Case: Fiat Societa Per Azioni of Turin, Itlay Vs Veena Hosiery House, Delhi. Trademark Tribunal
|Party Name:||Fiat Societa Per Azioni of Turin, Itlay Vs Veena Hosiery House, Delhi|
|Counsel:||For Appellant: Mr. V.G. Nair, Advocate|
|Judges:||M. R. Bhalerao, DRTM|
|Issue:||Trade and Merchandise Marks Act, 1958 - Sections 11(a), 18(1)|
|Judgement Date:||February 10, 1986|
M. R. Bhalerao, DRTM
On 16th September, 1980, Smt. Veena Devi, trading as Veena Hosiery House, 69-Swadeshi Market, Sadar Bazar, Delhi-110006(hereinafter referred to as "the Applicant") made an application, being No. 366177, in Class 25, to register the trade mark FIAT (word per se) in respect of "hosiery". The user claimed in the Application was "since 1.1.80". In due course, the Application was advertised in the Trade Marks Journal No. 786 dated the 1st March, 1982 at page 894.
On 11th June, 1982, Fiat Societa Per Azioni (a Company organised and existing under the laws of Italy) of Turin, Italy, (hereinafter referred to as "the (Opponents") lodged a Notice of Opposition, under Section 21(1), to the registration of the aforesaid trade mark on the grounds which are summarised as follows:-
1. That the Opponents are the proprietors of the trade mark FIAT which is being used by them for many years.
2. That the word FIAT constitutes the vital and memorable part of the Opponents' name and that the goods under the trade mark FIAT enjoy a global reputation.
3. That the Opponents have registered their trade mark FIAT in many countries.
4. That the Opponents have registered their trade mark FIAT in classes 7 and 12 under numbers 140468 and 137888 respectively.
5. That the Applicant cannot claim to be the proprietor of the trade mark.
6. That the adoption of the Applicant's trade mark is dishonest.
7. That the registration of the trade mark applied for will be contrary to the provisions of Sections 9, 11 (a), 11 (e) and 18 (1).
8. That the registration of the trade mark should be refused in exercise of the Registrar's discretion.
In her counterstatement, the Applicant asserts that her goods are different from the Opponents' goods and that there is no trade connection between her goods and the Opponents goods. She denies the statements and allegations made by the Opponents in their Notice of Opposition. The Applicant states that she may be granted registration under Section 12(3).
The evidence in support of opposition consists of one affidavit dated 28th March, 1983 by Dr. Paolo Sani.
The evidence in support of application consists of one affidavit dated 25th May, 1983 by Smt. Veena Devi.
The evidence in reply consists of one affidavit dated 30th November, 1984 by Dr. Paola Sani.
The matter came before me for hearing on 3rd February, 1986. Shri V.G. Nair, Advocate instructed by S/Shri De Penning & De Penning, Patents and Trade Mark Attorneys appeared for the Opponents, Smt. Savita Kishore, Advocate instructed by Shri K.L. Aggarwal, Advocate appeared for the Applicant. On 3rd February, 1986, Smt. Savita Kishore, Advocate filed one petition. Hearing was adjourned to 4th February, 1986. On 4th February, 1986 Shri V.G. Nair, Advocate appeared for the Opponents. None represented the Applicant.
Firstly, I shall deal with the Applicant's petition filed on 3rd February, 1986. By filing that petition, the Applicant desires to amend her counterstatement by taking an additional plea that the Opponents' trade mark FIAT has been used by a good number of parties for different goods and that the trade mark FIAT has been registered by some other parties in respect of different goods and such registration have been renewed and that if such use and registration is proved, the Applicant's case will be covered under "Special circumstances" under Section 12(3) (para 8 of the petition). The reason why such plea was not taken up earlier by the Applicant, as stated by her is that she come to know of such registrations and use recently (para 6 of the petition).
The rule of law as to when a new ground should be allowed to be introduced is elaborately discussed in F.A.O. No. 84 of 1970 (Delhi High Court) Amin Chand & Sons v. Sohan Lal Bassan & Bros. 1977 (2) IPLR 160. From that decision it is seen that it is discretionary with the Registrar to allow or not to allow an amendment. The...
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