In Jawahar Lal Aggarwal (Appellant) v The Registrar
of Trademarks & Anr (Respondents), Jawahar Lal appealed
against an order passed by the Assistant Registrar of Trade Marks
which disallowed his opposition to the application of the
Respondent No.2 for the mark "CAPITAL", with the
condition that it shall be used in connection with the logo, as
represented by the applicant.
The Assistant Registrar allowed the registration of the
Respondent No. 2's mark on the ground that the second
respondent was already a registered proprietor of the said impugned
trade mark used in respect of the same description or allied or
cognate goods under Section 12(3) of the Act and was also using the
trade mark as a part of their trading style. Further, the adoption
of the mark on the part of the second respondent was found to be
honest since they are the registered proprietor of the trade mark
Jawahar Lal, aggrieved by the above order filed an appeal before
the Delhi High Court, subsequently, it was transferred to
Intellectual Property Appellate Board (IPAB, Chennai). The main
contentions of Jawahar Lal were, amongst other things, that the
impugned order was contrary to the well settled principles of law;
that the registrar wrongly held that the case of the second
respondent was covered under "any other special
circumstances"; that the registrar failed to consider the fact
that the second respondent's adoption was dishonest as the
appellant's mark already existed in the register.
The second respondent denied all the abovementioned allegations
and stated that they had been using the trademark
"CAPITAL" since the year 1986 without any interruption,
and on account of such long and continuous use, the mark had
acquired distinctiveness. It was further stated that the mark had
acquired a good reputation among the public as a result of
advertisement and that the sales figures of the second respondent
ran to several crores of rupees.
The IPAB after close consideration and deliberation opined that
the rival marks were identical except for the writing style, i.e.
the appellant's used the usual way of writing whereas the
second respondent's wrote the same in a stylish manner.
However, in the present case, the Second Respondent had registered
the trademark in their favour as early as 1990 in respect of
similar goods. Further, the second respondents were the proprietors
of the trademark "CAPITAL" in respect of goods which are
allied and cognate to the goods for which the registration is
granted. Thus, under Section 12(3), of the Act, the second
respondent was entitled to have the registration granted under
The IPAB further opined that the fact that the trading style of
the respondent was a prominent feature of the mark was the second
factor to be considered as the other special circumstances to
qualify for registration under Section 12 (3) of the Act. The Board
referred to the case of London Rubber Company v. Durex Products
Inc. & Anr , which constituted the trading style of the
Respondent's company, namely DUREX products Incorporated. It
was observed, "The High Court has, however, considered the
alternative ground on which the registration has been ordered. The
ground is the existence of special circumstances"
The IPAB held thus that the fact that the mark was already
registered for similar goods and also that the mark
"CAPITAL" which formed part of the trading style of the
second respondent's company, meant that there existed
"special circumstances" and therefore the impugned
trademark qualified for registration under Section 12(3) of the
Accordingly, Jawahar Lal's appeal was dismissed.
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