NEWMAN Vs. JACQUES JAUNET S A

JUDGEMENT

(1.) THIS is an appeal under Section 109 of the Trade and Merchandise Act, 1958 (for short, the Act) challenging the order dated 24. 11. 1994 passed by the Deputy Registrar of Trade Marks allowing application No. 437595 filed by the Respondent No. 1 for registration of their trade mark "newman" in class 18 and rejecting opposition No. BOM - 8039 filed by the petitioner. Hence this appeal.

(2.) THE petitioner is a partnership firm duly registered under the Indian Partnership Act carrying on business inter alia of manufacturing and marketing readymade garments and other allied goods made from leather and imitation of leather. Respondent No. 1 is a Societe Anonyme registered under the law of France who sought registration in India for their trade mark "new MAN" in respect of leather goods such as purses, trunks, suit cases, travelling bags, port folios etc. in class 18. The petitioners had made several applications for registration of the Trade Mark "new-MAN" in Clauses 16, 17, 18, 22, 23, 24, 25 and 26. Their application No. 393243 was for registration in class 25 in respect of readymade garments. The petitioners claimed the user of the said trade mark from 14. 4. 1979. They (petitioners) also contended that they have sold aforementioned goods under their trade mark "newman" throughout India and carried out extensive sales and incurred huge expenditure on advertisement, owing to which they earned immense goodwill and reputation. During the pendency of the above mentioned applications filed by the petitioner, respondent No. 1 filed an application on 13. 5. 1985 in class 18 for registration of a composite label trade mark consisting of the word "new" and "man" written in two lines in a special logo script in a reverse manner and metalic form in respect of the specification of goods such as purses, trunks, suit cases etc. of leather. The application filed by the respondent No. 1 was advertised in the trade marks journal No. 982 dated 1. 5. 1990. Thereafter, on 2. 7. 1990, the petitioners filed their opposition which was based on mainly two grounds. First was that the petitioners were famous and old manufacturers and sellers of readymade garments and allied articles made of leather and that their application No. 393243 dated 9. 3. 1983 was pending for registration in class 25. The second ground was that by virtue of continuous and extensive use sine 14. 4. 1979 in India, the petitioners garments and allied goods affixed with trade mark "new MAN" were associated with and identified with them. It was also contended by the petitioners that the impugned mark for which the respondent No. 1 had sought registration was not registrable as the same was open to objections under Sections 9, 11 and 18 (1) of the Act. It appears that respondent No. 1 fifed a counter statement wherein it was contended that they were proprietors of the trade mark "new MAN" and that the said trade mark was registered throughout the world prior its adoption and use as claimed by the petitioners. It was also contended that the said mark was distinctive of the goods manufactured and sold by respondent No. 1. During the pendency of the said application, the petitioners filed an interlocutory application on 4. 6. 1993 incorporating an additional grounds under Section 12 (1) of the Act which was to the effect that during the pendency of the application filed by the respondent No. 1 their (petitioners) trade mark "newman" was registered under No. 402533.

(3.) THE Deputy Registrar allowed both the parties to lead evidence in the form of an affidavits and documents. Thereafter, he heard the learned advocates of both the parties and passed the impugned order on 24. 11. 1994. The Deputy Registrar rejected the petitioners objection under Section 9 by observing that though phonetically both the marks are similar, still visually and structurally the mark applied for by respondent No. 1 is capable of being distinguished. He further rejected the petitioners objection under Section 11 (a) by pointing out that there has been a settlement between the parties in Suit No. 2784 of 1987 filed by the respondent No. 1 in the Delhi High Court whereby the petitioners agreed and undertook not to use the trade mark "new MAN" under separate logo script which is deceptively similar to the trade mark of respondent No. 1. He also pointed out that the petitioners thereafter got amended their trade mark as "newman" which consists of plain capital letters. The Deputy Registrar held that in view of the changed circumstances, the use of amended trade mark of the petitioner cannot be a ground for cause of confusion or deception. The Deputy Registrar further rejected the petitioners objection under Section 12 (1) by observing that visually and structurally the two marks are different though there is a little phonetic similarity. He further pointed out that both the marks are for goods of different description. While rejecting the petitioners objection under Section 18 (1), the Deputy Registrar observed that the petitioners having admitted the title of respondent No. 1 to the trade mark "new MAN", they are estopped from denying the title of the respondent No. 1. He further held that respondent No. 1 are the proprietors of the trade marks "new and "man" because of prior adoption and registration in number in foreign country. In this view of the matter, the Deputy Registrar, declined to exercise his discretion in favour of the petitioners and finally allowed the application of respondent No. 1 and dismissed the opposition filed by the petitioners.