In the case of Voltas Limited, vs. Mr. Debraj Dey, trading as M/s. Akurom Enterprises, and the Respondent No. 2 Deputy Registrar of Trade Marks, Hon’ble Shri Z.S. Negi, has ruled in favour of Tata group’s air-conditioner maker Voltas in a dispute over the Volta trademark. He instructed the registrar of trademarks to reconsider an application by Kolkata-based Akurom Enterprises for its use.
BACKGROUND OF THE CASE:
Akurom had applied for registration of the Volta trade mark under class nine classification, which is for electrical and scientific apparatus, for its lead acid accumulator. It filed a request in May 2003 for amending the date of use to April 1990; the request was allowed on June 2003, advertised according to the rules.
After hearing both the companies, the deputy registrar had allowed Akurom to proceed with the registration. Voltas had then approached the appellate board against this order.
FACTS OF PRESENT APPEAL:
The appellant(VOLTAS) had preferred an appeal under section 91 of the Trade Marks Act, 1999″ against the order and decision passed by the Respondent No.2 by disallowing the opposition and allowing proceeding with trademark registration of respondent 1.
The Appellant(Voltas) submitted that they have been using a coined and an invented word ‘VOLTAS’ in their corporate name and house mark, upon and in respect of the goods and services for the last 50 years in a continuous and extensive scale. Furthermore, they have also used trademarks such as VOLFARM, VOLFRUIT, VOLPUMP, VOLDRILL, VOLITA, VOLDRUM, VOLLAM, VOTA, VOLRAM, VOLBIT, and such similar words as a trade marks upon in connection with the one or the other of their goods specified in the appeal.
Moreover, The goods of respondent were same as or of similar description or cognate, allied and complementary with the goods, namely Lead-Acid Accumulator and that this fact was not controverted by the respondent No.1.
The respondent submitted that the Registrar had rightly held that the mark used by VOLTAS is being used in the specified territory of his use and hence a dissimilar mark on the basis of honest and concurrent use in a different territory should be allowed.
It was held that prima facie there is no advertisement placed on record to prove that the mark had acquired distinctiveness at the time of making application. There is also no finding of registrar that the adoption of mark is bona fide and honest. No reasoning has been accorded as to how the impugned mark is distinctive of the goods of the respondent No.1 or there is no likelihood of deception or confusion.
Hence, Chairman Mr. Negi allowed the miscellaneous petition and directed the Registrar of Trade Marks not to issue registration certificate to the Respondent No. 1.