NEWMAN Vs. JACQUES JAUNET S A

JUDGEMENT

(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-made garments 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 "compagnie d'esthetique Industrielle" 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 was opposed 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 llth 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:-