(1) This matter comes up by way of an appeal against the order of the Assistant Registrar of Trade Marks of September 15, 1970, accepting the application for rectification of a trade mark under S. 56 of the Trade and Merchandise Marks Act, 1958 (hereinafter the Act), filed on December 16, 1965, by Karan Singh of M/s. Ishwari Prasad Karan Singh against Dr. Ganga Prasad A Gupta of M/s. Ganga Prasad Gupta & Songs, both parties of Hathras.
(2) The parties are selling an anti-malaria mixture known as Sikatra Kl BOTAL. The applicant; for rectification claims to be B the registered proprietor of the trade marks (1) Araq Karan Prakash and Sikatra Ki Botal along with the bust portrait of Karan Singh, and (2) Sikatra Kl Botal, registered respectively at No. 146942 on 1-9-1952 and No. 209326 on 1-9-1963. It was alleged that this was the trade mark which was adopted by his father in the year 1925 to denote the goods known as medicinal preparation for malaria fever and liver diseases when he was residing in his native village of Sikatra, Post Office Hasayan, District Aligarh, U.P. Later on, in the year 1937, they shifted their business to Hathras and continued to manufacture and sell the said mixture from there. The expression 'Sikatra Ki Botal' appearing on his production denotes that the medicinal preparation has been manufactured in village Sikatra or by the firm of the person residing in or connected with Sikatra. He complained that the registered proprietor Ganga Prasad Gupta, though not a resident of village Sikatra, nor in any way connected with that village, got the trade mark of Sikatra Kl Botal under the heading Araq Charna Prakash registered at No. 118343 on 20-2-1950. He alleged that the trade mark registered and used by the other party was entered without sufficient cause and continues to be wrongly on the register and obviously suffers from an error inasmuch as the registration of the said trade mark was obtained by fraud, was in violation of S. 11 of the Act, and contained a geographical name without having acquired any distinctiveness as required by S. 9 of the Act.
(3) The opposite party filed on June 17, 1966, a counter-statement that, they are the proprietors of the trade mark 'Sikatra Ki Asli Bottle' which has been registered in respect of medicinal powder. Their registered No. is 118343 dated 20-2-1950, though they have been using this mark since the year 1936. This trade mark was advertised in the Trade Marks Journal dated February 1, 1949. They complained that it was the applicant who had copied and usurped their trade mark and got it fraudulently registered. The applicant had nothing to do with village Sikatra, District Aligarh. The trade I mark is not even being used honestly and cont.inuously by the applicant within the meaning of S. 12 of the Act.
(4) The applicant thereafter sought several extensions of time for filing evidence in support of his application. However, the Assistant A Registrar by his order dated December 1, 1966, directed that the application shall be deemed to have been abandoned under Rules 53(2) and 95 of the Trade and Merchandise Marks Rules, 1959. The applicant applied for review under S. 97(e) of the Act. By his order dated May 2, 1968, the Assistant Registrar accepted the review application and revived the application for rectification.
(5) It appears that the application then was posted for hearing on August 10, 1970, before the Assistant Registrar but there was no appearance on behalf of the registered proprietor on that date. It was heard in his absence and orders reserved. The Assistant Registrar handed down his order on September 15, 1970, accepting the application and directing that the register be rectified by removal there from of the registered trade mark No. 118343 unless the registered proprietor filed a request on Form PM-38 within 30 days for amending the trade mark. He also directed that the registered proprietor shall pay the applicant, Karkhana Araq Karan Prakash, a sum of Rs. 88.00, as costs. The registered proprietor applied for review as he could not appear because of sickness. His application was refused on April 6, 1971.
(6) The view of the learned Registrar was that no case of fraud was made out by the opponent as the registration of the trade mark had taken place after due advertisement, and without any opposition under S. 21 of the Act. He also found no concealment of facts on the part of the proprietor. thereforee, he rejected the plea of fraud. For want of material, he was unable to find any other disentitlement on the part of the registered proprietor. The mark was registered as a medicinal powder, while the word used Was Araq but no confusion could be caused on this account because it was subsequently amended and the word 'CHURNA' was also added so that both 'Araq' arid 'Powder' could be covered. He, however, upheld the objection that the trade mark of the registered proprietor was likely to cause contusion within the meaning of ol. (a) of S. 11 of the Act, because the registered proprietor or the manufacturer of the article had no connection; whatsoever with Village Sikatra, while the use of the words Sikatra Ki Botal would certainly lead to confusion and deception that the article has been manufactured in the village of Sikaftra by a firm or a person residing in or connected with the village of Sikatra. The registered proprietor has led no evidence in support of his claim and rebuttal of the evidence of the applicant. The Assistant Registrar also upheld the objection relating to S. 9 of the Act that no geographical name can be registered unless there was evidence of distinctiveness. He said that it was the duty of the registered proprietor to file all the evidence that was available to him to show that the word had become distinctive of his goods on the date of the commencement of the proceedings. No such evidence was produced. That is how the applicant succeeded in his attempt for rectification.
(7) The first objection raised on behalf of the appellants is that the applicant had moved two applications, Del 122 (not on this record) and Del 75. Both were dismissed. But, in respect of the second one, which was directed to. have been abandoned under Rule 53(2), a review was allowed on May 2, 1968, even though, according to M/s. Ratan and Co. v. P. Narayanan, : AIR1977Delhi93 , no review was permissible under S. 97(c) of the Act. In reply, it was urged that there is nothing in Rule 53(2) which prevents the opponent from filing an application for revocation at a subsequent stage. Relience was placed on P. lyya Nadar v. A. V. Rajadorai Na-dar, (1973) Ii M.LJ, 7(2). But, this case has no application. In Nadar, the rectification application was made after the opposition to registration had been abandoned and it was held that rest judicata did not apply and there is no bar in the rule against rectification where the opposition under S. 21 of the Act had been given up. But, apart from Nadar, the objection should otherwise fail. A direction that an abandonment of the application has occurred is a 'decision' within the meaning of S. 97(c) of the Act. It is a concluded opinion and amounts to a' judicial determination of a controversy. Any adjudication which affects the right of the parties must be considered to be a decision, vide Hernia Embroidery Mills Private Ltd. v. Hindustan Embroidery Mills Private Ltd.(3), F.A.O. 21/68, decided on 21-12-1971, an unreported decision of this Court.
(8) It was next urged that according to Rule 53, within 2 months from the service of the copy of the counter-statement, the opponent shall leave with the Registrar an affidavit as he may desire to adduce in support of his opposition and shall deliver to the opposite party copies of any evidence that he leaves with the Registrar and when he fails to do so, he shall be deemed to have abandoned his opposition or application for rectification, as the case may be. It was stated that Rule 53 was not complied with and thereforee, the opponent shall be deemed to have abandoned opposition. This point involves facts and having not been raised in the grounds of appeal cannot be allowed to be raised and is hereby rejected.
(9) Upon consideration of the record and the arguments, the registered proprietor had got his mark registered two years before the applicant got his. No objection was taken by the applicant at the time of registration and for the last several years the offending trade mark has been in use. If nothing else, it is at least a case of honest concurrent use and thereforee, both the trade marks could coexist. Under S. 32 of the Act, no trade mark can be challenged after the expiry of 7 years from the date of its registration, except on the grounds Stated therein. I agree with the learned Assistant Registrar that there were no facts so as to make out a case of fraud. But, as to breach of S. 11(a), I am unable to agree with the leanred Assistant Registrar that it was a case of deception or confusion. Deception Or confusion may result from the fact that marks are identical or similar or from some other reason. That is why except incises of honest Confurrent use or prior continuous use or of some special circumstances, no trade mark can be registered in respect of any goods, or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods. This, to my mind, is the effect of Ss. 11, 12 and 33 of the Act. There is no doubt that the appellant's trade mark was registered earlier at least by two years and if any deception or confusion can be complained of, then it is the appellant who is prima facie entitled to make a grievance, on the date of these proceedings for rectification which were instituted fifteen years after the trade mark of the appellant was registered.
(10) As to the use of 'Sikatra', a geographical name, S. 9 seems to provide that it cannot be registered unless there was evidence of acquisition of distinctiveness acquired by the goods in question. Both the parties have a geographical name in their trade mark which is the name of several villages in U.P. and is not of much significance and its bona fide use can be protected under S. 34 of the Act. The appellant also fails from a village of the same name. As a matter of fact, there is no distinctiveness in either to the cases because both bottles and sell a simple malaria mixture and if the goods of the registered proprietor can be said to have acquired distinctiveness, same can be said in respect of the registered proprietor who claims to be in the business prior to that of the applicant. No doubt, he could lead no evidence of user prior to 1950, but he could perhaps do so if his review application were not rejected on April 6, 1971. However, the burden to show that when the geographical name was registered it had not acquired distinctiveness or that at the time of the A commencement of the proceedings it had ceased to be distinctive of the goods of the appellant was on the applicant. This burden his not been discharged. What the applicant-respondent has done is to produce evidence that his goods had acquired and continued to enjoy distinctiveness as shown by large sales over the years in various parts of the country. That was not enough. The Assistant Registrar was not thereforee justified in granting rectification.
(11) I, thereforee, accept this appeal and quash the order under appeal, and dismiss the application for rectification. There shall be no costs.