M.P. Kenia JUDGMENT
S.V. Manohar and M.P. Kenia, JJ.
1. Messrs National Chemicals and Colour Company and its two partners are the appellants in this appeal. Messrs Reckitt and Colman of India Limited are the first respondents. Messrs National Chemicals and Colour Company carry on the business, inter alia, of manufacturing and selling colouring material and colours. Reckitt and Colman of India are manufacturers and dealers in Ultra Marine Blue, Colours, etc.
2. Reckitt and Colman are proprietors of registered trade marks in respect of goods falling in Cls. (1), (2) and 3 of Schedule IV of the Trade and Merchandise Marks Rules, 1959. One of their registered trade marks consists of a picture of a bird sitting on a twig surrounded by a circle with lines in the background, somewhat like the rays of thesun. The trade mark has the words 'Robin Ultra Marine Blue' on it. Another registered trade mark of Reckitt and Colman consists of a bird sitting on a twig.
MARK
These trade marks have been registered as far back as 1940 and 1946. These trade marks distinguish the goods of the respondents from similar goods in the market. According to them a typical feature of their trade mark is a bird sitting on a twig.
3. On 26th March, 1971 National Chemicals and Colour Co., the appellants applied for registration of a trade mark featuring two birds and the words 'Bul Bul' on it. They applied for registration of this trade mark in respect of the goods falling in Cl. (2) of Schedule IV of the said Rules. The appellants, however, dropped the picture mark which they wanted to register, they obtained registration of only the words 'Bul Bul'. This trade mark was registered in the Trade Mark Journal dated 16th of September, 1973. The trade mark did not contain any device or picture.
4. On or about 11th of May, 1973 the appellants applied for the registration of a trade mark consisting of a device of two birds-- one partially hiding the other, sitting on a twig with the word 'Bul Bul' written on its bottom. The registration was applied for in respect of goods falling in Cl. (2) viz. colours. The appellants applied for the registration of this trade mark for the States of Maharashtra, Gujarat, Karnataka, Kerala, Tamil Nadu and the Union Territory of Delhi. The appellants are now willing to restrict the registration further to confine it to specific goods in Cl. (2), namely, colour for use in plastics, paints, printing ink, resins, papers, oils, petroleum products, aluminium foils, polyester films and BOPP films. The trade mark was ordered to be advertised before acceptance. The respondents Reckitt and Colman filed a notice of opposition to this trade mark on 5th of May, 1978. Thereafter they filed their affidavit in support of the opposition. The parties also filed their affidavits of evidence. Ultimately the matter came up for hearing before the Deputy Registrar of Trade Marks, who by his order dated 28th October, 1980dismissed the opposition of the respondents and permitted the registration of the trade mark applied for by the appellants.
5. The Registrar held that though both the trade marks were in respect of goods of the same description, and though both of them contained the same device of a bird or birds sitting on a twig, the written part of the label marks, namely 'Robin' and 'Bul Bul' were different and distinguishable. Hence he held that the two marks were not deceptively similar. He also gave to the appellants the benefit of S. 12(3) of the Trade Marks Act, 1968 on the ground that they had used the trade mark honestly and concurrently since 1969. Accordingly he permitted the registration of the appellants' trade mark.
6. M/s. Reckitt and Colman who were aggrieved by the decision of the Deputy Registrar filed an appeal under the provisionsof the Trade Market Act, 1968 before this High Court being Misc. Petition No. 52 of 1981. The learned Judge by his judgment and order dated 27th September........