Trade names and trademarks often become the characteristic that goods are identified with or made a reference to. When the issue of deceptive similarity is in contention, the battle involves a number of aspects such as the claims made by an 'honest-concurrent user', evidence as may be in the form of an invoice or other record, apart from the most striking feature being the prima facie appearance of the mark. This issue of deceptive similarity as was dealt with in the Trade and Merchandise Marks Act, 1958 continues to receive the same treatment under the new Trade Marks Act, 1999. Kurian & Associates v. Malhotra Retrading Products (2006 (32) PTC 839 (IPAB)) decided in September 2004 was dealt with under the old Trade Marks and Merchandise Marks Act, 1958.

In this suit, the first respondent had filed an application for registration of their trademark 'MRP' in respect of 'repair outfit for tyres', falling in Class 12. Certain objections were raised, after which, the same was allowed to be advertised in the Trade Marks journal. In this regard, the counsel for M/s Kurian Associates filed a notice of opposition stating that their business was in the name of 'MRF Limited' since 1961 and that they were registered under Class 12. The two marks were alleged to be deceptively similar to the appellant's trademark as the goods for which registration was sought were of same description. Hence, appellant claimed that the registration of the impugned mark was to be deceptively similar under Section 12(1) of the Trade and Merchandise Marks Act, 1958 and that the colourable imitation closely resembled the appellant's mark, offending Section 11(a) of the said Act. They further contended that the registration was also violative of Sections 9, 11(b), 11(e) and 18(1) of the Act.

The respondents filed their counter statement denying all the allegations made in the matter. Both the parties filed evidence supporting their stand with regard to the trademark infringement. Hearing both the parties, the Registrar of Trade Marks disallowed the opposition filed and allowed the respondents to register the trade mark by allowing the first respondent's application. In the impugned order it was found that the registration of the impugned trademark was almost identical with that of the appellant's mark 'MRP' but the Registrar of Trade Marks over-ruled the objections raised in view of Sections 9 and 18(1) of the Act. Directions were given to register the mark under Section 12(3) of the Act on the grounds that the first respondent was a bona fide user of the trademark 'MRP' since 1978 and hence were entitled to be concurrent users in the regard. The appellant, aggrieved by the same, filed two appeals, one through a counsel and the other by himself, which were later transferred to the Appellate Board herein.

The counsel for the appellant contended that the Registrar had erred in relying upon the evidence, producing only bill books and some original bills for a period of eight years, each of them exhibiting the mark 'MRP' interpolated via a carbon paper. It was contended that such copies ought not be accepted and that the impugned mark being identified by the Registrar to be offending sections 11 and 12(1), ought not to have permitted registration, as that would cause confusion and deception in the minds of the public as well as traders.

The sustainability of the order directing the registration of the impugned mark passed by the Deputy Registrar as under Section 12(3) was in question in this case. To claim benefit as an honest concurrent user, the Board held that the burden lies on the person claiming benefit of the section. Moreover, Section 12(3) is an exception to Section 12(1), unless the claimant establishes the use of the impugned mark. Examining the bills it was found that the word 'MRP' was written below the description of the goods. The Board held that this raised some doubts regarding the genuineness of the mark. Further, the documents relied upon by the respondent were not enough to establish the plea for the benefit of the registration. The Deputy Registrar of Trademarks was stated to have overlooked these facts and hence the appeal was allowed.

Had the suit fallen under the 1999 Act, it would have been doled out vide Section 11(1) and Section 12. While the concept of deceptive similarity seems to have been retained as such under Section 2(1)(h) of the 1999 Act, the law vide the Act has expanded its horizon by including services within its ambit.