A word such as AGGARWAL, being a surname, could not be registered under Section 9(1) but could be registered under Section 9(2) upon evidence of its distinctiveness.

BADAR DURREZ AHMED, J

1. The petitioner, Rajinder Kumar Aggarwal, is the proprietor of Aggarwal Sweets India, a shop selling sweets and namkeens at 24, West Patel Nagar, New Delhi. The respondent No.2 is the Aggarwal Sweet Corner at 3/33, Double Story, Tilak Nagar, New Delhi which is the trading concern of Shri Ashok Kumar Aggarwal and Shri Vinod Kumar Aggarwal. The petitioner is aggrieved by the dismissal of his appeal by the Intellectual Property Appellate Board by its order dated 09.09.2004. The effect of the dismissal of the appeal is that the orders passed by the Assistant Registrar, rejecting the opposition filed by the petitioner to the registration of the trademarks AGGARWAL and AGGARWAL SWEET CORNER under application Nos 453308B and 453309 were confirmed. Consequently, the respondent No.2 was entitled to the registration of the marks AGGARWAL and AGGARWAL SWEET CORNER. Of course, the latter trademark contained a disclaimer to the effect that it shall give no right to the exclusive use of the words “SWEET CORNER”.

.2. According to the petitioner, the word AGGARWAL cannot be registered as a trademark unless distinctiveness is established on the part of the applicant. The .provisions of Section 9 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as “the 1958 Act”) were referred to by the petitioner to indicate that without distinctiveness, the word AGGARWAL, because it was both a surname and the name of a sect or caste, could not be registered. On the other hand, the respondent No.2 contends that the word AGGARWAL can be registered as a trademark. It was also contended on behalf of the respondent No.2 that, in any event, this issue as to whether it can or cannot be registered as a trademark, cannot be debated in a writ petition.

3. I may point out that, as per the order dated 16.03.2007 passed by this Court, the only point that requires consideration in this writ petition is whether the word AGGARWAL can be registered as a trademark in law? An additional plea was also raised by Mr Sudhir Chandra, the learned Senior counsel, who appeared on behalf of the respondent No.2 that this issue cannot be debated in a writ petition.

.4. Before a discussion of the points in issue is taken up, it would be appropriate to indicate the sequence of events. On 30.04.1986, the respondent No.2 made the two aforesaid applications for registration of the trademarks AGGARWAL and AGGARWAL SWEET CORNER in respect of sweets and namkeens. In both applications, the respondent No.2 claimed user since 01.06.1984. On 01.04.1990, the applications were advertised in the Trade Mark Journal. On 18.05.1990, the petitioner filed its opposition being DEL-6766 under Section 21 of the 1958 Act raising objections under Sections 9, 11 and 18 of the said Act. On 17.07.1991, the respondent No.2 filed a counter statement to the opposition filed by the petitioner. On 16.03.1992, the petitioner filed its evidence under Rule 53 in the shape of affidavits of six persons. Apparently, on 10.08.1994, the matter was heard by the Assistant Registrar. Although, according to the petitioner, the respondent No.2 had not filed any evidence in support of its application. By an order dated 06.09.1994, the Assistant Registrar rejected the petitioners opposition and accepted the respondent No.2s applications. Being aggrieved, the petitioner filed an appeal on 13.09.1994 under Section 109(2) of the 1958 Act before this court. The said appeal was numbered as CM(M) 419/1994. On 23.04.1996, in view of Section 100 of the Trade Marks Act, 1999 (which had been enacted in the meanwhile), this court transferred the appeal to the Intellectual Property Appellate Board. The appeal was re-numbered as TA 95/2003/TM/DEL. Three other appeals connected with the question of registration of the trademarks AGGARWAL and AGGARWAL SWEET CORNOR in favour of the respondent No.2 were also pending before this court. They were also transferred and they were numbered as TA Nos 94, 97