IN a case where an application for registration of a trademark had been made to the Registrar of Trade Marks, and the Registrar had ordered advertisement of the said application under sub-section (1) of Section 20 of the Trade and Merchandise Marks Act, 1958, the Registrar had powers to order that the trademark was not qualified for registration, the Intellectual Property Appellate Board has held.

The Board made the ruling, dismissing an appeal by a Villupuram-based firm, S.V. Sivalinga Nadar & Sons, against an order dated February 5, 2001 of the Registrar of Trade Marks, Mumbai declaring that the impugned trademark `SVS' (used for marketing refined edible oil produced by the firm) did not qualify for registration in terms of Sections 12(1) and 12(3) of the Act. The Board, comprising Mr Justice S. Jagadeesan, Chairman, and Dr Raghbir Singh, Vice-Chairman, said it was clear that the advertisement before acceptance was done under sub-section (1) of Section 20, which was relevant for exercising power in the nature of acceptance or refusal of the application under sub-section (4) of Section 18. Thus, there had been a proper exercise of powers under the provisions of the Act.

The trademark bearing registration No 285501 B in class 29 for refined edible oils was registered on January 22, 1973. This related to a family concern and the trademark `SVS' was being used since 1969. In the meantime, there had been certain disputes in the family and some arbitration award was given, in terms of which the said trademark was being used by respondents numbers 2 to 4 (Mr S.V. Chandrapandian, Mr S.V. Ramachandran and Mr S.V. Kasilingam - all trading as SVS Oil Mills, Chennai).

The appellant had applied for registration of mark `S' and `SVS' under marks No 479368 B and 479367 B, respectively. The said marks were advertised before acceptance in trademarks journal No 1148 dated April 1, 1997.

The dispute involved in the present matter was about the registration of the mark No 479367 B. The Joint Registrar had gone into greater details of the of the examination of the mark and reached the conclusion that the impugned mark did not qualify for registration in terms of Sections 12(1) and 12(3) of the Act.

The appellant submitted that the action of the Joint Registrar in withdrawing the acceptance was illegal and without any jurisdiction. He claimed that in case of an application advertised before acceptance, there was no question of withdrawal of acceptance of the application and hence provisions of Section 19 were not attracted. The complainants, having failed to file opposition within the prescribed time, had sought to achieve in an indirect manner what they could not do in direct manner. The Joint Registrar ought to have held that once no opposition had been filed, the application should proceed for registration.

The Board pointed out that the action of the Joint Registrar in advertising the application before acceptance clearly implied in itself that there had not been any acceptance of the application. From the facts of the matter and analysis thereof in the order, it was a matter of record that immediately after the application was received, it was ordered for advertisement before acceptance, and the stage of its acceptability or non-acceptability could only be subsequent thereto.

It was a settled proposition under law that expression of not relevant provisions of the Act in deciding a matter in no way affected the legality of the order or the conclusion so long there was a relevant power available under the Act under which the said order or conclusion could be sustained, the Board said. Thus, there had been a proper exercise of powers under the Act.

The impugned mark `Original SVS' under application 479367 B was deceptively similar to the mark of the respondent `SVS' over a triangle. The word `Original' added to the confusion and deception that as if this was a product which was associated with the products of the respondents. Since the mark related to the same products, so on the second count of Section 12(1) also, the mark failed in its scrutiny. Accordingly, the appeal was dismissed.