Z.S. Negi, Vice-Chairman

1. The applicants had filed two applications being C.O. Nos. 11 and 12 of 1995 under Section 56 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) accompanied with list of documents alongwith documents and list of reliance before the High Court of Delhi for rectification of registered trade marks PRESTIGE under No. 335436B, as of 7.4.1978, in class-11 and PRE/STAGE under No. 283753B, as of 27.10.1972, in class-11, respectively. The said applications, upon transfer by the Honble High Court of Delhi to the Intellectual Property Appellate Board, in pursuance of the provisions of Section 100 of the Trade Marks Act, 1999, were renumbered by the Appellate Board as TRA/8/2005/TM/DEL and TRA/9/2005/TM/DEL, respectively.

2. The applicant No. 1, Prestige Housewares India Ltd. (the expression include the predecessor in business) claims to be floated in 1985 as a Joint Venture Company of the Prestige Group Limited (U.K.) and the applicant No. 2, T.T.K. Prestige Limited. The applicant No. 1, engaged in the business of manufacturing and selling pressure cookers both electrical and non-electrical and other kitchen wares under the trade mark/house mark PRESTIGE, is the subsequent registered proprietor of the trade mark PRESTIGE which was originally registered in India under No. 141602 dated 14.12.1949 for non-electric cooking and kitchen utensils, none being of precious metal or coated therewith, in class-21, in the name of Platers and Stampers Limited, England. The said company underwent various changes of name until it came to be known as the Prestige Group Limited (U.K.). The Prestige Group Limited (U.K.) assigned the said trade mark in favour of the applicant No. 1 by a Deed of Assignment dated 4.10.1985 but prior to the assignment in 1985, the trade mark PRESTIGE was being used by the applicant No. 2 under a license and authorisation from the Prestige Group Ltd. (U.K.). The applicant No. 2 was incorporated in 1955 (prior to June, 1994 known as TT Ltd.) and belongs to TTK Group of companies. The TTK Group of companies are engaged in diversified-field of business activities and has an annual turnover of over Rs. 600 millions comprising various companies, each being an autonomous unit, professionally managed and employing skilled personnel to manufacture a wide range of products of international standards. As stated earlier, the applicant No. 2 is engaged in the business of manufacturing and marketing pressure cookers under the trade mark PRESTIGE under license from applicant No. 1.

3. It is further claimed that the applicant No. 1 is also the proprietor of the trade mark PRESTIGE in respect of goods falling under class-11 including installations for heating, cooking, refrigerating and drying purposes on account of deed of assignment dated 5.6.1989 from the applicant No. 2 in whose name the trade mark PRESTIGE was initially registered under a mutual understanding between the parties and the applicants are taking steps to bring the applicant No. 1 on record as the subsequent registered proprietor in relation to trade marks registered for goods falling in class-11. Thus, the applicant No. 1 is the proprietor of the following trade marks:

S.No

Trade mark

Registration No.

Date of registration and class

1.

PRESTIGE

141602

14.12.1949 and 21

2.

PRESTIGE (Logo)

377158B

16.6.1981 and 11

3.

PRESTIGE

377157B

16.6.1981 and 11

4.

PRESTIGE BARBECUTE

465568

5.6.1987 and 11

5.

Prestige Barbecute

465568

5.1.1987 and 21

All the above trade marks are renewed, subsisting and conclusively valid as contemplated by the provisions of Section 32 of the Act. The applicant No. 1 is, thus proprietor of trade mark PRESTIGE in respect of goods falling in class-11 and class-21 and thereby having exclusive statutory right to use thereof in respect of such goods and the use of such marks for such goods by other person, without consent or license or permission from the applicant No. 1, amounts to infringement of its registered trade marks.

4. The applicants claim that the trade mark PRESTIGE have been used by them and their predecessors in business in relation to kitchenware including pressure cookers, continuously, extensively and exclusively in India since 1955 and such use of the trade mark has now been extended to other kitchen wares, like Bar. Be Cue, non-stick cookware, electric pressure cookers and kitchen weighing scale sold under the trade marks PRESTIGE BARBECUTE, PRESTIGE, PRESTIGE ELECTRO MAIQUE and PRESTIGE ACCURA, respectively. On account of prior adoption, long and continuous use since 1955, enormous sale, extensive advertising campaign and excellent quality control, PRESTIGE trade mark has acquired formidable goodwill and reputation in relation to kitchen wares and domestic appliances and has become distinctive of the goods and business of the applicants. The applicants have incurred substantial expenses on sale promotional schemes and advertising campaign in respect of trade mark PRESTIGE. The goodwill and reputation acquired by the applicants in the trade mark PRESTIGE has become so formidable that the use of arty deceptively similar mark by any other person in relation to domestic appliances or goods which are cognate or allied in nature is bound to create confusion or deception among the members of public who would be induced to believe that such traders goods also originate or have an association or nexus with the applicants or are products of legitimate business expansion by the applicants, which being false and misrepresentation, amounts to passing off of such traders goods/business for those of the applicants.

5. It is averred that the applicants came across an advertisement in the Trade Marks Journal No. 970 dated 1.11.1989 at page 981 in relation to trade mark PRE/STAGE in respect of pressure cookers in class-21 applied for registration by the Respondent No. 1 under application No. 443514. Thereupon, the applicant No. 1 filed opposition No. DEL-6540 on 29.12.1989 opposing the registration on the ground that it is the registered proprietor of trade mark PRESTIGE under No. 141602 as of 14.12.1949, and subsequent thereto filed a Civil Suit No. 405 of 1991 before the High Court of Delhi for infringement and passing off in which the Honble Court has granted interim injunction against the Respondent No. 1 which continues to be in operation. The Respondent No. 1 filed its counter-statement to the opposition on 15.7.1992, wherein the Respondent No. 1 claimed that the trade marks PRE/STAGE and PRESTIGE are registered in respect of allied goods in its favour under Nos. 335436B as of 7.4.1978 and 283753B as of 27.10.1972 but neither filed copies of the registration certificates nor gave any specification of goods for which those trade marks were registered. The specification of goods for which the trade marks were registered were given for the first time as hurricane lanterns, stoves, blow lamps and parts in the affidavit dated 2.6.1994 of Shri Har Prasad Gupta, partner of Respondent No. 1. The Respondent No. 2, after hearing the parties disallowed the opposition No. DEL-6540 and allowed the application for registration by his order passed on 23.12.1994. An appeal preferred against the order passed on 23.12.1994 by the applicant No. 1 before the High Court of Delhi being CM (M) No. 125 of 1995, and later on transferred to the Intellectual Property Appellate Board, was allowed on 1.10.2004 by the Appellate Board.

6. The grievance of the applicants are that the use of the trade marks PRE/STAGE and PRESTIGE by the Respondent No. 1 in relation to goods which are cognate or allied in nature with that of goods of the applicants is likely to cause confusion and deception amongst members of public and the trade and the use and adoption of the marks by the Respondent No. 1 is mala fide, dishonest and fraudulent and solely motivated to encash upon the goodwill reputation vested in the applicants trade marks. The applicants have averred that the said trade marks are wrongly remaining on the register and the applicants are aggrieved persons on account of the impugned registration remaining on the register. Therefore, the applicants have sought for rectification and removal of trade marks registered under Nos. 335436B and 283753B under various provisions of the Sections 9, 11(a) and (c), 18(1), 29(1) and 32(a) and (c) of the Act.

7. The applicants filed on 17.10.1995 the list of documents alongwith documents. Reply to the applications on behalf of the Respondent No. 1 were filed by Shri Anil Gupta, partner of the Respondent No. 1, denying the material averments made in the applications and raising certain preliminary objections about the maintainability of the applications. On 2.2.1996 the list of reliance and the list of documents were filed on behalf of Respondent No. 1. The rejoinders on behalf of the applicants were filed in September, 1996 by their Constituted Attorney Shri Sambasivan Kumar and thereafter both parties filed their affidavit evidences, Besides the documents mentioned above, the affidavit dated 5.6.1999 alongwith Exhibits A to K, by Shri V.V. Sridharan, Vice President-Finance of the applicant No. 2, affidavit dated 6.5.1999 alongwith Exhibits A to E and another affidavit dated 5.6.1999 alongwith Exhibit A by Mr. M. Saravanan, Assistant Manager (Legal) of the applicant No. 2 and affidavits by 8 traders and 2 consumers were filed. The rectification applications fame up for heating on 22.5.2007 before the Circuit Bench sitting at New Delhi, when Shri Hemant Singh, Advocate appeared for the applicants and Shri R.N. Prabhakar, Advocate appeared for the Respondent No. 1. Since, in both the rectification applications, the parties are same and the facts and the legal issues involved are similar, therefore, both the matters were heard together with the consent of counsel on either side.

8. Shri Hemant Singh, learned Counsel for the applicants, contended that, as averred in the applications, the applicants are persons aggrieved and as such they have the locus standi to file these rectification applications. The impugned marks of the Respondent No. 1 are being misused and relied upon by it to raise claims to the proprietorship of PRESTIGE and PRE/STAGE in relation to pressure cookers and also the registration of these marks are causing hindrance to the right of the applicants to legitimate expansion of their business. He contended that the applicant No. 2 has been manufacturing and selling pressure cookers under the trade mark PRESTIGE in India continuously and extensively since 1955 to 1985 under license and authorisation from the registered proprietor and after 1985 under license from the applicant No. 1. Thus, the applicants are prior, user and adopter, of the trade mark PRESTIGE which was registered in India in 1949. The learned Counsel in support of his contention regarding persons aggrieved placed reliance on the decision in Hardie Trading Ltd. and Anr. v. Addisons Paint and Chemicals Ltd. : AIR 2003 SC 3377 : 2003 (27) PTC 241 and to prove his other contentions regarding license of user and assignment of the mark he drew our attention to pages 23 to 56 of the List of Documents filed by the applicants on 17.10.1995 which are photocopies of agreement dated 20.12.1956 between Prestige Group Ltd. and applicant No. 2., registered user agreement dated 28.5.1974 and 12.12.1978 between Prestige Group Ltd. and applicant No. 2, Deed of Assignment dated 4.10.1985 by Prestige Group UK Plc. in favour of applicant No. 1, Memorandum of consent dated 20.6.1989 between Prestige Group UK Plc. and applicant No. 1 and permitted user agreement dated 31.12.1990 between applicant No. 1 and applicant No. 2. He submitted that the issue of deed of assignment had been raised by the Respondent in the appeal, reported as Prestige Housewares India Limited v. Registrar of Trade Marks and Anr. : 2005 (30) PTC 212 (IPAB) , in which same parties were involved and wherein-the Board observed that the registration of the trade mark of the Appellant is from 1949 and the second Respondents user as recognised by the Deputy Registrar is from 1972, there is no question of availing the benefit of Section 33 of the Act as the user should be a honest user; should have been using the mark in a bona fide manner but the second Respondent does not appear to be falling to such a category. The Respondent No. 1 has not preferred appeal or writ against the decision in the appeal and the said decision has attained finality.

9. Shri Singh contended that the marks of Respondent No. 1 are registered in contravention of the provisions of Clause (a) of Section 11 of the Act as the impugned trade marks are not only phonetically and structurally deceptively similar to the trade mark PRESTIGE but the Respondent No. 1 has reproduced the logo script of the trade mark PRESTIGE thereby making them even visually similar to trade mark PRESTIGE and, therefore, the use of such marks are likely to deceive or cause confusion among the unwary consumers. He further contended that the Respondent No. 1 is using the impugned marks in relation to hurricane lanterns, blow lamps, stoves which are undisputedly cognate and allied goods (as admitted by the Respondent No. 1 in its counter-statement filed in DEL-6540) in nature vis-a-vis kitchenwares and domestic appliances including pressure cookers. These goods are sold through same selling counter, through same trade channels, used by the same class of customers and are the complimentary to each other in their nature, function and utility. The use of the impugned marks are bound to induce the unwary class of customers having below average intelligence and imperfect recollection to wonder whether the goods of the Respondent No. 1 originates from the applicants or have a nexus, trade connection or an association with the applicants. Such use besides e causing deception or confusion amounts to infringement of applicants registered Trade Mark Nos. 141602 and 377158B under Section 29(1) of the Act. Therefore, deception or confusion is inevitable and had experienced also. The learned Counsel drew our attention to paras 10 and 11 to a copy of affidavit evidence dated 29.9.19.93 filed in support of opposition No. DEL-6540 by Mr. Sambasivan Kumar, Constituted attorney of applicant No. 1, wherein it is stated that in 1986, the applicant No. 1 was informed by its sole dealer in Delhi about the sale of certain pressure cookers and other kitchen utensils under deceptively similar trade mark (PRE/STAGE) in Delhi causing considerable confusion and deception of the trade and public and the said information prompted the applicant No. 1 to file a criminal complaint before the Chief Metropolitan Magistrate, Delhi. He advanced his arguments relying heavily upon the decision in Corn Products Refining Co. v. Shangrila Food Products Ltd. : AIR 1960 SC 142 , M/s. Jugmug Electric and Radio Co. v. Telerad Private Ltd. ILR (1978) 1 Del 667, Ceat Tyres of India Ltd. v. Jai Industrial Services and Anr. : 45 (1991) DLT 405 , Dharam Pal Satya Pal v. Janta Sales Corporation PTC (Suppl) (2) 31 (Del) and the prestige Housewares India Limiteds case (supra). It is averred in the application that the use of impugned marks by the Respondent No. 1 in relation to its goods are disentitled to protection in the Court of law and the impugned registrations are liable to be rectified and removed from register being in violation of provisions of Section 11(a) and (c) of the Act.

10. Shri Singh contended that the impugned marks have been obtained, fraudulently, by misrepresenting and concealing material facts by the Respondent No. 1, knowing fully well about the goodwill and reputation of the applicants mark. The adoption and use of marks by the Respondent No. 1 is dishonest, fraudulent as they are adopted with the sole motive to encash and misappropriate the goodwill acquired by the applicants mark. In support of his contention of dishonest and fraudulent adoption, the learned Counsel relied upon the decision in Kamal Trading Co. and Ors. v. Gillette U.K. Limited 1988 PTC 1 Bom. On account of these, the marks of the Respondent No. 1 which are wrongly remaining on the register in violation of the provisions of Section 32(a) of the Act and as such the marks of Respondent No. 1 are liable to be rectified.

11. Shri Singh, lastly contended that the Respondent No. 1 is not the proprietor of the marks. As the Respondent No. 1 has dishonestly misappropriated the applicants trade mark with a view to earn easy and illegal profits by passing off its goods for those of goods of the applicants, no amount of use can legitimise or purify any tainted and dishonest adoption of the trade marks. The dishonestly adopted trade marks and their use have continued to be illegitimate and unlawful and in violation of the applicants legal and vested rights. The impugned registrations, therefore, are liable to be removed and rectified also on account of violation of Section 18(1) of the Act.

12. Shri R.N. Prabhakar, the learned Counsel for the Respondent No. 1 vehemently opposed the applications. Besides oral submissions, he has submitted a synopsis of arguments in writing. Shri Prabhakar relying on the decision of this Board in Mr. Saroop Prakash Nayar, trading as Jackson Cosmetics (India) v. M/s. Chesebrough Ponds Inc. and Anr. : 2006 (33) PTC 499 (IPAB) contended that the applicants are not persons aggrieved as there has been no invasion on the applicants goodwill and reputation or restraint or injury to the applicants either in marketing their goods or while seeking registration of trade mark PRESTIGE in the name of applicants who have obtained registrations on the proposed to be used mark. The trade mark of the applicant has no goodwill and reputation as claimed by the applicant No. 1 as it never used the mark in respect of the goods and the mark is a defunct one whereas Respondent No. 1 has obtained registration of its marks in 1972 and 1978 respectively and the assignors of mark to applicant No. 1 have never objected to those registrations. Had the assignor company or any of the applicants been in trade in the years 1972 and 1978, they must have opposed such registration. The entry made in the register in the name of Respondent No. 1 is not without sufficient cause and not wrongly made or wrongly remaining on the register and there is absolutely no error or defect in the entry in of the register. Thus the applicants have no locus to file the present rectification applications.

13. The learned Counsel strenuously argued that the applications are bad in law and not maintainable because of non-joinder or misjoinder of parties and the deed of assignment is void, he emphatically stated that the applicant No. 2 is neither the permitted user nor registered user on record and is unlawfully trafficking in the trade mark contrary to the provisions of the law on the subject and that the assignment deed by which trade mark PRESTIGE was assigned to applicant No. 1 is a void document as the assignment is not in accordance with Section 2(1)(a) of the Act and such a conditional transfer which is bad as well as void under Section 25 of the Transfer of Property Act, 1882. To emphasise his point the learned Counsel read out the following para 5 of the said deed of assignment:

5. It is expressly agreed by the Parties hereto that in the event of the ASSIGNEES management being taken over by any person or entity other than a person or persons related (by blood or marriage) to Mr. T.T. Narasimhan, present Chairman of the ASSIGNEES, or in the event of a receiver or liquidator being likely to be appointed for the ASSIGNEES assets, the ASSIGNEES shall forthwith cease using the Trade Marks which shall automatically be re-assigned immediately to the ASSIGNORS and from that moment the said Trade Mark shall form no part of the assets of the ASSIGNEES.

The implication of the above condition is that the assignor is still using the trade mark inspite of its assignment. Therefore, the original registered proprietor ought to have been made a party in the applications because they have reserved the right on conditions. As per Section 25 of the Transfer of Property Act, 1882 that the conditional assignment which reserves the right of automatically re-assignment the marks to the assignors is against the provisions of Section 2(1)(a) of the Act. The learned Counsel submitted that it is interesting to note that the value of the trade mark is Re. 1 only. The question arises is there some transaction under the table and will the Court be inclined to protect the transaction made under the table and is it in the interest of justice The applicants have offered no explanation with regard to para 5 of the deed of assignment quoted above. Further, the applicants have not answered whether any receiver or liquidator has been appointed in the matter and whether because of non-fulfillment of the conditions, the trade mark has automatically been re-assigned immediately to the assignor and the assignee have ceased any right to the mark from the moment of the automatic transfer and the mark does not form part of the assets of the assignees.

14. It is contended that the applicants have filed these applications after a lapse of 9 years, in spite of positive knowledge about the Respondents registration and use of trade marks PRESTIGE and PRE/STAGE as back as in 1986 when the applicant No. 1 filed a criminal complaint against the Respondent No. 1 which was dismissed and the accused were acquitted of the charged offences by the Metropolitan Magistrate, Delhi vide his order dated 19.5.1992 and subsequently the applicant No. 1 filed a suit and obtained ex-parte interim injunction which was after arguments and perusal of documents vacated by the A.D.J, Delhi vide his order 5.12.1995. He drew our attention to copies of the said orders filed by Respondent No. 1. The applicants were from 1986 onwards in regular touch with the Respondent No. 1 by way of initiating criminal complaint, suit for infringement and passing off, opposition proceedings and rectification proceedings. The delay on the part of applicants in filing these applications is deliberate and willful. Relying upon the decision of this Board reported as Gurdeep Kaur and Ors. v. Navrattan Singh and Ors. : 2005 (31) PTC 306 (IPAB) , the learned Counsel urged this Board to dismiss the present applications.

15. The learned Counsel contended that the applications are bad and not maintainable by reason of unexplained inordinate delay, acquiescence, implied consent and waiver of rights and being on false and incorrect statements knowingly made with regard to the cause of action. These applications are not maintainable also because there has been no contravention or failure to observe any condition entered in the register in relation to the trade marks of Respondent No. 1 as laid down under Sub-section (1) thereof. The learned Counsel also objected the filing of applications on the ground that they are devoid of any merit except the only hidden merit is that the applicants are a big company and can afford litigation to harass the innocent and law abiding business competitors to establish their unlawful monopoly and in this regard he places reliance on the judgment in Glaxo India Ltd. v. Eudora Laboratories Pvt. Ltd. 1997 PTC (17) wherein the Court found that in view of the continuous sale for more than 9 years the balance of convenience is not in favour of the Plaintiff. The Court further observed therein that simply because the Plaintiff company is a bigger company in the sale of drugs, would not be sufficient to say that they are entitled to grant injunction on this ground in the absence of prima facie case and balance of convenience.

16. Shri Prabhakar in response to the contention raised by the learned Counsel for the applicants, with reference to the decision in the Prestige Housewares India Limited case (supra) that the assignment deed has already been considered in that appeal against which no appeal or writ has been filed, submitted that since there has been a stay for use of the trademark PRE/STAGE in respect of pressure cookers from the Honble Supreme Court and the infringement and passing of suit is pending in the District Court and now posted for hearing before the A.D.J. Fast Track Court, it was not considered advisable to prefer an appeal or a writ. It would be better to file a fresh application with longer user and at less cost and shorter time. Issues and relief in the appeal against the refusal of application are different from the issues and relief in the present rectifications. Therefore the said judgment is irrelevant and not applicable while considering the present rectification proceedings.

17. The learned Counsel contended that as per registration certificate Nos. 283753B dated 27.10.1972 and 335436B dated 7.4.1978, the Respondent No. 1 is the prior user and prior registered proprietor of the trade marks and its registration being more than 7 years old are protected under Sections 32 and 33 of the Act. As has already been submitted, had the applicants been in trade, they would have objected by way of notice of opposition to the registration in the name of Respondent No. 1. Men may lie but circumstances dont as is the case here. The applicants have claimed user of the trade mark from their predecessor from 1949 or from 1955 but the facts do not prove their bald assertion. There is not a single bill, invoice, advertisement and/or any material showing manufacturing and marketing of goods under the trade mark PRESTIGE by applicant No. 1. Registration per se itself does not prove user of the trade mark as per law laid down by the Supreme Court in the Corn Products Refining Co.s case (supra) wherein it is observed that the trade mark may have been registered but not used. The High Court of Delhi also held in Century Traders v. Roshan Lal Duggar and Co. and Ors. : AIR 1978 Delhi 250 that it is not permissible to draw any inference as to their user from the presence of marks on the register. Again, the settled law is one trade mark, one source, one proprietor, one origin but in the present case there are multiple owners of the trade mark PRESTIGE. As already submitted, the assignors have also reserved the automatic re-assignment right, meaning thereby that the assignors are using the trade mark, the applicant No. 1, the subsequent proprietor is not using the mark and the applicant No. 2 which are perhaps using the trade mark without being permitted user or registered in terms of Section 2(m) or Section 2(s) of the Act. The use of the mark by the applicant No. 2 is against the law, amounting to infringement and unlawful trafficking which is barred by Section 48(1) of the Act. In support of this argument, the learned Counsel placed reliance on the decision in Power Control Appliances and Ors. v. Sumeet Machines Pvt. Ltd. and Ors. : 1995 (15) PTC 165 (SC) .

18. Shri Prabhakar, by placing reliance upon the judgment in Jindal Rolling Mills Ltd. v. Shree Ganesh Rolling Mills and Ors. : 2005 (31) PTC 113 (IPAB) , pleaded for dismissal of the present applications as the grounds covered in that rectification application were the provisions of Sections 9, 11(a), 12(1) and 18(1) of the Act but the learned Bench of this Appellate Board, after considering the status of aggrieved person and finding that the onus had not been discharged for the rectification, had dismissed the application for rectification and the said judgment is relevant in the case on hand as the applicants are not persons aggrieved and the onus to prove the case has not been discharged by the applicants.

19. Before we proceed to deal with the main issues in the applications, it would be appropriate to deal first with the preliminary objections raised by Respondent No. 1 in its reply to applications, during the course of argument and in the written synopsis. The Petitioner has raised objection regarding misjoinder or non-joinder of parties and that the deed of assignment is void in the eyes of law. On perusal of documents on record, it is noticed that the registered proprietor of the trade mark PRESTIGE (the Prestige) entered into Heads of Agreement on 20.12.1956 with TT (Private) Limited (the Private) and T.T. Krishnamachari and Co (Krishnamachari) for the purpose of enabling the Private to manufacture and Krishnamachari to sell pressure cookers in India and the Prestige to supply to the Private tools and dies suitable for manufacturing pressure cookers at a purchase price of 5000. This purchase price of 5000 was included in the licence for equipment for machinery generally totaling to 20,000 granted by the Government of India. The Prestige was to provide technical knowledge information and advice for 5000. In consideration of supply of tools and the technical knowledge, etc., a royalty of 5% calculated on the net selling price of all pressure cookers manufactured by the Private were to be paid to the Prestige. The Heads of Agreement were to constitute a contract between the parties and were intended to be embodied in a further agreement. A Further Heads of Agreement between the same parties was entered into on 7.3.1958 authorised by Prestige to Private during such time as it shall be registered as registered user of the trade mark Prestige to use the trade mark upon or in relation to goods manufactured by it in accordance with the specification laid down or direction given from time to time. The right of Private as registered user was to continue for a period of 10 years and the Trade Marks Registry of Government of India was authorised by the parties to enter the Private in the Register, as registered user. On 28.5.1974 an agreement between the Prestige and the Private was entered into agreeing that the Private will be the sole registered user of the trade mark Prestige in India and the Private was to pay 5% royalty to the Prestige. That 1974 agreement, which was to terminate on 14.12.1978, provided that the 1967 agreement and the 1971 agreement shall be deemed to have been terminated by mutual consent with effect from 28.5.1974.

From the preamble of that agreement it is seen that two agreements in 1967 and 1971 were also entered into. It is further seen that the 1967 agreement was recorded until 4.3.1970 at the Indian Trade Marks Registry, but the 1971 agreement, though submitted for recordal, it did not take place due to various reasons. Another register user agreement was entered into between the Prestige and the Private on 12.12.1978 providing that the registered user agreement dated 28.5.1974 shall continue under the same terms and conditions for a further period of 7 years with effect from 14.12.1978. Subsequently the trade mark Prestige was assigned by a Deed of Assignment dated 4.10.1985 assigning, transferring and conveying the entire right, title and interest in and to the said trade mark (without the goodwill of the business of the assignors) for a consideration of Re. 1. On 20.6.1989 a Memorandum of consent recording that the parties accepted the assignment it has already taken effect by virtue of the said deed of agreement. It is further seen that by virtue of Clause 3 of that Memorandum, the Clause 5 and 6 of the deed of assignment dated 4.10.1985 were excluded from the said deed of assignment by consent of the parties. The Prestige Housewares India Limited entered into a permitted user agreement on 31.12.1990 with the TT Limited agreeing grant of permission to the TT Limited on a perpetual basis the use of said trade mark in relation to all the goods covered by the registration of said trade mark on the terms and conditions entered therein.

The assignment in question is in writing by the act of the parties concerned, which in our opinion is not contrary to the definition in Section 2(1)(a) of the Act. Again, Section 25 of the Transfer of Property Act, 1882 refers to conditions precedent. The conditions referred to in that section are conditions which as agreements would be void. If a condition subsequent is void, the condition fails, but the interest created by the transfer is not affected, whereas if a condition precedent is void, the transfer fails. In the deed of assignment at issue, Clause 5 was in the c nature of condition subsequent in which case, the condition would have failed but the interest created by the transfer of trade mark would not have affected. However, since clauses 5 and 6 of the deed of assignment have been excluded from the deed of assignment, the basis of objection in relation to Section 25 of the Transfer of Property Act does not exist. Insofar as the consideration amount of Re. 1 is concerned, no provision of law has been brought to our notice which provide for determination of amount of consideration money for assigning a trade mark. In our opinion it is for the assignor to determine as to on what consideration he assigns the trade mark to the assignee, unless there is material to show that some mala fide transaction has taken place which defeat the provision of any law. The presumption regarding under the table transaction as raised by the Respondent No. 1 is not acceptable in the absence of any proof in relation thereto. There is no pleading or evidence on record to show that such an objection has ever been raised during the recordal proceedings of assignment before the Registrar. We do not see any necessity for impleading the assignors in view of a clause in the deed of assignment which burdens the applicant No. 1 with the responsibility for the maintenance and protection of assignees rights which undoubtedly includes protection of trade mark from any invasion. Similarly, applicant No. 2 is the permitted user of the trade mark. In these circumstances, the objection of misjoinder or nonjoinder of parties is unfounded. The objection of the Respondent No. 1 that the applicants have not answered about the appointment of receiver or the automatic f re-assignment of trade mark to the assignors is contrary to the facts especially when clauses 5 and 6 of the deed have been excluded and do not form part of the deed of assignment. The decisions relied upon by the learned Counsel for the Respondent No. 1 in the matters of Corn Products Refining Company and Century Traders (supra) will be of no help to him as the facts of the present case are different. In view of these, we do not see any irregularity or illegality in the user agreement or deed of assignment and, as such, none of the objections of the Respondent No. 1 in relation to assignment or permitted use of trade mark or multiple ownership of trade mark or misjoinder or nonjoinder of parties is sustainable.

20. In order to consider the next preliminary objection of the Respondent No. 1 that the applications are not maintainable as hit by limitation, we would have to see as to whether the applications filed are governed by the Limitation Act, 1963. Even when the rectification applications were filed before the High Court, prior to the coming into force of the Trade Marks Act, 1999, the provisions of the Limitation Act were not uniformly applied as is evident from the divergent decisions of the High Courts about the applicability thereof. In Ciba Ltd. v. M. Ramalingam : AIR 1958 Bom. 56 , the Division Bench of Bombay High Court held that an application for rectification would be made at any time and was not governed by the Limitation Act. The High Court of Bombay in an unreported case of Rakesh Kumar Gupta v. Goresh Domestic Appliances and Ors. Misc. Petition No. 63 of 1994 decided on 24.1.2002 held that Section 137 of the Limitation Act applies to an application or petition under Section 56 of the Act and yet again the said High Court in Bhagwandas G. Agarwal v. Brijwasi Dughdhalya Private Limited and Anr. 2002 (2) CTMR 554 (Bom) : 2003 (26) PTC 329 (Bom.) held that the application for rectification under Section 56 of the Act, which is treated as a petition under Rule 826 of the High Court (O.S.) Rules, is governed by the provisions of the Limitation Act, 1963. The High Court of Gujarat, in Patel Field Marshal Agencies v. P.M. Diesels Ltd. 1998 PTC (18), observed that it is quite clear that though Section 2(x) declares that "Tribunal" includes both Registrar as well as "High Court" it could not be said that when the High Court is considering the rectification application is a "Tribunal" and not the High Court of Original Civil Jurisdiction a Civil Court. The proceedings of rectification or any proceedings under the trade mark are proceedings coming before the High Court under its Original Civil Jurisdiction. Rectification application is an application governed by the provisions of Code of Civil Procedure before the High Court and consequently the provisions of the Limitation Act, 1963 would govern the said rectification application/Bodies, other than Courts which are exercising quasi-judicial powers like Tribunal and executive authorities are not governed by the provisions of law of limitation provided by the Limitation Act, 1963. The proceedings in question is not before any such body or quasi-judicial Tribunal, but the proceedings in question is a proceeding before the High Court. Therefore, the proceedings under Section 56 read with Section 46 of the Act is governed by the provisions of Article 137 of the Limitation Act, 1963. It appears from page 66 of the judgment of the High Court of Calcutta in Banik Rubber Industries v. Sree K.B. Rubber Industries and Anr. 1990 (10) PTC 58 (Cal) that the position that limitation would not apply to an application for rectification was conceded by the counsel opposing the application. The Division Bench of High Court of Delhi in Fedders Lloyd Corporation Ltd. and Anr. v. Fedders Corporations : 2005 (30) PTC 353 (Del) -DB) while setting aside the finding of the learned Single Judge as erroneous has held that the Article 137 of the Limitation Act, 1963 will not govern the applications under Section 46 of the Act.

Prior to the constitution of the Appellate Board, such applications were being filed before the High Courts, having jurisdiction, to which the provisions of that Limitation Act, 1963 as well as the provisions of the Code of Civil Procedure, 1908 were applicable. The Trade Marks Act, 1999, by virtue of which this Appellate Board was constituted, provides that the Appellate Board shall not be bound by the procedure laid down in the Code of Civil Procedure Undoubtedly the Appellate Board is a tribunal and not a Civil Court to attract the application of provisions of the Limitation Act to the applications on hand. The Apex Court in the! appeal in Mukri Gopalan v. Cheppilat Puthanpurayilaboobacker : 1995 (5) SCC 5 while considering the issue whether the appellate authority constituted under Section 18 of the Kerala Buildings (Lease and Rent Control) Act, 1965 has power to condone the delay in the filing of appeal before it under the said section observed as under:

In the case of Town Municipal Council, Athani v. Presiding Officer, Labour Court, Hubli and Ors. (: 1970 (1) SCR 51 ), a bench of two learned Judges of this Court was concerned with the short question whether any period of limitation governed an application under Section 33(c)(2) of Industrial Disputes Act, 1947. The High Court had taken the view agreeing with the Labour Court that Article 137 of the Limitation Act, 1963 would govern such applications. Reversing that view it was held that Labour Court exercising powers under Section 33(c)(2) of Industrial Disputes Act may be acting as quasi-judicial authority or even a Court but as it was not a Civil Court contemplated by the Code of Civil Procedure, Article 137 of the Schedule to the Limitation Act could not get attracted. Bhargava. J. speaking for this Court held that Article 137 of the Limitation Act, 1963 governs only applications presented to Courts under the Civil and Code of Criminal Procedures. The use of the word other in the first column of the article giving the description of the application as any other application for which no period of limitation is provided elsewhere in this decision, indicates that the Legislature wanted to make it clear that the interpretation put by this Court in Mulchand and Co. v. Jawahar Mills : 1953 SCR 351 and Bombay Gas Co. v. Gopal Bhiva 1964 (3) SCR 709 ,722-723 on Article 181 of the 1908-Act on the basis of ejusdem generis should be applied to Article 137 of 1963-Act also, the language of which is only slightly different from that of Article 181 of the 1908 Act. That is, in interpreting Articles 137 of the 1963-Act regard must be had to the provisions contained in the earlier articles. These articles refer to applications under the Code of Civil Procedure, except in two cases of applications under Arbitration Act, in two cases of applications under the Code of Criminal Procedure. This Court in Mulchand and Co. Ltd. v. Jawahar Mills (supra) case held that the reference to applications under the Arbitration Act had no effect on the interpretation of Article 181 of the 1908-Act and that, that article applied only to applications under the Code of Civil Procedure. On the same principle, the further alteration made in the articles in 1963-Act containing reference to applications under the Code of Criminal Procedure could not alter the scope of Article 137 of the 1963-Act. Moreover even the applications under the Arbitration Act were to be presented to Courts whose proceedings are governed by the Code of Civil Procedure. The further amendment including applications governed by the Code of Criminal Procedure still shows that the applications must be to Courts. The alterations in the 1963-Act. namely, the inclusion of the words other proceedings in the long title to the 1963-Act, the omission of the preamble and change in the definition so as to include petition in word application, do not show an intention to make Article 137 applicable to proceedings before bodies other than Courts such as quasi-judicial tribunals and executive bodies.

It is abundantly clear from the above extracted proposition of law laid by the Apex Court that the provisions of the Limitation Act, 1963 will not govern the applications filed before the Appellate Board under the provisions of Sections 46 and 56 of the Act. We, therefore, disagreeing with the earlier order of the Appellate Board passed in Gurdeep Kaurs case (supra) hold that the provisions of the Limitation Act, 1963 do not govern the applications filed or to be filed before the Appellate Board under Sections 46 and 56 of the Act and the applications on hand are maintainable.

21. It is undisputed that in 1986 when the sole dealer of the applicant company in Delhi gave information about sale of certain pressure cookers with deceptively similar mark, a criminal complaint was filed and thereafter suit for infringement was also filed in 1991 in which injunction was issued which is still continuing by order of the Apex Court. The Respondent No. 1 has during argument and in the written synopsis admitted that the applicants from 1986 have been initiating criminal and civil proceedings against the Respondents by way of criminal complaint, suit for infringement and passing off, opposition proceedings and the rectification proceedings. There is no material to show that the applicants in any way encouraged or deliberately and knowingly permitted the Respondent No. 1 to use the name PRESTIGE and PRE/STAGE. The applicants have been taking one proceeding or other since 1986 indicate that there has been no acquiescence or implied consent from, or waiver of rights by, the applicants. The other objection is that the applications are not maintainable as there is no contravention of Section 56 of the Act and the applications are devoid of merits with regard to cause of action except that the applicant is a big company who intends to harass the Respondent No. 1, let us see what the Act provides. Section 56 of the Act provides for power to cancel or vary registration and to rectify the register on an application made to the Registrar of Trade Marks or the High Court by a person aggrieved or by the tribunal, of its own motion, after giving notice and giving them opportunity of being heard to the parties concerned. Sub-section (1) of the section provides that application by any person aggrieved may be made on the ground of any contravention or failure to observe a condition entered on the register in relation to registration. Sub-section (2) provide that application may be made by any person aggrieved by the absence or omission of any entry from the register, or by any entry made in the register without sufficient cause or wrongly remaining on the register or by any error or defect in any entry in the register. It is thus clear that there are wider grounds available under Sub-section (2) of Section 56 of the Act under which application for rectification can be filed. The applicants have filed their applications for rectification can be filed. The applicants have filed their applications on the ground of trade marks of Respondent No. 1 wrongly remaining on the register which is covered under the said Sub-section (2). Since the applicants fulfill the conditions of Section 56 of the Act to file applications thereunder, their action can not be seen as big company filing these applications to harass the Respondent No. 1 Unless the same is proved by the Respondent No. 1. The decision in the Glaxo India Ltd.s case (supra) will not further the case of Respondent No. 1 as the facts of that case was different. That was a suit filed by the Glaxo company wherein the Court observed that a big company is not entitled to injunction as a-matter of right without any prima facie case because the Defendant obtained license for manufacture the drug BUPAR on 15.7.88 whereas Plaintiff had obtained license for manufacture of ZUPAR on 27.7.89. Prima facie the case on hand is different from the case relied upon by the counsel wherein the above observation was made by the Court. The above objection of the Respondent No. 1 does not sustain.

22. There is no dispute that the issue of deed of assignment was raised by the Respondent No. 1 in the appeal filed by the Prestige Housewares India Ltd. (supra) and the Appellate Board while allowing the appeal observed amongst others that there is no dispute about the fact that the Appellant became subsequent proprietor of the trade mark registered in the name of M/s. Prestige Group U.K. England on 14.12.1949 through a deed of assignment and M/s. TT Private Ltd. was authorised as licensee to manufacture various goods covered under registration and in pursuance of that M/s. TT Private Ltd. had been manufacturing various utensils including pressure cookers and marketing the same in India, and abroad. We agree with the contention of the learned Counsel for applicants that for whatever reason appeal against the order of the Appellate Board was not preferred the same is now a conclusive order and the said decision is very much relevant for drawing inference in relation to findings on similar issues raised in these applications.

23. Now we would go into the issue as to whether applicants are persons aggrieved. Any person making an application to the tribunal for cancelling or varying the registration of a trade mark under Section 56 of the Act must be a person aggrieved. The expression person aggrieved has received liberal construction from the Courts and includes a person who is aggrieved by an entry wrongly made or remaining on the register or a person whose registered trade mark shows prima facie a sufficient similarity to the Respondent/s registered trade mark to make it possible that his trade may be interfered with by the use of the other mark. The Apex Court while interpreting the phrase person aggrieved as contained in Sections 46 and 56 of the Act has in the Hardie Trading case (supra) held as under:

30. In our opinion the phrase "person aggrieved" for the purposes of removal on the ground of non-use under Section 46 has a different connotation from the phrase used in Section 56 for cancelling or expunging or varying an entry wrongly made or remaining in the register.

31. In the latter case the locus standi would be ascertained liberally, since it would not only be against the interest of other persons carrying on the same trade but also in the interest of the public to have such wrongful entry removal. It was in this sense that the House of Lords defined "person aggrieved" in the matter of Powells Trade Mark (1894) (11) RPC 4:

...although they were no doubt inserted to prevent officious-interference by those who had no interest at all in the Register being correct, and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited,. inasmuch as it is a public mischief that there should remain upon the Register a Mark which ought not to be there, and by which many persons may be affected, who nevertheless would not be willing to enter upon the risk and expense of litigation.

Whenever it can be shown, as here, that the applicant is in the same trade as the person who has registered the Trade Mark, and wherever the Trade Mark, if remaining on the Register, would, or might, limit the legal rights of the applicant, so that by reason of the existence of the entry on the Register he could not lawfully do that which, but for the existence of the mark upon the Register; he could lawfully do, it appears to me he has a locus standi to be heard as a person aggrieved. (Emphasis added).

The applicants are in the trade of manufacture and marketing of kitchenwares including pressure cookers as the Respondent No. 1 is in the trade of manufacture and marketing of cognate and allied goods which are used in kitchen. It is averred in the applications and also contended by the learned Counsel for the applicants that the applicants are prior user of the mark, the marks of the Respondent No. 1 are wrongly entered or wrongly remaining on the register and the registration of the impugned marks are causing hindrance in the legitimate expansion of applicants business. The reliance of decision in Mr. Saroop Prakash Nayars case (supra) by the learned Counsel for Respondent No. 1 supports the case of applicants as they are alleged to be restrained in the expansion of their business. We are of the opinion that, prima facie, the applicants are person aggrieved and have locus standi to be heard.

24. The next issue is whether the Respondent No. 1 is prior user of mark and prior registered proprietor and the applicant No. 1 never used the mark and the applicant No. 2 is illegally trafficking in the mark. Shri V.V. Sridharan, Vice President, Finance of Petitioner No. 2 in his affidavit dated 5.6.99 has stated that the trade mark Prestige has been in use and that the old records of invoices of sale are not available but he has managed to locate some old documents establishing use of the trade mark by the applicants in respect of their pressure cookers, such as credit notes, orders, inter-office memos, correspondence, invoices, etc., for the period 1965-1974 and the same are annexed with the affidavit, marked as Exhibit-C (Colly). From Exhibit-C (pages 29 to 129), it is seen that TT (Private) Limited has been using the mark substantially as the income-tax on royalty payable to Prestige Group Ltd. for the year 1963-64 was Rs. 1,11,827.10, for the year ended 31.10.1964 was Rs. 1,11,810.62 (detailed calculation of this amount as given in the original letter 22.11.65 at page 79 is: Royalty and Technical Fee Rs. 1,65,890, Income tax and Surcharge on I.T. Rs. 1,11,810.62 and Net amount to be remitted to the Prestige Group Ltd. Rs. 54,079.38 and for the year ended on 31.10.66 was Rs. 2,37,428. If such amounts of royalty and income tax had accrued in a given period, one can imagine the volume of business the applicants might have been doing. M/s. T.T (Private) Ltd. has vide credit notes at pages 65, 68, 71 and 76 dated 30.11.73, 31.12.73, 31.1.74 and 28.2.74 recorded the amounts of reimbursement of ad hoc discount given by a Calcutta distributor to dealers for supply of 1609,763,1400 and 1885 Prestige pressure cookers, respectively, to dealers during" the respective months. The statement of sales value and advertisement expenses at page 130 from 1959-1985 shows that the companys sales turnover in 1959 was 1.33 lakhs and advertisement expenses was Rs. 0.20 lakh and in 1985 the sales turnover was Rs. 1576.11 lakhs and advertisement expenses was Rs. 115.57 lakhs as certified by the auditors of the company. At page 131, a certificate of sales of Prestige pressure cookers, certified by the auditor of the company, for the financial year ended on 31.10.87 to 31.3.97 show the domestic turnover and advertisement and sales promotion expenses. For the financial year ended 31.10.87 and 31.3.1997, the domestic turnover were Rs. 22,58,979,40 and Rs. 985087067 and advertisement and sales promotion expenses were Rs. 15822642 and Rs. 85515451, respectively. The huge sales, substantial expenditure incurred on advertisement and sales promotion show that the mark has not only been in use but has acquired substantial goodwill and reputation. Prestige pressure cookers thrice winning praise, as advertised by the company (at Pages 209-210). from the 1967 NDA Mountaineering Expedition Party and from the Leaders of the Indo-Bhutan Himalayan 1971 and 1973 Expeditions, for tasty food and for superb performance of Prestige pressure cooker at a very high altitude on the Himalayas is a testimony of standard and reputation of Prestige pressure cookers. There are invoices at pages 227 to 259 showing sales to Prestige pressure cookers from 1986 to 1989. There is corporate booklet of TTK Group, companys house magazine and cuttings of some newspaper, such as Nagpur Times and Sunday Standard dated 5.2.67, Tribune, etc. containing advertisements about Prestige pressure cookers. From the above mentioned evidence, it is beyond doubt that the mark was and is in use in India. In fact the sales turnover statement and advertisement expenditure speak volumes about the continuous and long use and reputation of trade mark of the applicants. It is beyond comprehension as to why the registered user will pay income-tax in lakhs on royalty and also royalty to Prestige Group Ltd. without using the trade mark PRESTIGE in India Obviously, there was use of the trade mark and consequently income generated wherefrom and income-tax and royalty dues whereon accrued.

Admittedly, the Respondent No. 1 is the registered proprietor of two marks from 1972 and 1978, respectively, whereas applicant No. 1 acquired proprietorship from 1949. On the other hand, though the Respondent is using the marks since 1972 and 1978, respectively but neither statement of sales and expenses incurred on advertisements nor invoices for the years 1972 to 1976 have been produced and there is no explanation for non-production thereof. The copies of invoices filed (at pages 155 to 194) are for the years 1.4.1977 to 6.2.1990 (1 invoice each for the years 1978, 80,81, 84 and 88; 2 invoices each for the years 1977, 79, 82, 83, 85, 86 and 87 and 3 invoices for the year 1989). From 1990-91 to 1994-95, the Respondent No. 1 has filed 12 bill books and some copies of newspaper advertisements pertaining to the years 1988 and 1989 (at pages 210). These evidences, though show that the mark is in use but can not be treated as adequate to prove the claim of Respondent No. 1 that its trade mark has already acquired enviable goodwill and reputation and is popular among the trade and customers. Regarding the objection that the applicant No. 2 is not a registered user, we have earlier observed that 1967 agreement was recorded but 1971 agreement though submitted but recordal not taken place. There is no specific bar to be an unregistered licensee of the registered proprietor. On a somewhat similar facts, the Division Bench of High Court of Calcutta in Cycle Corporation of India Ltd. v. T.I. Raleigh Industries Pvt. Ltd. and Ors. : 1995 (15) PTC 134 (Cal) observed as: "The learned Judge relying on the decision of the House of Lords in American Greetings Corporations Application, (1984) 1 All ER 426 and also Bostich Trade Marks, (1963) RPC 183 observed that there was no specific bar to be an unregistered licensee so long as there is connection in the course of trade between the licensor and licensees goods. We agree with the observation of the learned Trial Judge in the context of the facts of the case." Though the decision is on the application of removal of the mark for non-use within the meaning of Section 46 of the Act, the principle under laid therein can be applied on the present case. In this case also there was a connection between the licensor and licensee as the later was manufacturing and marketing the pressure cookers by using the trade mark of the former. The applicant No. 2 is, therefore, neither infringing, nor trafficking in, the trade mark. The averment made by the Respondent No. 1 in its reply to the application that registration of its marks are conclusive as to validity after 7 years from registration is contrary to what is provided in the provisions of Section 32 of the Act. The protection envisaged under Section 32 of the Act is available to marks which were registered in Part A of the register but not to the marks registered in Part B of the register.

In view of the above, the contention that the applicants have not used the trade mark PRESTIGE in India or the Respondent No. 1 is the prior user and prior registered proprietor or that the registration of marks of the Respondent No. 1 are conclusively as to validity under Section 32 is without any basis and does not sustain.

25. The next issue we would be dealing with is whether the marks of Respondent No. 1 are registered in contravention of provisions of Section 11 of the Act. Section 11 of the Act prohibits registration of certain marks the use of which would be likely to deceive or cause confusion. The prohibition from registration trade mark under Section 11 would refer not only to the act of making an entry on the register but also to permitting the continued presence of the entry in the register. In the Corn Products Refining Co.s case (supra), the Apex Court while determining the issue of trade marks likely to deceive or cause confusion has laid down the test for determining thereof. In that case, the Respondent had applied for registration of the mark Gluvita used with reference to biscuits manufactured by him. The Appellant had been using the registered trade mark Glucovita with reference to his glucose with vitamins and he had opposed the application of the other side. The Supreme Court observed as under:

(18) ...in deciding the question of similarity between the two marks we have to approach it from 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.

(19) It was then said that the goods were not of the same description and that therefore in spite of the similarity of the two marks there would be no risk of confusion or deception. We are unable to accept this contention. It is true that we have to proceed on the basis that the goods are not of the same description for the purposes of Section 10(1) of the Trade Marks Act, 1940. But there is evidence that glucose is used in the manufacture of biscuts. That would establish a trade connection between the two commodities, namely, glucose manufactured by the Appellants and the biscuits produced by the Respondent. An average purchaser would therefore be likely to think that the Respondents Glucovita glucose. This was the kind of trade connection between different goods which in the "Black Magic" case (In Re: an Application by Edward Hack), 1940 58 RPC 91 was taken into consideration in arriving at the conclusion that there was likelihood of confusion or deception. The goods in this case were chocolates and laxatives and it was proved that laxatives were often made with chocolate coatings. We may also refer to the "Panda" case (In Re: an application by Ladislas Jellinek), 1916 63 RPC 59. The goods there concerned were shoes and shoe polishes. It was observed that shoe polishes being used for shoes, there was trade connection between them and that this might lead to confusion or deception though the goods were different. The application for registration was however refused under that section of the English Act which corresponds to Section 8 of our Act on the ground that the opponents, the manufacturers of shoes, had not established a reputation for their trade mark among public.

(20) It is true that in both the above mentioned cases the two competing trade marks were absolutely identical which is not the case here. But that in our opinion makes no difference. The absolute identity of the two competing marks or their close resemblance is only one of the tests for determining the question of likelihood of deception or confusion. Trade connection between different goods is another such test. Ex hypothesi, this latter test applies only when the goods are different. These tests are independent tests. 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, as held in the "Black Magic" and "Panda" cases, where the competing marks were identical. Whether by applying these testes 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.

In the Case of Jugmug Electric and Radio Co.s case (supra), the Respondent was the registered user of the trade "TELERAD since 1.10.1957 in respect of "radio receiving sets and component parts thereof being goods included in class 9 and got the said "TELERAD" registered together with a device of a diamond in respect of the same goods on the 19th May 1960. However, the Appellant also got registered the same trade mark "TELERAD" on 7.8.1960 in respect of domestic electrical appliances which did not include television or radio receiving sets and which fell under class 11. According to the Respondent, the use of the trade mark "TELERAD". by the Appellant was likely to deceive or cause confusion in the minds of the customers. They were likely to think that the domestic electrical appliances made by the Appellant were either made by the Respondent or had some connection with the Respondent. The radio sets made by the Respondent had a high reputation on the date on which the trade mark "TELERAD" was registered in favour of the Appellant and this reputation was likely to be adversely affected by the likely deceit or confusion which may be caused by the use of the trade "TELERAD" by the Appellant in respect of their own goods. In view of the great probability of deceit or confusion being caused within the meaning of Section 11(a) of the Act, the trade mark "TELERAD" ought not to have been registered in favour of the Appellant. It was, therefore prayed by the Respondent in an application under Section 56(1) of the Act that the registration of the said trade mark in favour of the Appellant be cancelled. The application was allowed by the Assistant Registrar of Trade Marks and the appeal of the Appellant was dismissed by the Single Judge of High Court of Delhi. On the appeal, the Division Bench of Delhi High Court upholding earlier decisions observed that there is a real tangible danger of confusion if the trade mark of the Appellant is continued to remain on the Register, Certain well known firms like GEC, TELEFUKEN, PHILIPS and SIEMENS, etc. manufacture both the radios as well as domestic appliances, the impression carried by the customers would be that such big firms are capable of manufacturing both the kinds of goods.

The Respondent being such a firm, the customers can have the same impression about it as they have about the above mentioned firms. The first source of confusion or deception which is, therefore, not only likely but is very probable. The Court further observed that moreover, many electrical goods shops not only sell radios, but also domestic electrical appliances. The confusion or deception in the minds of the customers is caused because the goods of the Appellant and those of the Respondent have the same trade channel, namely, both of them are often manufactured by the same manufacture and both of them are often sold in the same shop. The proximity of the goods of the Appellant and the Respondent is in respect of the trade channel. For the purpose of Section 11(a) this is sufficient. While construing Section 8(a) of the Trade Marks Act, 1940 (which was also similar to Section 11), the Supreme Court has followed the same line of reasoning in the Corn Products Refining Cos case (supra). There is, thus, 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. It was also observed that the goods of the Appellant are in the same trade channel as the goods of the Respondent that the probability of the Appellant exploiting the reputation of the Respondent arises. What the customers know is that the Respondent manufactures radios and that reputation of the Respondent certainly attaches to those radios. The customers are likely to think that the Respondent also manufacturers and/or sells domestic electrical appliances firstly because it is common practice for one firm to manufacture both these types of goods and for shops to sell both these types of goods and secondly because both these types of goods are sold under the same trade mark TELERAD.

Similarly in the Ceat Tyres of India Ltd.s case (supra), the Plaintiff was proprietor of trade mark CEAT in respect of solid tyres for vehicles and Defendants brought out in the market fan belts and v belts under the trade mark CEAT. The Court held that the trade mark CEAT has achieved lot of reputation and has become very common and the Plaintiff has been marketing goods under the said trade mark running into substantial amounts and had incurred lot of expenditure on wide publicity. So even though the goods manufactured by the Defendants have no trade connection with the goods marketed by the Plaintiff, still the common customer who is purchasing the goods is likely to be deceived with the new products of the Defendants in all probabilities considering the same as manufactured by the Plaintiff because they are being marketed under the same trade mark.

In Dharam Pal Satya Pals case (supra), the Plaintiff adopted the trade mark RAJNI, in respect of Zafrani Zarda and the Defendant, engaged in the manufacture and sale of Paan Masala, adopted an identical mark RAJANI. The Plaintiff asserting to have established large and extensive sales under the said trade mark and incurred huge expenditure on publicity contended that Defendants goods being of a cognate and allied nature, there is every likelihood of confusion, as anybody can reasonably hold the belief that the Plaintiffs who are the established user of this trade mark in one category of goods may have gone into the manufacture of the allied goods bearing the same trade name. The High Court of Delhi held that the most striking feature of the case is that the trade name adopted by the Defendant, is phonetically so similar to that of the Plaintiff that it becomes on face of it, a case of near identical trade mark, a little difference in spelling, notwithstanding, there is considerable force in the contention that the goods marketed by the Plaintiff under the trade mark "RAJNI" are in the category of cognate and allied goods, to that of the Defendants for the obvious reason that the Plaintiffs goods are Paan Masala. There is a clear assertion in the plaint that both the goods are manufactured by the same manufacturers, sold by the same shopkeepers, and displayed side by side. This contention has prima facie to be conceded, for the purpose of disposal of this application, keeping in view particularly the nature and character of the two commodities. The Court restrained, during the pendency of this suit, the Defendants from using or continuing to use the trade mark "RAJNI" or any other phonetically or visually similar trade name for their Paan Masala or any other allied or cognate goods may lead to confusion or deception amounting to passing off.

In the Prestige Housewares India Ltd.s case (supra), Gupta Light House, the Respondent filed application for registration of trade mark PRE/STAGE and the Appellant objected to the registration. The Deputy Registrar of trade marks dismissed the opposition and allowed the application for registration even after himself expressly holding that both the conditions of Section 12(1) of the Act, namely, (i) the mark applied for is identical with or deceptively similar to the trade mark already registered in the name of a different person and (ii) the goods for which registration is sought are the same or of the same description as those for which the other mark is registered, are satisfied. This Board allowing the appeal on the ground that the impugned mark fails scrutiny of Section 11(a) and 12(1) of the Act observed that the use of the mark PRESTIGE by the Appellant and its predecessors is reflected in the sales turnover and the amount spent on advertisements is very much visible and it dates back to 1949. Existence of registration on the register is a prima facie evidence of the user of the mark. The burden of providing that it is not being used is upon one who alleges so and the remedies are open for him to file necessary applications of rectification under Section 46 and/or Section 56 of the Act. In view of this proposition in law and the facts of the matter in the present case as reflected through his own conclusions under Section 12(1) of the Act, the Deputy Registrar had no alternative but to hold under Section 11(a) also that the impugned mark PRE/STAGE is confusing and deceptively similar to the mark of Appellant on the register. There is no scope for grant of the benefit of honest concurrent user in this case.

In the instant case, the marks of Respondent No. 1 are PRESTIGE and PRE/STAGE and applicants mark is PRESTIGE. By comparing the marks as a whole we find that PRESTIGE mark of applicants as well as Respondents is nothing but copy of each other and first impression we get is that both are phonetically, structurally and visually similar. While comparing PRESTIGE and PRE/STAGE we find that the Respondent added slash after PRE and used letter A in place of letter I but still these variations do no seem to be prominent so that it might draw attention of the unwary purchasers. The similarity is so close that a person of average intelligence and imperfect recollection will have the first impression that both the marks are same or similar, unless he looks at it microscopically. The applicant No. 1 is the proprietor of series of trade marks as specified in paragraph 3 above. There are no pleadings on record and it was not brought to our notice that the trade mark PRESTIGE is being used by, except the Respondent No. 1, persons other than the applicants. Both the parties are engaged in the manufacturing and marketing of goods including pressure cookers which are used in the kitchen and the trade channel and the class of consumers are common in both the cases. The goods (other than pressure cookers) of the Respondent No. 1 are cognate or allied goods, manufactured for and purchased by the same set of consumers. The averments contained, in para B under Grounds in the application is that the goods of Respondent No. 1 which are cognate and allied in nature are sold cross the same selling counters and through same trade channel and used by same class of customers, and the said averment have not been specifically rebutted/contradicted by the Respondent No. 1. The averment in the applications regarding admission by the Respondent No. 1 that the trade mark PRE/STAGE and PRESTIGE are registered in its name in respect of allied goods corroborates with the counter-statement dated 13.7.1992 filed by the Respondent No. 1 in opposition No. DEL-6540. There is every likelihood of confusion or deception among the unwary public purchasing pressure cookers and allied goods of Respondent No. 1 under the trade mark PRESTIGE and PRE/STAGE wondering whether those goods originate from the applicants or have some nexus or association with the applicants.

In order to prove the common trade channel, Mr. M. Saravanan, Assistant Manager (Legal) of applicant No. 2 has in his affidavit dated 6.5.1999 has stated that he personally visited some markets in Bangalore as well as Delhi to ascertain the trading-channels and retail outlets through which the competing goods, namely, pressure cookers, gas stoves, gas lantern, etc. are sold and found or various occasions that all the goods are sold in the same shops in Bangalore as well as in Delhi. In his another affidavit dated 5.6.1999 Mr. M. Saravanan has stated that he visited Retailer outlets at Bangalore and found that many outlets are selling pressure cookers, gas Appliances, Lighting Devices, Electrical Appliances, Glasswares, Crockeries and other Kitchen Utensils all under one roof and these products are sold under various trade marks by the dealers. Mr. Saravanan has filed two Cash memo No. 2932 dated 4.5.99, New Delhi for Rs. 1770 (for Hawkins cooker, Superflame Gas stove and PKL Lamp) and Cash Memo No. 13034 dated 2.6.99, Bangalore for Rs. 2250 (for Hawkins cooker, Butterfly gas Stove and PKL Clix). The averment of Respondent No. 1 made in para 9 of counter-statement that the notional confusion or deception pleaded by the applicants in the para is incorrect and stand no where in the presence of confusion-free past practical experience does not sustain in view of submission made in para 9 above by the learned Counsel about the genesis of applicant No. 1 filing criminal complaint before the Chief Metropolitan Magistrate, Delhi and the same corroborates with the said affidavit evidence.

By applying the principles mentioned in the paragraphs above, we came to the conclusion that the competing marks are structurally and visually similar, there is trade connection between the goods, and the trade channel and class of consumers are common, therefore, the test of confusion and likelihood of deception fully applies and as such the registration of trade marks of Respondent No. 1 are in contravention of Section 11 of the Act.

26. A trade mark can be removed from the register if the registration was obtained on fraud. The word "fraud", in the context of Section 32 of the Act, seems to involve some element of actual deception by the applicant for registration. It is not sufficient merely to allege fraud but it must be pleaded and particulars given. K.S. Shavaksha in his book on the Trade and Merchandise Marks Act, 1958 (Third Edition) at pages 147-48 stated the law as under:

Fraud: If the original registration has been obtained by fraud, as for instance, by wrong statements deliberately made in affidavits submitted to the Registrar, the mark can be removed from the register. Simply alleging fraud is not sufficient, for the absence of particulars, the application would be incompetent. Re: Om Parkash, : AIR 1956 P&H 4 : Zenith Colour Trading Co. v. Taherally : (1956) 58 Bom. LR 912 p. 916. It has to be noted that the fraud, referred to in this Section, is fraud committed before registration. Fraudulent use of a registered mark after registration is subject to a different principle of law. Contrary to the facts of the application on hand, it might be a fraud for a person to procure the registration of a trade mark which he knows is in use by another trader or by his principal who is a foreign manufacturer. Gynomin (1961) RPC 408 at 414.

The applicants have neither given any particulars of fraud in the pleadings or any evidence adduced to prove the fraud nor the counsel during the course of argument revealed any particulars of fraud. The reliance placed by the learned Counsel for the applicants on the decision in Kamal Trading Co.s case (supra) will be of no help to him because of difference of facts. We, therefore, hold that the applicants have miserably failed to discharge their onus.

27. The applicants have though averred that the impugned mark of the Respondent No. 1 is not distinctive of its goods but they have neither raised this ground nor argued on this aspect at the time of hearing. We are, therefore, not dwelling on this issue as not pressed.

28. The last point for our consideration is whether the Respondent No. 1 has a proprietary right in the mark. A person can become a proprietor of a trade mark by reason of adoption, use, registration, assignment or transmission. There is no pleading or evidence as to how and for what reasons the Respondent No. 1 has adopted the impugned mark which is strikingly similar to the existing mark of the applicants. For an honest and bona fide adoption of a mark the prospective proprietor is expected to make a search the books and records of the Trade Mark Registry or survey the markets for ascertaining about any similar or identical mark already in use. There is not a whisper about conducting market survey or search got conducted through the Registry of Trade Marks. There is also no denial by or from the Respondent No. 1 about its awareness of the existence of the applicants mark. These facts show that the adoption of the mark by the Respondent No. 1 which is strikingly identical or similar to the mark of applicants was not honest and bona fide and accordingly, we conclude that Respondent No. 1 has no proprietary right in the marks.

29. The case discussed in the above paragraphs show that the applicants are persons aggrieved, prior users of the mark and using the mark much prior to 1972 when the Respondent No. 1 came in the business, the trade marks adopted by the Respondent No. 1 are not honest and bona fide and the registration of trade marks of Respondent No. 1 are made in contravention of the provisions of Section 11(a) of the Act. The decision in the case of Jindal Rolling Mills Ltd. (supra) will be of no help to the Respondent No. 1 as in that case it was held that the Petitioner is not a person aggrieved, the non-user of registered mark by the Respondent for 5 years and one month and other allegations made in the petition were not established by the Petitioner and the petition was only a counter-blast action for the suit of infringement filed by the Respondent against the Petitioner.

30. In view of the above and for the purity of register, we are of the opinion that these are fit cases to be allowed. We, accordingly, allow both the rectification application with the direction to the Registrar of Trade Marks to cancel and/or remove the entry bearing Nos. 335436B and 283753B in the Register of Trade Marks entered in favour of Respondent No. 1 here. Let a copy of this order be forwarded to the Registrar of Trade Marks.

31. There shall be no order as to costs.