Case: Dana Corporation, Toledo, Ohio, U.S.A. Vs Spicer Auto Products, New Delhi. Trademark Tribunal

CounselFor Appellant: Mr. J.K. Kaul and Mr. A.A. Mohan, Advocate and For Respondents: Mr. S.K. Dutta, Advocate
JudgesM. R. Bhalerao, DRTM
IssueTrade and Merchandise Marks Act, 1958 - Sections 9, 11(a), 18(1)
Citation1983 (3) PTC 333 (Reg)
Judgement DateMay 02, 1980
CourtTrademark Tribunal


M. R. Bhalerao, DRTM.

On 22nd March, 1974, Smt. Neelam Pombra and Yogesh Pombra, trading as Spicer Auto Products, C-227, Defence Colony, New Delhi-24 (hereinafter referred to as "the Applicants") made an application being No. 295153-B to register a trade mark ''SPICER' per se, in respect of the specification of goods which on subsequent amendment reads as "Oil seals and rubber base for use in fitting the motor engine being parts included in Class 12 for use in motor land vehicles." In due course, the Application was advertised before acceptance in the Trade Marks Journal No. 628 dated 1st August, 1979 at page 468.

On 13th November, 1975 Dana Corporation of 4500 Borr Street, City of Toledo, State of Ohio, United States of America (hereinafter referred to as "the Opponents") lodged a notice of Opposition, under Section 29(1) to the registration of the aforesaid trade mark no the following grounds:--

  1. That the Opponents are the proprietors of the internationally well known trade mark ''SPICER', which is registered in my countries of the world and that by reason of its use in India for a number of years much reputation and goodwill have accrued to the said trade mark and that therefore the use of the same trade mark on the same goods or goods of the same description would load to deception as the traders and purchasers would assume connection in the course of trade between the Applicants' and the Opponents' goods.

  2. That the inevitable confusion which will result from the use of the Applicants' mark is calculated to facilitate and lead to passing off the Applicants' goods as and for the Opponents' goods.

  3. That the Applicants adopted the word ''SPICER' as a trade mark and as a part of their trading style with ulterior and wrongful notice.

  4. That the Applicants' mark is not capable of distinguishing or adopted to distinguish the Applicants' goods.

  5. That the user claimed by the Applicants is not admitted.

  6. That the registration of the mark will be contrary to Sections 9, 11(a) 11(c), 12(1) and 18(1) of the Act.

  7. That the foregoing constitutes sufficient grounds to exercise the Registrar's discretion in the Opponents' favour.

    The Applicants stated in their counter-statement that the Opponents did not use their trade mark in India. They added that while taking inspection of a number of trade mark ''SPICER' falshed in the brain of the partners. They have also stated that their goods are different from those of the Opponents.

    The evidence in support of Opposition consists of an affidavit dated 10th May, 1977 by Wayne D. Neathery supported by some exhibits. The evidence in support of application consists of affidavits by Mrs. Neelam Pombra, Vishan Swarup Sharma, Upjeet Singh and Anoop Singh. The evidence in reply consists of affidavits by Inder Singh Sampat, Sarrir Betliwala and Jayantilal Amritlal Kamudar.

    The matter came up before me for a hearing on 18th April, 1980, Shri J.K. Kaul, Advocate and Shri A.A. Mohan, Advocate appeared for the Opponents. Shri B.K. Dutt, Advocate appeared for the Applicants.

    The Opponent's objection under section 9 is that the Applicants' trade mark ''SPICER' is a surname and it is not registerable. The practice followed in the U.K., on the relevant High Court judgement is stated in ''Seallow' Trade Mark Case (64 R.P.C. 92 at pages 94-99), it is follows:


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