B.N. Kirpal, J.
(1) This is an appeal under Section 100(2) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred as the said Act) against the order and decision dated 23rd November, 1978 of the joint Registrar of Trade Marks. By the said order the Opposition No. DDL-1556 of the appellant was dismissed and the application No. 237253 was directed to be registered in part 'A' of the Register of Trade Marks.
(2) On 26th August 1966 an application was made to the Registrar of Trade Marks by Shri Dwarka Pershad Bindal and others who were carrying on business under the name and style of Naushadar Bar Association. By the said application the applicants wants to get registered a trade mark which consisted of a label containing the device of two half sun, the word Sun and the letters B. C. 1. in Glass I in respect of Ammonium Chloride bars for use in Industry.
(3) On the said application hauing been advertised the appellant herein filed a notice of opposition to the registration of the said trade mark. The grounds in the said Opposition were with reference to Section 9. 11(a) 11(e) and 18(1) of the said Act. Counter statement was filed denying the allegations therein and thereupon evidence in support of the Opposition was filed. The evidence consisted of affidavits of the appellant and four other trade declarations. On the other hand the respondents also produced affidavits in support of their case as well as other documentary evidence.
(4) By order dated 23rd November, 1978 the Joint Registrar of Trade Marks, as already stated herein above, rejected the Opposition filed on behalf of the appellant. He examined the various contentions which were raised the and did not find any merit in them. Having rejected the said Opposition, the Joint Registrar ordered the registration of the mark.
(5) Before me, the learned counsel for the appellant has reiterated the contentions which had been raised before the Joint Registrar. It has been firstly contended by the appellant that there has been non-compliance of Section 18(1) of the Act. On this ground, alone it is contended, the Opposition ought to have succeeded. The submission on behalf of the petitioner is that the respondents have not able to show that they were the proprietors of the trade mark which was sought to be registered and nor have they been able to show that they were using the said mark. It is contended that the case of the respondents was not that they had acquired the mark by adoption but the mark was stated to have been acquired by the respondent-firm by assignment. Relying upon the decision of 1970 Madras 156 it is contended that it is necessary that there should be a written document in order to show that the work had been validly assigned.
(6) The respondent on the other hand, have rightly contended that there was a valid assignment. Shri Anoop Sigh has not disputed the proposition that there may be a necessity of a written document being in existence in order to prove the assignment for the trade mark. In this case the contention is that such a document does exist. In this behalf it is necessary to refer to Partnership Deed 3rd May, 1961. In the said deed it was stated that the partners have decided, by mutual consent to the assignment and transfer of trade mark mentioned in the Schedule to the deed in favor of the partnership firm. Clause 21 of the said deed provided as follows :
'THATinconsideration of the assignment or transfer of the trade marks as per Schedules Nos. 1, 2 and 3 by the respective parties, the said Partnership firm shall pay to the said parties all the incidental expenses and other costs incurred in connection with the registration of the said trade marks. The parties shall have the right to recover the said amount from the said firm at any time on furnishing sufficient proof in that respect.'
In the Schedule to the said Deed one of the marks which is mentioned is B. C. I. Sun 2. To me it appears that the assignment was complete with the signing of the aforesaid partnership deed. For the purpose of assigning the trade mark nothing more was required to be done. The consideration for the transfer of the trade.marks was only to be the actual out of pocket expenses which might have been incurred in connection with the registration of the trade marks earlier. Clause 21 postulated that if any of the partners gave sufficient proof of its having spent the money, the said partner would be reimbursed. As regards the trade marks are concerned they stood, to my mind. absolutely assigned in favor of the partnership firm. In my view thereforee, the respondents applicants were the proprietors of the trade mark when they applied for registration.
(7) The second question, in this regard which arises is as to whether the respondent was the user of the trade mark or not. In this regard reference may usefully be made to the affidavit of Shri Bhagwan Dass. Shri Bhagwan Dass is no doubt the father of Shri Dwarka Parshad Bindal, but nevertheless was a partner of the firm which acted as sole selling agent of the respondent in the said affidavit it has been categorically stated that the firm in which Shri Bhagwan Dass is partner has, after the assignment with effect from 3rd May 1961 been trading in goods bearing various trade marks of the respondent including B. C. I. Sun BRAND. Along with the affidavit a number of documents was placed on record showing the existence of Sun Brand B. C. 1. bar since the year 1962 atleast. In addition to the aforesaid, affidavit, the affidavit of Dwarka Prashad Bindal is also placed on record. The Joint Registrar did not disbelieve this evidence, and in my opinion righly so. No cogent reason has been slated as to why I should disregard or disbelieve the averments made in the said affidavits. Apart from the other documents the two most important documents which are placed on record are two post cards which were written a number of years ago. Surely these post cards which refer to goods bearing the Sun Brand, which bear the seal of the post office have not been fabricated. In my view thereforee, the Opposition of the appellant based on Section 18 of the Act cannot succeed.
(8) It was next contended on behalf of the appellant that the trade mark, sought to be registered by the respondent was such the use of which would be likely to deceive or cause confusion and registration of such trade mark was prohibited by Section 11(a) of the Act. There is no merit in this submission. It is no doubt true that the burden of proving that a trade mark is likely to deceive or cause confusion .lies on the respondent applicant. The question however arises as to with which other trade mark, is the mark which is proposed to be registered likely to cause confusion. In the present case there is ample proof that the trade mark in question namely the Sun Brand of the respondent existed atleast since 1961 if not earlier. The trade mark is very distinctive. There was no other similar trade mark which was registered at that time. In order to show that confusion was likely to be caused, the appellant had contended that he was using a similar trade mark from the year 1958, the only difference, according to the appellant, between the two trade marks was that instead of initials B. C. I. the appellant trade mark contained the initials G. C. I. In order to show that the appellant was using the trade mark since 1958 he has relied upon the affidavits of himself as well as four traders namely Dharam Pal, Gobind Ram, Basant Lal and Roshan Lal. None of these persons have given any proof in support of the averments made by them namely, that they were dealing with the appellants bar bearing the trade marks of the two half sun and the letters G. C. I. since the year 1958. Whereas the respondents have placed on record large number of documents like bills etc. which show the actual sale of bars bearing their trade mark, the appellant has, however, not placed any such document on the record. There are no invoices or bills or orders which have been placed on record in support of any alleged sale of such goods by the appellants. It is well established now that for opposition under Section 11 to succeed it is important for the opponent to prove that his mark is not unknown in the market. The opponent must prove user and reputation of the mark, for it is only then that there can be any question of there being deception or confusion with the applicants mark. If the opponent fails to prove any mark which he has used, which is in any way similar to that of the applicant, the question of there being any conclusion or deception cannot arise. The question of onus, in other words, would be relevant only if it is proved that there are two marks in existence at a particular point of time. Like the Joint Registrar, I am not satisfied that the mark which the appellant has propounded was in existence prior to the respondents mark and, further, the appellant has also not proved his user and reputation of the mark. To my mind Section 11 contemplates some other mark being in existence with regard to which an applicants mark may cause confusion. If the mark being propounded by the applicant was never in existence at a time when the respondent started using the Sun Brand, the question of Section 11(a) being infringed cannot arise.
(9) It was lastly contended that no registration can be granted with respect to the letters B.C.I, and the grant of any such registration would amount to violation of Section 9 of the Act. To my mind this question really does not arise in the present case. The registration is not being granted in respect of the letters B. C. I. alone. The registration is being granted in respect of one composite mark. The letters B. C. I. are only one of the features of the said mark. The mark has to be taken as a whole. The registration is in respect of the entire mark namely the two half Sun, the word-Sun. in between and the letters B. C. 1. in the said Suns. In my opinion, thereforee, there is no violation of Section 9 of the Act.
(10) In view of the aforesaid discussion, the appeal is hereby dismissed. The respondents would be entitled to costs. Counsel' fee Rs. 550.00 .