The court emphasized the importance of the similarity of trade marks and the evidence of user in determining the registration of a trade mark.

JUDGMENT :

K. Ramamoorthy, J.

CM. (M) is an appeal against the order of the Assistant Registrar of Trade Marks, Delhi dismissing the application for opposition filed by the appellant and allowing the application filed by the first respondent for registration of the trade mark in Class II.

2. The respondent, on the 19th of August, 1985, applied for registration of trade mark 'OSHAM' in respect of the portable lamps stands, room heater, hot air calculators, domestic baking ovans (electric), fans and heating elements under Class 11. The first respondent claimed user of the mark since August, 1980. On the 14th of November, 1992, the appellant gave a notice of its intention to oppose the registration of trade mark contending, inter alia, that under the provisions of Sections 11(a),12(1),12(3) and 18(1) of the Trade and Merchandise Marks Act, 1958, hereinafter referred to as the Act, the appellant was entitled to oppose the registration of trade mark.

3. On the 28th of February, 1994, the first respondent filed its counter statement.

4. The first respondent, subsequent to the filing of the application, sought the deletion of a portion of the application with reference to portable lamp stands. The Assistant Registrar of Trade marks, considering the facts and circumstances, took the view that the application for opposition was without any substance and rejected the same and allowed the application filed by the first respondent for registration of trade mark.

5. Dealing with the point raised by the appellant under Section 12(1) of the Act, the Assistant Registrar of Trade Marks held :

"Firstly, I take up the issue under Section 12(1) of the Act. This sub- section prohibits the registration of a trade mark which is either identical or deceptively similar to the registered trade matk already registered in the name of some other proprietor and the goods under the mark sought to be registered are also either the same or of the same description as that of the goods under the registered trade mark in the name of that other proprietor. In the instant case the mark sought to be registered is OSHAM and the opponents already registered under No. 112537 and 165594 is a word OSRAM. The point in issue is whether the word OSHAM is deceptively similar to the word OSRAM. The expression deceptively similar has been defined under the Act at Section 12(1)(d) as 'the mark shall be deemed to be deceptively similar to another mark if it so merely reassembles that other mark as to be likely to deceive or cause confusion'. Keeping in view of the aforesaid definition of the expression deceptively similar, the two competing trade marks in order to be deceptively similar have not only to be similar to each other but the similarly must be so near as to likely to deceive or cause confusion. It is well established that while comparing the two trade mark the tribunal has to compare both the marks phonetically as well as visually. In the instant case the trade mark 'OSHAM' and 'OSRAM' are having some visual similarity but phonetically both are giving the different phonetic impression. The very presence of the alphabets 'S', 'H' provide the word OSHAM quite a different phonetic impression than that of the word OSRAM, because of the peculiar pronunciation in English, of the combination of the letters 'S and H'. In the word OSHAM the alphabets 'S', 'R' gives the sound of two different consonant while in the word OSRAM the alphabets 'S', 'H' give the sound one consonant as stated above. Under these circumstances the word OSHAM is quite different then the word OSRAM phonetically. As already mentioned the comparing trade marks must not only be similar to each other but also the similarity must be as to likely to deceive or cause confusion in the minds of the consumers, as provided under Section 2(1)(d) of the Act. The phonetic difference between the trade mark OSRAM and OSHAM is enough to alley the likelihood of confusion or deception. Thus the similarity between the trade marks