1. By the appeal under Section 109 of the trade and Merchandise Marks Act, 1958 (hereinafter referred to as (the Act) the applicants. M/s. Wattan Singh & Sons, challenged an order of the Assistant Registrar of Trade Marks, Delhi, accepting the application of the respondents M/s. Bakhtawar Engineering Works, for the registration of their rival mark under Section 12(3) of the Act. The appeal has been filed in the following circumstances.

2. According to the appellants, they are engaged in the manufacture and merchandise of agricultural machinery, chaff cutter blades and their components and have been carrying on the business under the trade mark DO CHIRI with the device of two birds since 1932 through their predecessor-in-interest and since 1937 by themselves. The mark was registered in 1949. The application of the predecessor-in-interest of the appellants for registration was then opposed on the ground that the then opponents had been using a similar mark based on the flying bird device. In the course of the proceedings, Jawala Singh, who was then a partner of the firm, and had applied for registration on behalf of the firm, filed an affidavit in support of the claim for registration. In part 11 of the affidavit Jawala Singh stated that several firms engaged in the manufacture of chaff cutting machine had been using trade marks consisting of flying birds without any objection even though all these marks based on the bird device had considerable resemblance with each other. He had furnished names of 20 firms who had been applying such marks in relation to the aforesaid manufacture which included M/s. Bakhtawar Engineering Works, respondents herein. In 1968, M/s. Bakhtawar Engineering Works, respondents herein, sought registration of a mark in relation to chaff cutting machine which consisted a label containing the device of two birds on a stem with the words. TWO KABUTAR MARKA on the allegation that this mark had been in use by the respondents since 1950. Opposition to the mark was entered on behalf of the appellants in 1959 and the registration of the rival mark was opposed, inter alia, on the ground that the appellants had been using their mark since the year 1932, had acquired a vested right in it since then on account of extensive use and publicity, that the registration of the mark of the respondents would be contrary to the provisions of Section 2 (I) and II of the Act and their claim could not be justified with reference to Section 12(3) of the Act. In their rejoinder the respondents claimed that they had honestly adopted the mark and had been using since 1920 and they were, therefore, entitled to the benefit of Section 12(3) of the Act. The parties filed affidavit and documents in support of the rival contentions. It appears that meanwhile the appellants prosecuted the respondents on a complaint based on a charge of infringement of their trade mark. The Trial Courts convicted the respondents, but the conviction was set aside by the High Court by the judgment which is reported as AIR 1974 Punjab and Haryana 116. On the motion of the respondents a copy of the judgment was allowed, to be placed on the record of the proceeding by the Assistant Registrar. The affidavit of Jawala Singh was also allowed to be placed on record. The High Court had returned the finding that use by the respondents of the mark sought to be registered, appeared to it to be both concurrent and honest.

3. By his order of September 1, 1975, sought to be appealed against, the Assistant Registrar of trade marks rejected the opposition of the appellants and directed that the mark be registered under Section 12(3) of the Act. In the course of the order the Assistant Registrar came to the conclusion that the rival marks were deceptively similar and that the claim for registration would, therefore, be hit by the provisions of Section 12(1) of the Act since both the marks related to the same product, namely chaff cutting machines. It further returned the finding that the use of the mark by the respondents was likely to receive or cause confusion within the meaning of Section 11, (a) of the Act, but that more possibility of confusion and deception was not sufficient to disentitle the mark to registration if it could fail within the exception provided by Section 12(3) of the Act and satisfied the test of honest and concurrent user. It then proceeded to consider the question if the registration of a mark could be justified with reference to the conditions of Section 12(3) of the Act and returned finding, on the material placed by the respondents, that the respondents had been using the mark both honestly and concurrently. In returning the aforesaid finding the Assistant Registrar was largely influence be a similar finding returned by the High Court of Punjab and Haryana and after quoting the manner in which the High Court had looked at the question of the alleged honest and concurrent use of the respondents, observed that :

"A judgment of thiskind which is from the High Tribunal having complete bearing on the crucial issue whether the applicants have honest concurrent user for the purpose of the provisions of Section 12(3) of the Act called out from the morass of evidence led before it and which has given an irrefutable finding on a thorny issue like this dispute between the same parties though under different sections of the Act which deals with urgency of the situation to an end immediately to the menace of limitation. By Commercial Cannibals, cannot be overlooked or kept stray from giving the credence and carefully consideration in determining identical issues in proceedings before me :

It then sought support from the decision of the Mysore High Court (AIR 1973 Mysore 74) for the preposition that a decision of a Higher Tribunal could not be "treated as totally irrelevant for purposes of deciding a suit under Section 105 of the Act", even though the scope of enquiry held by the Assistant Registrar ...is of a limited nature". The Assistant Registrar then proceeded to observe :

"Where theSuperior Tribunal is attaching importance to the decision of the lower ones, it will indeed be odd or impertinent to ask to lower once to ignore the decisions of higher especially on identical issues of the same parties".

The contention of theappellants that the decision of the High Court in criminal proceedings was neither binding nor operative as res judicata was repelled with the observation that there was no reason why the judgment should not be taken into factual consideration as a guideline to arrive at a conclusion in the matter of this kind". The Assistant Registrar then proceeded to consider the material placed by the respondents on record with regard to their concurrent user and considered the fact of the suspension of the business for a while by the respondents and the effect of the earlier affidavit of Jawala Singh and put his conclusion thus.

"These facts are not obtainedin these proceeding to conclude that there was abandonment of the mark by the applicants to be fatal to their case. I, therefore, do not agree with the Counsel on the issue. Mr. Thapar, the learned Counsel for the applicants relied upon the said affidavit of Jawala Singh and contended that the mark had been honestly adopted in as much as it was well known to the opponents themselves and, by their on sent and acquiescence the business under the mark grew and theycannot come forward to stop it as they arc subject to estoppel under law and opposition filed by them does not,therefore, lie. I have carefully considered the submission of Mr. Thapar and I think after the deposition of Mr. Jawala Singh who is related to the opponents themselves, the opponents are not entitled to maintain the opposition in view of the acquiescence and consent on their part.

By reason of honest concurrent use of established by evidence of their mark the Applicants ; have become proprietors of the mark under Section 18(1) of the Act.

4. The principal ground on which the impugned order is assailed is the admission into evidence of judgment of the High Court and of the fact that the order is substantially based on the conclusion arrived, and by the High Court. Learned Counsel for the appellants contended, and rightly in my view, that the proceedings before the Assistant Registrar, on an application for registration of the mark, and criminal proceedings on a charge of infringement an trade mark, distinct and different in nature, the former being in the nature of civil proceedings for the establishment of a right to property in the mark, while the latter of a purely criminal nature intended to punish a wrong doer, and that the standard of proof in the two proceedings being different, the judgment and the conclusion of the Criminal Court were not only not relevant in civil proceedings but were even inadmissible. It was, therefore, urged that the impugned order stood vitiated on account of this infirmity.

5. Mr. K. S. Thapar, who appeared on behalf on the respondents, did not dispute this proposition of law that a judgment in criminal proceedings was neither admissible nor relevant in civil proceedings even where the two proceedings involved a common question, but sought to defend the order, nevertheless on the ground that it was based on the other material on the record and could, in any event, be fully justified with reference to such material, in particular, the affidavit of Jawala Singh which, according to learned Counsel, operated as an estoppel and disentitled the appellants to even urge that the adoption of a mark by anyone with the bird device could be dishonest because on the showing of Jawala Singh himself, a predecessor interest of the appellants, bird devices were extensively used in the trade marks and Jawala Singh had not only justified it but had even admitted that among the twenty and odd firms who were manufacturing chaff cutting machines, the respondents were one who were using the device of one bird device or another as part of the mark.

6.After heaving learned Counsel for, the parties it appears to me that even though the admission into evidence of the judgment of the Court and reliance on the conclusion returned by it by the impugned order were improper, the impugned order is nevertheless not vitiated because it was partly passed on material other than the judgment of the High Court and partly on the admitted conduct of the predecessor-in-interest of the appellants and on ground of estoppel arising therefrom. In any event the impugned order could be eminently justified with reference to independent material. It is beyond dispute that over 20 manufacturers of chaff cutting machines have over decades been using the device of different birds in various combinations as constituting the whole or a substantial part of the mark. Ordinarily a subsequent user of a mark, which incorporates the basic features of an existing mark, could not be said to be honest but were, as in the present case, numerous manufactures were simultaneously using bird devices it is difficult to attribute dishonesty in the choice of such an extensively used device. Jawala Singh, a predecessor-in-interest of the appellants, having him self in terms defended the use by the appellant firm of a trade mark containing a bird device specifically on the plea that bird devices had been extensively in use in the trade, it was not open to the appellants to object to the adoption of such a mark by the respondent or to characterise such an adoption and use as dishonest or to oppose the registration of such a mark. That there are admitted distinguishing features between the two marks in the design, the arrangement of bird is and the caption below them reinforce the contention of the respondents.

7.The only other question that was raised on behalf of the appellants was that even if the adoption and use of the mark by the respondent could be said to be honest, it was, nevertheless, not concurrent because, on the respondents own showing, the use of mark was discontinued for a while, a fact which was not disputed on behalf of tax return with a view to avoid liability on account of best judgment assessment on basis of income from manufacture and sale of chaff cutting machines in respect of a previous assessment period. A contention was also raised that on the material placed on the record by the respondent, it could not be said that the magnitude of the business done by the respondents was of such an order as to justify the conclusion of concurrent user. None of these contentions, to my mind, can be sustained. It is by now well settled, and does not admit of any controversy that concurrent user need not be continuous and uninterrupted to satisfy the requirements of Section 12(3) or that it must be of great magnitude. What is required is a consistent use of the mark in a commercial sense. The quantum of production and sale may vary from time to time and there may even be interruption and the business of a variety of reasons, but none of these would devitiate from the conclusion of concurrent user if the use was in the course of trade and was resumed after interruptions, as it was in the present case on the material on record.

8. In the result, the appeal fails and is hereby dismissed but, in the peculiar circumstances, leaving the parties to bear there own costs.