2002 (11) TMI 684 - HC - Companies Law

Issues Involved:
1. Registration of the Appellant's mark.
2. Application for rectification by the Respondent.
3. Order of the Assistant Registrar.
4. Basis of the impugned decision.
5. Case of the Respondent.
6. Submissions by the Appellant.
7. Submissions by the Respondent.
8. Material produced in support of the application for registration.
9. Basis of the Respondent's plea for rectification.
10. Evidence produced by the Appellant.
11. The statutory provisions.
12. Question of classification.
13. Section 46.
14. Tenability of the impugned order.
15. Findings.

Issue-wise Detailed Analysis:

1. Registration of the Appellant's mark:
The Appellant, incorporated on 27th April 1968, filed an application on 3rd November 1978 for the registration of the word mark "Allied" in Class 12, claiming usage since 1st June 1968. The Registrar of Trade Marks ordered the mark to be registered on 27th February 1980, effective from the application date. The certificate of registration was granted on 25th May 1985.

2. Application for rectification by the Respondent:
On 31st December 1985, the First Respondent filed an application for rectification under section 56 of the Trade and Merchandise Marks Act, 1958, citing clauses (a) and (b) of sub-section (1) of section 46. The grounds were the lack of bona fide intention to use the mark and non-use for a period of five years and one month preceding the application.

3. Order of the Assistant Registrar:
The Assistant Registrar allowed the application for rectification on 21st June 1989, directing that the registration of the Appellant's mark in Class 12 be expunged from the Register of Trade Marks. The decision was based solely on the finding that the goods did not fall within Class 12.

4. Basis of the impugned decision:
The Assistant Registrar concluded that none of the goods in respect of which the mark was used by the Appellant fell in Class 12. The goods were classified under Classes 7, 9, and 11 instead. The Assistant Registrar verified each product individually against the International and Indian Classification of Goods.

5. Case of the Respondent:
The First Respondent, incorporated in 1931, claimed that the mark "Allied" was a dominant part of its corporate name and used in its business of manufacturing automobile parts and accessories. The Respondent relied on historical correspondence and sales records to establish its prior use of the mark "Allied."

6. Submissions by the Appellant:
The Appellant argued that:
- The goods in question were automobile parts falling under Class 12.
- Sufficient evidence was provided to establish the nature and use of the goods.
- The Assistant Registrar's decision lacked proper reasoning and did not consider the documentary evidence.
- The initial registration decision by the Registrar was final unless patently erroneous.
- The classification should consider the nature, purpose, and trade channels of the goods.
- The Court should correct any wrong practices by the Trade Marks Registry.

7. Submissions by the Respondent:
The Respondent contended that:
- The classification followed the Indian and International guidelines.
- The Registrar's initial decision was not a conclusive adjudication of the proper classification.
- The goods fell under Classes 7, 9, and 11, not Class 12.
- The practice of the Trade Marks Registry should be upheld.

8. Material produced in support of the application for registration:
The Appellant provided extensive evidence, including affidavits, certificates from automotive manufacturers and experts, price lists, invoices, and advertisements, demonstrating that the goods were automobile parts used exclusively in vehicles.

9. Basis of the Respondent's plea for rectification:
The Respondent's application for rectification was based on allegations of non-use and fraudulent registration. The Respondent claimed that the Appellant had not marketed any parts in Class 12 and that the registration was obtained without bona fide intention.

10. Evidence produced by the Appellant:
The Appellant's evidence included:
- Certificates from trade associations and automotive manufacturers.
- Affidavits from experts and company officials.
- Invoices and price lists showing sales of automobile parts.
- Brochures and advertisements indicating the use of the mark "Allied" for automobile parts.

11. The statutory provisions:
Section 8 of the Act deals with the registration of trade marks in respect of particular goods, while section 56 provides for the rectification of the register. Section 46 addresses the removal of a trade mark on grounds of non-use.

12. Question of classification:
The primary issue was whether the goods in question fell under Class 12. The explanatory note to the Fourth Schedule states that parts of an article are generally classified with the actual article unless they constitute articles included in other classes. The Assistant Registrar's reliance on classification lists was deemed insufficient, as these lists are administrative guides, not binding determinations.

13. Section 46:
Section 46 allows for the removal of a trade mark on grounds of non-use. The proviso to section 46(1) permits the Tribunal to refuse an application for removal if there has been bona fide use of the trade mark in relation to goods of the same description.

14. Tenability of the impugned order:
The Assistant Registrar's decision was based solely on the classification lists, without considering the extensive documentary evidence provided by the Appellant. The classification lists are administrative guides and do not constitute binding determinations.

15. Findings:
The Court concluded that the goods in question were automobile parts falling under Class 12. The Assistant Registrar's decision was quashed, and the application for rectification was dismissed. The Court emphasized the need for a business and practical test in determining the primary nature of the goods and their appropriate classification. The appeal was allowed, and the impugned order was set aside.

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