitted registration of the trade mark, this Court will not be justified in interfering with the same. The Petition, therefore, fails and is dismissed.
Parties to act on simple copy of the order duly authenticated by the Associate/Personal Secretary of the Court as a true copy.