UDGMENT MIAN SAQIB NISAR, J.--- The instant FAO No. 302/2002, as also FAO Nos. 303/2002, 304/2002 and 305/2002, are being disposed of together, as common . Questions of law and facts are involved in all these matters.
2. The facts of FAO Nos. 302 and 303 of 2000 are that the appellant applied to the Registrar of the Trademark under application No. 102791 in class-3 for the registration of his trademark i.e. "Bhains Soap" on the basis of user claim since 1986. Respondent No. 2 on the advertisement filed opposition to the above application. It may be pertinent to state here that trademark "Gaey Soap" under the application No. 72142 and "Gaey Super Stroke" on application No. 81185 had already been registered in the name of respondent No. 2. Respondent No. 2 also through an application No. 106621, applied for the registration of "Bhains Soap" to which, the appellant filed the objections. Through the impugned order, in these two appeals, the learned Registrar Trademark, has rejected the opposition of the appellant to the registration sought by respondent No. 2 and has allowed the registration of trademark "Bhains Soap" in the name of the respondent No. 2, whereas the opposition of the respondent No. 2 to the application No. 102791 has been accepted and the trademark to the appellant has been refused.
3. The brief facts of Appeal No. 304 of 2000, are that the appellant in that case, who is a different person then the appellants in the other two appeals, applied under application No. 107732 for the registration of a trademark i.e. "Sanda Soap" to which, respondent No. 2 filed objections. These objections have been accepted and the registration has been refused to the appellant. In FAO No. 305 of 2000, respondent No. 2 had applied for the registration of "Bhains Soap" vide application No. 106621. The appellant in this case, had also filed opposition, which has been rejected.
4. Learned counsel for the appellant in the first two appeals, contends that prior to the above, respondent No. 2 had brought a suit against the appellant under Section 73 of the Trademark Act, 1940 for the infringement of its trademark "Gaey Soap" and also of passing of action. The suit was dismissed for non-prosecution. Respondent No. 2 applied for the restoration, which was allowed by the learned Additional District Judge/Trial Court vide order dated 29.11.1995, however, on the same date, the appellant made a statement on Oath, which reads as follows:- "It is submitted that I will never prepare "Cow Soap", "Two Cow Soap" or "Red Cow Soap" with the picture, colour, monogram and design etc. In future and I will only prepare my on soap with the title "Bhains Soap" as given in the picture Mark A. In this way, I have no objection if the suit of the plaintiff is decreed." In the light of above, Mr. Sala-ud-Din, Advocate, counsel for respondent No. 2 also made a statement before the Court in the following terms:- "It is submitted that I have heard the statement of the defendant, therefore, my instant suit may kindly be decided in view of the statement of the defendant."
On the basis of above two statements, the learned Additional District Judge, passed the following order.- "Statement of the defendant and learned counsel for the plaintiff recorded. As per statement of the defendant, instant suit is hereby decreed in favour of the plaintiff and defendant will prepare his soap with the title of "Bhains Soap" only according to the photograph Mark-A in future with his on name. Parties are left to bear their on costs. File of the instant suit be consigned to the record room after completion."
5. It is submitted by the learned counsel for the appellant in the first two appals, that because of the aforesaid settlement/compromise between the parties and the order of the Court dated 29.10.1995, respondent No. 2 has conceded to the claim of the appellant seeking registration of trademark "Bhains Soap" and had withdrawn from the contest to have his on trademark "Bhains Soap" registered with the Registrar; the compromise and the oidet passed by the learned Additional District Judge has been misconstrued by the learned Registrar, while dismissing the opposition of the appellant and disallowing his registration "Bhains Soap" and likewise, accepting the opposition of respondent No. 2 and allowing him the registration of "Bhains Soap". It is stated that on account of the above compromise between the parties, respondent No. 2 is estopped by its on conduct to oppose the registration of the appellant's trademark "Bhains Soap". It is submitted that as per the provisions of Section 10(3) of the Trademark Act, 1940, if there are more applications than one by different persons seeking the registration of identical or resembling trademark, with regards to the goods of the same description, the Registrar may refuse the registration in favour of any applicant, until the parties have sought the determination of their rights, from the. Competent Court of jurisdiction. In the facts and circumstances of the present case, the Registrar instead of passing the impugned order, should have waited for enabling the parties to seek their remedy under Section 10(3); even otherwise, such rights had already been settled and determined by the Court in the earlier suit filed by respondent No. 2, which had been disposed of by the learned Additional District Judge vide order dated 29.10.1995. It is lastly submitted that the view of the Registrar Trademark, that Mark-A referred to in the statement of the appellant made before the Trial Court on 29.10.1995, is not available on the record, is misconception, rather such document does exist and should have been taken into consideration by the Registrar. In the other two Appeals FAO Nos. 304 and 305 of 2000, it is stated that trademarks "Sanda Soap", "Bhains Soap" and "Cow Soap", are totally different and there is no question of any deception by the user/consumer. It is also submitted that respondent No. 2 is not using the trademark "Bhains Soap" and it is only with an object to cause prejudice to the rights of the involved in the matter. On account of the above, in no way, the appellant was induced and was led to change his former position thereby to his prejudice.
Both the parties did not compromise their position or the claims that were then pending before the Sub-Registrar. There is no clear agreement between them that the respondent should withdraw from his application and shall concede in allowing the trade-mark "Bhains Soap" to the appellant by the Registrar. Therefore, I am constrained to hold that the rule of estoppal shall not operate against the respondent No. 2.
7. There is another aspect of the matter; the respondent No. 2 had sought the registration of the trademark "Bhains Soap" and had contested the matter before the Registrar for the grant of the same Trademark to the appellant on the strength of his registered trademarks i.e. "Gaey Soap" and "Gaey Super Stroke". These registered trademarks of the respondent No. 2 contain the picture of a Cow. The Cow, buffalo, Bhains, are the species of the same genies, and it is not only difficult but impossible for an ordinary person to differentiate from the picture, if it is a "Gaey" or a "Bhains".
According to Section 8 of the Trademark Act, the Registrar shall not register such trademark, which is likely to deceive or cause confusion. Undoubtedly, in the present case, on account of the earlier registered trademark of the respondent No. 2, if the appellant was permitted the registration of "Bhains Soap", that would have decided and caused the confusion. Resultantly, on this, score, the Registrar could not have registered the trademark of the appellant. Thus, even if, it is considered that by virtue of the statements in the previous suit, the respondent has permitted the appellant to use "Bhains Soap" as his trademark, it is settled law that the parties by a contract cannot agree to something, which is prohibited by law and would tantamount to overriding the legal provisions.
Such an agreement shall be unenforceable and where that being the position, the rule of estoppal would not come into play.
8. As regards the argument that principles of res judicata are also applicable to the case in hand, suffice it to say that no conclusive determination of any of the issues between the parties has been made in the earlier litigation. It is only on account of their statements, which at the best, are in the nature of compromise that the matter was disposed of; when, it has been held that such compromise/agreement was illegal and unenforceable, the principle of res judicata would have no application,.
9. Attending the question, whether on merits, the appellant was entitled to the registration of trademark "Bhains Soap", suffice it to say that on the basis of the evidence on the record, which has been thoroughly discussed by the Registrar, it has been rightly found that the respondent No. 2 is the holder of two registered trademarks since long before the appellant, which are of the same species as of "Bhains", therefore, the likelihood of deception and the confusion in the mind of the consumer public, cannot be ruled out, which reason obviously is the pivotal in refusing the trademark to the appellant and allowing the same to the respondent No. 2 in view of Section 8 ibid. Moreover, on the basis of the evidence available on the record, it has been factually found by the Registrar, that even trade-mark "Bhains Soap" has been in the use of the respondent No. 2, much before the appellant started use the same. It is on account of above that the Registrar has validly refused to grant the registration of trade mark "Bhains Soap" in favour of the appellant and has allowed to the respondent No. 2, I do not find any error or illegality in the impugned order, calling for interference in these two appeals.
10. As regards the other two appeals are concerned, it may be stated that, in view of the judgment in the aforesaid two appeals, these appals have become infructuous. Even otherwise, Darvesh Soap Factory has failed to establish on the record its right or locus standi to seek registration of "Bhains Soap", as there is no proof of user of the said trade-marks by Darvesh Soap Factory, prior to the respondent No. 2 and his claims seems to be collusive with the appellant of the other two cases.