Application No. 845536 and Opposition No. MAS-183677. Case: Khodays Breweries Ltd. Vs Macdonald & Muir Ltd.. Trademark Tribunal

Order:

R. A. Tiwari, Sr. Ex. of Trade Marks

1. On 16th March 1999, an application bearing No. 845536 was filed by M/s. Khodays Breweries Limited, Bangalore-560 052 (hereinafter referred to as 'the applicant') for registration of a trade mark M'ORANGIE (word per se) in respect of beer, ale, and porter; minerals and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages under class 32. After some preliminary objections, the application was ultimately ordered to be advertised before acceptance under proviso to Section 20(1) of the Trade Marks Act, 1999 and was advertised as such in the Trade Marks Journal No. 1313 dated 16th February 2004.

2. On 17th September 2004 M/s. Macdonald & Muir Limited, Scotland (hereinafter referred to as 'the opponent') filed a notice of opposition on form TM-5 alongwith a request on form TM-44 (filed on 31st August, 2004) objecting to registration of the aforesaid mark of applicant under Sections 9, 11 & 18 of the Trade Marks Act, 1999 as detailed in the aforesaid TM-5; and prayed that the impugned trade mark be refused registration with costs to the opponent.

3. Applicant filed a counter statement on 28th March 2005 denying the material averments in the notice of opposition and stated that the applicant are the first to conceive, originate, adopt the distinctive trade mark "M'ORANGIE" bona fidely and honestly, in or around the year 1999 in respect of goods under class 32 and submitted that the impugned mark would not at all be contrary to the provisions of Sections 9, 11 and 18 of the Trade Marks Act, 1999 and ultimately prayed that the application be ordered to proceed to registration and the opposition be dismissed with costs.

4. On 23rd January 2006 Opponent filed an affidavit of Simon David Erlanger with Exhibits 'A' and 'B' as their evidence in support of opposition under Rule 50 of the Trade Mark Rules, 2002. Thereafter applicant filed an affidavit of K.L.A. Padmanabhasa as evidence in support of application under Rule 51. Again on 21st April 2006 opponent filed one more affidavit of Simon David Erlanger as evidence in reply under Rule 51. The evidence stage was treated as closed and the matter was set down for hearing. When the matter came up for hearing before me on 5.7.2007 Mr. P.S. Mahapatra, Advocate from M/s. De Penning & De Penning, appeared for opponent and Shri V. Narayana Rao, Advocate appeared for Applicant. The matter was heard and concluded on the same day.

5. At the outset, counsel for the opponent submitted that opponent is registered proprietor of trade mark GLENMORANGIE and the trade mark has been used by them in many countries (including India) in respect of "wines, spirits and liqueurs"; and the registration of...