SABDUL RAHIM SAHIB Vs. G SMUTHIAH AND

JUDGEMENT

(1.) The Appellant applied for the registration of his trade mark in respect of beedies falling under Clause 34 of Schedule 4 to the Trade Marks Rules. The Respondent opposed the registration and the opposition was upheld by the ex-officio Deputy Registrar of Trade Marks, Bangalore, and the registration was refused. The appeal is directed against this decision.

(2.) The Appellant's trade mark consists of A label containing the device of a pedestal supporting at its head five stems each carrying a rose, the stems being arranged fanwise. The words "Aindu Roja Mark Beedi" (meaning five roses mark beedi) in the Tamil alphabet are found above the device. Another mark containing substantially the same device, but with the words "Aindu Roja Poo Mark Beedi" (meaning five rose flower mark beedi) is to be found in the duplicate. It is the mark with the latter set of words that was advertised in the Trade Marks Journal. The Respondent's opposition was based on the ground that he had been making use of a trade mark consisting of a branch of a rose plant having a full blown rose and four buds on it, described and known as Poo Mark Beedi, and as the Appellant's mark also consisted' of five flowers with the words "Aindu Roja Poo Mark", the Appellant's mark was calculated to cause confusion and to deceive.

(3.) An examination of the two marks no doubt discloses several differences in regard to particulars. The Appellant's mark contains five fully developed roses arranged fanwise. The Respondent's mark has only one full blown rose and four buds in different stages of development on the branch of a rose plant. The order in which they appear is also different. On this basis it is urged for the Appellant that there was no possibility of the customers being misled or deceived cr any confusion being caused. It is further urged that the Appellant has been making use of the mark for many years prior to the date of his application and that therefore his mark is entitled to registration under Section 10(2) of the Act. It should be mentioned that though at the time the Respondent filed his opposition his mark had not been registered, it was on the register before the opposition came up for consideration. The Deputy Registrar thought that since, at the time of the disposal of the opposition, the Respondent's mark was already on the Register it was incumbent upon him to consider the question whether the Appellant's mark came within the mischief of Section 10 (1) of the Act. He accordingly considered the matter both under Section 10(1) and Section 8 of the Act and came to the conclusion that the Appellant's mark offended both the provisions. As regards Section 10 (2) he was of the view that the Appellant had not established concurrent user. It appears to us that the Deputy Registrar's views on all these matters are well-founded.