JUDGEMENT - BOBDE S.A., J.:---This judgment and order will dispose of Misc. Petition No. 21 of 2000 as well as Misc. Petition No. 39 of 2000 since they are between the same parties and since goods in respect of which the trade mark was sought to be registered are the same, the only difference being that in Misc. Petition No. 21 of 2000, the tacks were sought to be registered in class 6 as "HAND SHOE TACKS" and in Misc. Petition No. 39 of 2000, they were sought to be registered in class 20 which deals with furniture. 2. The common facts are as follows:--- The petitioner and respondent No. 1 in the two cases i.e. Misc. Petition No. 21 of 2000 and Misc. Petition No. 39 of 2000 are the same parties, though inversely arrayed. Therefore, they are referred to as applicant and opponent. The latter's capacity in both cases is the same. 3. The applicant is described in the proceedings as follows: "Anisha Trust, Managing Trustee Shri Lalji Mangaldas Popat, Karta of Hindu Undivided Family Trading as V.K. Patel Co., Exports, having its office at 302, Hari Chambers, 3rd Floor, 58/64, Shahid Bhagat Singh Road, Mumbai 400 023." This very description gives rise to a contention which is dealt with a little later. After this application was made on 24-4-1990 by the applicant for registration of the trade mark ELEPHANT brand in class 6 as well as class 20, on 16-7-1994 an advertisement was published in part 4 for registration of the trade mark in part A. On 16-7-1994 a notice of opposition was given by the opponent Pradeep Sethi who claimed as a user since 1986 and the trade mark ELEPHANT brand since 12-4-1990. 4. A perusal of the two trade marks used by the applicant and the opponent shows that they are almost identical and, in any case, very nearly resemble each other. 5. After evidence was adduced, the Registrar passed an order dated 9-12-1999 by which the Registrar allowed the registration of the trade mark ELEPHANT brand to the applicant in class 6. Thus, Application No. 52845 was allowed. By another order passed on 12-1-2000 the Registrar refused registration to the applicant of the trade mark in class 20. This Application No. 5284 was refused. In both cases, the opposition by Pradeep Sethi was on the same grounds. Hereafter the matters are dealt with separately. Thus, Application No. 52845 was allowed. By another order passed on 12-1-2000 the Registrar refused registration to the applicant of the trade mark in class 20. This Application No. 5284 was refused. In both cases, the opposition by Pradeep Sethi was on the same grounds. Hereafter the matters are dealt with separately. MISC. PETITION NO. 21 OF 2000: 6. In this case, the Registrar has allowed registration of the trade mark ELEPHANT to the applicant. The first contention on behalf of the applicant is that the application was made by Anisha Trust under section 18. However, according to the opponent, the counter-statement was filed by the partnership firm, viz., V.K. Patel Co. Exports. According to Mr. Chitnis, learned Counsel for the opponent, this is not permissible in view of section 21(2) which reads as follows:--- "21. Opposition to registration.---(1).............................................. (2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application." In short, the submission on behalf of the opponent is that since the counter-statement was filed by V.K. Patel Co. Exports, it was not a counter-statement filed by the earlier applicant which is Anisha Trust and, therefore, the applicant i.e. Anisha Trust must be taken to have abandoned this application as provided by the aforesaid sub-section. There is no merit whatsoever in this contention. The applicant is V.K. Patel Co. Exports as is apparent from the description of the applicant which is as follows:--- "IN THE MATTER OF Application No. 528485 in class 6 in the name of Anisha Trust, Managing Trustee Shri Lalji Mangaldas Popat (Karta of HUF) trading as M/s. V.K. Patel Co., Exports, 302, Hari Chambers, 3rd floor, 58/64, Shahid Bhagat Singh Road, Mumbai 400 023." 7. The next submission made on behalf of the opponent is that the learned Registrar has wrongly held that the applicant is entitled to registration of the trade mark on the basis of prior use. The next submission made on behalf of the opponent is that the learned Registrar has wrongly held that the applicant is entitled to registration of the trade mark on the basis of prior use. Though the applicant alleged prior use from the year 1975 and the Registrar has accepted it, that finding is vitiated on account of the fact that the documents showing such prior use are false and fabricated. 8. I am of view that there is prima facie substance in this contention raised on behalf of the opponent. To take up one example, the applicant has produced an Invoice No. 1 of 1987 dated 25-3-1987 before the Registrar. The original of that invoice filed before the Registrar states that the invoice is in respect of 30 cases "ELEPHANT BRAND SHOE TACKS". An invoice of the very same date bearing the very same number which, according to the opponent, was shown to them in the course of an inspection. A copy of the said invoice is also produced before this Court. That invoice surprisingly does not contain the words "Elephant Brand" and only in respect of "30 Cases of Shoe Tacks". Moreover, the latter invoice appears to bear a rubber stamp showing that it was negotiated by Bank of Maharashtra. This rubber stamp is absent in the former invoice. 9. Mr. Chitnis, learned Counsel for the opponent, submitted that there are several such documents which would show that there was no prior use of the trade mark by the applicant. Therefore, the learned Registrar could not have arrived at a finding on prior use and allowed the registration of the trade mark. 10. It is not necessary to refer to each document relied upon by the learned Counsel for the opponent. I am satisfied that a thorough investigation needs to be made into the authenticity and veracity of the documents filed by the applicant for proving prior use of the trade mark for the period preceding 12-4-1990 i.e. the date of registration of the opponent's trade mark. 11. I am, therefore, of view that this matter needs to be remanded to the Registrar and is hereby remanded for allowing the parties to lead evidence on the question referred to above. In this view of the matter, the impugned order dated 9-12-1999 in Misc. 11. I am, therefore, of view that this matter needs to be remanded to the Registrar and is hereby remanded for allowing the parties to lead evidence on the question referred to above. In this view of the matter, the impugned order dated 9-12-1999 in Misc. Petition No. 21 of 2000 is set aside and the matter is remanded for considering the issue which was referred to above. MISC. PETITION NO. 39 OF 2000 12. By order dated 12-1-2000, the Joint Registrar of Trade Marks has refused registration of the trade mark ELEPHANT to the applicant in class 20, inter alia, on the ground that the applicant's trade mark is not shown to be used in India but in the export market. This observation is not sustainable in view of section 55(1) of the Act which reads as follows:--- "55. Use of trade mark for export trade and use when form of trade connection changes.---(1) The application in India of Trade Mark to goods to be exported from India and any other act done in India in relation to goods to be so exported which, if done in relation to goods to be sold or otherwise traded in within India would constitute use of a trade mark therein, shall be deemed to constitute use of the trade mark in relation to those goods for any purpose for which such use is material under this Act or any other law." The other reason given by the Joint Registrar of Trade Marks is that it is not clear from the record which entity claims user of the trade mark. According to the learned Joint Registrar, the person who applied for registration of the trade mark is Lalji Mangaldas Popat, Karta of H.U.F., who has filed the counter-statement or by V.K. Patel Co. Exports having Lalji Mangaldas Popat (H.U.F.) as a partner. It is obvious from the advertisement which is identical to the one in Misc. Petition No. 21 of 2000 decided above, that it is trading entity V.K. Patel Co. Exports which claim proprietorship of the trade mark. There was no reason, therefore, for the learned Joint Registrar to refuse registration of the trade mark on this ground. 13. I, therefore, set aside the order dated 12-1-2000 impugned in Misc. Petition No. 39 of 2000 and remand the matter back to the Joint Registrar of Trade Marks. Exports which claim proprietorship of the trade mark. There was no reason, therefore, for the learned Joint Registrar to refuse registration of the trade mark on this ground. 13. I, therefore, set aside the order dated 12-1-2000 impugned in Misc. Petition No. 39 of 2000 and remand the matter back to the Joint Registrar of Trade Marks. The remand in this case is necessary because the trade mark is common and in this matter the registration is being sought under class 20 and that even here the applicant claims prior use since the year 1975, relying on the same document which I have observed to be thoroughly investigated into vide the decision in Misc. Petition No. 21 of 2000. 14. Both the petitions are, therefore, allowed and disposed of with the aforesaid direction. 15. P.S. to give ordinary copy of this order to the parties concerned. Petitions allowed. -----