The court emphasized the importance of determining the similarity of goods, establishing the well-known status of a mark, and considering non-use as a material consideration in trade mark disputes.

JUDGMENT

(Prayer: This Civil Miscellaneous Appeal filed under Section 91 of the Trade Marks Act, 1999 in respect of goods or services falling in one class, prays that (i) this Court may be pleased to grant the order dated December 05, 2012, passed by the Respondent No.2/learned Deputy Registrar communicated vide official letter no.Top/2306 dated December 14, 2012 may kindly be set aside and consequently, opposition bearing MAS-736000 filed by the Appellant/Opponent may kindly be allowed and resultantly application no.668242 filed for registration of trade mark RED & WHITE be refused registration; (ii) Order costs of proceedings to the Appellant/Opponent.)

1. The appellant assails an order dated 05.12.2012 by which Opposition No.MAS-736000 in respect of Application No.668242 for registration of the trade mark “Red & White” was rejected.

2. The first respondent herein is a manufacturer of alcoholic beverages. An application for registration of the trade mark “Red & White” was submitted by the first respondent on 06.06.1995 on a 'proposed to be used' basis. The said trade mark was accepted for advertisement and advertised in Trade Mark Journal No.1398, regular, dated 01.09.2008. Upon noticing such advertisement, the appellant filed notice of opposition on 28.02.2009, which was registered as Opposition No. MAS-736000. The said opposition was filed on the basis that the appellant owns the trade mark “Red & White” in relation to cigarettes and other related products. The appellant asserted that it adopted and started using the trade mark “Red & White” since 1940 and that the said trade mark was advertised widely in the print and electronic media. The appellant further asserted that registrations were obtained in respect of the trade mark “Red & White” and formative marks in class 34 from 05.02.1973 onwards. Such registrations were also obtained in classes 41, 3 and 25. The appellant also submitted evidence in support of the opposition, including in relation to the sales turnover from the sale of cigarettes bearing the trade mark “RED & WHITE” between the financial years 1989-90 and 2008-09. The first respondent filed a counter statement to the opposition on 28.02.2009. After a hearing, by impugned order dated 05.12.2012, the opposition was rejected and, subject to the incorporation of 'Khoday's', the trade mark 'KHODAY's RED & WHITE' was registered. The present appeal was filed in the above facts and circumstances.

Counsel and their contentions

3. Oral arguments on behalf of the appellant were advanced by Mr.Arun C. Mohan, learned counsel; and on behalf of the first respondent by Ms.Gladys C Daniel, learned counsel; the second respondent was represented by Mr.M.Karthikeyan, learned SPC.

4. Mr.Arun C. Mohan submitted that the appellant has used the trade mark “Red & White” in respect of cigarettes and related products from the year 1940. He further submitted that registrations were obtained from 1973 onwards. As regards the first respondent, he submitted that the application was filed in 1995 on a 'proposed to be used' basis. From 1995 till date, he further submitted that the trade mark was not used by the first respondent.

5. By inviting my attention to the impugned order, Mr.Arun C. Mohan submitted that it was concluded therein that the marks are the same but the products are different in nature. Although the appellant asserted that its trade mark is a well-known trade mark and adduced evidence in support of the assertion, learned counsel submitted that the Registrar of Trade Marks recorded the finding that the appellant has not established that its trade mark is well?known and that no declaration was made regarding such well?known status by the High Court or the Registrar.

6. By referring to the evidence in support of the opposition, Mr.Arun C. Mohan pointed out that it was asserted in paragraph 9 of the affidavit that the trade mark “Red & White” was adopted and used continuously from 1940. He also pointed out that annual reports contain