Aggarwal Sweet Palace and Ors vs. Assistant Registrar of Trade Marks 2005 (30) PTC 336 IPAB
FACTS
- An application was filed by the respondent M/s Aggarwal Sweet Corner for the registration of trade mark ‘Aggarwal Sweet Corner’ in respect of sweets and namkeens. The mark was claimed to be used since 1.6.84.
- Applicant disclaimed the word ‘corner’ in its application. The appellant filed an appeal raising opposition that the mark is identical and deceptively similar to their mark and they have been manufacturing and namkeens under the trade mark Aggarwal Sweet Corner since the year 1986.
ISSUE
- Whether the applicant’s Trade Mark can be refused on the grounds of Sections 9 &11?.
PROCEDURAL HISTORY
- The Assistant Registrar made a suggestion to the applicant that a disclaimer about the word ‘sweet’ and ‘corner’ besides the word ‘Aggarwal’ should also be added. Therefore, this was accepted by the applicant. But later, the Assistant Registrar disallowed the application for the registration.
- The Learned Deputy Registrar overruled the decision of assistant registrar on all the grounds.
- With respect to section 9 of the act it was held that the applicants have adduced sufficient evidence of user since 1.6.84 which is sufficient for the registration.
- Evidence containing several documents namely, copies of purchase orders, copies of invoice, copies of advertisement, copies of sale tax, copies from bills from advertisers, copies of analysis report, copies of balance sheet and copies of orders received from customer. Hence these documents were enough evidence of user since 1.6.84.
- In matter it was said that the appellant have merely filed an affidavit with regard to evidence of user and reputation of the mark which is not enough to prove the case.
- Lastly, in matter of opposition with section 18(1), it was held that since the applicant has proved evidence of user and reputation of the mark applied for, the applicant is entitled to the proprietorship of the mark under section 18(1) of the act.
- It was also said that the appellant claims to be trading in the name and style of M/s Aggarwal Sweet Corner, but however it does not show anywhere that its goods are being marketed with the said mark i.e 'Aggarwal Sweet Corner'. Hence the appellant have no trade Mark other than the trading style but that cannot be treated as the trade Mark as there are no evidences to prove it.
- Hence, the appeal was disallowed and the order to proceed with the registration was made in favor of applicant.
- Additionally, Assistant Registrar also held that any surname can be registered as a Trade mark under section 9 (1)(a) of the act provided it meets the requirements of the act. However there is no evidence that proves the ‘Aggarwal’ is a commonly used word in that trade (i.e sweets and namkeens).
- Therefore in view of the evidence and the use and publicity filed by the applicant, Assistant registrar came to a conclusion that despite the fact “Aggarwal” being a surname, the word acquires distinctiveness and as such qualifies for registration. He also held that the appellant has failed to provide the evidence to prove that “Aggarwal” is a commonly used expression in this trade and thus the objection is overruled.
Holding
- The Board held that for entitlement of trade mark under section 9, the one who contest for the mark should be the prior user in time and in-fact should be using the mark consistently from the date so claimed. The respondent in this case filed the application on 30.4.86 and has claimed to be using the mark since 1.6.84.
- Therefore, he has reproduced sufficient evidence to prove his claim he had been extensively and consistently making use of both the marks from 1.6.84. The Board says, we believe that so much of the documentary evidence for this period is enough to establish that there was a user as from the date claimed in the application and it was a consistent user.
- Therefore, there is no merit in changing the decision of the learned Deputy Registrar or the Assistant Registrar, as the case may be, in all of these appeals. Hence, the appeals stand dismissed.