Mohd. Shamim, J.

1. The petitioner through the present petition have taken exception to an order dated September 21, 1994 passed by the Deputy Registrar of Trade Marks whereby he accepted the Application No. 433275 in Class 3 for the purposes of registration of the Trade Mark PONAS and dismissed the objections filed by the petitioner vide opposition No. DL7110.

2. Brief facts which gave rise to the present petition are as under : M/s. Cosmic Chemicals (India) c/o M/s. Atul Trading Co., 248 Second Floor, Timber Bazar, Teliwara, Sadar Bazar, Delhi (hereinafter referred to as the respondent for the sake of brevity) moved an application which was numbered as 433275 on February 1, 1985 for registration of trade mark PONAS in Class 3 in respect of cosmetic goods being sold by them. The said application was advertised in the Trade Marks Journal No. 996 dated December 1, 1990 on page 987. The petitioner opposed the said application by filing opposition No. DL 7110 on March 5, 1991 under Section 21 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act in order to facilitate the reference). The petitioner filed evidence in support of their opposition by way of an affidavit of Mr. P. Sankar, Secretary of Ponds India Limited. It was alleged in the notice of opposition that the petitioners are registered proprietor of registered trade mark Ponds under No. 96629 in Class 3 dated May 22, 1994 in respect of a distillation or extract of hamamelis or witch hazel used as toilet preparation for the skin, tissues and muscles, cold cream, vanishing cream, liquefying cream, cream lotion, skin freshners, face powders, lipsticks, tissue paper for toilet purposes, dry skin cream, rough compacts and all other goods in Class 3. The above trade mark was advertised in Trade Marks Journal No. 50 dated October 1, 1957. The above said registration has been renewed from time-to-time and it is still valid and subsisting. The trade mark Ponds is being used for the last several years. The goods under the trade mark Ponds have been sold in large quantities throughout the world, including India. The said goods manufactured by the petitioner by reason of their excellent quality and volume of sales have gained enormous reputation with the trade and general public as a result whereof the said trade mark Ponds has become distinctive and is exclusively associated and identified with the goods manufactured by the petitioner. In case the Trade Mark applied by the respondent i.e. PONAS is allowed to be registered the same would facilitate and lead to the passing off the goods of the respondent as that of the petitioner. Hence the registration of the said trade mark PONAS would be contrary to and inconsistent with the provisions of Sections 9, 11(a), 11(e), 12(1), 12(3) and 18(1) of the Act.

3. The respondents filed their counter statement on May 4, 1994 wherethrough they denied all the averments made in the notice of opposition. According to them, the respondents are the proprietors of the trade mark PONAS since October 1, 1980. They have been continuously using the same. On account of the continuous user the said trade mark has attained goodwill and reputation in the market. The impugned trade mark PONAS is neither deceptively similar nor structurally similar to that of the trade mark of the petitioner. Hence in case it is allowed to be registered the same would not be contrary to any of the provisions of the Act, adverted to above.

4. Learned Counsel for the petitioner Mr. D.D. Singh, has vehemently assailed the legality and the validity of the impugned judgment and order dated September 21, 1994, inter alia, on the following grounds that the said judgment and order has been passed in utter disregard of the provisions of the Act i.e. Sections 9, 11(a), 11(e), 12(1), 12(3) and 18(1). The impugned trade mark i.e. PONAS is phonetically and structurally similar to the trade mark Ponds. Even the colour scheme and the floral design of the containers are the same. Thus there is every likelihood that the goods manufactured and belonging to the petitioner would be taken and treated by the innocent public i.e. the customers as the goods manufactured by the respondent and vice versa. Thus the trade mark in question proposed to be registered through the office of the Registrar is deceptively similar to the trade mark Ponds which is the registered trade mark of the petitioner. The learned lower Court ignored the evidence led by the petitioner through the affidavit of Mr. P. Sankar without any reason whatsoever once the same was allowed to be taken on record vide letter order dated May 14, 1993.

5. Learned Counsel for the respondents Mr. Ghiraya, on the other hand, has contended that the impugned trade mark PONAS is neither identical nor structurally similar to the trade mark of the petitioner. It is an altogether a different trade mark and there is no likelihood of deception through the said trade mark. Furthermore, the Trade Mark PONAS has been ordered to be registered for the purposes of Union Territory of Delhi vide the impugned order under Section 12(3) of the Act. The learned Counsel further contends that once a discretion has been exercised by the Deputy Registrar of Trade Marks for registration of a particular trade mark under Section 12(3) of the Act the same cannot be interfered with by this Court unless it is shown that there was dishonest concurrent use of the said trade mark.

6. It is manifest from the brief facts canvassed above that the respondent wants the registration of their trade mark under Section 12(3) of the Act. Since the fate of the present petition hinges on an interpretation of the said section it would be just and proper to make a reference to the said provision before proceeding any further in the matter. It is in the following words:

"12. Prohibition of registration of identical or deceptively similar trade mark(1) Save as provided in Sub-section (3) no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods.

(2)

(3) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods subject to such conditions and limitations, if any, as the Registrar may think fit to impose."

It is amply clear from above that no trade mark can be registered which is identical or deceptively similar to the trademark already registered in the name of a different proprietor in respect of the same goods or description of goods because the same is likely to deceive or cause confusion in the mind of purchasers (vide Section 11(a) of the Act). However, an exception to the above rule has been carved out vide Section 12(3) of the Act, reproduced above. Thus Section 12(3) empowers the Registrar to register a trademark which is already in use by other proprietors relating to their goods even when it is identical to or nearly resembles a trademark already registered in case it is shown that there was honest concurrent use or some other special circumstances which in the opinion of the Registrar make it proper to order the registration of the same.

7. In view of the above a duty has been cast on the shoulders of the respondent herein to show for the registration of their trademark PONAS in respect of their cosmetic goods under Sections 18A and 12(3) of the Act that the same is tantamount to concurrent honest user. The proprietor of the firm Shri Banwari Lal filed an affidavit on September 6, 1989 in support of their application for registration of the above trade mark. According to him, the said trademark PONAS is being continuously used in respect of his goods since 1980. His goods are being identified by the said trademark as coming from a particular source. Thus it was prayed that the said trademark be got registered under Section 12(3) of the Act. A Registrar under Section 12(3) of the Act can exercise his discretion to register a particular trademark only in those discretion few cases where it is shown that two or more parties have been using a similar or identical trademark honestly without knowing that the said trademark was being used by some other party for the sale of his goods of the same nature. In other words when they are unaware of the use of the said trademark by each other.

8. I am supported in my above view by the observations of a Single Judge of Bombay High Court reported in Consolidated Foods Corporation v. Brandon and Co. Private Ltd., AIR 1965 Bombay 35, (para 42)... "The discretion under the section referred to by the two Counsels can only be exercised where two or more parties unknown to each other and unaware of the mark used by each other innocently adopt and use the same mark in respect of their respective goods of the same nature. In this case, however, as I have found that the petitioner Corporation was already the sole proprietor of the mark Monarch in respect of its food products in several countries of the world and its products were widely advertised in various American Magazines having a large circulation in different parts of the world including this country and in view of the fact that the petitioner Corporation could have without importing any of its food products into the country bearing that mark applied for registration of that mark as proprietor thereof, prior to 1951 before the respondent Company started using that mark, it is difficult to hold that the respondent Company had started using that mark quite innocently and without any knowledge on its part about the same being widely used by the petitioner Corporation on its food products. On the facts of this case and also in the interest of business morality, it is impossible to exercise my discretion under sub-section (3) of Section 12 of the Act and order concurrent registration of the mark Monarch in favour of both the petitioner Corporation and the respondent Company."

9. With the above background let us now try to find out as to whether the above ingredients exist in the present case so as to have authorised the Deputy Registrar to register the trademark PONAS in favour of the respondent that the same was being used concurrently, honestly and without knowledge that a similar trademark under the name Ponds was in use since long. The respondent for the best reasons known to them have not stated so in their evidence which has been led in the form of an affidavit sworn by Mr. Banwari Lal, i.e. proprietor of the firm. They have also not stated so in their application for registration of the trademark. In fact, even the learned Counsel for the respondent Mr. Ghiraya during the course of his arguments never claimed ignorance on the part of the respondent with regard to the trade mark Ponds in use by the petitioner in respect of their cosmetic goods.

10. Learned Counsel for the petitioner Mr. D.D. Singh, on the other hand, has contended that the petitioners are the registered proprietor of the trademark Ponds in respect of their cosmetic goods. They have entered into an agreement on June 23, 1997 with Conopco Inc. and as such they are entitled to use the trademark Ponds for their cosmetic goods and other products. The said trademark Ponds was initially got registered under No. 96629 dated May 22, 1944. It has been further urged for and on behalf of the petitioner that the impugned trademark PONAS is nothing but a colourable imitation of the registered mark Ponds. In case the same is allowed to be registered in that eventuality it would cause not only irreparable pecuniary loss and damage but also a loss to their reputation and goodwill. The impugned trademark is phonetically, visually and structurally similar to the trademark Ponds.

11. The above rival contentions advanced by learned Counsel for both the parties raise a very important and crucial point with regard to the fact as to what is the meaning of the words deceptively similar and how the Court will arrive at a correct conclusion in the teeth of the said controversy. For determination of the above points the Court will look at the two trademarks in order to find out:

a. as to whether they resemble one another phonetically, structurally and visually so as to cause confusion in the mind of the purchasers with regard to the goods of one party as belonging to the other party or vice versa;

b. the nature of the goods being sold by the petitioner and the opponent;

c. the channels wherethrough the goods are being sold;

d. the class and the kind of the customers who purchase the said goods keeping in view their education and intelligence; and

e. other different surrounding circumstances.

12. The above view was given vent to by Honble Mr. Justice Parker in a case entitled the Pianotist Company Ltd. as reported in (1960) 23 RPC 774 at page 777. "You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trademark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusionthat is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goodsthen you may refuse the registration, or rather you must refuse the registration in that case."

13. A situation very much akin to the situation in hand arose before the Honble Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 Supreme Court 142, when the Honble Supreme Court was called upon to decide as to whether the trademark GLUVITA used in connection with biscuits was similar to the trademark GLUCOVITA used with reference to glucose. It was observed Again, in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them .."

14. There is no reason why the test of trade connection between different goods should not apply where the competing marks closely resemble each other just as much as it applies where the competing marks are identical. Whether by applying these tests in a particular case the conclusion that there is likelihood of deception or confusion should be arrived at would depend on all the facts of the case.

15. The respondent applied for registration of the mark Gluvita used with reference to biscuits manufactured by him. The appellant who had been using the registered mark Glucovita with reference to his glucose with vitamins opposed the application under Section 8(a). It was established that the appellants trademark had acquired a reputation among the buying public.

16. Held, applying the above tests that the commodities concerned were so connected as to make confusion or deception likely in view of the similarity of the two trademarks. Apart from the syllable co in the appellants mark, the two marks were identical. That the syllable was not such as would enable the buyers in our country to distinguish the one mark from the other. Hence the respondents mark could not be registered.

17. The same view was also reiterated by a Single Judge of this Court as reported in Esco Sanitations, Delhi v. Mascot Industries (India) Delhi, AIR 1982 Delhi 308.

18. Admittedly, in the instant case the respondent want their trademark PONAS to be registered which can very safely be said to be similar or at least deceptively similar to the trademark Ponds phonetically, structurally and visually inasmuch as there is only a difference of letter a i.e. the respondent have used in their trademark a instead of letter d otherwise all the letters in the impugned trademark are the same. Moreover, both the parties in the instant case are dealing in cosmetic goods. The goods of both the parties being cosmetic goods are to be sold through the same channels, i.e. the shops and the counters. The customers of both the parties would be the same as those who want to deal in cosmetic goods or who want to have them for their day-to-day use in connection with their makeup such as cream, powder, lipstick.

19. There is another aspect of the matter. This Court had had an opportunity to examine the containers wherein the goods of both the parties are being sold and on a comparison of the same this Court found that the containers are of the same shape and size. The floral design and colour scheme on both the containers belonging to the rival parties are also same. Thus there is nothing strange when learned Counsel for the petitioner contends that in case the impugned trademark PONAS is allowed to be registered it would cause irreparable pecuniary loss, damage, as well as loss to the reputation of the petitioner.

20. Learned Counsel for the respondent has not challenged the fact that the petitioner are the prior user of the trademark Ponds as they have been using the same since the year 1977 by virtue of the agreement (vide para 2 of the affidavit of Mr. P. Samlar). The respondent have started using the impugned trademark since the year 1980 (vide para 3 of the affidavit of Shri Banwari Lal). The sale as shown in the said affidavit runs only into thousands (vide para 6 of the affidavit) whereas the sales of the cosmetic goods belonging to the petitioner run in crores. Furthermore, the petitioner are spending crores of rupees per year on the advertisement of their goods (vide para 5 of the affidavit of Mr. P. Sankar). Thus I am of the view, that the petitioner have the priority both in the adoption and the user of the trademark.

21. A perusal of the affidavit sworn in by Mr. P. Sankar, Secretary, Ponds India Ltd., reveals that the products of Ponds India Ltd. are being advertised on a very wide scale including in newspapers, magazines, television and radio throughout the country. Some of the magazines have been placed on the file (vide para 4, 5 and 6 of the affidavit). Thus it does not appeal to the reason that the respondent were not aware of the above said trademark Ponds. However, the respondent have neither denied nor admitted the said fact through the affidavit of Shri Banwari Lal. They are silent on this fact. Thus by no stretch of imagination it can be said that the respondent were not aware of the same and their concurrent user of the trademark PONAS was not a dishonest one.

22. Learned Counsel for the respondent Mr. Ghiraya has then contended that the affidavit dated April 28, 1993 sworn in by Mr. P. Sankar is not even worth the paper on which it has been typed out inasmuch as the same has not been drafted in accordance with Order 19 Rule 1 of the Code of Civil Procedure. According to the learned Counsel it is a well recognised principle of law that in case an affidavit has not been properly verified the same cannot be looked into and is liable to be flung to the winds. The learned Counsel in support of his contention has led me through the observations of the Honble Supreme Court as reported in A.K.K. Nambiar v. Union of India and Another, AIR 1970 Supreme Court 652 (para 11) "The appellant filed an affidavit in support of the petition. Neither the petition nor the affidavit was verified. The affidavits which were filed in answer to the appellants petition were also not verified. The reasons for verification of affidavits are to enable the Court to find out which facts can be said to be proved on the affidavit evidence of rival parties. Allegations may be true to knowledge or allegations may be true to information received from persons or allegations may be based on records. The importance of verification is to test the genuineness and authenticity of allegations and also to make the deponent responsible for allegations. In essence verification is required to enable the Court to find out as to whether it will be safe to act on such affidavit evidence."

23. To the same effect also the opinion of the Single Judge of this Court as reported in M/s. Sunder Industries and Another v. M/s. General Engineering Works, New Delhi, AIR 1982 Delhi 220.= 21 (1982) DLT (SN) 53

24. Learned Counsel for the respondent Mr. Ghiraya in view of the above contends that there is absolutely no verification in the instant case. Hence the affidavit filed by the petitioner herein sworn in by Mr. P. Sankar is absolutely of no avail to the petitioner. It is a trash and as such it should not be looked into and is liable to be ignored. Learned Counsel for the petitioner has urged to the contrary. According to him, the provisions of the Civil Procedure Code are not applicable to the affidavits filed before the Registrar under the Act.

I find myself in perfect agreement with the contention of the learned Counsel for the petitioner. A perusal of Rule 116 of the Trade and Merchandise Marks Rules, 1959 reveals that it deals with the form of affidavits which are to be filed under the Act it provides as under:

"116. Form, etc. of Affidavits(1) The affidavits required by the Act and the rules to be filed at the Trade Marks Registry or furnished to the Registrar, unless otherwise provided in the Second Schedule shall be headed in the matter or matters to which they relate, shall be drawn up in the first person and shall be divided into paragraphs consecutively numbered; and each paragraph shall as far as practicable, be confined to one subject. Every affidavit shall state the description and the true place of abode of the person making the same shall bear the name and address of the person filing it and shall state on whose behalf it is filed."

It is crystal clear from the relevant provision of law that Rule 116 deals with the particulars which are to be furnished and the form in which an affidavit is to be drawn which is proposed to be filed before the Trademark Registry. It is abundantly clear from above that verification of the affidavit as envisaged under Order 19, Rule 3 of the Code of Civil Procedure is not required to be done in the case of affidavits which are to be filed under the Act. It would be noteworthy to mention over here that in case the contention of the learned Counsel for the respondent is taken to be correct in that eventuality the affidavit filed by Shri Banwari Lal also cannot be looked into and is liable to be ignored inasmuch as it does not bear any verification. It has also been drawn up in the same manner and in the same way as that of the affidavit of Mr. P. Sankar, relied upon by the petitioner.

25. The next contention raised for and on behalf of the respondent is that there is absolutely no evidence from the side of the petitioner as observed by the learned lower Court inasmuch as all the three applications dated March 1, 1993 for extension of time to lead evidence up to May 1, 1993 and the application dated July 5, 1993 (filed on July 7, 1993) to take on record the affidavit dated June 8, 1993 sworn in by Mr. Kenneth C. Leonard were dismissed as withdrawn vide order dated November 30, 1993. There is no dispute with the said order and with the said fact that all the three applications were got dismissed as withdrawn as per the statement of the learned Counsel for the petitioner before the Deputy Registrar. However, the learned Counsel while so urging is oblivious of the fact that the prayer to lead evidence has already been allowed vide order dated May 14, 1993 passed by the Deputy Registrar. I am tempted here to cite the said order in extenso in support of my above view. The said order is in the form of a letter issued from the office of the Deputy Registrar addressed to M/s. Remfry & Sagar, Remfry House, 8, Nangal Raya Business Centre New Delhi. It is in the following words:

"I am directed by the Deputy Registrar of Trademarks to inform you that the evidence filed by you in support of opposition/application, has been taken on record."

Thus the evidence in the form of affidavit of Mr. P. Sankar dated April 28, 1993 was very much taken on record by the Deputy Registrar. Hence this Court feels that the Deputy Registrar fell into a grave error by ignoring the said affidavit and by observing that there was no evidence at all from the side of the petitioner in support of their case.

In view of the above the petitioner are entitled to succeed. The petition is allowed with costs throughout assessed at Rs.10,000. The impugned order dated September 21, 1994 passed by the Deputy Registrar of Trademarks is hereby set aside. The Application No. 433275 moved by respondent No. 1 for registration of the trademark PONAS in Class 3 is hereby dismissed.