MOHSIN AZIZ BUTT Versus GENERAL ELECTRIC INDUSTRIES

This appeal is directed against the order of Registrar of Trade Mark, dated 12th September, 1984, whereby the mark of ' t3 i ‑ C3. ' in Urdu was ordered to be registered in respect of Fans in case 11 in favour of the respondent and opposition filed by appellant was dismissed.

2. The appellant claims to be the manufacturer of electronic goods like fans and other articles and had applied on 7‑9‑1981 for registration of its mark "GE." for its fans in class 11 and had claimed its use since 1978. The respondent No. 1 had applied for registration of mark for fans on 7‑4‑1982. The application of the respondent was accepted and its proposed mark was advertised in Trade Mark Journal on 1‑6‑1983. However, the Trade Mark applied for by the appellant was not accepted and it was kept pending for Certain time, but eventually the' application of the appellant was dismissed in default on‑ 30th of August, 1984, The appellant did not move for reopening of its case for registration nor did it file an appeal against the order of dismissal.

3. However, the appellant did file opposition in form T . M. 5 on 1‑4‑1984 supported by certain documents. But no affidavit was filed in support. Notice of opposition was given to the other side. They filed an affidavit of Shaikh Muhammad Bashir in support of their application supported by certain documents.

4. The Registrar of Trade Mark observed in his order that there was no supporting ,affidavit in _ respect of opposition and, therefore, the grounds of opposition have not been authenticated. He further observed that sale figure expenses incurred on publicity are missing and the bank challans and payments made to the advertising agencies and photo copies of calendars filed by the appellant mostly relate to the year 1982‑83.

He has further taken into consideration the affidavit of Shaikh Muhammad Bashir on behalf of the respondent Firm where photo copies of newspapers for the years 1980‑81, 82 and 83 were filed in support and the sale figure from 1983 were also supplied. The Registrar also observed that since the application for registration of the appellant has been dismissed, therefore, the main basis of opposition has been wiped out. He, therefore, allowed the application of respondent No.l and dismissed the opposition of the appellant.

5. Mr. Sultan Ahmed Shaikh submitted that the Registrar has wrongly taken into consideration the affidavit of Shaikh Muhammad Bashir although the same was in respect of "G.E." Fans, which the respondent had got registered in their favour and the sale of its figures since 1973 had been relied upon. The objection of Mr. Sultan appeared to be substantial, but Mr. Shaukat replied that the respondent in its application for registration had sought the registration of the mark in .association of registered mark Nos. 68849 and 71615 in class‑II under sections 11 and 12 of the Act And, therefore, the sale figures of the earlier marks of "G.E." could be relied upon. The submission appears to be correct. Of course, the advertisement issued in respect of the mark of the respondent did not show its association with the earlier mark, but since T.M.I. has clearly showed that association, therefore, the omission in the advertisement was not fatal for the respondent and its claim based upon the association of marks could be considered.

6. Mr. Sultan further submitted that the Registrar had failed to consider the deception to be caused on the purchasers of the Fans of respondent with Urdu Mark ' 4.1 because the appellant had already an established mark in respect of "G.E" Fans. The submission of the learned counsel would have been of some use if an affidavit had been filed in support of the opposition but as it is there is no affidavit even of the proprietor of the appellant Firm nor there are affidavits of dealers of Fans in various part of the country, who could have established that the Fans of the appellant, had acquired a well ‑established reputation in the market and, therefore, a mark similar to the mark used and established by the appellant could not be used. The failure of the appellant to file an affidavit in support of his contentions is fatal for the case of the appellant inasmuch a section 70 (b) of Trade Marks Act, 1940 requires that evidence shall be given by affidavit. Of course, the Registrar can take oral evidence, but in the present case even an oral evidence was not tendered by the appellant and, therefore, the opposition of the appellant was no supported by any evidence. It is correct that the appellant had filed certain documents in support of its opposition. But the documents by themselves without any supporting .affidavits or oral evidence are hardly of any consequence. The documents could have been used a a corroborative evidence, but they cannot take the form of substantive evidence. Mr. Sultan had submitted that rule 13 allows the opposition to include the statement of the grounds supported by documents and, therefore, he argued that the documents could be considered even without the supporting affidavit. I am afraid, this submission is not correct. The rules framed under the Trade Marks Act do not override the provisions of the Act itself as the rules are always subservient to the Act. Rule 13 simply requires the opposition to be supported by documents when the opposition is filed, but it does nor dispense with the evidence, which can be only by affidavit under section 70 (b) of the Act. Moreover, I find that under section 15 (iv) of the Act, the Registrar is required to decide the case of opposition after considering evidence. In the present case before me, there is no evidence as such as required under section 70 (b) of the Act, which had been produced by the appellant, therefore, the supporting documents of the appellant could have been ignored by the Registrar.

7. The Registrar has, however, considered the documents, buy came to the conclusion that they were mostly of 1982‑83 and, therefore, he did not consider them enough for the purpose of opposition a; the respondent has applied for the mark in 1982 and had sought registration of mark in association with its earlier marl "G.E.I." registered in its favour earlier. On these grounds I do no find any justification to interfere with the order of the Registrar o1 Trade Marks and, therefore, I dismiss this appeal.

M.B.T./M‑388/K Appeal dismissed,