Sunil Kumar Das Vs. Deputy Registrar of Trade Marks

 

Appellate Division Cases

(Civil)

PARTIES

 

Sunil Kumar Das……………….. Petitioner

-Vs-

 

Deputy Registrar of Trade Marks, The Trade Marks Registry • Shilpa Bhavan, Annex Building, 91, Motijheel Commercial Area, Police Station-Motijheel, District-Dhaka and another ………………………Respondents

 

Md. Ruhul Amin CJ

M. M. Ruhul Amin J

Md. Tafazzul Islam J

Md. Abdul Matin J

The Code of Civil Procedure, Section 11 The Said Act, Section 76

Trade Mark Appeal………………. (1)

The petitioner Sunil Kumar Das being the sole proprietor of the Bangladesh Manufacturer and Merchant made an application on 31.07.1997 to the Registrar of Trade Mark, Dhaka for registration of Mark “CANNON” in class 25 for Hosiery Products………………………. (2)

The said application was duly published in Trade Marks Journal No.209 in the month of January, 2001. …………….(3)

The application for registration filed by the appellant as well as the opposition case were disposed of by the Deputy Registrar of Trade Mark by the judgment and order dated 29.09.2002 rejecting the application allowing the opposition case No.52139 in class 25 filed by the applicant holding that the opponent respondent No.2 is the adopter and prior user of the mark Cannon belonging to Cannon Kabushiki Kaisha, Japan and the applicant petitioner has adopted the mark by way of imitation and between the two marks Canon and Cannon there has been difference phonetically and in pronunciation and the mark belonging to the opponent respondent No.2 has been registered and renewed in Bangladesh. On appeal the learned Judges of the High Court Division on hearing the submission of the learned Advocates of both sides, were pleased to dismiss the appeal by judgment and order dated 15.02.2007. ………………….(5)

 

Apart from the question of finality of decision on the point as referred to by the High Court Division we are of the view that such use of same name “Cannon” by the petitioner will create confusion in the minds of the consumer who are likely to be misled by such name of a foreign company and therefore the High court Division committed no illegality in dismissing the appeal. ……………………..(10)

 

Syed Amirul Islam, Senior Advocate instructed by A. K. M. ShahiduI Huq, Advocate-on-Record………………………. For the Petitioner

Respondents…………………………. Not represented.

Civil Petition For Leave To Appeal No.341 of 2007

(From the judgment dated 15.02.2007 passed by the High Court Division in Trade

Mark Appeal No.21 of 2003.)

JUDGMENT

 

Md. Abdul Matin J. This petition for leave to appeal is directed against the judgment dated 15.02.2007 passed by the High Court Division in Trade Mark Appeal No.21 of 2003 dismissing the appeal with cost and affirming the judgment and order dated 29.09.2002 passed by the Deputy Registrar of Trade Marks in Opposition Case No. 1824 of 2001 allowing the opposition case and rejecting the Trade Mark Application No.52139 in Class 25.

2. The facts, in short, are that the petitioner Sunil Kumar Das being the sole proprietor

of the Bangladesh Manufacturer and Merchant made an application on 31.07.1997 to the Registrar of Trade Mark, Dhaka for registration of Mark “CANNON” in class 25 for Hosiery Products.

3. The said application was duly published in Trade Marks Journal No.209 in the

month of January, 2001.

4. The respondent No.2 thereafter filed notice of opposition to the application for Registration of the said Marks in Class 25 being opposition Case No. 1824 of 2001

contending, inter-alia, that since inception of their business they (opponent the respondent No.2) adopted the word “CANNON” and the “LOGO” being the first word of their trading style as a Trade Mark for the goods manufactures and sold by them and they have been using the Trade Mark “CANNON” and “LOGO” from the year 1954 throughout the world including Bangladesh and they also obtained registration of the said Marks in many countries and they being the proprietor of the said Trade Mark already used the mark for different kinds of goods including Hosiery goods and they applied

for registration of the said Mark “CANNON” for all goods in Class 25 under application No.22857 and obtained registration and thereafter renewed the registration for a period of 15 years from 01.10.1992 and by virtue of such registration they became the absolute owner of the said Trade Mark in Bangladesh for all kinds of Hosiery goods and as such no body else in Bangladesh has any right to adopt or use the word “CANNON” or any

other word or words which are likely to cause confusion and deception in the course of Trade of Hosiery goods. The petitioner as applicant previously applied for registration of exactly similar Trade Mark for Hosiery goods under Trade Mark Application No.22589 in Class 25 which was advertised in Trade Marks Journal No. 101 at page 260 in the month of April 1987 after publication of the mark in the Trade Marks Journal the opponent, the respondent No.2 filed opposition Case No.527 of 1987 and the registrar of trade mark after receiving evidence and hearing both the parties allowed the opposition

case’ and refused registration of the trade mark “CANNON” on the said application by order dated 10.10.1993. Against the said order and decision of the Registrar the appellant preferred an appeal in the High Court Division being Trade Mark Appeal No. 18 of 1993 and the High Court Division dismissed the appeal.

5. The application for registration filed by the appellant as well as the opposition case were disposed of by the Deputy Registrar of Trade Mark by the judgment and order dated 29.09.2002 rejecting the application allowing the opposition case No.52139 in class 25 filed by the applicant holding that the opponent respondent No.2 is the adopter and prior user of the mark Cannon belonging to Cannon Kabushiki Kaisha, Japan and the applicant

petitioner has adopted the mark by way of imitation and between the two marks Canon and Cannon there has been difference phonetically and in pronunciation and the mark belonging to the opponent respondent No.2 has been registered and renewed in Bangladesh. On appeal the learned Judges of the High Court Division on hearing the submission of the learned Advocates of both sides, were pleased to dismiss the appeal by judgment and order dated 15.02.2007.

6. Being aggrieved by the impugned judgment and order of the High Court Division the petitioner has filed this petition.

7. We have heard the learned Counsel and perused the petition, the impugned judgment

and order of the High Court Division and other papers on record.

8. The learned Counsel submits that the learned Judges of the High Court Division fell into an error of law in applying the principles of resjudicata inasmuch as the Trade Mark Act is .a special law and in an appeal under Section 76 of the said Act the provisions of Section 11 of the Code of Civil Procedure has no manner of application and in that view of the matter the learned Judges of the High Court Division ought to have entered into merits of the appeal rather than dismissing the same by applying the principles of resjudicata.

9. It appears that the High Court Division not only considered the finding that the dispute with regard to the right of ownership and the use of the mark Cannon and the registration of the mark Cannon was finally adjudicated by the High Court Division in Trade Mark Appeal No. 18 of 1993 but also considered that the judgment was upheld by the Appellate Division by dismissing the Civil Petition for Leave to Appeal No.355 of 2002 challenging the judgment of the High Court Division.

10. Apart from the question of finality of decision on the point as referred to by the

High Court Division we are of the view that such use of same name “Cannon” by the petitioner will create confusion in the minds of the consumer who are likely to be misled by such name of a foreign company and therefore the High court Division committed no illegality in dismissing the appeal.

11. We find no merit in this petition which is accordingly dismissed.

Source : V ADC (2008), 202

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