TEJAS KARIA, J. (ORAL)

1. The present Appeal has been preferred by the Appellant under Section 91 of the Trade Marks Act, 1999 (“Act”) and Rule 125 of the Trade Marks Rules, 2017 assailing the order dated 25.01.2024 (“Impugned Order”) passed by Respondent No. 1 in Opposition No. 1109787 filed against Trade Mark Application No. 4754800 filed by Respondent No.3 for the registration of the Mark “ ” (“Subject Mark”) on 24.11.2020 with user claim from 01.04.2014 in Class 25.

2. The Appellant claims that the Trade Mark “STREET ONE/ ” (“Appellant’s Mark”) was adopted by the Appellant in the year 1983 and the Appellant’s Mark forms an essential part of the corporate name of the Appellant.

3. Respondent No. 3 is the Applicant for the registration of the Subject Mark and its Trade Mark Application No. 4754800 was accepted and advertised by the Trade Marks Registry, and was published in Journal No. 1986 dated 08.02.2021, inviting third-party oppositions against the same in accordance with law.

4. On 07.06.2021, the Appellant filed an Opposition bearing No. 1109787 (“Appellant’s Opposition”) against the registration of the Subject Mark on the grounds of lack of distinctiveness of the Subject Mark due to its deceptive similarity and likelihood of confusion or association with the Appellant’s Mark.

5. After hearing the submissions of the Appellant and Respondent No. 3, vide Impugned Order, the Appellant’s Opposition was dismissed, and the registration of the Subject Mark was allowed in Class 25. Aggrieved by the Impugned Order, the Appellant has filed the present Appeal.

6. The learned Counsel for the Appellant submitted that the Appellant has obtained registration of the Appellant’s Mark in various Classes in India, and the details of the same are as under:

7. The learned Counsel for the Appellant submitted that Respondent No.1 has erroneously passed the Impugned Order without appreciating that Section 11 of the Act is an alter ego of Section 29 of the Act. Once a Trade Mark is registered, the question of prior use of the competing Marks no longer remains relevant for determination under Section 11 of the Act.

8. The learned Counsel for the Appellant submitted that Respondent No. 1 has incorrectly applied the provisions of Section 11 of the Act in deciding the Appellant’s Opposition to Respondent No. 3’s application for the registration of the Subject Mark.

9. It is prayed by the learned Counsel for the Appellant that the Impugned Order be set aside and the matter be remanded back to Respondent No. 1 for a fresh consideration.

10. Per contra, the learned Counsel for Respondent Nos. 1 and 2 submitted that a factual examination of the use and reputation of a Trade Mark is mandatory and the Appellant failed to discharge the burden of proving the same.

11. The learned Counsel for Respondent No. 3 opposed the present Appeal and submitted that Section 11 of the Act has to be read in conjunction with Section 47 of the Act, which provides for the removal of a registered Trade Mark from the register on the ground of non-use of the said Mark.

12. In view of the foregoing submissions, it is prayed by the Respondents that the Impugned Order be upheld and the present Appeal be dismissed.

13. The Appellant has assailed the Impugned Order on the limited ground that the Impugned Order is not in consonance with the provisions of Section 11 of the Act as the question of prior use of the competing Marks is not relevant to deciding the Appellant’s Opposition, as the date of filing the application for the registration of the Appellant’s Mark was indubitably prior to the date of filing of the application for the registration of the Subject Mark.

14. The relevant portion of the Impugned Order is extracted hereinunder:

“9. The applicant filed the present