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James Chadwick and Bros. Ltd. Vs. the National Sewing Thread Co. Ltd. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtMumbai High Court
Decided On
Case NumberO.C.J. Appeal No. 95 and Misc. Petn. No. 2 of 1950
Judge
Reported inAIR1951Bom147; (1951)53BOMLR556; ILR1952Bom344
ActsTrade Marks Act, 1940 - Sections 8, 10, 74A, 76 and 77; Govt. of India Act, 1915- Sections 108; Interpretation Act, 1889 - Sections 38; General Clauses Act, 1897 - Sections 8; Constitution of India, Article 225; Trade Mark Rules - Rules 617 and 619
AppellantJames Chadwick and Bros. Ltd.
RespondentThe National Sewing Thread Co. Ltd.
Appellant AdvocateV.F. Taraporewalla, Adv. for the Registrar of Trade Marks;C.K. Daphtary, Adv. General
Respondent AdvocateS.T. Desai, Adv.
DispositionAppeal allowed
Excerpt:
trade marks act (v of 1940), sections. 8, 10, 74a, 76 - high court rules, bombay, original side, rules 617, 619--letters patent, clause 15--constitution of india, article 225--government of india act, 1915 (5 & 6 geo. v, c. 61), secs. 106, 108--government of india act, 1935 (26 geo. v, c. 2), sec. 223--interpretation act, 1889, sec, 38--general clauses act (x of 1897), sec. 8--registration of trade mark likely to deceive or cause confusion--whether sufficient to compare it with registered trade mark--proprietor of registered trade mark selling goods under particular brand--registration by another dealer who sells similar goods of trade mark conveying same idea as the registered trade mark, permissible--burden of proving that trade mark likely to deceive or cause.....chagla, c.j.1. this is an appeal from a judgment of shah j., by which he set aside the order of the registrar of trade marks & directed the registrar to register the mark of the petitioners as a trade mark. the petitioners applied on 12-1-1943, to the registrar of trade marks for the registration of their mark in connection with cotton sewing thread. there was an opposition by the appellants & the registrar came to the conclusion that the mark which the respondents sought to register was likely to deceive & cause confusion & therefore he refused to register the mark. from this decision of his an appeal was preferred to the high court, &, as i just said, shah j. after hearing the appeal came to the conclusion that the registrar was wrong & that the respondents were entitled to have their.....
Judgment:

Chagla, C.J.

1. This is an appeal from a judgment of Shah J., by which he set aside the order of the Registrar of Trade Marks & directed the Registrar to register the mark of the petitioners as a trade mark. The petitioners applied on 12-1-1943, to the Registrar of Trade Marks for the registration of their mark in connection with cotton sewing thread. There was an opposition by the appellants & the Registrar came to the conclusion that the mark which the respondents sought to register was likely to deceive & cause confusion & therefore he refused to register the mark. From this decision of his an appeal was preferred to the High Court, &, as I just said, Shah J. after hearing the appeal came to the conclusion that the Registrar was wrong & that the respondents were entitled to have their trade mark registered.

2. A preliminary objection has been taken by Mr. Desai that this appeal is not competent. The judgment of Shah J., is subject to appeal provided it constitutes a judgment within the meaning of Clause 15, Letters Patent, & the relevant provisions of that clause material to this discu-sion are :

'And we do further ordain that an appeal shall lie to the said High Court of Judicature at Bombay from the judgment of one Judge of the said High Court or one Judge of any Division Court, pursuant to Section 108, Govt. of India Act.'

Mr. Desai's contention is two-fold : (1) That no appeal lies looking to the provisions of the Trade Marks Act, & (2) that no appeal is competent under Clause 15, Letters Patent. Dealing with the first point, it is urged by Mr. Desai that the Trade Marks Act constitutes a special law dealing with a special subject. It is a self-contained Code & it contains all the provisions with regard to the various tribunals that have got to deal with the matters arising under that Act. In order to appreciate the contention of Mr Desai it is neces-sary to look at some of the sections. Section 76(1) provides :

'Save as otherwise expressly provided ia this Act an appeal shall lie, within the period prescribed by the Central Govt. from any decision ot the Registrar under this Act or the rules made thereunder to the High Court having jurisdiction.'

Then Sub-clause (3) provides :

'Subject to the provisions of this Act & of rules made thereunder, the provisions of the Civil P. C., 1908, shall apply to appeals before a High Gourb under this Act.' And Section 77 provides : 'A High Court make rules consistent with this Act as to the conduct & procedure of all proceedings under this Act before it.'

What is argued by Mr. Desai ia that Section 76 (1) provides for one appeal only to the Eigh Court, & that appeal having been disposed of by Shah J. no second appeal lay to this Court. Mr. Desai rightly contends that an appeal is the creation of a statute, & it the special law does not give the right to a litigant of having two appeals, we cannot confer that right upon the appellants con-trary to the express provision of Section 76 (1). It is further argued that under Section 76 (3) the appeals are to be regulated by the Civil P. C., & there is nothing in the Civil P. C., which provides for a second appeal in cases like those falling under the Trade Marks Act. It is well established, as we shall presently point out, that when a statute directs that an appeal shall lie to a Court already established, then that appeal must be regulated by the practice & procedure of that Court. If therefore Section 76 provides that an appeal shall lie to this High Court & if that appeal is disposed of by a single Judge, if the rules of practice & procedure of this Court provide for a second appeal from a decision of a single Judge, then those rules of practice & procedure would prevail unless the statute itself expressly provided that there shall be no further appeal. In Section 76 there is no bar to any second appeal if a second appeal would lie under the rules of practice & procedure obtaining in this Court, & therefore, what we have to find is whether under the rules of practice & procedure of this Court it was competent for the appellants to prefer an appeal from the decision of Shah J.

3. The proposition of law to which we have just referred has been laid down very clearly & succinctly by Viscount Haldane L. C. in National Telephone Co. Ltd. v. Postmaster General, No. 2 (1913) A.C. 646, wherein he expresses the following opinion (p. 553):

'When a question is stated to be referred to an established Court without more, it, in my opinion, imports that the ordinary incidents of the procedure of that Court are to attach, & also that any general right of appeal from its decisions likewise attaches.'

Therefore, there must be a reference to an established Court without more, & we do not find in Section 76 anything more than a mere refererce to the High Court as being the Court of appeal from the decisions of the Registrar. The Privy Council in Adaikappa Chettiar v. Chandrasekhara Thevar 74 I. A. 264, laid down that (p. 264):

'Where a legal right is in dispute A the ordinary Courts of the country are seized of such dispute the Courts are governed by the ordinary rules of procedure applicable thereto & an appeal lies, if authorised by such rules, notwithstanding that the legal right claimed arises under a special statute which does not,in terms, confer a right of appeal.'

Therefore this was really a stronger case than the one we have before us. Although the Special Act which their Lordships were considering, viz., the Madras Agriculturists' Belief Act, did not confer any right of appeal at all inasmuch as the ordinary Courts of the land were seized of proceedings under that Act & appeals in the ordinary Courts lay from those Courts, the Privy Council said that the right of appeal ia matters falling under the Madras Agriculturists' Relief Act arose by reason of the fact that the proceedings were to take place in the ordinary Courts of the land from which there was a right of appeal. Then there is another case of the Privy Councilin Secretary of State v. Chellikani Rama Rao 39 Mad 617. In that case the Privy Council was considering the Madras Forest Act & that Act provided for an appeal from the rejection of a claim to the District Court, & the question that arose was whether an appeal lay from the District Court to the High Court, and their Lordships at p. 624 observed :

'It was contended on behalf of the appellant that all further proceedings in Courts in India or by way of appeal were incompetent, these being excluded by the terms of the statute just quoted. In their Lordships' opinion this objection is not well-founded. Their view is that when proceedings of this character reach the District Court, that Court is appealed to as one of the ordinary Courts of the Country, with regard to whose procedure, orders, & decrees the ordinary rules of the Civil P. C. apply.'

4. Therefore, it is clear that if an appeal lies from the decision of Shah J. to a divisional bench of this Court, there is nothing in the Trade Marks Act which excludes such an appeal or makea such an appeal incompetent. Therefore, the question that we have to address ourselves to is whether under the provisions of the law an appeal does lie from the judgment of Shah J. Now, the High Court has framed rules under Section 77 and Rule 617 provides that all applications & appeals under the Act shall be made by petition supported by affidavit & shall be presented to the Sitting Judge in Chambers. Shah J. being the Sitting Judge in Chambers when this appeal came on for hearing heard it & disposed of it under this rale. It is not disputed that the decision of Shah J. does constitute a judgment within the meaning of Clause 15, but what is argued is that Shah J. did not decide this appeal under Section 108, Govt. of India Act, 1915, but he decided it under the rules framed under the Trade Marks Act. When we turn to Section 108, Govt. of India Act, 1915, it provides :

'Each High Court may, by its own rules, provide as it thinks fit for the exercise, by one or more judges, or by division Courts constituted by two or more judges, of the high Court, of the original & appellate jurisdiction vested in the Court.'

And with regard to the original & appellate jurisdiction vested in the Court, we have to turn to Section 106 of that Act & that section provides:

'The several high Courts are Courts of record A have such jurisdiction, original & appellate including admiralty jurisdiction in respect of offences committed on the high seas, & all such powers & authority over or in relation to the administration of justice, including power to appoint clerks & other ministerial officers of the Court, & power to make rules for regulating the practice of the Court, as are vested in them by Letters Patent & subject to the provisions of any such Letters Patent, all such jurisdiction, powers & authority as are vested in those Courts respectively at the commencement of this Act.'

What is argued is that when the Govt. of India Act, 1915, was passed, the jurisdiction which was conferred upon the High Court under Section 106 was the jurisdiction which sprung from the Letters Patent & also from such laws aa were passed in India up to the date of the passing of the Govt.of India Act & therefore Section 108 could only be resorted to in cases where a Judge or a division bench of the High Court was exercising jurisdiction indicated in Section 106. It is pointed out that the Trade Marks Act was passed in 1940 & although Shah J. had jurisdiction to hear the appeal, that jurisdiction arose under the Trade Marks Act & not under Section 106, Govt. of India Act, & therefore it is further pointed out that it was not open to the High Court to appoint Shah J. as one of the Judges to hear this appeal under Section 108, Govt. of India Act. If Shah J. did not hear the appeal under Section 108, then his judgment was not a judgment pursuant to Section 108A therefore that judgment did not constitute a judgment within the meaning of Clause 15. That--& I hope I am being fair to Mr. Desai--is the argument that has been advanced before us.

5. Now this argument overlooks what transpired after the passing of the Govt. of India Act, 1915. sECTIONS 106 & 108 were repealed along with the rest of the Act by the Govt. of India Act of 1935 & in place of Sections 106 & 108 we have Section 223, Govt. of India Act, 1935. Toat section substantially corresponds to Sections 106 and 108 and it declares that the jurisdiction of the High Court shall be the same as immediately before the commencement of Part III of the Act & that was subject to the provisions of any Act of the appropriate Legislature enacted by virtue of the powers conferred on that Legislature by this Act, Section 223 along with the rest of the Act was in due course repealed by the enactment of our own Constitution & Article 225 again substantially in the same terms has taken the place of Section 223 of the Govt. of India Act, 1935. Article 225 also declares that the jurisdiction of the High Court shall be the same as immediately before the commencement of this Constitution, subject to the provisions of any law of the appropriate Legislature made by virtue of powers conferred on that Legislature by this Constitution. What is emphasised before us by Mr. Desai is that if Clause 15, Letters Patent, had been amended & in place of Section 108 a reference had been made to Section 223, Govt. of India Act, 1935, or Article 225 of the Constitution, there would have been no difficulty. But inasmuch as, although the Act of 1915 was repealed & the Act of 1935 was repealed, the Legislature advisedly did not amend Clause 15 of the Letters Patent, the only conclusion that can be drawn from that fact is that for the purpose of appeal under Clause 16 the Legislature advisedly restricted the jurisdiction of the Court to matters which fell within the purview of the Govt. of India Act of 1915. Therefore, what is really emphasised is the failure of the Legislature to amend Clause 15 & to bring it into line with the progress that legislation had made.

6. Now this contention overlooks the provisions of Section 88, Interpretation Aot of 1889 & also the provisions of Section 8, General Clauses Act. Boththe sections are in identical terms, & Section 8, General Clauses Act provides :

''Where this Act, or any Central Aot, or Regulation made after the commencement of this Act, repeals & re-enacts, with or without modification, any provision of a former enactment, then references in any other enactment or in any instrument to the provision so repealed shall, unless a different intention appears, be construed as references to the provision so re-enacted.'

The Govt. of India Act, 1915, was governed by Section 38, Interpretation Act. Therefore, when Sections 106 & 108 were repealed & re-enacted in 3. 223, Govt. of India Act, 1935, all references in any statute made to S3. 106 & 108 must be deemed to be references made to Section 223. Therefore, although the Legislature did not expressly amend Clause 15 of the Letters Patent, by reason of Section 38 the amendment must be deemed to have been made so as to sub-stitute Section 223 for Section 103 in Clause 15, Letters Patent. Similarly, under our own Constitution Article 367 provides that for the interpretation of the Constitution Section 8, General Clauses Act, should be brought into requisition, &, as we said before, as Section 8 is in terms identical with Section 38, Interpretation Act, when the Act of 1935 was repealed & our Constitution was enacted, by virtue of Section 8, General Clauses Act any reference to Section 223 in any statute must be deemed to be a reference made to the re enacted provision which is Article 225 of the Constitution. Therefore, it is clear that under Clause 15 when Shah J, heard the appeal and disposed of it, he was exercising the jurisdiction vested in him by Art 225 of the Constitution & if he was exercising that jurisdiction, then, if his decision constituted a judgment, that judgment fell within the purview of Clause 15, Letters Patent.

7. It is then urged that Clause 15, by reason of Section 108, contemplates rules being framed by which Shah J. must exercise the jurisdiction conferred upon him sitting singly, & what is urged that Shah J. was exercising his jurisdiction, not by reason of any rule framed by the High Court & not under Article 225 of the Constitution, but under rules framed under the Trade Marks Aot. It is true, as we just pointed out, that Rule 617 does provide that all appeals shall be presented to the Sitting Judge in Chambers, but in making this rule the High Court was exercising its power which it has under Article 225 to decide whether work should be disposed of by Judges sitting singly or in division benches. The Trade Marks Act only empowers the High Court to make rules with regard to matters that arise under the Trade Marks Act. That section in no way affects or modifies the power of the High Court to regulate its own proceedings & in passing the rule, although the rule was made under the Trade Marks Act, the High Court was exercising its power conferred upon it by Art, 225 in regulating its own proceedings. Therefore, although Shah J. disposed of the appeal pursuant to Rule 617 madeunder the Trade Marks Aot, in sitting singly & in exercising that jurisdiction he was doing so pursuant to the procedure laid down by the High Court under Article 225 of the Constitution.

8. Mr. Desai has very strongly relied upon a judgment of the Calcutta High Court in India Electric Works v. Registrar of Trade Marks : AIR1947Cal49 . A division bench of two Judges, Gentle & Das JJ. took the view in an identical case that no appeal lay under Clause 15 from a judgment of the single Judge of the High Court diapoaing of an appeal under Section 76(1), Trade Marks Act. We have gone through the judgments of both the learned Judges with the respect to which those judgments are entitled, & we find that the view taken by these two learned Judges is that the right of appeal under Clause 16 is restricted to those cases where a single Judge exercises original jurisdiction or appellate jurisdiction under Clause 16 or jurisdiction in matters where the Act of the Indian Legislature has conferred jurisdiction upon the High Court upto the date when the Govt of India Act, 1915, waa passed, & therefore according to these learned Judges as the Act in question was passed in 1940, the jurisdiction exercised by a single Judge under that Act was not the jurisdiction contemplated by Clause 15 or Section 106, Govt. of India Act. With the utmost respect to these two learned Judges, they have completely overlooked the provisions of Section 38, Interpretation Aot of 1889. If the attention of these two learned Judges had been drawn to the relevant provisions of the Interpretation Aot, we are sure they would not have taken the view that Clause 15, Letters Patent must be construed to mean that the reference to Section 108, Govt. of India Act still continued notwithstanding the fact that that Act was repealed by the Govt. of India Act of 1935. We have not thought it necessary to consider whether the position would be the same with regard to jurisdiction conferred upon the High Court by an Act passed by our Parliament after the enactment of the Constitution, because these two learned Judges in Calcutta took the view that the language of Section 106, & Section 223, Govt. of Inlia Aot suggested that the jurisdiction was restricted to Acts passed up to the date of the passing of the Govt. of India Act, 1915, or of 1935 respectively. As this particular Act was passed in 1940 before the Constitution was enacted, that question does not arise. But we must not be understood to have agreed with the view of the learned Judges of the Calcutta High Court that; the jurisdiction conferred by any subsequent statute would not be the jurisdiction contemplated by Article 225 of the Constitution.

9. Now, coming to the facts of this case, the appellants have been using for nearly fifty years in a most extensive way two trade marks whioh they got registered in 1943. One of the trade marks bears the legend 'Eagley Sewing MachineThread' and it has a representation of an eagle. That is trade mark B. 62. The other trade mark B. 59, has merely a representation of an eagle without any writing. It is also established on the record that the gooda whioh are sold by the appellants under these two marks are well known & commonly asked for as 'Eagley' or 'Eagle.' It also appears that the respondents had made use of the trade mark which they sought to register in 1948 for about a period of two years & they had been selling their goods under that mark. Turning to the mark of the respondents, it has the representation--& I shall advisedly use a neutral expression--of a bird of prey. It bears the legend 'Peerless Quality Vulture Brand Reel Thread.' & then the same of the respondent Company. It also appears from the evidence that for the two years while they were using this trade mark they had called it 'Eagle Brand' & it was only when they applied for registration that they changed the name of the brand from Eagle Brand to Vulture Brand.

[10] Now, the relevant provisions of the Trade Marks Act which we have to consider in deciding whether the Registrar was right in refusing registration are Sections 8 & 10 of the Act. Section 8 provides:

'No trade mark nor part of a trade mark shall be registered which consists of or contains, any scandalous design, or any matter the use of which would-

(a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice; or

(b) be likely to hurt the religious susceptibilities of any class of His Majesty's subjects; or

(c) be contrary to any law for the time being in force or to morality.'

And Section 10 provides:

(1) 'Save as provided in Sub-section (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor & already on the register. . .] In respect of the same goods or description of goods, which so nearly resembles auch trade mark as to be likely to deceive or cause confusion.'

In this particular case we are only concerned with the case of a trade mark likely to deceive or cause confusion. Looking at the scheme of these two sections, it seems to be clear that Section 10 has undoubtedly a restricted operation. It deals with a case where the trade mark sought to beregistered is identical with the trade mark of another proprietor or where there is a closeresemblance between those two trade marks. Sothat under Section 10 what the Registrar has got to do is to compare the trade mark of the person applying for registration with the trade mark already registered by him, & if he finds that there ia an identity between the two or there is a close resemblance such as to be likely to deceive or cause confusion, then he must refuse registration. When we turn to Section 8, it is wider in its operation. In the first place, if there is a trade mark which islikely to deceive or cause confusion, it must be refused notwithstanding the fact that there is no identity with another trade mark nor is there any close resemblance with another trade mark. The Registrar has to come to a conclusion independently of any comparison with any registered trade mark. Further, whereas Section 10 contemplates an opposition by a proprietor of a registered trade mark, opposition under Section 8 may come even from a person who is selling goods under a trade mark which is not registered. What the Registrar has to decide is merely whether, looking to all the circumstances of the case, a particular trade mark is likely to deceive or to cause confusion. In this particular case the Registrar haa come to the conclusion that the trade mark in question falls both under Sections 8 and 10. According to him there is a close resemblance between the trade mark of the appellants & the trade mark of the respondents such as likely to deceive or cause confusion, & also it is his opinion that apart from any resemblance in itself the trade mark sought to be registered is one which is likely to deceive or cause confusion. The principles of law applicable to the facts of this case are well settled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or cause confusion is upon the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of Section 8 or 10 and therefore it should be registered. The Registrar, in coming to the conclusion whether a trade mark should or should not be registered, exercises the discretion vested in him by statute & the Court in appeal should always be extremely loath to interfere with that discretion. The authorities clearly lay down that discretion should not be interfered with unless the Court comes to the conclusion that the Registrar in coming to the conclusion that he did was clearly wrong or patently in error. Now in deciding whether a particular trade mark is likely to deceive or cause confusion, it is not sufficient merely to compare it with the trade mark which is already registered & whose proprietor is offering opposition to the registration of the former trade mark. What is important is to find out what is the distinguishing or essential feature of the trade mark already registered & what is the main feature or the main idea under-lying that trade mark, & if it is found that the trade mark whose registration is sought contains the same distinguishing or essential feature or conveys the same idea, then ordinarily the Registrar would be right if he came to the conclusion that the trade mark should not be registered. The real question is as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would re-act to a particular trade mark, what association he would form by looking at the trade mark, & in what respect he would connect the trade mark with the gooda which hewould be purchasing, It is impossible to accept that a man looking at a trade mark would take in every single feature of the trade mark. The question would be, what would he normally retain in His mind after looking at the trade mark? What would be the salient feature of the trade mark which in future would lead him to associate the particular goods with that trade mark In this case, fortunately, we have no difficulty in deciding what is the distinguishing or essential feature of the trade mirk of the appellants As we said before, it is on record that the goods sold under this trade mark are well known and commonly asked for as 'Eagley' or 'Eagle' & therefore the particular feature of the trade mark of the appellants by which the goods are identified & which is associated in the mind of the purchaser is the representation of the Eagle appearing in the trade mark. Therefore the very narrow question which arises in this appeal is whether the trade mark sought to be registered by the respondents does contain a similar or identical distinguishing or essential feature. If it does, if the trade mark conveys the idea of an Eagle & if an unwary purchaser is likely to accept the goods of the respondents as answering the requisition for Eagle goods, then undoubtedly the trade mark of the respondents is one which would be likely to deceive or cause confusion.

11. The learned Judge below in a very careful judgment has meticulously examined the points of similarity & dis-similarity between the trade mark of the appellants & the trade mark of the respondents, & he has come to the conclusion that the points of difference are so numerous & the points of similarity so few that in his view there was no such resemblance as was likely to cause confusion. With very great respect, in our opinion, that was not the correct approach to the matter. What the learned Judge should have done was not to keep these two trade marks before him & to find out how they differ & how little they resemble; what he should have done was to decide for himself what was the distinguishing or essential feature of the appellants' trade mark, & then, looking at the trade mark of the respondents, to ask himself whether there was any resemblance in the trade mark of the respondents to that distinguishing or essential feature. It is true, as pointed out by the learned Judge, that the bird appearing in the respondents' trade mark is different in its posture, in its poise, in the position of its head, & in the spreadingof its wings from the bird that appears in the trade mark of the appellants. But that is hardly the question. The question is whether the bird in the respondents' trade mark is likely to be mistaken by an average man of ordinary intelligence as an Eagle, & as we said before, whether, if he asked for Eagle goods & he got goods bearing this trade mark of the respondents, he would reject them saying. 'This cannot be an Eagle; I asked for Eagle goods & the bird Isee before me is anything bub an Eagle.' The learned Judge has very frankly stated in his judgment that he is not an ornithologist. My claims to be considered that are even more slender, & I have no pretentions whatever of being able to distinguish an Eagle from a bird which is not an Eagle or indeed one bird from another. But in this case, fortunately, it is not necessary to give a judicial pronouncement as to whether the bird appearing in the respondents' trade mark is or is not an Eagle, because the pronouncement has been given by the respondents themselves, & no pronouncement can be more weighty than the pronouncement of the party who applies for the trade mark. As we said before, for two years prior to the application for registration the respondents described this parti-cular bird as an Eagle & called their brand Eagle Brand. Mr. Desai says that that was due to an honest & bona fide mistake. But Mr. Desai's clients have nob the monopoly of making honest & bona fide mistakes. If an honest & bona fide mistake was possible in the case of the respondents, surely a similar mistake can take place is more likely to take place in the case of people who come from a more humble & ordinary status of life. Therefore, if there is a possibility of a mistake, if there is a likelihood of this bird being mistaken or accepted as an Eagle, that pos-sibility itself is sufficient to entitle the Registrar to say that this trade mark is likely to deceive or cause confusion.

12. Various oases were cited at the bar which only go to emphasize the principles to which we have been referring, & perhaps the most striking case to which the Advocate General drew our attention is Huxsley's case; Huxley & Co.'s Application, In re (1924) 41 R. P. C. 423. Huxsley's case; Huxley & Co.'s Application, In re (1924) 41 R. P. C. 423. In that case Huxley applied for the registration of a trade mark for illuminating oils & greases & the trade mark consisted of a label with four panels & the last of these panels consisted of a ship. The application was opposed by the Prices' Patent Candle Co., Ltd., & they were the proprietors of a registered trade mark in the same class of goods & their trade mark consisted of a picture of a ship & also of a trade mark consisting of the words 'Ship Brand' & whose goods were alleged to be known under the title 'Ship Brand.' Although the ship was represented only in one of the four panels, Tomlin J. refused to allow registration on the ground that as the goods of the Prices' Patent Candle Co., Ltd., had come to be associated with the name of a ship, the fact of a ship appearing in the trade mark of Huxley was sufficient to disentitle Huxley to registration as it was likely to deceive or cause confusion. We find the principle laid down in this case that if the matter is in dubio & if the Court is left in the frame of mind of doubt, it is the duty of the Court to refuse the application, & as Tomlin J. points cut, that in that event the applicant has not discharged the onus whichthe law put upon him. The learned Judge also points out that

'If that is a reasonable view (viz. the view taken by the Registrar that it should not be registered as it was likely to deceive) of the possible effect of this propssed trade mark, it seems to me to conclude this case & to render it impossible for the Court to say that the application should succeed.'

Therefore, if the view of the Registrar in this case is a reasonable view of the possible effect of registering the respondents' trade mark, then the matter is concluded & the Court should not interfere with the discretion exercised by the Registrar. Could it be said, therefore, in this case that the view taken by the Eegistrar is not a reasonable view?

13. Eeliance was also placed on June's case Seville Perfumery Ld. v. June Perfect Ld. and F. W. Woolworth & Co. Ltd. (1941) 58 R. P. C. 147. In that case the distinguishing feature of the registered trade mark & the proposed trade mark was the word 'June,' & the Master of the Rolls in his judgment at p. 162 observes :

'Now the question of resemblance & the likelihood of deception are to be considered by reference not only to the whole mark, but also to its distinguishing or essential features, if any.'

The learned Master of the Rolls also says that (p. 162):

'In such cases the mark comes to be remembered by some feature in it which strikes the eye & fixes itself in the recollection. Such a feature is referred to sometimes as the distinguishing feature, sometimes as the essential feature, of the mark.'

Therefore the test we must apply in this case is, what is the feature in the appellants' trade mark which strikes the eye & fixes itself in the recollection, & the only answer to this question is that it is the Eagle which so strikes the eye & fixes itself in the recollection. Then we have the case of C. F. G. E. (In the matter of the Application of the Chemische Fabrik Greisheim Elektron for Registration of a Trade Mark) (1910) 27 R. P. C. 201 & this case was cited before us by the Advocate-General in order to draw our attention to the considerable dissimilarity between the proposed & the registered trade mark, The reason why registration was refused to the proposed trade mark was that the registered trade mark was a representation of primitive Eastern Dye Works & the same idea was conveyed by the proposed trade mark. It was urged before Neville J. that one trade mark was a representation of Japanese Dye Works & the other was Chinese. That argument did not find favour with the learned Judge & he answered it by saying that if orders were sent from the East to agents of either of these firms & they were told to send goods which had obtained popularity in the market by the trade mark repre-senting Eastern Dye Works, goods bearing either trademark would have answered to the requisition, & the main ground on which the learned Judge refused registration was that the main feature ofboth the pictures was identical, & according to the learned Judge that concluded the question. Our attention has also been drawn to one case of an Elephant Trade Mark in Upper Assam Tea Co. v. Herbert & Co. (1889) 7 R. P. C. 188 where from the trade marks printed in the report it is clear that the two elephants in the two trade marks look entirely different judging by the way they are represented, & yet, because the goods had been associated with the name of the elephant, injunction was granted to restrain the deft, who also wanted his goods to be told under a trade mark, the main feature of which was an elephant. There is another case (In the Matter of Farrow's Trade Mark (1890) 7 R. P. C 260 where we have trade marks of two buffaloes which look entirely dissimilar, & yet, again, as the goods had come to be associated with the buffalo, registration was refused to the subsequent applicant. There is another case also laying down the same principle in In the Matter of the Application of Pomril, Ld. (1901) 18 R. P. C. 181, where the goods in question were cider & the proposed trade mark had the name 'Pormil' written on half out apple & the opposition came from sellers of eider who had their trade mark also containing an apple with the name 'Apple Brand.' In one case the name was 'Pomril' & in the other case the name was 'Apple Brand.' Still registration was refused as the apple was considered to be the distinguishing & essential feature.

14. I should like to make it clear that there may be cases where dissimilarity in the object represented may be the deciding factor. If, for instance, this particular class of goods are sold by several dealers, all under different kinds of Eagle trade marks, then the purchaser is expected to know the difference between one trade mark & another, knowing as he does that more than one person sells goods under the same ap-pellation. But when we have a case, as we have in this case, where only the appellants sell this class of goods under the Eagle Brand & their goods are known as Eagle or Eagley, then the position is very different, & any attempt to sell goods under a trade mark which fixes in the mind of the purchaser the association of an Eagle would not be justified.

15. There is one further point also to which a passing reference might be made. The Registrar has taken the view that the trade mark should also be refused registration on the ground that it contains a mis-statement of fact. According to the Registrar, a bird which is an eagle is sought to be passed off as a vulture, & the Eegistrar has taken the view that under Section 8 it is open to him to refuse registration, not merely on the ground that the trade mark is likely to deceive or cause confusion or otherwise or that it is scandalous or that it is likely to hurt the religious susceptibilities of any claes of Indian subjects or is contrary to law orto morality, but according to him his jurisdiction is more extensive & under the expression ''or otherwise' it is competent to him to refuse regis-tration in cases like tbe one before us. This raises rather an interesting & important question as to whether the expression 'or otherwise' occurring after the words 'by reason of its being likely to deceive or to cause confusion' is ejusdem generis. If it is ejusdem generis, then it is not open to the Registrar to extend the genus or the class referred to by Sub-clause (b) of Section 8. If the applicant had made a mistake in the mark itself & if that mistake is not likely to deceive or cause confusion, then if that was the correcb interpretation of the section, it would not be open to the Registrar to refuse registration. That is the view the learned Judge has taken. But as the question does not arise before us & as we are holding that this particular trade mark is likely to deceive or cause confusion, it is unnecessary to consider whe-ther it was open to the Registrar to refuse registration on a different ground, viz. that it contained a misstatement as to the object represented by the trade mark even though that misstatement might not lead to any deception or confusion. Even in the decision to which our attention was drawn in In the Matter of Broadlead's Application for Registration of a Trade Mark (1960) 67 R. P. C. 209 the learned Judge was fortunately spared the necessity of considering the English section which corresponds to our own section.

16. Mr. Desai has strongly urged that our jurisdiction in the second appeal should be circumscribed and we should not interfere with findings of fact by the lower Court. Mr. Desai says that Shah J. having exercised his discretion & having come to the conclusion that this trade mark should be registered, we in appeal should not interfere with that decision. In coming to the conclusion that we have, we have not in any way come to any finding of fact which is contrary to the findings of fact arrived at by the learned Judge below. In reality, all facts were found by the Registrar who decided this matter on affidavits which he was entitled to do under the Act, & therefore there is really no dispute in this appeal as to what are the proved or admitted facts. The only question that arises in this appeal is whether the discretion exercised by the Registrar was clearly wrong and whether the learned Judge below was right in interfering with that discretion. If we come to the conclusion that the learned Judge was in error in interfering with the discretion exercised by the Registrar, it is perfectly competent to us even in second appeal to set the Court below right & to come to the conclusion that the discretion exercised by the Registrar should not be interfered with.

17. The result therefore is that the appeal must be allowed & the order of the Registrar restored with costs throughout. The question of costs of the Registrar to stand over.

18. The question arises as to what is the proper order we sbould make with regard to the costs of the Registrar of Trade Marks. The Act itself provides by Section 74A that in all proceedings under this Act before the High Court the costs of the Registrar shall be in the discretion of the High Court, but the Registrar shall nob be ordered to pay the costs of any of the parties. Undoubtedly, the matter before Shah J. was a proceeding under the Act & to the extent that this is an appeal from that proceeding the appeal is a continuation of the proceeding & therefore there is no discretion in us to order the Registrar to pay the costs. But subject to that it is a question of our discretion as to what proper order should be made with regard to the Registrar's costs. But Section 74A. is also important from another point of view that it seems to indicate the view of the Legislature that it is important & necessary that the Registrar should appear in matters which go to the High Court, and in order to safeguard his costs the statutory provision is made that he should not be ordered to pay the costs. Turning to our own rules, Rule 617 deals with applications and appeals under the Act which are to be before the Chamber Judge, & Rule 619 provides that all applications to the Court, whether by way of appeal or otherwise, shall be served on the Registrar who shall have a right to appear & be heard and shall appear if so directed by the Court. We are not prepared to accept Mr. Taraporewalla's contention that by reason of these rules the Registrar is a party to this appeal. The rules do not provide that he should be a party, nor has he made any application to be made a party & no order has been made making him a party. But Rule 619 gives him a right to appear before the Chamber Judge & there is an obligation to serve him, & therefore when the matter comes in ap-peal to this Court, on general principles, if he had a right to appear before Shah J. he has equally a right to appear before the Court of appeal. If he has a right to appear before us, the question is, what is the proper order in the exercise of our discretion we should make in this particular case.

19. Now, Shah J. took a view contrary to that of the Registrar. The appellants have appealed against that order & the Registrar is here to sup-port his order & to see that that order is maintained by this Court. This Court having taken the view that the learned Judge's decision was erroneous & that the Registrar made the right order, he has succeeded in getting the Court to uphold his order. Therefore there does not seem to he any reason why he should not be looked upon as being in the position of a successful appellant & should not get his costs from the respondent. The English practice which, if wholesome, ought to help us in regulating our own practice, is stated by Halsbury in Vol. XXXII, p. 581, as:

'The general rule is for the unsuccessful parties to pay costs, but if the Registrar is unsuccessfal he receives his costs in the High Court, though there is no fixed rule in the Court of Appeal.'

20. Therefore there is no question as to the practice in England with regard to the case where the Registrar is successful; he gets his costs both in the High Court & in the Court of appeal. When he is unsuccessful, even so he gets his costs in the High Court, although as far as the Court of appeal is concerned the rule is not fixed. There-fora there should be no objection to our adopting this practice, viz., that before the Chamber Judge ordinarily the Registrar should get his costs, whether he is successful or unsuccessful, & in the Court of appeal ordinarily if he is unsuccessful he should not get his costs & if he is successful ordinarily he should get his costs. There is no reason why in this particular case we should depart from the general practice we have just laid down aS the Registrar is successful, he should get his costs from the unsuccessful respondents.


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