The main legal point established is that evidence of user for trademark registration should be considered in the context of the circumstances and opportunities available to the applicant, and hypertechnical rejections based on timing should be criticized.

JUDGMENT (Oral)

1. The appellant filed application 925451 for registration of the mark [IMG] (hereinafter "the DHARIWALWOOLTEX device mark") on 17 May 2000 in Class 24, in respect of "woollen shawls, lohie and fabrics in class 24". User of the mark was claimed by the appellant since 1 January 1984. The application was published in terms of proviso Section to 20(1) of the Trade Marks Act, 1999, on 16 August 2006. The advertisement was made available to the public on 10 November 2006.

2. On 7 February 2007, M/s British India Corporation Ltd. ("BICL" hereinafter) filed Notice of Opposition No. 252150, opposing the appellant's application for registration of the DHARIWALWOOLTEX device mark under Sections 9(2)(a), 11(2)(a), 11(3)(a), 11(4), 11(10), 12 and 18 of the Trade Marks Act, 1999.

3. It was sought to be contended by BICL that the DHARIWALWOOLTEX device mark, of which the appellant sought registration, was deceptively similar to BICL's DHARIWAL trademark, which was registered in Class 24 for "woollen and worsted piece goods; tissues and textile fabrics of all types included underclass 24 and not included in other classes; blankets included in class 24". BICL claimed user since 2 June 1943.

4. Consequent on issuance of notice of opposition to the appellant on 9 April 2008, counterstatement was filed by the appellant. BICL filed evidence on 22 April 2013 under Rule 50(1) and the appellant filed evidence under Rule 51(1) of the Trade Marks Rules, 2002, on 22 June 2013. Rebuttal was filed by BICL on 23 July 2013.

5. The application of the appellant for registration of the DHARIWALWOOLTEX device mark stands rejected by the impugned order dated 28 December 2019 passed by the Joint Registrar of Trade Marks.

6. The Joint Registrar observes, at the outset, that, though BICL claimed user of its DHARIWAL mark since 2 June 1943, it could produce evidence of user only from 13 December 2004. As against this, the first and oldest sales invoice filed by the appellant was of 15 May 1984. Thus, holds the Joint Registrar, the appellant was clearly the senior to BICL as a user of the mark.

7. Having thus proceeded to reject the opposition filed by BICL, the learned Joint Registrar proceeds, nonetheless, to also reject the appellant's application, observing that, though the appellant claimed user with effect from 1 January 1984 in its application, evidence of user placed on record by the appellant was only with effect from 15 May 1984. According to the Joint Registrar, it was incumbent on the appellant to positively prove the user claimed by it in its application seeking registration in the first instance. The impugned Order expresses surprise at the appellant having claimed user since 1 January 1984, despite being able to file invoices evidencing user only with effect from 15 May 1984.

8. The Joint Registrar places reliance on the decisions of this Court in Vivek Kochher v. M/s. Kyk Corporation Ltd., 245 (2017) DLT 521 and Vijay Grover v. Biocure Laboratories, 2002(24) PTC 438 (Del). He has additionally also placed reliance upon a decision of the learned Intellectual Appellate Property Board (IPAB) in Sigma Freudenberg Nok Pvt. Ltd. v lnderpal Singh, 2018 SCC OnLine IPAB 124 erroneously referring to it as a judgment of a Division Bench of this Court.

9. Ms. Elisha Sinha, learned Counsel for the appellant submits that the Trade Marks Rules which were in existence of the time when the applicant had filed its application for registration of the DHARIWALWOOLTEX device mark did not require evidence of user to be filed with the application. As such, evidence of user came to be filed by the appellant only on 22 June 2013, in response to the opposition filed by the respondent, whereas the application for registration of the mark had been filed on 17 May 2000. As evidence of user was produced 13 years after the application was filed, owing to no fault of the appellant, Ms. Sinha submits that the appellant was not able to place on record any invo