The likelihood of confusion between competing marks arises from both the similarity of the marks and the nature of the goods, permitting trademark opposition to succeed under Section 11.

JUDGMENT

TEJAS KARIA, J

1. The present Appeal has been filed by the Appellant under Section 91 of the Trade Marks Act, 1999 (“Act”) assailing the order dated 14.03.2024 (“Impugned Order”) passed by Respondent No. 1, whereby the Appellant’s Opposition bearing No. 1221460 (“Appellant’s Opposition”) to the Trade Mark Application bearing No. 5854000 in Class 12 (“Subject Application”) for the registration of the Mark ‘JBR’ (“Impugned Mark”) in the name of Respondent No. 2, has been dismissed by Respondent No. 1.

FACTUALBACKGROUND:

2. Mr. Jagdish Joshi, the proprietor M/s Tushar Auto Spares and the predecessor-in-interest of theAppellant, assigned the Mark ‘ ’ (“Appellant’s Mark”) in favour of the Appellant by way of the Deed of Assignment dated 03.05.2023 (“Assignment Deed”). The Appellant’s Mark was registered under the Trade Mark Application bearing No. 2010008 in Class 12 (“Appellant’sApplication”), for goods - motor parts.

3. It is the Appellant’s claim that the Appellant is the prior user of the Appellant’s Mark and has been extensively using the same since 04.06.2000 through its predecessor. Further, due to long, continuous and extensive use of the appellant’s Mark in addition to the advertisement and promotional activities carried out by the Appellant, the Appellant claims that the Appellant’s Mark is exclusively identified with the Appellant throughout the world, including in India.

4. On 18.03.2023, Respondent No. 2 filed the Subject Application in respect of goods, i.e., car cover, bike cover and vehicle cover, in Class 12 for the registration of the Impugned Mark with a user claim of 16.07.2020. Subsequent to the process of examination, the Subject Application was accepted and advertised in the Trade Marks Journal bearing No. 2104 dated 15.05.2023.

5. The Appellant filed a Notice of Opposition against the Subject Application on 27.05.2023. Respondent No. 2, thereafter filed the Counter- Statement on 07.07.2023 against the Appellant’s Notice of Opposition. Subsequently, both the Appellant and Respondent No. 2 filed their respective evidences.

6. Respondent No. 1 issued a Hearing Notice scheduling a hearing for the purpose of advancing arguments on 04.03.2024. Subsequent to the said hearing being conducted, Respondent No. 1 passed the Impugned Order dismissing the Appellant’s Opposition against the Subject Application of Respondent No. 2.

7. On 14.03.2024, Respondent No. 1 proceeded with the issuance of the Registration Certificate for the Impugned Mark in favour of Respondent No.2.

8. Aggrieved by the same, the present Appeal has been filed by the Appellant before this Court.

SUBMISSIONSONBEHALFOFTHEAPPELLANT:

9. The learned Counsel for the Appellant made the following submissions:

9.1. The Appellant’s Mark was coined and adopted on 04.06.2000 by the Appellant’s predecessor-in-interest, Mr. Jagdish Joshi trading as TusharAuto Spares, and has continuously been in use since its adoption. The Appellant’s Mark was validly assigned to the Appellant through anAssignment Deed.

9.2. Respondent No. 2, being a cousin of the Appellant, had previously obtained explicit permission from the Appellant’s predecessor vide Authorization Letter dated 06.07.2020 to use the Impugned Mark to sell its products on Flipkart and Amazon, thereby admitting theAppellant’s rights in theAppellant’s Mark.

9.3. Respondent No. 2’s Subject Application was filed despite prior knowledge of the Appellant’s Mark and its long-standing commercial use. The conduct of Respondent No. 2 clearly evidences mala fide on its part in adopting the Impugned Mark.

9.4. Respondent No. 1 vide Impugned Order erroneously held that vehicles covers and motor parts are goods of different description wi