Case: New Way Packaged Products Limited, London, England Vs Prakash General Works, Sahjanwa (Distt. Gorakhpur). Trademark Tribunal

CounselFor Appellant: Mr. V. G. Nair, Advocate
JudgesM. R. Bhalerao, DRTM
IssueTrade and Merchandise Marks Act, 1958 - Sections 11(a), 12(1)
Citation1981 (1) PTC 263
Judgement DateOctober 20, 1981
CourtTrademark Tribunal


M. R. Bhalero, DRTM

On 20th June, 1972, Ramdeo Lath, trading as Prakash General Works, post-Sahjanwa, District Gorkhpur, Uttar Pradesh (hereinafter referred to as "the Applicant") made an application, being No. 280982, to register a trade mark label containing inter alia the word 'PRIVI' and device of rising sun, in Class 3, in respect of 'Boot Polish'. In due course, the application was advertised in the Trade Marks Journal No. 609 dated 16th October, 1974 at page 574.

On 15th February, 1975, New Way Packaged Products Limited, of 1 Brumwill Road, London W5 IDT, England, c/o Depenning & Depenning, 10, Government Place, East, Calcutta (hereinafter referred to as "the Opponents" lodged a Notice of Opposition, under Section 2(1), to the registration of the aforesaid trade mark on the following ground: -

  1. That the Opponents are the proprietors of the trade mark containing the word 'KIWI' and that the same has been registered under numbers 1097, 1098 and 224624 and that the specification of goods of all the three registrations includes "boot polish" and that the mark applied for resembles the opponents' marks.

  2. That having regard to the use and reputation of the Opponents' said registered trade mark 'KIWI', the use of the Applicants' deceptively similar trade mark 'PRIVI' for the same goods would be likely to cause confusion and deception and hence registration is prohibited under Sections 11(a) and 11(e) of the Act.

  3. That the registration of the Applicants' mark is not adopted to distinguish the Applicants' goods.

The Counterstatement filed by the Applicants is one of denial what is contained in the Notice of Opposition. The Applicants have further stated that no confusion would occur, as the Opponents themselves have stated that their trade mark 'KIWI' has become a household word.

The evidence in support of opposition consists of main affidavit of Mr. Dugald Ramsaymedougall, a Director of the Opponent Company and 55 other affidavits. The Applicants' evidence consists of main affidavit by Shri Ram Deo Lath and 4 other affidavits. The evidence in reply consists of one affidavit by Mr. Patrick Norman Croft, a Director of the Opponent Company.

The matter came up before me for a hearing on 16th October, 1981, Shri V.G. Nair, Advocate, appeared for the Opponents. None represented the Applicants.

At the hearing, the learned counsel for the Opponents confined his arguments to the Opponents' objections based on Sections 11(a) and 12(1) of the Act.

The Opponents' objection under Section 11(a) is based on the alleged similarity of the Applicants' mark to the Opponents' mark. Before invoking the provision of Section 11(a) it is incumbent upon the Opponents to establish by evidence the prior use and reputation of their...

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