1. This appeal concerns a dispute over a Trade Mark. The Trade Mark is the word 'Caltex' per Se.
2. One Parmanand Teckchand Lalwani, carrying on business under the name and style of Lalwani Brothers, filed an application for registration of the said Trade Mark in respect of Class 14, but confined to 'Horological and other Chronometric instruments and parts there-of' included in Class 14. In the application, the applicant claimed to be proprietor of the mark on the ground that the mark bad been used since 'one and a half year.' On the 11th September 1958, Caltex (India) Limited filed their opposition in the matter of the said application. The Opponents contended that they were proprietors of the said mark in Class 4 and Class 19; that they had used that mark in India in respect of their goods since the year 1937; that they had carried on wide publicity; and that, therefore, the applicant's proposed trade mark being identical with their own was likely to deceive or cause confusion in the trade. The opponents further contended that in any event the registration should be refused in the exercise of the discretion available in law whether the mark should be refused or not. On the 20th November 1958, the applicant filed his counterstatement. In the counterstatment, the applicant contended that there would be no confusion as the class of goods in which the mark would be registered would be different from the class of goods in respect of which the opponents were using the mark. The applicant further stated that the mark 'Caltex' had since long been registered in Switzerland in the name of M/s. Digamous and Co. for goods in class 14, and that the applicant had first adopted, introduced and used the mark on his goods in India since 1955.
3. After certain affidavits were filed by the parties, the matter of the said opposition reached hearing before the Deputy Registrar on 23rd October 1959. At that hearing, the applicant's counsel raised a preliminary objection to the admissibility of the copies of certain affidavits which had been attached to other affidavits. The objection was upheld. As a consequence thereof, the Deputy Registrar allowed the opponents to file further evidence by way of affidavits in support of the opposition. Such affidavits were in fact filed by the opponents. Those affidavits consist of one affidavits by one Berry, an employee of the opponents and 36 affidavits by 36 other persons. All these 37 affidavits are on the point whether there was a tangible danger of confusion between the two marks. Under the leave given to him, the applicant also filed further affidavits in reply to the points raised by the said 37 affidavits. All these affidavits are of different dates in February 1960. One of them is of the applicant himself, four of his witnesses, and four of other persons.
4. The matter again reached hearing before the Deputy Registrar in June 1960. The opponents applied for leave to cross-examine the applicant in relation to his own affidavits filed by him. On that day the applicant was not available in Bombay. The opponents gave up their application for his cross-examination. The applicant applied for leave to cross-examine three of the opponents' witnesses, who had made affidavits, namely, Berry, one B. M. Raipal and one L. N. Pujara. The application was granted. The three witnesses were cross-examined. The hearing proceeded thereafter. The Deputy Registrar Pointed out to the applicant the admission contained in paragraph 3 of his affidavit dated 22nd June 1959 to the effect that M/s. Digamous and Co. were the owners of the trade mark for watches in Switzerland, and that the applicant had imported into India those watches from them. The applicant thereupon applied for an opportunity to produce evidence of his proprietorship of the mark applied for by him. The leave was granted. Thereafter the applicant filed declaration dated 24th August l 960 of one Jean V. Digamous owner of the said firm of M/s. Digamous and Co.
5. The matter was then heard and disposed of by the Deputy Registrar by his order dated 31st January 1961. He held that the opponent's marks had acquired a reputation in connection with the goods for which they had been used and were on the Register. He further held that an opportunity had been given to the opponents to file an affidavit in rebuttal to the declaration of Degoumois, but they did not do so. There was no material lo doubt the statements contained in said declaration and that he accepted the same, and was thereupon satisfied that the mark applied for by the applicant was an Importer's mark, and that the applicant was the owner thereof by selection in so far as India was concerned. He further held that the competing marks were identical but the competing goods were entirely different in character. He further held that there was no connection in the course of the trade between the competing goods as they were never sold at the same shop. He further held that the trade channels through which the respective goods passed were entirely different, and that, as a matter of fact, the opponents' goods were exclusively available only at their own service stations or agencies where even similar goods of another trader were not permitted to be sold, much less the goods of others of a different character as those of the applicant in respect of which the mark was applied for a registration. He held that the reputation of the opponents was only in respect of the goods for which their marks were being used. He held that, therefore, despite the reputation of the opponents' mark, the use of the applicant's mark would not be likely to deceive within the meaning of Section 11 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as 'the Act'). The opponents had urged that the application had been actuated by dishonest intention and motive in selecting the mark, and that, therefore, the Registrar should exercise his discretion against registering the mark. The Deputy Registrar negatived that contention. He dismissed the opposition, the consequence whereof would be that the applicant's mark would be registered.
6. The opponents filed an appeal to this Court by way of a petition against the said order of the Deputy Registrar. The petition was heard and disposed of by Mr. Justice S. M. Shah. The learned Judge held that the applicant's mark was not an Importer's mark, and that the applicant was not the owner thereof. The learned Judge confirmed the Deputy Registrar's finding that there was no danger of confusion. The learned Judge, however, held that the applicant dishonestly selected the mark, and that in view of the existence of such dishonest intention the Deputy Registrar was wrong in exercising the discretion in favour of the applicant, and that the Deputy Registrar ought to have refused registration on that ground also. The learned Judge does not appear to have dealt in his judgment with the point whether he could interfere with the exercise by the Deputy Registrar of his discretion, and if so, on what particular grounds it would be competent for him to so interfere. The learned Judge allowed the appeal and the petition, set aside the order of the Deputy Registrar and declared that the opposition had succeeded, the necessary consequences whereof would be that the applicant's application for registration would fail. The applicant has filed this appeal against the said judgment and order of Mr. Justice Shah.
7. Mr. Bhabha, learned Counsel for the applicant, stated that he would urge the following five points before us; viz
(1) Whether there was any tangible danger of confusion between Caltex watches and Caltex petrol and various other oil products of the opponents?
(2) Whether there was any dishonesty in the applicant's adopting and introducing the trade mark 'Caltex' in respect of watches in the Indian market?
(3) Whether the learned Judge should have interfered in the exercise of the discretion by the Deputy Registrar in ordering the applicant's mark to be registered?
(4) Whether the applicant is the proprietor in his own right of the mark in India in respect of the watches?
(5) Whether the applicant is entitled to the mark as an Importer's Mark?
8. In our opinion, the fourth and fifth points of Mr. Bhabha really concern one topic, namely, whether the applicant is the proprietor of the mark. We will, therefore, deal with that as but one point? and will consider it first and the other three points afterwards.
9. Before proceeding to consider these contentions, however, we will first examine whether the opponents were entitled to maintain their opposition. There is evidence on record, and it is not disputed that the opponents are the registered proprietors of five marks as follows:
(1) Under Registration No. 10754, of the word 'Caltex' in respect of all goods in class 4.
(2) Under Registration No.10786, of the mark consisting of the word 'Caltex' superimposed on a red coloured star, in respect of all goods under class 4.
(3) Under Registration No. 10787, of the mark consisting of the words 'Caltex' superimposed on a red coloured star, in respect of all goods under class 19.
(4) Under Registration No. 151261, of the mark consisting of a label with the word 'Caltex', in respect of goods in class 4.
(5) Under Registration No. 151262, of the mark consisting of the words 'Caltex' superimposed on a red coloured star enclosed by a circle, in respect of goods under class 19.
The first three marks were registered on 14th January 1943 and the last two on the 2nd November 1951, The affidavit of Hansraj Berry, Acting Manager (Marketing) of the opponents, dated 8th December 1959 contains diverse statements as to the opponents' user of their said marks. He states that the opponents have used the trade mark 'Caltex' since the year 1937 on a very large scale on Industrial oils and greases, lubricants, fuels (including motor spirit), illuminants ( including kerosene), asphalt, pitch, bitumen and building materials. He further stated that the goods of the opponents were sold in every part of India and he has given figures of the annual turnover of the years 1937 to 1958. The turnover in 1938 was over Rs. 1,63,00,000 and in 1956, it was over Rs. 30,60,00,000. He has also stated that the goods of the opponents are widely advertised in India as also in the literature published in other countries but received in India. He has given figures of the annual advertisement costs in India for the years 1937 to 1958. In each of the four years 1953 to 1956, those costs have exceeded over a million rupees. He has further stated that the opponents have hundreds of petrol pumps in India which sell petrol for motor cars and aviation petrol, and also all kinds of fuels, lubricants and greases etc., and that the trade mark 'Caltex' is not only prominently displayed on the pumps but also on the petrol stations. He has further stated that kerosene under the trade mark 'Caltex' is sold mostly in the villages and that the villagers are well acquainted with the trade mark 'Caltex'. He has further stated that there is no other company in India of the name of 'Caltex', and that that fact is well known to the public. He has further stated that the opponents have applied for Defensive Registration for a large number of their goods in classes 2, 3, 5, 11, 16, 18, 19, 24, 25 and 26, and that the same had been accepted by the Trade Marks Registry. None of the above statements of fact have been disputed by the applicant. It may, however, be stated that the said application for Defensive Registration was made sometime after the applicant's said application dated 14th August 1956, the exact date thereof has not been brought on the record. It is, however, clear that the opponents did not apply for defensive registration in respect of class 14, in respect of which class the applicant has made the said application for registration. On these facts, there is no doubt that the opponents were qualified to maintain their said opposition and as a matter of fact, the applicant has not even contended to the contrary. Before proceeding to discuss the contentions on the law on the subject, it is more convenient to refer to the facts in the evidence in this case.
10. The application, although it is filed on 14th August 1956, actually bears the date 30th July 1956. The applicant has stated that he was the proprietor of the mark, because it was in use since one and a half year. According to the applicant, therefore, he had been using the mark since about February 1955. The applicant filed his affidavit dated 18th April 1957 in support of his application. He has stated in the affidavit that he was importing various articles including watches, and was manufacturing presentation articles. He has further stated that he adopted the trade mark 'Caltex' in or about the year 1955, and that he placed the first order for Caltex watches with the manufacturers in Switzerland in April 1955. A photostat copy of that order has been annexed as Ex. A to that affidavit. We will presently refer in more detail to the contents of that order. The applicant has further stated in his said affidavit that he had continuously used the said mark on the imported watches from that date upto the date of his affidavit, and that the total imports during that period had amounted in 1955-56 to about Rs. 32,000 and in 1956-57 to about Rs. 63,000. This particular statement of the applicant is extremely vague. He has not stated that those two amounts were in respect of import of watches much less of watches with the mark 'Caltex'. The years have been given as 1955-56 and 1956-57, the dates of commencement and end of each year have not been mentioned; nor do they appear anywhere else on the record. The dates are somewhat material, because the date of application is 14-8-1956 and without the date of commencement of the year being known, it is not possible to know whether any part of the period 1st January to 14th August 1956 at all falls within the second year 1956-57, and if so, what part. He further states that the watches etc. under the mark 'Caltex' had been sold throughout the Indian dominion, and that annexed to the affidavit were a few copies of the invoices to show that the goods were sold under the mark 'Caltex'. Although the affidavit states that what the applicant had sold under the mark 'Caltex' were 'watches, etc.,' i.e., goods other than watches also, there is no evidence whatsoever on the record that the applicant had sold any goods whatsoever other than watches with the mark 'Caltex' at any time before he filed his application for registration. There are copies of 9 memos annexed to the affidavit as Ex. 'B '. The last four refer to sales after the 14th August 1956 and are irrelevant for the purposes of this appeal. The relevant date as on which the applicant's application for registration is to be considered, is the date of the application itself, namely, 14th August 1956. That is the position in law, and that is common ground between the parties. The last four memos being after that date must, therefore, be ignored. The last five memos are between the dates 19th November 1955 and 18th May 1956. They are in the nature of invoices, between the five of them , they show sales in the aggregate of 215 watches with the mark 'Caltex'. The memos being by way of invoices do not show by themselves that the watches where infact delivered and paid for. What has been annexed to the affidavit are copies of the memos and not the original memos. The originals of course, would be with the parties to whom they were sent. Mr. Rage, the learned Counsel for the opponent's, sought to cast doubt as to the genuineness and veracity of the copies which have been annexed. In our opinion however the opponents applied for permission to cross-examine Lalwani. The Deputy Registrar granted it. On that day, Lalwani was not available in Bombay. The opponents thereupon choose to omit to cross-examine him. The case before the Deputy Registrar was not to finish on that day. It is nobody's case that after granting permission to cross examine the Deputy Registrar would have made it infructuous by refusing to adjourn the matter for sufficient time enable Lalwani to come to Bombay for being cross-examined. Having had a proper opportunity to cross-examine Lalwani on these copies of memos, but not having availed themselves of it, the opponents now cast doubt genuineness of these copies. The rates of sales has mentioned in these memos of 'Caltex' watches vary between Rs.180 and Rs.21 per watch less 61/4% discount. The selling price would therefore, be about Rs. 17 to Rs.20 per watch. Even bearing in mind those were comparatively good though not very old days of 1955 of cheaper prices, it is clear that the watches were really of what might be said to be, cheap quality. It is further stated in the affidavit that the mark 'Calted' had been popularised by the applicant through regular propaganda and campaign through his agents and representatives and other media of advertisements. Before Mr. Justice Shah, however, Council for the applicant stated that during the period from June 1955 to August 1956, the only watches which were advertised by the applicant were those bearing the mark 'Royce' and that no other type of watches was advertised during the period. That statement has been recorded by the learned Judge in his judgment and his accuracy and has not been challenged. It is, therefore, clear that statement about propaganda, campaign and advertisement of the mark 'Caltex' in respect of the applicant's watches is not true.
11. As stated earlier, the annexure Ex.'A' to the said affidavit of Lalwani is a photostat copy of an order. The photostat copy shows that the order was dated 6th April 1955. The document is in French, at least partly. There is no translation and it is not easy to understand the contents of the document. There appear to be 7 heads of items of watches. The Brand-name of the watches appears to have been mentioned only in 5 out of 7 items, the name originally mentioned in all the five items being 'Sandy'. In each of the five items, the word 'Sandy' has been scored out, and in the first item substituted by the word 'Linda' and in the other four items by the word 'Caltex'. The quantities, i.e. the number of watches ordered, also appear to have been scratched out and altered in many of the items. We will revert to this memo later on in connection with the other evidence.
12. In their grounds of opposition, the opponents raised the point about likelihood of deception and confusion. They also contended that the Registrar should exercise his discretion against registering the application of the applicant. The grounds lastly stated that the applicant has alleged user since 1955, but that the opponents did not admit the same and put the applicant to the strict proof thereof. It is the applicant's contention that the applicant's proprietorship of the mark 'Caltex' in respect of class 14 was not disputed by the opponents before the Registrar. It is, however, pertinent to note that in the very first document, namely, the grounds of opposition, the opponents have stated that they do not admit the allegation about the applicant's user since 1955 and put him to the strict proof thereof. The opponents did, therefore, make it clear that the opponents wanted the applicant to prove his allegation about his user since 1955. In his application, the sole ground on which the applicant claimed proprietorship was by reason of such user. Challenge to such user, therefore, amounted to a challenge to the applicant's proprietorship.
13. Applicant Lalwani filed his counter statement to the notice of opposition, which is dated 20th November 1958. In the counter statement, he has stated that the marks claimed by the opponents were registered in classes 4 and 19, which were altogether a different class than class 14, in respect of which he had applied for registration, and that the opponents had never been in the trade in respect of class 14. In the counter statement, the applicant even denied that the opponent's mark was well known throughout India. The counter statement also contains the following statement:
'The mark Caltex is since long registered in Switzerland and in the name of M/s. Digamous and Co. S. A.. Fabrique De Monthes Avta, Meuothatel, Switzerland for goods in class 14 and has been first adopted, introduced and used by the Applicant on his goods in India since 1955 on articles manufactured by the said Company for the applicant and imported by him....'
By this passage, the applicant appears to convey that after the applicant adopted the mark 'Caltex' in India, the mark 'Caltex' was used on watches, and that it was at the instance and under the instructions of the applicant that the Swiss Company applied that mark on the watches ordered from them by the applicant.
14. Thereafter, the opponents filed an affidavit of one Mayne, their Manager (Marketing), dated 18th February 1959. In that affidavit, he has stated that the opponents-company was incorporated in the year 1937, that since then the opponents had done large business in India and had extensively used the trade mark 'Caltex' on its products and in their business; and that the trade mark 'Caltex' of the opponents had become so well known in respect of the goods in relation to which it was registered and used that the use thereof in relation to other goods by other parties would be likely to be taken as indicating a connection in course of trade between those goods and the opponents. He further stated that the word 'Caltex' was derived from the words 'California' and 'Texas', which appear in the names of the companies, which were the opponents-cornpany's parent organisations, and that 'Cal' and 'Tex' were the abbreviations also of the two States of United States, California and Texas.
15. The applicant thereafter filed his affidavit dated 22nd June 1959. The statements therein are not material. The opponents thereafter filed the affidavit of Bery dated 30th July 1959, in which he denied in so many words that the applicant was the proprietor of the trade mark 'Caltex'.
16. to 28. (After examining the documentary evidence his Lordship proceeded):
29. The judgment of Mr. Justice Shah contains the following passage:
'It appears that the first consignment of watches that the respondent received from the Swiss Manufacturers was covered by an invoice dated 3rd June 1955. Under that invoice as many as 1400 watches were imported by the respondent. Only 100 watches out of them however bore the trade mark 'Caltex'. In this consignment of 1400 watches 200 watches bore the mark 'Linda' and the invoice shows that no particular mark was embossed upon the remaining 1100 watches. The respondent then appears to have p1aced a further order on 21st November 1955 for 300 pieces out of which only l00 pieces were required to be under the mark 'Caltex'. In course of the arguments I enquired of the learned counsel for the respondent as to the number of watches which the respondent had imported from the Swiss Manufacturers between 3rd June 1955 and 14th August 1956 on which date the application for registration of the mark was made and was informed that the total number of watches imported by the respondent from the Swiss Manufacturers were 2771 out of which 200 watches bore the mark 'Linda' and 200 watches bore the mark 'Caltex'. I was further told by the learned counsel for the respondent that many other types of watches were also imported by the respondent from other manufacturers in Switzerland, that the total number of watches so imported including the watches imported from the Swiss manufacturers referred to above was about 25000 and that the watches so imported bore different marks such as 'Lucky Star', 'Royce', 'Lily', 'Navado','Tourise', etc.'
30. Mr. Bhabha argued that obtaining information from counsel across the Bar as to important facts in this manner was unfair to the applicant. He argued that it would be unfair in diverse ways. He contended that information orally conveyed immediately in answer to unexpected questions may not he accurate as the person giving information would not have the necessary documents then available to him and may not have time to check them. He further contended that obtaining information across the Bar would deprive further evidence being led to bring on record other additional facts which may be necessary to supplement or explain the information so obtained. It is not necessary for us to deal with this argument in great detail. If the learned Judge had felt that some more material was required to be brought on the record, he could in law either send the matter back to the Registrar for recording further evidence, or he could possibly have recorded further evidence himself. To shorten the proceedings, however, he could have asked the necessary questions to counsel. Counsel were no under any obligation to answer those questions, and they could certainly have pointed out to the learned Judge that the reason for his not answering the questions was that the material was no available at short notice. The very fac that all the material mentioned in th above passage was in fact stated show that it was possible for the Counsel to obtain the necessary instructions and for those giving instructions to gather information and give the necessary instructions. If inability to give replies had been stated in Court, it is possible that the learned Judge, if he thought fit, might have taken other steps to obtain the necessary material. The grievance against having obtained information across the Bar in this way has also been made in ground No. 9 in the memo of appeal. We do not think the grievance is justified. Counsel could have stated that he was not in a position to give the correct information. He, however, chose to give it. It is as to facts, in the sense that it is not as to law. Information so collected amounts to an admission in so far as it goes against the interest of the applicant. It must, therefore, legitimately form part of the record of this case in so far as it contains statements as to facts. It cannot go unnoticed that the objection is to the method, but not to the accuracy either of what was furnished to counsel by way of instructions or even as to what the counsel stated to the Court. If the information or its recording as contained in the Judgment had happened to be in any way inaccurate, one would have found at least a statement in the grounds of appeal or even across the Bar in the arguments before us to that effect. There is no such statement. Mr. Bhabha did argue that the watches with the 'Caltex' mark imported by the applicant into India were more than 200 as mentioned in the above passage from the judgment. That was, however, an argument based on the documents already on the record. It was not stated as on a basis that books of account or other documents of the applicant had been checked up, and that it revealed that the true position was in any way different.
31. We will now to consider whether the applicant is the proprietor of the mark 'Caltex' in respect of 'Horological & other chronometric instruments'. Mr. Bhabha urged that this point was not taken in the Registry, and that point also finds a place in the ground No. 2 contained in the memo of appeal. Mr. Rege, however, stated that the point did arise on the affidavits filed before the Deputy Registrar and was in fact urged before the Deputy Registrar. Law requires that in the application for registration, the applicant must state how he claims proprietorship. In compliance with the statutory requirements, the applicant did state in his application that he claimed to be the proprietor by reason of user for one and a half years. That statement was, as noticed earlier, put in issue by the opponents in the very first document filed before the Deputy Registrar, namely, the grounds in support of the Notice of opposition dated 11th September, 1958. The point has also been again taken in the other affidavits of Mayne and Bery. As a matter of fact, Bery in his affidavit dated 30th July 1959 in so many words denies that the applicant was the proprietor of the trade mark 'Caltex' in respect of watches or any other goods, whether as alleged by the applicant or otherwise whomsoever. This point has also been adjudicated upon by the Deputy Registrar. It must, therefore, be held that the point had been properly put in issue by the opponents, that the applicant had notice of it, that the Deputy Registrar dealt with it, and that it, therefore, properly arose before the learned Judge for his decision.
32. A proprietary right in a mark can be obtained in a number of ways. The mark can be originated by a person, or it can be subsequently acquired by him from somebody else. Our Trade Marks law is based on the English Trade Marks law and the English Acts. The first Trade Marks Act in England was passed in 1875. Even prior thereto, it was firmly established in England that a trader acquired a right of property in a distinctive mark merely by using it upon or in connection with goods irrespective of the length of such user and the extent of his trade, and that he was entitled to protect such right of property by appropriate proceedings by way of injunction in a Court of law. Then came the English Trade Marks Act of 1875, which was substituted later by later Acts. The English Acts enabled registration of a new mark not till then used with the like consequences which a distinctive mark had prior to the passing of the Acts. The effect of the relevant provision of the English Acts was that registration of a trade mark would be deemed to be equivalent to public user of such mark. Prior to the Acts, one could become a proprietor of a trade mark only by user, but after the passing of the Act of 1875, one could become a proprietor either by user or by registering the mark even prior to its user. He could do the latter after complying with the other requirements of the Act, including the filing of a declaration of his intention to use such mark. See observations of Llyod Jacob J. in 1956 RPC 1. In the matter of Vitamins Ltd's Application for Trade Mark at p.12, and particularly the following:
'A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be acquired, but in all cases it is necessary that the person putting forward the application should be in possession of some proprietary right which, if questioned, can be substantiated'.
Law in India under our present Act Is similar.
33. One of the modes of acquisition of proprietorship may be if an Indian businessman happens to import and sell in India foreign goods of a foreign trader with the latter's foreign trade mark. If the Indian trader sells those goods in India, a question may arise who is entitled to that trade mark. It is quite clear that the trade mark being a foreign trade mark, the proprietorship as to India will be determined according to its use in the market of this country. See Impex Electrical Ltd. v. Weinbaum, (1927) 44 RPC 405. Now, if there is a specific agreement as to proprietorship of that mark, that agreement will govern as between the foreign owner and the Indian Importer. If, however, there is no specific agreement, diverse factors will govern the determination as to which of the two is the proprietor in India. That determination must depend on the facts of each case. If, for example, the Indian Importer has acted merely as an agent of the foreign owner, the probabilities would be that the trade mark continues to belong to the foreign owner and not to the Indian Importer. If, however, the transaction between the foreign owner and the Indian Importer has been on the basis of principal to principal, the position may be a little more complicated. There again, one of the more important considerations would be to whom was credit given that is, whether the purchasing public paid regard to the reputation of the foreign manufacturer or to the Indian Importer. In some cases, it may happen that the foreign manufacturer is so well known that which importer imported the goods and sold them in India would be unmaterial. It would happen, for example in the case of goods so well known as, for example 'Bovril' or 'tPears Soap'. The converse may happen when a firm of great repute in India imports and sells goods, and the purchasing public attaches value to the reputation of the Indian Importer who selects to import the goods and not to the reputation of the manufacturer of the goods.
34. Now, it is common ground that the point as to proprietorship is to be decided as on 14th August 1958, being the date of the application. The applicant contends that he imported watches in his own right under contracts with Digamous and Co. as between principal and principal. He thereafter sold those watches in India and thereby used the trade mark 'Caltex' in India in his own right, and by reason of such user he acquired the proprietorship. The Present dispute as to the ownership of the trade mark is not a dispute between the foreign manufacturer and owner of the trade mark viz. Digamous and Co. on the one hand, and the applicant, an Indian Importer, on the other. In this case there is no competition as to ownership between the two of them. In any event, in view of the said declaration of Degoumois, it is clear that Digamous does not and cannot claim any ownership in himself in that trade mark in respect of Watches in India. If the applicant, therefore, establishes his user in India, he can be said to be the proprietor of the trade mark in India in respect of the goods which he claims.
35. The evidence, however, in this respect is not very satisfactory. The shortcomings in the different pieces of evidence have been noticed earlier when we referred to each of them. There is no satisfactory evidence that any watches were in fact imported into India by the applicant under any of the said three orders. The evidence however, can lead to an inference that very probably some watches were in fact imported. Even on that assumption there could be only 100 watches under the 1st Order and only 300 watches under the second Order under the mark 'Caltex', The statement made across the Bar before Mr. Justice Shah mentions the number of watches imported under the mark 'Caltex' at 200. It is not necessary to discuss and adjudicate upon this discrepancy, because the figures of 100 and 300 are only in respect of the orders and the invoices, but not in respect of the actual imports, and possibly the actual imports might have been less than the aggregate of the said two numbers of 100 and 300. But whether the actual number be 200 or 400 or somewhere in between or even a small quantity more than 400, that cannot make the number very large. What we have to examine is the actual user in India of the mark by the applicant. In this connection, the evidence of the said five sale memos shows that the applicant sold 215 watches in India with the mark 'Caltex'. As contended by Mr. Rege, there is of course no direct evidence that a single watch out of the said 215 watches was actually sold and delivered. But these five sale-memos do in any event make it highly probable that the majority of them must have been sold and delivered. If the opponents wanted to contend to the contrary, they had an opportunity to cross-examine the applicant. They did not avail themselves of that opportunity. It is not disputed that the burden of establishing proprietorship lies on the applicant, and that it is for the applicant to satisfy the Court as to his user. But nonetheless, in this particular respect, we feel that on this evidence, the applicant has established that he did sell in India at about the dates of those five sale-memos a substantial quantity out of these 215 watches.
36. The Deputy Registrar found that the mark 'Caltex' applied for by the applicant was an Importer's mark and that he was the owner thereof by selection in so far as this country was concerned. Justice Shah has stated in his Judgment that he was not inclined to agree with that finding of the Deputy Registrar. It is necessary to bear in mind certain principles concerning the point involved. Mr. Justice Shah, in his judgment in another case, being Consolidated Foods Corporation v. Brandon & Co. Pvt. Ltd. : AIR1965Bom35 has held as follows:
'....in case of a distinctive mark within the meaning of the Act, right to the exclusive use thereof can be acquired immediately on that mark being used as a trade mark i.e. used by the trader in his business upon or in connection with his goods and it is not necessary to prove either the length of the user or the extent of the trade. It may be noted that the word 'Monarch' in this case, as conceded by the counsel at the Bar, is a distinctive mark and, therefore, it follows that if it is shown that this mark was used by the petitioner corporation as a trade mark in this country upon or in connection with its food products even for once prior to the use of that mark by the respondent company in 1951, and if there is no evidence to show that this mark was abandoned by it, it would be entitled under S. 18 of the Act to apply for registration of that mark as its trade mark and also to oppose an application made by any other trader for the purpose of registering that mark in his name.'
He has further held that if it is shown that the distinctive mark was used by a trader as a trade mark upon or in connection with his products even for once prior to the use of that mark by another trader, and if there is no evidence to show that this mark was abandoned by him, he would be entitled under Section 18 of the Act to apply for registration of that mark as his trade mark. The learned Judge reached those conclusions on the basis of four English judgments considered and analysed by the learned Judge in his judgment. As stated by the learned Judge, therefore, in the case of a foreign mark, a person first to introduce and use it in India would become entitled to claim it in India as proprietor thereof. The Judgment in (1927) 44 RPC 405 shows that - if the foreign owner of a mark sells goods in this country, he may become the owner of that mark. It further shows:
'For the purpose of seeing whether the mark is distinctive, it is to the market of this country alone that one has to have regard. For that purpose foreign markets are wholly irrelevant, unless it be shown by evidence that in fact goods have been sold in this country with a foreign mark on them, and that the mark so used has thereby become identified with the manufacturer of the goods. If a manufacturer having a mark abroad has made goods and imported them into this country with the foreign mark on them, the foreign mark may acquire in this country this characteristic, that it is distinctive of the goods of the manufacturer abroad. If that be shown, it is not afterwards open to somebody else to register in this country that mark, either as an importer of the goods of the manufacturer or for any other purpose. The reason of that is not that the mark is a foreign mark registered in a foreign country, but that it is something which has been used in the market of this country in such a way as to be identified with a manufacturer who manufactures in a foreign country.'
To the same effect is the decision of the Comptroller-General reported in 39 RPC 171, In the matter Isola Ltd., which also was relied upon by Mr. Rege. Mr. Bhabha cited in this connection 68 RPC l 78. In the matter of Gaines Animal Food Ltd.'s application. In our opinion, the decision in that case Is in no way useful to us and therefore, we do not refer to the same.
37. Another case relied upon in this connection was Ebrahim Curium v. Essa Abba Sait ILR (1901) Mad 163. In that case, the plaintiff had for many years imported into Bombay and Madras umbrellas bearing the 'Stag' mark from a Glasgow Firm, where it was held 'that the prior use in Scotland of the mark did not justify the Scotch firm and the defendant in claiming that the plaintiff's user of the trade mark was illegal or otherwise than an exclusive user.'
38. A person may become a proprietor of a trade mark in diverse ways. The particular mode of acquisition of proprietorship relied upon by the applicant in this case is of his user for the first time in India in connection with watches and allied goods mentioned by him of the mark 'Caltex', which at the material time was a foreign mark belonging to Digamous & Co. of Switzerland and used by them in respect of watches in Switzerland. Before the Deputy Registrar and before Mr. Justice Shah, proprietorship was claimed on the basis that the applicant was entitled to it as an importer's mark. Several authorities were cited and were considered and principles deduced and relied upon in that behalf. In our opinion, it is not necessary in this case to go into details about facts in the various decided cases dealing with importer's marks. In many of those cases, the dispute was between a foreign trader using a foreign mark in a foreign country on goods which were subsequently imported by Indian importers and sold by them in this country under that very mark. In short it was a competition between a foreign trader and the Indian importer for the proprietorship of that mark in this country. We have already reached a conclusion that so far as this country is concerned, Digamous & Co. have totally disclaimed any interest in the proprietorship of that mark for watches etc. In India, the mark 'Caltex' was a totally new mark for watches and allied goods. The applicant was the originator of that mark so far as that class of goods is concerned, and so far as this country is concerned. He in fact used it in respect of watches. There is no evidence that that mark was used by anyone else in this country before the applicant, in connection with that class of goods. Unquestionably, the applicant's user was not large, but that fact makes no difference, because so far as this country is concerned, the mark was a new mark in respect of the class of goods in respect of which the applicant used it. We therefore, hold that the applicant is the proprietor of that mark.
39. The next point for decision is whether the use of the mark was likely to deceive or cause confusion. It involves the decision whether there was any tangible danger of deception or confusion being caused by the use of that mark. Under the provisions of S. 11, Clause (a) of the Act, a mark is disentitled to be registered if the use of it is likely to deceive or cause confusion. It may be stated that S. 12 does not fall for consideration in this case in this respect, because the mark is identical and, therefore, no question of it's being deceptively similar to the mark of the opponents arises.
40. The Deputy Registrar held that though the marks were identical, as the competing goods were entirely different in character, and as there was not only no connection in the course of trade between the competing goods, but also the fact that the competing goods were never sold at the same shop much less at the same counter, and as the trade channels through which the respective goods passed were entirely different, and as the reputation that the opponents' marks had acquired was only in respect of the goods for which their marks were in fact used, there was no tangible danger of any deception or confusion arising. The learned Judge held in the appeal against the order of the Deputy Registrar that this decision of the Deputy Registrar was quite right in law, and that there was no question of any confusion ansing in the mind of the public. It is now well settled that whether there is a likelihood of deception or confusion arising is a matter for decision by the Court, and that no witness is entitled to say whether the mark is likely to deceive or to cause confusion. For example see Parker-Knoll Ltd. v. Knoll International Ltd. 1962 RPC 265. It is therefore clear that evidence by a witness that it is likely that purchasers of the goods will be deceived is inadmissible, but the evidence which would be admissible would be of a witness who is accustomed to buy in question, and he can say that he himself would be deceived.
41. In this case the two marks are identical. Therefore, there is no question of any confusion arising because of any 'similarity' between the rival marks. It is the finding of the Deputy Registrar and also of the learned Judge that there is no connection between the two marks in the course of trade or by reason of there being any common trade channels. That finding has not been challenged before us. The only ground urged by Mr. Rege in support of the contention that there was likelihood of deception and confusion, was that there is a danger that the goods of the applicant would be taken by purchasers as being the goods of the opponents, that is, as indicating that the goods had some connection with the opponents. Mr. Rege invited our attention to certain leading cases on this point.
42. Mr. Rege relied upon the case reported in. In the matter of Dunn's Trade Mark (1890) 7 RPC 311. In that case, one Dunn applied to register a label for baking powder containing conspicuously the words 'Fruit-Salt Baking Powder'. The application was opposed by one Eno on the ground that he had registered the words 'Fruit-Salt' as a trade mark for certain preparations, and had used those words to denote his preparation. The case reported is a decision of the House of Lords. We need not set out the various pieces of evidence relied upon in that case. Lord Watson held that Dunn's use of the words 'Fruit-Salt' would have the effect of deceiving the people as there would be a suspicious connection between the two articles in the minds of many persons.
43. Another case relied upon by Mr. Rege is that of Edward Hack for the registration of a Trade Mark (1942) 58 R. P. C. 91. In that case, an application was made for registration of the words 'Black Magic' in respect of laxatives. The application was opposed by the proprietors of the mark 'Black Magic', which was registered for being used in respect of 'Chocolate and chocolates'. The judgment shows that it could be held that there is a tangible danger of confusion, if it could be found that there is a risk of confusion in that some persons would be likely to think that the two 'Black Magic' preparations were made by the same manufacturers, and others to wonder if this might be the case.
44. Another case relied upon by Mr. Rege was Eastman Photographic Materials Co. Ld. v. The John Griffiths Cycle Corporation Ld. and Kodak Cycle Co. Ld. (1898) 15 R. P. C. 105. In that case, the Eastman Company were manufacturing Kodak cameras, and also started manufacturing certain cameras specially adapted for being used on bicycles, which were known as 'Bicyle Kodaks'. The Eastman Company had invented the mark 'Kodak' and were using it in respect of their goods. Another company, John Griffiths Cycle Corporation Ld., applied for registration of the word 'Kodak' for cycles. They thereafter got registered a new company called 'Kodak' Cycle Company Ltd.' That company along with John Griffiths Cycle Corporation started advertising 'Kodak cycles '. The Eastman Company commenced an action against them for preventing the use by them of the mark 'Kodak'. Evidence was led in that case which showed a close connection between the bicycles and the photographic trades. It was held in that case that no intelligible reason had been suggested why the defendants took the term 'Kodak' to be applied to their cycles, or registered that word as a Trade Mark, or used it as the title of the company, except for the purpose of connecting themselves in some way with the plaintiff company and its business, and that was their real and sole object. It was further held that the defendants' action in adopting the mark 'Kodak' and giving the name to the new Corporation was really to try and get a monopoly of the word 'Kodak' as connected with cycles, and that they wanted to use the word 'Kodak' and acquire a monopoly of it, as applied to cycles, in the hope and intention of, in some shape or other, identifying their company with the plaintiff company whose 'Kodaks' were so well known in the market to cause the public to suppose either that the defendant company was connected with the plaintiff company or to lead the public to suppose that the goods which the defendant company was going to sell were the goods of the plaintiff company, and so to obtain the benefit of the large reputation of the plaintiff company. On those considerations, it was held that there was danger of confusion and that no registration of the defendants' mark ought to have been made.
45. The next case relied upon was that reported in. In the matter of an application by Ferodo. Ltd. 62 R. P. C. 111. It was an application for defensive registration of the mark 'Ferodo' in connection with Pharmaceutical articles and tobacco and certain smokers' requisites. The mark was registered in several clauses but it was principally used for brake linings and clutches. The Judgment in that case is useful as it shows that in judging whether there is a tangible danger of deception or confusion resulting, a test would be whether the person seeing the mark attached to the new class of goods would assume that they originated from the proprietor of the mark or a registered user it further shows that in assessing whether there is a tangible danger of deception or confusion, the nature of the goods is an important factor, for more special in character those goods are and, the more limited their market, the less likely will be the inference that there is such a tangible danger.
46. Mr. Rege also relied upon the judgment in the case of Walter v. Ashton (1902) 2 Ch. D. 282. In our opinion, the principles governing this aspect of the case are well established, and it is not necessary to refer to any further authorities in support of those principles.
47. Mr. Bhaba took us through the judgments in the said three cases report ed in (1890) 7 R. P. C. 311; (1942) 58 R. P. C. 91 and (1898) 15 R. P. C. 105. He also invited our attention in detail to the facts in those cases, and the points of similarity and distinction between those cases and our case, and how, in the light of the comparisons and distinctions made by him, those principles should be applied to this case. He pointed out that in all those cases, there was a trade connection between the competing goods. He argued that, therefore, the principle of trading on another's reputation as a factor likely to cause deception or confusion would apply only when the user of both the marks was confined to the same or similar classes of goods. He argued that the principle of causing confusion would not be applicable when it was alleged that advantage was sought to be taken of the reputation of the opponents generally, and not in respect of the reputation in respect of the actual user in connection with a particular class of goods. In our opinion, it is not necessary to go in detail into the aspect of comparisons and distinctions as pointed out by Mr Bhabha. One must never forget that what Section 11(a) requires to be decided is whether the mark sought to be registered is likely to deceive or cause confusion. That likelihood must vary on the facts of each case. Human conduct is varied and complex. The importance of a particular fact or facts may vary in the perspective of the totality of the facts of each case. The importance of a particular fact may increase or diminish when considered in combination with different sets of facts. What has to be decided in a case is whether on the totality of the facts of that case, it is likely that there would be deception or confusion. It would, therefore, be totally misleading to rely only on some individual fact or facts from a decided case and put emphasis on them without taking into account other facts in combination with which that particular fact was looked upon as yielding any principle. All factors which are likely to create or allay deception or confusion must be considered in combination. Broadly speaking, factors creating confusion would be, for example the nature of the mark itself, the class of customers, the extent of the reputation, the trade channels, the existence of any connection in the course of trade, and several others. Of course, it need not be stated that it would not be that all such factors would exist in each and every case.
48. Now, before proceeding to consider the facts of this case, it is necessary to bear in mind that in proceedings for application of registration, the onus of proving that the mark is not calculated to deceive or cause confusion lies on the applicant. That proposition is well established. For example, see the judgment of Lord Watson in the above case in (1890) 7 RPC 311 and also the judgment in Edward Hack's case, in (1942) 58 RPC 91.
49. In this case, the goods are totally different. There is no trade connection between them There is no connection in the course of trade nor any common trade channels. There are factors against holding that there would be any danger of deception or confusion. But we must consider the factors which tend to show that there is a likelihood of creating deception or confusion. The opponents have been using their mark on a very large scale since 1937. Their sales in 1956 exceeded Rs. 30 crores. Their publicity is wide spread and large. In 1956 they spent over a million rupees on advertisements. The goods in respect of which they use the trade mark 'Caltex' are mainly petroleum, kerosene and lubricants like greases and oils etc. The goods in respect of which the applicant seeks registration are mainly watches. The class of goods in respect of which the applicant seeks registration is wider than watches and watches can be both costly and cheap. It cannot go without notice that the goods in respect of which the applicant in fact used the mark before he applied for registration were very cheap watches. The goods of the opponents are used by persons all over India, in cities and in villages, in different walks of life, rich or poor, literate or illiterate. The goods of the applicant are different in nature. But they are watches. They can be cheap watches. The potential market for them is, therefore, similar to that of the existing market of the opponents, in the sense that the goods of both the parties are not special goods. They are goods which would be purchased by the common man. Now, so far as the word 'Caltex' is concerned, it is common to the opponent's mark as also to the opponents' name. To mention the mark 'Caltex' is also to mention the name of the owner. The mark is unlike the Lion or the 'Stag' mark where there would be no direct connection between the mark and the name of its owner. The opponents are a large company known by many as having large resources, and therefore, capable of starting any new industry or trade. Because of that reason, there is a greater probability of the public believing that any goods with the mark 'Caltex' on them would be the goods of the opponents. This is, in our opinion, sufficiently established by the 36 affidavits referred to above. The deponents of these 36 affidavits are from different parts of India, and from different vocations. In this connection, it may be stated that one of the deponents, Pujara, in his cross-examination, has stated that he would not be confused if he found the mark 'Caltex' on other, goods, like potato chips, hats, umbrellas,, etc. Such evidence on this particular point is not of much assistance. A witness who says so may be more particular or may have a sub-conscious back-ground, whereby he makes the necessary distinction between the mark as used on different kinds of goods. Although such evidence would be weak, even such weak evidence has not been produced by the applicant. There is no affidavit on behalf of the applicant of any witness who says that he would not be so deceived or conf used. But, there is the evidence of Rajpal, who even in his cross-examination has stated that he would take all goods bearing the mark 'Caltex' to have been manufactured by the opponents. The evidence of the other deponents as contained in their affidavits is similar. There is an additional factor to be taken into consideration. The applicant has given no explanation why he selected the word 'Caltex'. Mr. Bhabha contended that although the applicant has not specifically stated the reason for his selection, it can be inferred from the other statements of the applicant on the record. He pointed out that the applicant has stated that in about April 1955 he had gone to Switzerland that he saw the mark applied by Digamous & Co. on their watches; and that their watches had good sales. He says that these facts by themselves provide the reason for his making the selection. But, unfortunately for the applicant, it is also his evidence that Digamous & Co, had other marks in respect of their watches. As a matter of fact, on the first order which the applicant placed with Digamous & Co., which is dated 6th April 1955, the mark originally selected by him in respect of the categories of watches covered thereby was 'Sandy'', which also was a mark of Digamous & Co. He got the mark 'Sandy' changed to 'Caltex' only subsequently. Why he made the change has not been explained. It would be legitimate to infer that he selected the mark 'Caltex' to take advantage of the reputation of that mark as used by the opponents in connection with their goods. The applicant's selection of the mark was made, to use the words of Lord Denning in 1962 RPC 265 (HL), with intention to deceive and cause confusion, and he must, therefore, be given credit for success in his intention, and we should not hesitate to hold that the use of that mark is likely to deceive or cause confusion. In this connection, the following passage from the judgment in Edward Hack's case (1942) 58 RPC 91, occurring at p, 106 is relevant:
'I think that a large number of persons if they heard of a laxative called 'Black Magic' or saw advertisements of a laxative called 'Black Magic' would be likely to think that that laxative was made by the same firm who made the 'Black Magic' chocolates'.
On the facts of this case, we have no hesitation in holding that a large number of persons, if they see or hear about the mark 'Caltex' in connection with watches, would be led to think that the watches were in some way connected with the opponents, or they would at least wonder whether they were in any way connected with the opponents. Persons seeing the mark attached to watches, which is a new class of goods, would assume, or are most likely to assume, that they originated from the proprietor of the mark, namely, the opponents.
50. We are, therefore, of the opinion that if the application for registration is granted and the mark is used in connection with the goods in respect of which the application is made, it is likely to cause deception and confusion.
51. Mr. Rege urged that the applicant acted dishonestly in selecting the mark 'Caltex', with the intention of trading on the wide reputation which that mark enjoys in India, that the applicant's case is not founded on truth, and that, because of these two reasons, the applicant should be held disentitled to registration under the discretionary provisions contained in clause (e) of Section 11 of the Act. Under that provision there is prohibition against registering a mark 'which would otherwise be disentitled to protection in a Court.' The provision contained in cls. (a) to (d) of that section shows that the factor which is to be taken into account for not registering a mark is a factor connected with the mark itself, in contradistinction, for example, to a factor concerning the person applying for registration or the facts or circumstances under which or the intention with which he applies for registration. The provision contained in clause (e) is discretionary. It is to be considered in cases when an application is made for registration. Such application has to be made under S. 18 Subsection (4) of Section 18 also contains a provision for the exercise of discretion in accepting or refusing to register, because it provides: 'the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.' Both these provisions confer a discretion in accepting or refusing registration. It would be unreasonable to ascribe to the Legislature an intention to provide for such a discretion at two places in the same enactment, and that too without making any distinction as to the circumstances under which it can be exercised, or the objects for which it should be exercised . It leads to the conclusion that the Legislature intended to make a provision for the exercise of discretion but in different set of circumstances under clause (e) of Section 11 and under sub-section (4) of Section 18. In this connection, Mr. Bhabha invited our attention to the following statement in Kerly on Trade Marks, 8th Edition at page 167:
'This section is directed to some positive objection to registration and not to mere lack of qualification. It contemplates some illegality inherent in the mark itself.'
The statement is made in Kerly in relation to Section 11 of the English Act, which is, for this purpose, in pari materia with clause (e) of Section 11 of our Act. One of the cases relied upon by Kerly in support of that statement is that of Hassan El-Madi's application for trade mark 71 RPC 281. In construing the provision of the English Act, Lloyd Jacob J. observed in that case at p.295:
'In my judgment, the reference in Section 11 to disentitlement to protection in a Court of Justice is to be related to something inherent in the mark applied for. That to me would follow from the fact that the phrase is qualified by 'by reason of its being likely to deceive or cause confusion or otherwise', and the fact that it introduces as proper for consideration any matter arising out of the form and nature of the mark applied for which could properly be objected to as unsuitable for inclusion in the Register.' In our opinion, the prohibition contained in clause (e) of Section 11 must, therefore, be restricted to some illegality inherent in the mark itself and not de hors the mark itself. Mr. Rege's contention cannot be considered under the provisions of Section 11(e).
The question then arises whether the above two causes for disentitlement urged by Mr. Rege can prevent registration under Section 18(4). There is no absolute right to registration, and the Registrar has discretion to refuse registration. That is the well-settled position in law, and neither side has naturally urged any contention to the contrary. Mr. Rege's allegation that the applicant was actuated by dishonesty in selecting the mark concerns his motive. The other allegation of Mr. Rege that the applicant's case was not founded in truth ascribes to the applicant dishonest conduct. Mr. Bhabha, however, contended that there is no such plea at all taken by the opponents before the Registrar, nor have any particulars in that behalf been given. This complaint is not justified. There is such a plea taken by the opponents. It is to be found if the very first document which they filed before the Registrar, namely, the Notice of opposition. It is stated in Para 5 of the grounds of opposition. In the language in which it is taken, however, dishonesty as such has not been specifically stated. But what has been stated is that the Registrar should in the exercise of his discretion refuse to grant the application for registering the mark. But after the notice of opposition was filed, the opponents filed the affidavit of Bery dated 8th December 1959. ln Para 15 of that affidavit, it is stated that any one in India using the trade mark 'Caltex' as a trade mark on goods not of the manufacture of Caltex (India) Ltd would be using it merely for the purpose of deceiving the public into supposing that they are manufactured by Caltex (India) Ltd. This is a clear allocation of dishonesty, and the plea was taken before the Deputy Registrar before the proceedings before him concluded. In any event, that plea was argued before the Deputy Reeistrar, and the Deputy Registrar has recorded a finding on that plea. It was also argued before Mr. Justice Shah, and he also has recorded his finding on that Plea. The applicant did not, at any stage, register any protest, and it is, therefore, not open to him now to resist this argument on the ground that it was not pleaded at all. But there is another ground to hold against this particular contention of the applicant. What Mr. Rege has urged is that the Registrar ought to have exercised his discretion against registering the application of the applicant. The discretion has been vested in the Registrar under Section 18(4), for protection of the interests of the general public. In this connection the judgment in Midland Counties Dairy Ltd. v. Midland Dairies Ltd. (1943) 65 RPC 435, may be referred to. In that case, no fraud was alleged, and as a matter of fact the chief witness for the plaintiff disclaimed any allegation of fraud. It was argued that in these circumstances the Court should exclude all considerations of fraud from its mind. It was held. 'In my opinion the Court is not bound by the form of the pleadings, or by disclaimer on the plaintiff's behalf, to shut its eyes to a case of fraud if convinced that one exists.' It is clear that the discretion has been vested under Section 18(4) so that the tribunal can satisfy its conscience and satisfy itself that that registration of the mark would not operate as a fraud on the general public. In our opinion, therefore, it is open to Mr. Rege to urge this contention. Even if he did not urge it, it is our duty to see that what has been alleged by Mr. Rege against the applicant does not exist in the way of the application being registered.
53 and 54. (After discussing evidence His Lordship Proceeded:)
55. In our opinion, due to both the above reasons the discretion under Section 18(4) should have been exercised against registering the applicant's application. The Deputy Registrar as, however, exercised the discretion in favour of registration Mr. Justice Shah held against exercising that discretion in favour of registering the application. He thereby interfered with te exercise of the discretion by the Deputy Registrar and actually exercised it conversely. The question arises whether in the circumstances of this case there was reason to interfere with the exercise of his descretion by the Deputy Registrar. This discretion is a judicial discretion, and the Deputy Registrar's exercise thereof should be overruled only if he has applied wrong principles of law or has not appreciated the facts before him.
56. These principles can be gathered from in the matter of William Bailey Birmingham Ld. 52 RPC 136 and in the matter of J & P. Coats Ltd. 53 RPC 355. Now, in this case, the material portion of the decision of the Deputy Registrar is as follows:
'The opponents have very vehemently rugged that he application should be refused by the Tribunal in the exercise of its discretion. No doubt Section 18 of the Trade and Merchandise Marks Act, 1958 confers upon the Registrar a discretion to refuse or accept an application but then such discretion has to be reasonably and not capriciously exercised and may be based upon judicial and legal principles. Having regard to the findings of fact arrived at by me in this case, namely, that the competing goods are entirely different in character and that the respective trade channels are entirely different and that despite the reputation acquired by the opponents' mark the applicant's mark will not reasonably be likely to deceive or cause confusion. I fail to see on what legal or judicial basis can I justifiably exercise the discretion adversely to the applicant. Moreover, in view of my aforesaid findings, any exercise of discretion adversely to the applicant in the present case would in effect amount to giving a monopoly to the opponents in goods whatsoever and that, would be throwing to the winds and doing violence to the basic principle of the Law if Trade Mark which permits the use and registration of the same mark by two different persons in respect of goods entirely different in character.'
It is clear that the Deputy Registrar has taken into account two factors for deciding that he could not exercise his discretion against the applicant.
57. Taking the second factor first, he felt that his exercise of discretion adversely to the applicant would in effect, amount to giving a monopoly to the opponents in the word 'Caltex' irrespective of any good whatsoever. The use of the words 'in the present case' suggests that he was limiting his statement that 'any exercise of discretion adversely to the applicant would in effect amount to giving a monopoly to the opponents' to this particular case only, and that he was not stating it by way of a general proposition applicable to all cases. Therefore, this statement must be considered in that restricted sense. In our opinion, read in that restricted sense it is difficult to understand its meaning. How could the exercise of the discretion against the applicant result in the creation of a monopoly in the opponents in the word 'Caltex' in respect of every conceivable kind of goods? The exercise of his discretion against registration would disentitleably the applicant to use the mark 'Caltex.' But that would not be creation of a monopoly in the opponents. A monopoly means a sole right being vested in the applicant to use mark to the exclusion of all other persons. By the mere fact of exercising discretion in that way none other than the applicant would be disentitled to use the mark in respect of goods falling in the classes other than those for which the opponents have registered their mark. It is quiet clear that even if the discretion was exercised against the applicant, it could not have conferred any monopoly on the opponents as apprehended by the Deputy Registrar, or prevented any other person in a fit case from using the word 'Caltex' as his trade mark in respect of other goods as permitted under the trade mark law. Thinking in terms of monopoly in this context was basically wrong. When considering the question of exercise of his discretion the Deputy Registrar has taken into account a principle which had no application to the facts of this case.
58. Turning now to the first reason, the Deputy Registrar felt that there was no legal or judicial basis for exercising the discretion adversely to the applicant because of the findings of the fact which he has arrived at. No finding of fact arrived at by him, either individually or cumulatively with the other findings of facts, would make the exercise of his discretion against the applicant otherwise than on a legal or judicial basis. The findings of fact arrived at by him in connection with the proprietorship of the applicant and a question whether there was a tangible danger of deception or confusion arising, were arrived at by him for those purposes only. He had to reconsider those findings of fact, to the extent that they were relevant for the purpose of exercising discretion in conjunction with various other facts which were relevant for that purpose and which we have already pointed out when considering the two grounds urged by Mr. Rege in support of exercising the discretion against registering the applications. He has, therefore, failed to appreciate, that is, to take into consideration, all the relevant facts. A Court is therefore, entitled to interfere with such an exercise of discretion. The approach would have had to be different if the Deputy Registrar had considered the other questions of fact, weighed them and come to a conclusion that he ought to exercise the discretion against the applicant. In the latter event a Court could have interfered not merely because the Court would, on its own have taken a different view, but only if there was something fundamentally wrong in his appreciation of the facts concerned. What the Deputy Registrar felt was that in view f his findings of fact, he was debarred from considering the other relevant facts either by themselves or even in combination with the facts as found by him, for the purpose of deciding how to exercise his discretion. This is not a case of merely a wrong appreciation of the facts before him by the Deputy Registrar. It is much stronger,. In these circumstances, therefore, we are of the opinion that the learned Judge was justified in interfering with the exercise o his descretion by the Deputy Registrar.
59. The appeal, therefore, fails and is dismissed with costs.
60. Liberty to the respondent's attorneys to withdraw the sum of Rs.500 deposited by the applicant as security for costs in this appeal.
61. Appeal dismissed.