New Bharat Rice Mills vs The Registrar Of Trade Marks & ...
2000 Latest Caselaw 726 Del

ORDER

Khan, J.

1. Trade Mark "Taj Mahal" is the bone of contention between the parties. Both sides are claiming it for their rice which they are selling in India and Australia.

2. Respondent applied for registration of this Trade Mark (word & device) before Registrar on 30.8.89 and Appellate filed his opposition to it on 27.6.96. Respondents' application was allowed but Appellant's opposition rejected by impugned order dated 14.3.2000. Hence this appeal.

3. L/C for Appellant, Mr. Amarjeet Singh assailed the order on the plea that Registrar had passed it in ignorance of Section 55 of the Trade Marks Act which, according to him, provided by a legal fiction that application of a Trade Mark in India for goods to be exported would constitute a use of such Trade Mark in India and that Registrar was obliged to examine whether the otherwise identical Trade Mark was likely to create deception and confusion to honest and bona fide purchaser.

4. Mr. Sen Gupta, Ld. counsel for respondent, however justified the impugned order by falling back upon provisions of Section 12(3) of the Act. He claimed that Registrar had passed it on the basis of "honest concurrent use" of Trade Mark by Respondent.

5. A perusal of the order impugned shows that Registrar had proceeded on a different wave-length altogether. He had found that respondent was a prior user of the Mark and had registered it in Australia and that provi- sions of Sections 11 and 12(1) of the Act would not operate against him as the Act applied only within territorial jurisdiction of India. There is nothing to show that pleas raised before this Court in reference to Sec- tions 55 and Section 12(3) were raised before him and that he had omitted to deal with these. As such he had no occasion to examine the controversy in the light of these provisions.

6. The impugned order, otherwise, also proceeded on a weak wicket and it appears that Registrar had misdirected himself by excluding the provisions of the Act from operation when he was himself exercising power under the Act and on an application by respondent under the Act.

7. Viewed thus, this appeal is disposed off by providing as under :-

"Impugned order passed by Registrar dated 14.3.2000 is set aside. The matter is remanded to him for reconsideration in the light of pleas raised by parties before this Court. He shall allow the parties to supplement their pleadings and pass appropriate orders within two months from receipt of this Order after hearing them. Parties to appear before him on 10th August, 2000."