The use of a trademark that is similar to a registered trademark for goods of the same or a similar description is prohibited under Sections 11(a) and 12(1) of the Trade and Merchandise Marks Act, 1958. Honest concurrent use may be permitted under Section 12(3), but the applicant must establish that the use of its trademark will not cause confusion or deception.

( 1 ) THIS is an appeal against the order of the learned single Judge by which he accepted the opposition of the respondents to the registration of the trade-mark escorts in favour of the appellant which had been allowed by the Assistant Registrar.

( 2 ) THE respondent company was incorporated under the Companies Act as far back as 1944. It manufactures and sells various agricultural equipment, razor blades, tractors, washing machines, motor cycles, shock absorbers, thermometers and other medical appliances since 1951. In 1961 the respondents sought and obtained registration of its trade-mark of the word escorts in clause (9) and (II) of schedule 4 of the Rules framed under the Trade and Merchandise Marks Act 1958 (hereinafter to be called the Act ). This trade-mark relates to goods amongst others to electric irons, electric kettles, soldering irons and elements for electric irons and kettles.

( 3 ) OD 23. 3. 1963 the appellant sought registration of a trade-mark of the word escort under clause (9) in respect of electric irons, electric kettles, soldering irons and elements of electric irons and kettles. It is not disputed that these items are covered by the earlier registration obtained by the respondents in 1961. The respondents naturally put in opposition to the registration application of the appellant. Section 9 of the Act lays down the requisites for registration in part A and B of the Register. Section 11 (a) prohibits registration of a mark, the use of which would be likely to deceive and cause confusion. Section 12 (1) further lays down that no trade-mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description ofgoodi. Sub-section (1) of Section 12 is however, subject to sub-section (3) which empowers in the case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper to do so, that it may permit the registration by one or more than one proprietor of trade-marks which are identical or nearly resemble each other (whether any such trade mark ii already registered or not) in respect of the same goods or description of goods.

( 4 ) THE Assistant Registrar found that trade-mark sought by the appellant was prima facie distinctive within the meaning of section 9 of the Act. With regard to Section 12 (1) he found that there was hardly any difference from a trade mark point of view between the word escorts which was the registered trade-mark of the respondents and the word escort for which registration was sought by the appellant. He, therefore, found that the applicant/appellant s trade-mark was similar to the opponent s/ respondent s. He also found that the applicant s goods are the same or of a similar description as some of the items covered by the registered trade-mark in favour of the respondents. Thus section 12 (1) of the Act stood as a bar to the registration. The respondents had also objected to the registration being given to the appellant by invoking Section I I (a ). This the Assistant Registrar did not find in their favour as according to him the use of the trade-mark escort by the respondents has not been proved. He, however, held the case of the appellant established under Section 12 (3) of the Act. He also found that as the goods had been sold by the appellant under the Trade Mark escort since 1958 the appellant s case fell within section 33 of the Act and therefore, they were entitled to registration.

( 5 ) IN appeal the learned single Judge however, found that from the statement of the sales for the period from 1960 onwards, it is clear that the respondents have been able to establish that their mark escorts was well known in the trade and that if the registration of the trade-mark was allowed in favour of the appellant it is likely to dec