(1) This is a petition by way of appeal filed by consolidated Foods Corporation incorporated under the laws of the State of Mary land in the United States of America and having its principal place of business at San Francisco, California, against the order and judgment of Mr. C.D.V. Raman, the Joint Registrar of Trade Marks, Bombay, dismissing its oppositions to the three applications being application No. 178155, application No. 178158 and application No. 178159 filed by the respondents Messrs. Brandon and Co. Private Limited for registration of the mark 'Monarch' in respect of certain fruits and vegetables preparations.
(2) On 23rd January 1957, the respondent company filed the three applications aforesaid for registration of the mark consisting of the word 'Monarch' (per se) in classes 29, 30 and 32 respectively. Application No. 178155 was in respect of 'preserved, dried, and cooked fruits and vegetables; jellies and jams, preserves and pickles, ' all being goods included in Class 29: Application No. 178158 was in respect of 'sauces, spices, curry powders, papas (being cereal preparations) and condiments' and Application No. 178159 was in respect of 'syrups (not included in other classes ) and other preparations for making beverages; and other non-alcoholic drinks:' These applications were advertised as accepted for registration in the Trade Mark Journal No. 199 dated 16th September , 1957.
(3) The petitioner corporation filed separate notices of opposition to each of these applications, being opposition Nos. 3959, 3958 and 3960 respectively. The grounds of opposition set out in those notices were the same and they were as follows:
'a) That by reason of the use of the word 'Monarch' by the opponents (the petitioners) prior to 1951, the use of the said was likely to deceive or cause confusion, and, therefore, its registration would
be contrary to the provisions of Section II (a) of the Trade and Merchandise Marks Act, 1958:
b) That the adoption and use of proposed mark by the respondents was not bona fide.
c) That the respondents were not the proprietors of the mark;
d) That the respondents' mark was disentitled to protection in a Court of Justice as its use was
contrary to law; and
e) That in the exercise of the discretion of the Registrar, the registration of the mark should be refused.'
(4) The respondent company by its counter statement denied the allegations made by the petitioner corporation in its notices of opposition and submitted that it had honestly adopted the word 'Monarch' as its trade mark and it had been carrying on business under the said trade mark on a large and extensive scale since 1951. The respondent company specifically denied in the counter statement that the petitioner corporation had ever sold any goods bearing the mark 'Monarch' in India and submitted that question of confusion or deception therefore did not arise.
(5) In support of the application filed by the respondent company, affidavits were filed by Mr. F.W. Audsley, a director of the respondent company and by some traders and customers. One affidavit by Shri Autar Krishna Sharma, the managing director of Messrs. Kipre(India) Private Ltd. was also filed. On the other hand, in support of the opposition filed by the petitioner corporation, affidavits of Mr. Jamie Phiroz Birdi, the representative in India of the petitioner corporation, Mr. Richard G.Grant, Vice-President and a Principal Officer of the petitioner corporation and Mr. Stacey H. Gifford, Vice-President and Secretary of the petitioner corporation were filed. Besides these affidavits, four affidavits of customers were also filed. A further affidavit was also filed by Mr. Jamie Phiroz Birdi.
(6) As the parties concerned and the issues involved in all these application and oppositions were the same, all of them were consolidated and heard together by the Joint Registrar of Trade Marks. At the hearing, evidence was also given by Rustom Merwan Rustom on behalf of the petitioner, corporations and by Mr. F.W. Audsley on behalf of the respondent company. After considering the affidavits and the evidence as aforesaid and also several documents which were exhibited in the case, the Joint Registrar of Trade Marks dismissed the petitioner corporations oppositions are directed the respondent company's applications to proceed subject to certain limitations specified in his order dated 18th March, 1960. It is against this order that the petitioner corporation has filed the present petition by way of appeal to this Court. Before setting out contentions raised on behalf of the petitioner corporation at the hearing of this petition, it is necessary to relate briefly the circumstances which led to the present proceedings.
(7) It appears that some time in 1852 the petitioner corporation's predecessors-in-title adopted the word 'Monarch' as their trade mark in respect of canned, bottled and packaged food products and marketed their products under that trade mark ever since that date continuously and extensively. It further appears that the trade mark 'Monarch' has been registered in the name of the petitioner corporation and its associates in about 20 countries of the world including the United States of America, Great Britain and Canada in respect of, inter alia, canned, bottled and packaged food products. The petitioner corporation contended that the trade mark 'Monarch' was thus exclusively associated by the trade and the public world over with the goods emanating from itself. Besides, it was the case of the petitioner corporation that its food products under that trade mark were being very widely and extensively advertised throughout the world through American Magazines such as 'Life, Saturday Evening Post', 'Country Gentleman' and others which were having a large circulation in this country.
(8) According to the petitioner corporation, ..... food products bearing the trade mark 'Monarch' were for the first time imported into this country in or about 1935. Thereafter they could not be imported during the second world war, but, again, sometime in 1947 imports were resumed until import restrictions were imposed in or about 1950. According to the petitioner corporation, such imports into this country as were permissible under the import regulations for the time being in force were continued and that between April 1955, and January, 1957 the imports of its products into this country under the trade mark 'Monarch' were of the retail value of over Rs. 1,50,000/-.
(9) On 23rd January, 1957, the respondents company made the aforesaid three applications for the registration of the mark consisting of the word 'Monarch' (per se) in Classes 29, 30, and 32 respectively. In these applications, the respondent company had clearly stated that it had started using the trade mark 'Monarch' in respect of its food products some time in the year 1951 and its claim for registration of the mark 'Monarch' was sought to be sustained by the allegation that the mark had attained a distinctive character in reference to its products on account of large sales thereof between the years 1952 and date of those applications. As sated above, the Joint Registrar of Trade Marks dismissed the oppositions filed by the petitioner corporation to the application made by the respondent company and directed registration of the mark 'Monarch' on each of those applications subject to certain limitations.
(10) In support of this petition, Mr. Shavaksha, the learned counsel for the petitioner corporation, contended that the petitioner corporation itself was the proprietor of the mark 'Monarch' even so far as this country was concerned, because the petitioner corporation was the first to import and sell its products with that mark in this country long prior to the respondent company using that mark in respect of its similar products and that, therefore, under Section 18 of the Trade and Merchandise Marks Act, 1958, the Registrar should have, in exercise of his discretion, refused to order registration of that mark in favour of, and in the name of, the respondent company. It is true that this contention was not raised before the Joint Registrar of Trade Marks. That the respondent company was not the proprietor of the mark 'Monarch' was urged by the petitioner corporation before the Joint Registrar of trade Marks, not because the petitioner corporation had already been the proprietor of that mark in this country by reason of imports of its products long prior to 1951, but in view of the fact that the name of Messrs. Kipre and Co. Private Limited appeared on the labels affixed on the products marketed by the respondent company suggesting that Messrs. Kipre and Co. Private Limited. were the proprietors of the mark and not the respondent company. This contention was also raised by Mr. Shavaksha before me and I will deal with it as well in course of my judgment, but so far as the first contention raised by Mr. Shavaksha is concerned, although it was not taken before the Joint Registrar of Trade Marks, that such a contention could be raised by the petitioner corporation for the first time in appeal before me under the provisions of the Trade and Merchandise Marks Act, 1958. Accordingly, I allowed Mr.Shavaksha to urge that contention before me.
(11) In support of this contention, Mr. Shavaksha urged that on the affidavits filed on behalf of the petitioner corporation and the evidence led on its behalf, it was clear that the petitioner corporation had imported its products with the mark 'Monarch' affixed to them into this country for the first time, in 1935 thereafter, between the years 1947 and 1950 and then from 1955 onwards upto the date of the applications filed by the respondent company and even thereafter. In this connection, he invited my attention to the affidavit of Mr. Richard Grant which states in paragraph 7 as follows : -
'The food products of the opponents (petitioner corporation) bearing the trade mark 'Monarach' were imported into India for the first time in 1935', to the affidavit of Rustom Merwan Rustom, which states in paragraph 3 as follows : -
'To my personal knowledge, the foodstuffs bearing the trade mark 'Monarch' have been imported into India and marketed into India since at lest 1935. I have always associated the trade mark 'Monarch' in respect of foodstuffs exclusively with the goods of opponents (petitioner corporation) or their predecessor's manufacture and these goods have acquired a unique reputation in India for their superior quality', and to the affidavit of Jehangir Boman Irani who had started off as an assistant with Shah and Co. in 1935 which in paragraph 2 thereof states as follows:-
'I have now been in the Provision Trade for over twenty years and I can say that I have known the 'Monarch' brand of Food products of American Manufacture from the very beginning. This brand of American food products is of the highest quality and I buy them for my store without any hesitation'.
For the purpose of showing that the petitioner corporation's food products were imported into this country between the years 1947-50, Mr. Shavaksha once again invited my attention to the affidavit of Rustom who has been the manager of Messrs. Shah and Co., ever since 1912, which in paragraph 4 thereof states as follows :- 'Imports of goods of the opponents (petitioner corporation) were made before and after the second world war. Imports after the second world war were resumed some time in 1947 until about 1950 when restriction were reimposed. Although imports virtually stopped for some years after 1950, the goods of the opponents (petitioner corporation) bearing the trade mark 'Monarch' which were already imported between 1947 and 1950 continued to be in the market till long thereafter. It was possibly for these goods to remain in the market so long, as the quality of these goods remain unaffected for a number of years.'
Mr. Shavaksha also invited my attention to the evidence of this Rustom in course of which the witness produced an invoice book in which details of the original invoices were entered and showed entries under the date 1st July 1947 giving the particulars of the invoice relating to foodstuffs bearing the mark 'Monarch'. The witness also produced his bank pass book in which under date 28th July 1947 an amount of Rs. 4328/- being the rupee equivalent of 1895 dollars which was the value of the aforesaid goods as well as some other goods, was shown to have been paid, Mr. S.B. Shah, the learned counsel for the respondent company, however, pointed out that the food products shown in those entries were consigned, not by the petitioner corporation or any of its predecessors-in-title named in the affidavit of Mr.Stacey H. Gifford, but by the California Produce Company which did not seem to have had any relation either with the petitioner corporation or with any of its predecessor-in-title. Accordingly, he submitted that the evidence of the alleged import of food-stuffs bearing the mark 'Monarch' in the year 1947 as deposed to by Rustom Merwan could not be of any assistance to the petitioner corporation for showing that any of its food products bearing the mark 'Monarch' was imported into this country in the year 1947. It appears, however, that no question in this behalf was put to Rustom Merwan Rustom while he was giving evidence before the Joint Registrar of Trade Marks. For all one knows, if an explanation was asked for from that witness in this behalf he might probably have said that California Produce Company which consigned those food-stuffs of Messrs. Shah and Co. in 1947 have purchased those products from the petitioner corporation or from any of its predecessors-in-title at the instance of shah and Co., and consigned them to Shah and Co., along with some other goods. In the absence of any such question being put to the witness and in the absence of any evidence to show that any other company in America was using the mark 'Monarch' on any such food products as were being manufactured and dealt in by the petitioner corporation and its predecessors-in-title, it may be reasonable to hold that the food products bearing the mark 'Monarch' which were received by Shah and Co. in 1947 were the products having their origin either with the petitioner corporation or with any of its predecessors-in-title.
(12) Mr. Shavaksha then referred to the affidavit of K.S. Cambatta, the Managing Director of Messrs. Shiavax C. Cambatta and Co. Private Ltd., which in paragraphs 3 and 4 thereof states as follows :-
'3. My firm were agents of the opponents(petitioner corporation) in respect of their foods products including those sold under the trade mark 'Monarch' during the years 1947 to 1955.
4. During 1949 our said firm had imported food products bearing the trade mark 'Monarch' of the opponents (petitioner corporation). Hereto annexed and marked Ex.A is a photo copy of an invoice dated 30-7-1949 and Ex. B the original bill of lading in respect of certain consignments of 'Monarch' food-stuff's imported through my firm into India.'
The invoice which was annexed to the affidavit shows that the goods mentioned therein bearing the mark 'Monarch' were sold by Reid Murdoch of Chicago to Amersia Associates, Inc. of California as agents for Messrs. S.C.Cambatta and Co. The value of the goods shown in the invoice is 479 dollars 50 cents exclusive of costs of wood boxes and straping, ocean freight and other charges. The Bill of Lading is also annexed to the affidavit and it shows Messrs. Reid Murdoch as the shippers and 'order of Reid Murdoch' as the consignee. It also shows that Arrival Notice was to be addressed to Amersia Assoc. C/o S.C.Cambatta and Co. Cambatta Bldg., 42, Queen's Road, Fort Bombay India. In the column headed 'leading marks and numbers' it is stated as follows : -
' Amersia Assoc. to be held in bond c/o S.C.Cambata and Co. Bombay, India, Made in the U.S.A.'
Now, these were apparently the marks on the packages containing the goods and on the basis of this description of the marks and particulars, Mr. Shah. the learned counsel for the respondent company contended that the goods were to be held in bond, that accordingly, it could not be presumed that the gods were actually received by S.C. Cambatta and Co. and that there was no evidence to show that the goods covered by the invoice were at all put on the market for sale in this country. In as much as, however, it seems to me clear that the consignees were Messrs. Reid Murdoch and Amersia Associates Inc. were only the agents for M/s. S.C. Cambatta and Co. the goods covered by the bill of lading were undoubtedly to be held in bona for and on account of the consignee until they were paid for and taken delivery of by Messrs. S.C. Cambatta and Co. Mr. Cambatta in paragraph 4 of his affidavit has clearly stated, that during the year 1949 his firm had imported food products bearing the trade mark 'Monarch' of the petitioner corporation and it was in connection with that statement that he annexed to his affidavit a photo copy of the invoice and also the original bill of lading. This statement accordingly does show that the goods covered by the invoice and the bill of lading did not remain on the ship, but that they were in fact imported and taken delivery of by Messrs. S.C. Cambatta and Co. Further, it may be noted that among goods that were imported by Messrs. S.C. Cambatta and Co. under that invoice were 20 wood boxes each containing 'Monarch' 24/1402 Catsup' and the number of units in each of the boxes was 40. This product consists of a tomato preparation and it may be observed that as many as 800 bottles of this preparation were imported by Messrs. S.C. Cambatta and Co. on this one occasion along with other 'Monarch' products. This large number of bottles cannot be said to have been imported by Messrs. S.C. Cambatta and Co. private Ltd. which is a private limited company only for the purpose of personal consumption by the directors and the members of the company. It is undoubtedly true that Mr. Cambatta has not in his affidavit said in terms that the goods imported by them under that invoice were actually put for sale in the market or that they had sold them to the members of the public. Nevertheless, looking to the fact that this company was dealing in food products at the relevant time and also doing business as caterers, it is reasonable to hold that the several types of food products imported by that company were intended for sale to the members of the public and were in fact sold to them in due course of business.
(13) Mr. Shavaksha then invited my attention to Mr. Birdi's affidavit for the purpose of showing a large amount of imports of the petitioner corporation's products in this country during the short period between 11th April, 1955 and 1st January, 1957 amounting to ...13,283,09 as against the respondent company's sales of its products amounting to Rs. 1,97,765/- between the period 30-6-52 and 31-12-56 and contended that on a proper analysis of the sales by the petitioner corporation and those by the respondent company and making allowance for the fact as admitted by Mr. Audsley that the sales by the respondent company also included the sales of products for and on behalf of Kipre and Co. Private Ltd., the petitioner corporation's reputation in the Indian market in respect of the goods manufactured by it and marketed under the mark 'Monarch' was far greater than that in respect of was on the basis of this affidavit that Mr. Shavaksha contended that apart from the petitioner corporation having been the first to introduce the mark 'Monarch' into this country in respect of food products, the mark had acquired sufficient distinctiveness in respect to its food products so as to disentitle the respondent company to apply for registration of that mark in respect of the food products sold by it.
(14) The first question which I have now to consider is as to whether the petitioner corporation can be said to be the proprietor of the mark 'Monarch' in reference to its food products so far as this country is concerned in view of the few imports of its products which have been proved to have been made on the evidence in this case prior to 1951 when according to the respondent company the mark 'Monarch' was for the first time adopted by it in reference to the food products sold by it. Mr. Shavaksha contended that in order to acquire the right to a mark as a trade mark it was not necessary that the mark should have been used for any particular length of time or to any particular extent. According to him, it was enough in order to acquire such a right that the mark was used by the petitioner corporation in this country on its products for the purpose of indicating that they were its products and of nobody else. On the other hand, both Mr. S.B. Shah, the learned counsel for the respondent company, and Mr. Sastri, the learned counsel for the Registrar of Trade Marks, urged that property in a trade mark could be acquired only by such user thereof as would create a reputation among the members of the public in respect of the products to which it has been affixed. In other words, they urged that a single or sporadic import of the petitioner corporation's products into this country bearing the mark 'Monarch' was not enough to enable the petitioner corporation to acquire any property in the mark 'Monarch' so far as this country was concerned. It was also urged by these counsel, that in law there was nothing like property in a trade mark, that a trade mark was only a part and parcel of the goodwill of a particular business and that, therefore, there could only be property in the good-will which could only be acquired by large sales of one's products extending over a period of time.
(15) Before dealing with these contentions, however, it may be convenient to notice some of the provisions of the Trade and Merchandise Marks Act, 1958 bearing on the questions that I have to decide. The expressions 'mark' is defined in clause (j) of Section 2 of the Act as including a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof. The expression 'trade mark' is defined in clause (v) of section 2 and it means: -
(I) in relation to the other provisions of the Act, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark registered as such under the provisions of Chapter VIII.
Then section 9 prescribes the kinds of trade marks which may be registered in Parts A and B of the register of trade marks which is provided for in section 6 of the Act. This section provides as follows:-
'(I) A trade mark shall not be registered in Part A of the register unless it contains or consists of at least one of the following essential particulars, namely : - (a) the name of a company, individual or firm represented in a special or particular manner;
(b) the signature of the applicant for registration or some predecessor in his business;
(c) one or more invented words;
(d) one or more words having no direct reference to the character or quality of goods and not being, according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India;
(e) an other distinctive mark.
2) A name, signature or word, other than such as fall within the descriptions in clauses (a), (b), (c) and (d) of sub-section (I) shall not be registrable in Part A of the register except upon evidence of its distinctiveness.
3) For the purposes of this Act, the expression 'distinctive' in relation to the goods in respect of which a trade mark is proposed to be registered, means adapted to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists either 'generally, or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration'.
Sub-section (5) of this section provides as follows :-
'In determining whether a trade mark is distinctive or is capable of distinguishing as aforesaid the tribunal may have regard to the extent to which
(a) a trade mark is inherently distinctive or is inherently capable of distinguishing as aforesaid; and
(b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish or is in fact capable of distinguishing as aforesaid.'
So far as the provisions of this section are concerned, it was conceded at the Bar that the word 'Monarch' involved in this case fell under clause (d) of sub-section (I) and that it was 'distinctive' per se. Accordingly, no evidence of its distinctiveness would be necessary as contemplated by sub-section (2) of that section for the purpose of its registration as a trade mark. The next important provision to note is the one contained in section II of the Act. That section sets out the marks in respect of which registration is prohibited. It says:-
'A mark -
(a) the use of which would be likely to deceive or cause confusion; or
(b) the use of which would be contrary to any law for the time being in force; or
(c) which comprises or contains scandalous or obscene matter; or
(d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or
(e) which would otherwise be disentitled to protection in a court;
shall not be registered as trade mark'.
It may be mentioned here that one of the contentions raised by Mr. Shavaksha, as stated in the earlier part of this judgment, falls under clause(a) of this section. There is another contention which Mr. Shavaksha has raised under clause(e) of this section which I will set out and deal with hereafter. The next important provision of the Act to be noted in connection with this case is contained in section 18 of the Act which deals with registration of trade marks. That section runs as follows:
'(I) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark either in Part A or in Part B of the register.'
It is not necessary for the purpose of this case to set out the other provisions of this section. Provisions of section 27 of the Act, however, which are equally important, must also, be noted. It says :
'(I) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.'
(16) Again, before dealing with the contentions of the parties reference may be made to William Bailey(Birmingham ) Ltd. v. A.C. Gilbert Co. (1935) 52 RPC 136 which was cited by Mr. Shah for the purpose of showing that powers can be exercised by the Court in appeal under the Trade Marks Act. The passage from the judgment of Farewell .....on which Mr. Shah relied, is as follows (p. 148):
'There is no doubt that an appeal does lie to this Court from the decision of the Registrar. That is provided for by section 8 of the Trade Marks Act, 1919. It is also perfectly clear on the authorities that the decision of the Registrar or the Assistant Registrar is one which should not be disturbed at all lightly. Prima facie his decision should stand and, in my view, though this Court might take a different view from that which was taken by the Registrar as to the similarity or dissimilarity of the two marks or the two words, or even if this Court were to take a different view as to the effect of the evidence as a whole from that taken by the Registrar, the Court would hesitate long before reversing the decision of the Registrar on any such grounds as those. In my judgment, before this Court interferes with the decision of the Registrar in a case of this kind it ought to be satisfied that the Registrar in arriving at his decision has acted upon some wrong principle, e.g., has not approached the problem in the right way, or has taken into consideration matters which he ought not to have taken into consideration or has omitted to take into consideration matters which were proper for consideration. Unless there are some such grounds as those for interfering with the decisions of the Registrar, in my judgment that decision ought not to be disturbed; but, having read carefully the decision of the Assistant Registrar in this case, I am satisfied that the case is one in which I ought to interfere.'
I respectfully agree with these observations of the learned Judge and it will be my care and anxiety to see that I do not interfere with the decision of the Joint Registrar of Trade Marks in this case except upon any such grounds as are mentioned by the learned Judge in the passage quoted above.
(17) Now, coming to the contention proper raised by the counsel on either side, it may be observed, to start with, that trade mark cases used to arise quite often in the United Kingdom even before the Act of 1875 was passed. Those cases generally related to infringement of trade marks and passing off. In the absence of any statutory law prior to 1875, the principles governing infringement cases were laid down by the Courts of Chancery and it was on the basis of those principles that the statutes relating to trade marks were enacted by the British Parliament. In Bow v. Hart, (1905) I K.B. 592, Lord Justice Romer, while dealing with the question as to whether any new right of property was conferred by statute on the owner of a trade mark, asked (at P.593) 'Where does the Patents Designs and Trade Marks Act, 1883, confer any new right of property on the owner of a trade mark' and observed (at page 594)
'The Act is a statutory recognition of the law, which had been previously laid down by the Courts of Chancery, but it provides a better method of procedure.'
(18) Twenty five years later, Clauson J. in Champagne Heidsieck Et. Cie. Monopole Society Anonvme v. Buxton (1930) 47 R.P.C. 28 in reference to an action for infringement of trade marks and passing off quoted the above observation of Lord justice Romer and declined to accept a novel construction sought to be put by the counsel for the plaintiff on the language used in section 39 of the Act of 1995 which had in effect figured on the Statute Book for fifty four years ever since the Act of 1875 to the effect that the right of a proprietor of a trade mark extended from a right of a proprietor of a trade mark extended from a right to prevent deception as to the origin of the goods into a right to control dealing with the goods. Section 4 of the Act of 1938 corresponds to section 39 to the extent of the right conferred upon the proprietor of a registered trade mark. It may be noted that section 21 of our Act of 1940 reproduced section 4 of the English Act of 1938 and section 28 of our Act of 1958 replaces section 21 of the Act of 1940 almost in the same terms. The provisions contained in these sections are to the effect that the registration of a person in the Register as the proprietor of a trade mark in respect of any goods shall give to that person the exclusive use of the trade mark in relation to these goods subject, of course, to the provisions of certain other sections of the Act. It was in connection with the provision that in the case decided by Clauson J. it was contended that a wider construction should be put upon the language used in the section as set out by the learned Judge in his Judgment in that case, and it was pointed out by the learned Judge by quoting the observations of Lord Justice Romer that the Act did not confer any greater rights upon the proprietor of a registered trade mark than what had already been conferred upon the proprietor of a trade mark by the Courts of Chancery.
(19) The question then, that arises is as to when a person could be said to be the proprietor of a trade mark so as to be entitled to the rights which were in the first instance conferred upon him by the courts of Chancery and then by the Statute. While considering this question, I do not think that, but for the contention urged by Mr. Shah and Mr. Shastri, it should be really necessary to consider the question as to whether there can or there cannot be a property in a trade mark. In Collins and Co. vs. Brown, (1857) 3 K. and J. 423 (426), V.C., Page-Wood observed:
'It is now settled law that there is no property whatever in a trade mark, but that a person may acquire a right of using a particular mark for articles which he has manufactured to the exclusion of everybody else.'
In Hall v. Barrows (1862) 32 LJ Ch 548, however, Sir John Romilly expressed his opinion on this point as follows:
'It is clear from a variety of decided cases, that a manufacturer, who has originally stamped his goods with a particular brand, has a property in his mark at law, and can sustain an action for damages for the use of it by another. It is also clear that Courts of Equity will restrain the use of it by another person.'
The opinion thus expressed by Sir John Romilly was consistently accepted in later cases, the main reason for such acceptance being that Courts of Equity would grant an injunction only in cases of infringement of a right to property and that, therefore, it was necessary for such relief in case of an infringement of a trade-mark was regarded as a right of property in the trade mark.
(20) Then dealing with the question as to how such a property in a trade mark could be acquired, Sir John Romily observed in the same case as follows :
'It has sometimes been supposed, that a manufacturer can only acquire such a property in a trade mark, as will enable him to maintain an injunction against the piracy of it by other, by means to a long-continued use of it, or at least, such a use of it as is sufficient to give it a reputation in the market where such goods are sold. But I entertain great doubt as to the correctness of this view of the case. The interference of a Court of Equity cannot, it appears to me, depend on the length of time the manufacturer has used the mark. If the brand or mark be an old one formerly used, but since discontinued, the former proprietor of the mark undoubtedly cannot retain such property in it, or prevent others from using it. But provided it has been originally adopted by a manufacturer, and has been continually, and still is used by him, to denote his own goods when brought into the market and offered for sale then, I apprehend, although the mark may not have been adopted a week, and may not have acquired any reputation in the market, his neighbours cannot use that mark; were it otherwise, and were the question to depend entirely on the time the mark had been used, or the reputation it had acquired, a very difficult, if not insoluble enquiry would have to be opened in every case, viz., whether the mark had acquired in the market a distinctive character denoting the goods of the person who first used it. The adoption of it by another is proof, that he considers it likely to become beneficial. If the manufacturer, who first used it, were not protected from the earliest moment, it is obvious that malicious and pertinacious rivals might prevent him from ever acquiring any distinctive mark or brand to denote his goods in the market, by adopting his mark, however varied, immediately after its adoption or change by the person who originally used it. This evil would not be avoided by 'putting his name in full, for, if the name of the manufacturer were a common one, it would be difficult for him to point out to the public what goods were or were not manufactured by him'.
Citing the above quotation from the judgment of Sir John Romily, Levinge, J. of the High Court of Fort William in Bengal in an action for infringement of a trade mark in Ewing and Co. v. Grant, Smith and Co. (1864) 2 H R 185, observed (at page 189) as follows :
'I consider the law would recognize no property in the fanciful creation of a mark or ticket intended to be used as a trade mark, and not followed up a user; but that, after the use of an original mark on the manufacturer's goods in a market, no matter for how short a time, a property is acquired in the trade mark sufficient to disentitle any person to pirate it with impunity and this property would continue until it has been proved by evidence that the proprietor has abandoned it. Once having established by evidence a distinct and sole use of the mark, no one else has a right to put the same mark on his goods, and thus to represent them to have been manufactured by the person who originally used that petitioner mark.'
In this view of the matter, the learned Judge on the facts of that case granted a perpetual injunction against the defendants to restrain the use of the plaintiff's trade mark.
(21) In Mc.Andrew v. Bassett (1864) 4 De G.J. and Sm. 380 (384) in answer to the argument that property in a trade mark must be regarded as the offspring of such an antecedent user as would be sufficient to have acquired for the article stamped with the trade mark general notoriety and reputation in the market, and that the property could not be held to exist until the fact of that general user, that notoriety, and that public reputation had been proved to exist, Westbury, L.C. observed as follows :
'I am not in this case determining when for the first time property may be said to be established in a trade mark. An element of the right of that property may be represented as being the fact of the article being in the market as a vendible article with that stamp or trade mark at that time the defendants imitate it. The essential ingredients for constituting an infringement of that right probably would be found to be no other than these; First, that the mark has been applied by the plaintiffs properly (that is to say) that they have not copied any other person's mark and that the mark does not involve any false representation; secondly, that the article so marked is actually a vendible article in the market; and thirdly, that the defendants knowing that to be so have imitated the mark for the purpose of passing in the market other articles of a similar description.' The opinion thus expressed by the Lord Chancellor in that case was approved and applied by the Court of Appeal in Maxwell v. Hogg (1867) 2 Ch A 307. In that case, the Court apparently did not treat the user of the mark on one issue of the Magazine only as a bar to the counterclaim by the defendant for an injunction, but decided against him on other grounds.
(22) The question as to what amount of user of a mark is necessary to invest the proprietor thereof with the right to use it to the exclusion of others was considered in Nicholson and Sons Ltd. v Bass, Ratcliff and Gretton Ltd. (1931) 48 RPC 227 by the Court of Appeal in England. In that case, an application for registration of a triangle mark used prior to 13th August, 1875 was made and the question for consideration of the Court related to the construction of the phrase 'a trade mark in use' before 1875. On the assumption that Nicholson and Sons Ltd., had failed to establish that the triangle mark had become known and recognized by the public concerned as a whole as being their trade mark. Lord Justice Lawrence after reviewing several authorities observed (at page 251 ) as follows :
'Be that as it may, however, I am clearly of opinion that no evidence of recognition by the public is required in order to prove that a distinctive mark was in use as a trade mark before 1875. What is required for that purpose is proof that the mark before that date was in fact used as a trade mark, that is, was 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. In other words, the character and not the length or extend words., the character and no the length or extent of user is the only thing that has to be established. ever since Lord Cottenham in Millington v. Fox (1838) 3 M & Cr. 338, decided that fraud was not an essential ingredient in order to obtain an injunction to restrain infringement of a trade mark, it was recognised by Courts of Equity that there was a right of property in a trade mark, and that such right did not depend on length of user or reputation in the market. Before the Act of 1875 it had been definitely established that the only essential quality for constituting property in a trade mark (unobjectionable in itself) was that it should have been used by the proprietor in his business upon or in connection with some vendible article.' These observations of Lord Justice Lawrence as well as similar observations of Lord Justice Romen in the case cited above were approved by the House of Lords in Bass, Ratcliff and Gretton, Ltd. v. Nicholson and Sons, Ltd.. (1932) 49 RPC 88, Lord Russell of Killowen in this connection observed (at Page 107) as follows : 'Nor is it in my opinion necessary in this connection to establish that the mark has been recognised by the public as a mark distinctive of the user's goods. The reasoning of Lord Justice Lawrence and Lord Justice Romer satisfies me upon this point.'
Thus, it will be seen that in case of a distinctive mark within the meaning of the Act, right to be 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 1961, and if there is no evidence to show that this mark was abandoned by it, it would be entitled under Section 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 trade for the purpose of registering that mark in his name.
(23) Mr. Shah, the learned counsel for the respondent company, however, urged that the view, taken by the Courts in England so far, that there could be a property in a trade mark had undergone a change, in the sense that there could not be any property in the mark, so that a person proposing to use it or using it can ever claim to be the proprietor thereof. According to him, a trade mark is a part and parcel of the goodwill of a trader which is generally built upon the reputation which the trade mark acquires by long user thereof in connection with or on the goods to which it is attached, and a trader can have a property in this goodwill, but not in any trade mark forming part thereof. In the alternative, it was contended by Mr. Shah that property in a trade-mark could be acquired only by such long user thereof as would associate it in the minds of the public with the goods of the person using it. In support of these contentions, Mr. Shah referred me to (1864) 4 De G.J.& Sm. 380 , to which I have already referred. The observations of Lord Chancellor Westbury in that case on which Mr. Shah relied and which I have quoted above, do not in my opinion, support either of the contentions raised by Mr. Shah, because, it has been clearly observed by the Lord Chancellor that he was not in that case driven to the necessity of determining when for the first time property might be said to be established in a trade mark. The Lord Chancellor described the essential ingredients for constituting an infringement of the right to the property in a trade mark and it was upon the basis of those ingredients present in that case that the appeal filed against the judgment of the learned Vice Chancellor was dismissed with costs.
(24) Mr. Shah next relied upon certain observations of Lord Parker in A.G. Spalding and Bros, v. A.W. Gamage Ltd. (1915) 32 RPC 273. In that case, the plaintiffs who were manufacturers of footballs and other athletic goods sued the defendants for passing off certain of their old and discarded stock of footballs as and for their new and improved balls and it was held by the House of Lords that the plaintiffs had established a case of misrepresentation by the defendants and one calculated to produce damage and that they were entitled to an injunction and to an inquiry as to damages at their own risk. While dealing with the question as to the basis of a passing off action. Lord Parker observed (at page 284) as follows :
'My Lords, the basis of a passing-off action being a false representation by the defendant, it must be proved in each case as a fact that the false representation was made. It may, of course, have been made in express words, but cases of express misrepresentation of this sort are rare. The more common case is, where the representation is implied in the use or imitation of a mark, trade name, or get-up with which the goods of another are associated in the minds of the public, or of a particular class of the public. In such cases the point to be decided is whether, having regard to all the circumstances of the case, the use by the defendant in connection with the goods of the plaintiff, or the goods of the plaintiff of a particular class or quality, or, as it is sometimes put, whether the defendant's use of such mark, name, or get-up is calculated to deceive. It would, however, be impossible to enumerate or classify all the possible ways in which a man may make the false representation relied on.'
Now, the observations on which Mr. Shah relied appear on the same page of the Report and they are as follows:
'There appears to be considerable diversity of opinion as to the nature of the right, the invasion of which is the subject of what are known as passing-off actions. The more general opinion appears to be that the right is a right of property. This view naturally demands an answer to the question-property in what? Some authorities say property in the mark, name or get-up improperly used by the defendant. Others say, property in the business or goodwill likely to be injured by the misrepresentation. Lord Herchell in Reddaway v. Banham 1896 AC 199 expressly dissents from the former view; and if the right invaded is a right of property at all, there are, I think, strong reasons for preferring the latter view. In the first place, cases of misrepresentation by the use of a mark, name, or get-up do not exhaust all possible cases of misrepresentation. If A says falsely, 'These goods I am selling are B's goods.' there is no mark, name or get-up infringed unless it be B's name, and if he falsely says, 'These are B's goods of a particular quality,' where the goods are in fact B's goods, there is no name that is infringed at all. Further, it is extremely difficult to see how a man can be said to have property in descriptive words such as 'Camel Hair' in the case of (1896) AC 199 where every trader is entitled to use the words, provided only he uses them in such a way as not to be calculated to deceive even in the case of what are sometimes referred to as Common Law Trade Marks the property, if any, of the so called owner is in its nature transitory, and only exists so long as the mark is distinctive of his goods in the eyes of public or a class of the public. Indeed, the necessity of proving this distinctiveness in each case as a step in the proof of the false representation relied on was one of the evils sought, to be remedied by the Trade Marks Act, 1875, which conferred a real right of property on the owner of a registered mark, I had to consider the matter in the case of Burberrys v. Cording and Co. Ltd., (1909) 26 RPC 693 and I came to the same conclusion.'
It will be seen from these observations that they were directed only to the consideration of the question as to the nature of the right, the invasion of which was the subject of what were known as passing-off actions and it was in that connection that the diversity of opinion which prevailed on that question was referred to and discussed. It is perfectly true that a passing-off actions is not always based on a misrepresentation by the use of a mark, name or get-up. There are many other ways in which a trader may expose himself to the risk of a passing-off action by misrepresenting his own goods as the goods of somebody else. For instance, as pointed out by Lord Parker, in the aforesaid observations, where A says falsely 'These goods I am selling are B's goods', there is no mark, name or get-up infringed, yet it is a case of misrepresentation which would form the basis of a passing-off action. It was in this connection, it may be noted, that Lord Parker observed that it would not be proper to say that the invasion of the right to property would be confined to the right of property in a mark, name or get-up, but that it would be more appropriate to say that the invasion was of the right to property in the business or goodwill which was likely to be injured by the misrepresentation. Lord Parker,. however, by these observations does not seem to have expressed any view that there cannot be any property in a trade mark at all, so that an infringement of such trade mark could not form any basis of a passing-off action. As a matter of fact, in the 7th edition of Hanbury's Modern Equity the true position in this connection is stated at page 562 as follows :
'Equity regarded the right to the use of a certain name or designation as a right of property, and would grant an injunction for its protection quite irrespectively of the state of mind of the defendant. Common law hesitated as to the true ground of action for passing-off, and adopted the view that fraud was an essential ingredient of the tort. Eventually the equity view prevailed, and was, in the case of trade marks, endorsed by the legislature, which has, by a series of Acts,. culminating in the Trade Marks Act, 1938, established the principle of registration.'
In support of the statement 'Eventually the equity view prevailed,' the learned Author, cites the observation of Lord Cairns in Singer Machine Manufacturers v. Wilson (1877) 3 AC 376 and those of Lord Parker in (1915) 84 LJ Ch 449 equivalent to (1915) 32 RPC 273, quoted above. Accordingly, in my opinion, the aforesaid observations of Lord Parker do not lend any support to the contention of Mr. Shah that the view held by the Courts in England, that there could be a property in a trade mark the infringement whereof gave rise to an action for injunction, had undergone a change, nor do they support his contention that right to the property in a trade mark could not be acquired independently of the goodwill of the business.
(25) Mr. Shah then invited my attention to Bood and Son v. Thom and Cameron Ltd. (1907) 24 RPC 697. In that case, the plaintiffs had filed an action for infringement of their trade mark consisting of a device representing 'Cat and Barrel' for their gin. The defendants contended that the device was common in the trade long before its registration by the plaintiffs in 1879 and that the mark should therefore be expunged from the Register. It was held by the First Division of the Court of Session that if a trade mark had been registered and had remained many years on the register, the onus was on the person alleging common user to prove that it should not have been put on the register, which onus was not discharged by proving that there had been occasional use of the mark by others prior to its registration, unless it was proved that there had been sufficient trade under the mark to associate the goods of others therewith; and that, regarding the evidence as a jury would, such trade had not been proved in that case. In the result, the infringement of the plaintiff's mark was held proved.
(26) While explaining what was meant by 'common property' in respect of the trade mark in question, Lord President observed (at page 716) as follows:
'The case of In re Lloyd and Sons' Trade Mark; Lloyd v. Bottomley (1884) 27 Ch D 646 was a case where a mark was removed after five years at the instance of a person who was being attacked, and the ground for removal of the mark was that it ought never to have been on the Register because it was common property, and that no one could appropriate it. It may be as well to digress and explain what common property means. When this Registrar was first introduced, it was obvious that among people, who would apply to be registered, would be not only those who, for the first time, had invented what was apparently a new Trade Mark, and therefore proposed to get the priority of others by its registration, but also persons who sought to put on the Register what they had already been using. There were, of course, many instances where more than one person had been using the same Trade Mark, and accordingly that question very early came up. The Act evidently contemplated something of the sort, for in Section 71, dealing with the application for registration, it expresses itself thus: 'Where each of several persons claims to be registered as proprietor of the same Trade Mark the Comptroller may refuse to register any of them until their rights have been determined according to law, and the Comptroller may himself submit or require the claimants to submit their rights to the Court.' Now, the meaning of that Sections is, I think, clear in itself. Of course if one person wanted to register a Trade Mark who had been using it, and another, person came and said 'I want to register it as well, but I have not been using it' that would be a clear case- it would show that there was a right in the one and not in the other. But in the case which I have mentioned, where more than one had in the past been using a Trade Mark, there were rules settled by decisions to this effect, that up to the number of three there would be registration of persons who had bona fide used the same mark, but if more than three applied and said they had used the mark, then the mark was really such common property in the trade that it was not registrable at all. The import of all this is, I think, that the true meaning of a Trade Mark is the association of the mark with one person's goods. If you show that large number of people have all been using the same mark, then it becomes a practical impossibility to say that the mark was associated with any one person's goods. And accordingly, I think the matter is well settled that the registration of a mark, an old mark, may be given to persons not exceeding the number of three but that if more than three are shown to have used it, it is common property and cannot be registered at all.'
Having thus explained what was meant by the expression 'common property' in a trade mark, the Lord President proceeded to consider the question as to what was meant by property in a mark in the state of facts antecedent to the registration of the mark in that case and observed (at page 720) as follows:
'Now what we find here is Board and Son coming forward and entering the 'Cat and Barrel' but nobody also coming forward. The if it were a new mark there could have been no question. But it was not a new mark - it was an old one; and therefore you have to consider the question of whether the mark was common property and in doing so you must consider what you mean by property in a mark in the state of facts antecedent to the registration.
Now, property in a mark does not mean a few isolated sales under that mark, but it means as I take it, that you had sold so much goods under it that the mark had come, in a certain market,. to be associated with your goods. And, it is just because I think the Lord Ordinary has, to my mind, not taken that sufficiently into view that I come on the whole matter to a conclusion different from him. I do not think the evidence led in this case is evidence such as to enable us to affirm as a proposition that the mark was common property and so ought not to have been registered. And I must say this, that though mere lapse of time, as I before said, is not in itself a bar, yet it a mark is allowed to be on the Register all the time that this has been it is not too much to say that the onus is on the other person to say that it never ought to have been these.'
It is upon these observations that Mr. Shah strongly relied for the purpose of showing that the property in a mark could not be acquired merely by a few isolated sales but that it could be acquired only if the goods to which it was attached were sold in such large quantity that in the eye of the public the mark came to be associated with those goods. It may be observed that Mr. Shah did not rely upon these observations for the purpose of supporting his contention that there could never be a property in a trade mark, but to support his other contention that property in a trade mark could only be acquired after long user thereof. I am afraid, the aforesaid observations of the Lord President do not lend any support to the contention so boldly stated by Mr. Shah. It was only in connection with the question as to when a trade mark could be said to be common property so as to enable a person alleging the trade mark to be common property to contend that the mark which was registered should never have been registered, that the Lord President very rightly, with respect, explained what property in such a mark would mean. This is evident from the last part of the aforesaid observations of the Lord President in which he said that if a mark was allowed to be on the Register all the time that the mark in that case had been, it was not too much to say that it never ought to have been there. This onus could only be discharged by the evidence of several traders who had sold the goods bearing the mark in question in considerable quantities so as to acquire reputation in the market that the goods bearing that mark were the goods of the traders using it.
(27) At any rate, it must be remembered that in this case I am not dealing with a passing-off action or an action for infringement of a trade mark which is alleged to be common property. The case put up by the petitioner corporations that it was the first to use the mark 'Monarch' in this country on its food products and that, in as much as the mark 'Monarch' was admittedly a distinctive mark, it had acquired the right to get the mark registered in its name and also the right to oppose the application of any other trader in this country seeking to get that mark registered in his name in respect of the food products manufactured or sold by him. Apparently, in such a case there is no question of infringement of any right of property in a trade mark for which any relief is sought, nor is there any question of passing-off, so that it might be necessary to enter into questions of nicety as regards whether there could or could not be any property in a trade mark. As already stated by me while referring to the observations of Sir John Romily, it is not really necessary for me to decide in this case as to whether there could or could not be any property in a trade mark for the purpose of deciding this case. Even if it is found to be necessary to decide this question as to property in a trade mark, I have already pointed out that the Courts of Equity in England granted relief in cases of infringement of trade marks on the basis of infringements of the right of property in the trade mark. There was no other basis on which those Courts could give any relief to the plaintiffs in such cases and for the purpose of such relief the Courts of Equity did not require the plaintiff to prove that his mark by any length of user was associated in the minds of the public with his goods. All that was necessary for the plaintiff to prove was that he had used that mark in respect of his particular type of goods. That was enough in the eyes of the Courts of Equity to entitle him to a relief by way of an injunction in case of an infringement of his mark by some other trader. I have also pointed out that the statute which came to be enacted in England in 1875 and the subsequent statutes did nothing more than to embody the rights in relation to trade marks which were already laid down by the Courts of Equity. As a matter of fact, the statute enabled a person to have registered a mark not only which he had been using but also a mark which he proposed to use. The latter type of mark would evidently refer to a distinctive mark, a mark which does not directly describe the nature or quality of the goods to which it is attached. In cases of such marks, whereas the Courts of Equity did require some slight user before the proprietor thereof could institute an action for infringement thereof, the statute enabled the registration of such mark without any user at all, because such mark being distinctive per se it was not necessary for the person applying for its registration to show that mark had acquired a reputation in the market, so that it could be associated only with his goods and of nobody else. Even so far as this country is concerned, the Trade Marks Act of 1940 does not seem to have made any change in the legal rights of the owner of a trade mark as established by the Courts of Chancery in England. In In re Century Spinning and . 49 Bom LR 52 : AIR 1947 Bom 445, Chagla, J. (as he then was) observed in this connection (at page 59 of Bom LR : ( at p. 449 of AIR)) as follows :
'The question is whether in India the Trade Marks Act of 1940 has made any change in the legal rights of the owner of a trade mark. To my mind it is clear that even prior to the passing of this Act the owner of a trade mark could maintain an action for the infringement of a trade mark and that action could only be maintained on the assumption that he was the owner of the trade mark and he had a proprietary right in the trade mark. Sub-clause (I) of Section 20 of the Trade Marks Act itself assumes and implies that such a right existed in the owner of a trade mark because it says that the unregistered holder of a trade mark can maintain a suit for the infringement of a trade mark provided that the trade mark was in use before February 25, 1937, and an application for registration had been made and refused.'
As regards the question whether there could be any property in a trade mark, the learned Judge further observed (on the same page) as follows:
'Again, turning to S. 54 of the Specific Relief Act, which deals with cases when a perpetual injunction may be granted the Explanation to that section lays down that for the purpose of that section a trade mark is property. Therefore, if a person invaded or threatened to invade the other's right to, or enjoyment of, property, the Court under Section 54 had the discretion to grant a perpetual injunction, and trade mark was as much property for the purpose of S. 54 as any other kind of property.
I, therefore, agree with the learned Advocate General that all that the Trade Marks Act has done is to facilitate the mode of proof. Instead of compelling the holder of a trade mark in every case to prove his proprietary right before he could ask the Court to grant him an injunction, the Trade Marks Act provides a procedure whereby by registering his trade mark the owner gets certain facilities in the mode of proving his title. For instance, under S.23 of the Trade Marks Act registration is to be prima facie evidence of the validity of the trade mark.'
This was precisely the view which was expressed by Lord Justice Romer in (1995) I KB 592 to which I have already referred in the earlier part of the judgment. To summarise, therefore, a trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. As between two competitors who are each desirous of adopting such a mark, 'it is, to use familiar language, entirely a question of who gets there first.' Gaw Kan Lye v. Saw Kyone Saing AIR 1939 Ran 343 . Registration under the statute does not confer any new right to the mark claimed or any greater right than what already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced and obtained throughout the State and it established the record of facts affecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration.
(28) Going back to the facts of this case, the Mark 'Monarch' is undoubtedly an old one so far as the petitioner corporation is concerned, in as much as it has been using it on its food products for long many years and in several countries of the world. But so far as this country is concerned, it was a new one at the time when it first imported its products with that mark and being a distinctive (Per se) mark, it acquired a right to use it to the exclusion of all others, and became entitled to resist registration thereof by any one else. As a matter of fact, the petitioner corporation could have straightway applied for registration of the mark - without ever using it on its goods in this country under Section 14 of the Act of 1940 corresponding to Section 18 of the Act of 1958 as a mark proposed to be used by it in connection with its products. As it happened, however, the petitioner corporation did not make any application for the registration of the mark 'Monarch' in this country in spite of its having imported the goods as shown by the affidavits and evidence on record between the years 1947 and 1950 and from 1955 to 1957. This, however, does not disentitle the petitioner corporation to claim the proprietorship of the mark 'Monarch' as being the first to have introduced that mark in this country in connection with its food products. For the purpose of claiming such proprietorship, it is not necessary, as already stated, that the mark should have been used for considerable any length of time. As a matter of fact, a single actual use with intent to continue such use eo instanti confers a right to such mark as a trade mark. It is sufficient if the article with the mark upon it has actually become a vendible article in the market with intent on the part of the proprietor to continue its production and sales. It is not necessary that the goods should have acquired a reputation for quality under that mark. Actual use of the mark under such circumstances as showing an intention to adopt and use it as a trade-mark is the test rather than the extent or duration of the use. A mere casual intermittent or experimental use may be insufficient to show an intention to adopt the mark as a trade mark for specific article or goods. Applying those principles to the facts of the case, I am firmly of the view that the petitioner corporation which on the affidavits and evidence is shown to have extensive sales of its food products in many countries of the world under the mark 'Monarch' which is also registered as a trade mark in several of these countries, did import its food products into this country under the mark 'Monarch' for the first time in 1947 as deposed to by Rustom and evidenced by the entries in his invoice book and also in 1949 as stated by Cambatta in his affidavit and evidenced by the invoice and bill of lading produced by him. Admittedly, the respondent company had not used this mark 'Monarch' at any time prior to the dates of these two consignments. Accordingly, I hold that the petitioner corporation was the first to introduce and use the mark 'Monarch' in connection with and on its food products in this country and that, therefore, it was entitled to claim the mark 'Monarch' as proprietor thereof. That these imports were not sporadic or experimental or casual is supported by the fact that after a lapse of about five years, further products were imported into this country bearing the mark 'Monarch' right from April, 1955, atleast to the date of the application made by the respondent company for registration of the mark. These further imports do indicate that at the time when these products were imported in 1947 and 1949 the petitioner corporation did intend to continue the imports of its food products into this country subject, of course, to such restrictions as to imports as the Union Government imposed from time to time. This intention on the part of the petitioner corporation is further indicated by the fact that it has been continuously selling its products in different parts of the world even down to date and, but for the restrictions on imports of foreign food products imposed by the Union Government and the difficulties experienced by traders in getting licences from the Government for importing such products, the food products manufactured and marketed by the petitioner corporation could very well have found their way into this country without any hiatus even during the period between 1949 and 1955. In my opinion, therefore, there is no doubt that the petitioner corporation did acquire by reason of imports of its food products bearing the mark 'Monarch' into this country during the period 1947-49, as sufficiently proved in this case, a right to the trade mark 'Monarch' even in this country. The respondent company, as admitted in the affidavit filed on its behalf and as stated in the applications for registration of the mark, did not start using this mark at any time prior to the year 1951 on the food products sold by it. Accordingly, between the two users of the mark 'Monarch' in this country, the petitioner corporation had a priority both in adoption of the mark and in the user thereof and therefore, the respondent company was not entitled to claim the mark as a proprietor and apply for registration thereof. For these reasons, I would set aside the order passed by the Joint Registrar of Trade Marks directing the respondent company's applications for registration of the mark 'Monarch' to proceed to registration.
(29) The next contention raised by Mr. Shavaksha, to which I have already referred, was that by reason of the petitioner corporation having imported large quantities of its products into this country under the mark 'Monarch' between 1955 and the date of the applications by the respondent company and sold them in the Indian market through several dealers, its products had acquired sufficient reputation in the public in this country and that, therefore, the use of the mark by the respondent company was likely to deceive or cause confusion as contemplated by clause(a) of S.11 of the Act. Accordingly, he submitted that the mark 'Monarch' should not be registered as a trade mark on the applications made by the respondent company. This question was raised and discussed before the Joint Registrar of Trade Mark who held that the evidence as had been adduced by the petitioner corporation was deficient and inadequate and mostly unreliable and did not establish the necessary degree of reputation of the mark 'Monarch' in India on the relevant dates and that therefore, the objection raised by the petitioner corporation under Section 11(a) of the Act was not enable. I agree with the Joint Registrar of Trade Marks with his finding on this question as a whole even after taking into account the fairly large imports of the petitioner corporation food products into this country between 11th April 1955 and 31st January, 1957. As has been rightly pointed out by the Joint Registrar of Trade Marks, all these imports were made by the traders in Bombay and there is no evidence that any of these products were sold in any other part of this country. I must, however, differ from the view expressed by the Joint Registrar of Trade Marks in his observation that all the items on the list of importers which was furnished on behalf of the petitioner corporation were merely private imports on the strength of individual licences granted to private parties and that the number of individuals and the value of the goods were also comparatively low. If one turns to the list which is marked as EX.I and annexed to the affidavit of Jamie Birdi, one finds several firms and companies having imported the petitioner corporation's food products during the said period, such as F.W. Pollack and Co., Grahams Trading co. Ltd., Importers and Exporters Ltd., D. H. Nasser and Co. Ltd., the Eastern Import and Export Co., Akbarally Ebrahimji, Bajaj Bros. Ltd. etc. It is true that the firms and companies shown in this list could have only imported the petitioner corporation's food products into this country on the strength of licences obtained by them from the Union Government. But it is difficult to believe that they could be said to have imported those food products otherwise than in a commercial sense. These firms and companies were undoubtedly private parties in the sense that they had nothing whatever to do with the Government of the country in regard to their business, but it is difficult to understand how these firms and companies could be described as 'individuals' as the Joint Registrar of Trade Marks has done and how the imports made by them could be said to be private imports in the sense that they were intended only for the personal use of the members and staff of those firms and companies. Some of the companies and firms mentioned in that list are well known in the City of Bombay as traders in provision stores on a fairly large scale. To say that these firms and companies did not import the food products of the petitioner corporation for the purpose of their trade in a commercial sense is only travesty of truth. It may be that so far as the imports of the petitioner corporation's products standing in the name of Ritz Hotel were concerned, they might have been intended for the use of the staff of Caltex and Co., because the import permit was issued in the name of that company, but just because in one such case the Joint Registrar of Trade Marks could find the imports of the petitioner corporation's food products not having been made strictly for commercial purposes, it is surprising that it should have led him to an inference that in imports of these products by other firms and companies mentioned in that list, were intended for private purposes of the members and staff of those firms and companies are known to be dealing in provision stores on a fairly large scale. Taking into account, however, the imports of the petitioner corporation's products made by the several firms and companies mentioned in that list, it is difficult to come to the conclusion that during the short period of such imports and with the limited sales of such products in this city, the petitioner corporation can be said to have acquired such a reputation among the members of the public with regard to its mark 'Monarch' that that mark could be associated only with the food products of the petitioner corporation. For the purpose of S.11(a), it is necessary that the mark should have attained such reputation among the members of the public as would lead them to associate the mark only with the products of the petitioner corporation and of no one else. I am afraid, in spite of the fact that the sales by the respondent company of its products under the mark 'Monarch' were not very much larger than the imports and sales in this country of the products of the petitioner corporation, it cannot be held that by allowing the mark 'Monarch' to be registered as applied for by the respondent company, there would be any likelihood of deception or confusion in the minds of the public. Accordingly, I agree with the finding of the Joint Registrar of Trade Marks that the petitioner corporation could not resist the registration of the mark 'Monarch' on the application of the respondent company under clause (a) of Section 11 of the Act.
(30) It was next contended by Mr. Shavaksha that the respondent company had itself shown Kipra and Co. Private Ltd., as the proprietors of the mark on the labels bearing the mark 'Monarch' on the different kinds of its food products and, therefore, the respondent company had no right to apply for registration in its favours as if it was the proprietor thereof. It was conceded by Mr. Shah that the labels which were used on the food products manufactured by Kipre and Co. Private Ltd, did bear the name of Kipre and Co. Private Ltd. immediately below the mark 'Monarch' and that the respondent company's name was printed below it as sole distributors. Mr. Shah, however, contended that by an agreement Ex. F. made between the respondent company and Kipre and Co. Private Ltd. in 1951 it was clearly provided that the mark 'Monarch' belonged to the respondent company, that Kipre and Co. Private Ltd, were only to manufacture the food products as ordered by the respondent company and that the food products so manufactured were to be bottled and packed by them for its use and benefit and that, therefore, in spite of Kipre and Co.'s name appearing on the labels, the respondent company was the true proprietor of the mark 'Monarch' and that, therefore, it was entitled to apply for its registration as proprietor thereof. Now, once again turning to the provisions of section 18 sub-section (I), it is clear that only a person claiming to be the proprietor of a trade mark used by him or proposed to be used by him could make an application to the Registrar for the registration thereof. According to this provision, not only a person should claim to be the proprietor of a trade mark but he should prove that he had used it as such proprietor on his goods. Then turning to the label as it stood at the date of the application, two names appeared on the label, one of Kipre and Co. and the other of the respondent company. If these two names had stood by themselves without any further description of either of them, it could be said that both Kipre and Co. and the respondent company were jointly the owners of the mark as well as the owners of the goods to which the label was affixed. But, that is not the case. The respondent company is described as the sole distributors on the label. The reasonable inference that could be drawn from this description surely is that the goods were the property of Kipre and Co. and so also the mark. If the respondent company was really the proprietor of the mark and also the owner of the goods one would expect some such words as '.' In the absence of any such words, a person buying any of these goods on reading the label would naturally believe that what he was buying was the property of Kipre and Co. which was selling its goods under the mark 'Monarch'. It is true, as contended by Mr. Shah, that even distributors and sellers may have marks of their own, but then, there are ways and ways of indicating on the label itself that the mark embodied therein is the mark belonging to such distributor or seller. Obviously, therefore, on the label as it stood, it could not be said that the respondent company was the proprietor of the mark 'Monarch' nor could it be said that the mark was used by the respondent company as proprietor thereof.
(31) It, however, contended by Mr. Shah that it was no concern of the public to know as to whether the mark belonged to Kipre and Co. or the respondent company. All that the public were entitled to know was the nature of the mark under which they were buying a particular article or product, and that even if ultimately it turned out that the mark really belonged not to the person whose name appeared on the label but to another person whose name also appeared on the label, it would not make the slightest difference so far as the public were concerned, and there could not be any kind of confusion or deception practised on the public. The question then is as to whether in the circumstances of the present case the respondent company should be allowed registration of the mark 'Monarch' in its name.
(32) Mr. Shah invited my attention to Somerlite Ltd., vs. Brown (1934) 51 R.P.C. 205 and the observations of Mr. Justice Maugham at page 226. It was a case of a passing off action and while laying down the test in passing off cases, the learned Judge observed as follows :-
'It is very difficult to define exactly what the test is in these cases, and I do not think, speaking generally, there is a better test than that which was laid down by Lord Justice Buckley in the case of Andrew and Co' Ltd. vs. Kuehnrich (1913) 30 R.P.C. 677 , where he says that the question is whether the defendant's acts are such as to be calculated to deceive persons buying the defendant's goods into the belief that they are buying the plaintiffs' goods.
Now I quite agree that that statement is not a complete statement, because it is perfectly true that the trader who has got a common law mark or a registered trade mark has got just as much right to restrain an infringement if his name never appears on the goods and if nobody knows who is true owner of the mark or the true supplier of the goods. I do not suppose that one person in a hundred knows who is the owner of one of the well-known tobacco brands. If you asked them they would very often be quite astonished to hear that it was not (I will say) Wills' or Player's who owned the goods associated with those names. Therefore, the statement has to be taken with this enlarged meaning, that the phrase 'into the belief that they are buying the plaintiff's goods' ought to be enlarged so as to mean 'that they are buying the goods of some person, whether or not they know him, he being a person whose goods they are by virtue of manufacture, selection, certification, dealing with or offering for sale'. so enlarged I think the test would be fairly satisfactory'.
Mr. Shah also invited my attention to J. Defries and Sons Ltd. ad Helios Mfg. Co. vs. Electric Ordnance Accessories Co. ltd. (1906) 23 R.P.C. 341. That also was a passing off action arising out of a trade name 'Stewart Arc Lamps'. The plaintiffs in that case were the American .' began to sell in England lamps made to their order by the American company, and sold by them under the name 'Stewart Arc Lamps.' In 1903 the Syndicate was wound up, and in 1904 the Receiver sold its goodwill and its rights to the use of the word 'Stewart' in connection with the goods by auction to the defendants who continued the sale of the goods under the name. The plaintiffs having commenced to sell similar goods under the name 'Stewart' sought an injunction to restrain the defendants from selling them under that name; the defendants thereupon counter claimed for similar relief. It was held that the word 'Stewart' as associated with the goods in question was the sole property of the Syndicate and its successors the defendants and the plaintiff's action was accordingly dismissed, and an injunction granted to restrain the plaintiffs on the defendants' counterclaim. It would appear from the facts of this case that there was nothing to show that on the labels which were affixed to the lamps manufactured by the American company on behalf of the Syndicate and its successors, the defendants, the name of the American company had at all been shown. The American company sought to appropriate the mark 'Stewart' merely by reason of the fact that they were the manufacturers of the lamps and that the Syndicate and its successors, the defendants, were marketing those lamps under the name 'Stewart' and that, therefore, they could claim the trade mark 'Stewart' for themselves. Obviously, the claim of the American company was misconceived, because, on the facts of that case and as it was held by Mr. Justice Joyce, the word 'Stewart' was associated with the goods sold by the Syndicate and its successors, the defendants, and it was accordingly their sole property. The American company could not possibly claim any right to that trade mark and its action was accordingly rightly dismissed. The facts of this case, in my opinion, are not similar to the facts of the present case. The respondent company had chosen to describe itself on the label as it stood on the date of the application as sole distributors of the products manufactured by Kipre and Co. Private Ltd,. It is true that Kipre and Co. have not come forward to claim any proprietary right in the trade mark. That however, in my opinion does not make any difference to the true position in law, because, after all it is the members of the public who are going to buy these goods and they are entitled to know from what has been stated on the label as to whose goods they are buying. They may not know the manufacturer personally. In this case, they may not have known any of the directors or managers of Kipre and Co. Private Ltd., yet they did know on account of the name of Kipre and Co., appearing on the label that under the mark 'Monarch' they were buying Kipre and Co.'s goods and that the respondent company was only the sole distributor of those goods having no property of its own in the mark attached to them. It is thus difficult to conceive that at the date of the applications for registration of the mark, the respondent company could be said to have used the mark as proprietor on any of the goods which it was selling as sole distributors. If I am right in this conclusion, then the respondent company despite the agreement between Kipre and Co. and itself of 1951 by which it was acknowledged that the mark 'Monarch' belonged to the respondent company, did not use the mark 'Monarch' as proprietor and that, therefore, it was not qualified to make an application under Section 18 of the Act for registration thereof. If such registration were to be allowed and the label showed the name of the respondent company alone printed on it, members of the public would certainly be in a state of confusion and would not be able to know as to whether they were really buying Kipre and Co.'s goods under the mark 'Monarch' as they were doing in the past before the registration of the mark in the name of the respondent Company. In other words, the respondent company by adopting this mark to its goods after the registration in its favour would be able to present to the members of the public its own goods as the goods of Kipre and Co. In my opinion, such a state of things cannot be allowed in public interest and, therefore, the Joint Registrar of Trade Marks should have declined to allow the respondent company's applications to proceed to registration on this ground.
(33) The Joint Registrar of Trade Marks has dealt with this question in paragraphs 27 to 31 of his judgment. In paragraph 29 he stated as follows :-
'It was however argued that the applicants' name has been printed on the labels only as sole distributors, and not as manufacturers of the goods or the owners of the mark. But this circumstance, by itself, cannot in my opinion, affect, much less destroy, the applicants' ownership of the mark. The fact that a person describes himself as the sole distributor does not necessarily mean that he is not also the sole proprietor. It is true that, as suggested by Shri. Shivaksha in the course of his arguments, that the proper way of describing the applicant's goods would be to print on all their labels 'manufactured by Kipre and Cp., for and on behalf of Brandon and Co. proprietor of the mark 'Monarch' but the fact that the applicants had not done so, cannot affect their legal title of the mark in question.'
Then in paragraph 30 he quoted the provisions of section 8(I) of the Food Products Order 1955 clauses (b) and (c) whereof are as follows :-
'(b) When bottle is used in packing any fruit products, it shall be so sealed that it cannot be opened without destroying the licence number and the special identification mark of the manufacturer to be displayed on the top or neck of the bottle. The licence number of the manufacturer shall also be exhibited prominently on the side label on such bottle;
(c) When a tin, barrel or other container is used in packing any fruit product, the licence number of the manufacturer shall either be exhibited prominently on the side label of such tin or be embossed prominently thereon'.and thereafter he proceeded to say in the same paragraph as follows : 'Thus, it will be seen on every container in which any food products are packed, the name and licence Number of the manufacturer had to be exhibited prominently. This explains why the name of Kipre and Co. and their licence number had to be printed on the labels'.
I am afraid, the Joint Registrar of Trade Marks was in error in saying that the name of the manufacturer was also to be exhibited on the container in which any food products were packed. All that clause (b) requires is that when a bottle is used in packing any fruit products, it shall be so sealed that it cannot be opened without destroying the licence number and the special identification mark of the manufacturer to be displayed on the top or neck of the bottle and it further requires that the licence number of the manufacturer shall also be exhibited prominently on the side label on such bottle. In the present case we are concerned with side labels and all that is required to be printed on the side label according to this clause is the licence number of the manufacturer and nothing more. Even on the top or the neck of the bottle what is required to be displayed is the licence number and the special identification mark of the manufacturer and not his name. Even under clause (c) when a tin, barrel or other container is used in packing any fruit product, it is only the licence number of the manufacturer which is required to be exhibited prominently on the side label of such container or embossed prominently thereon. Nowhere have I been able to find the necessity of displaying the name of the manufacturer on any part of the bottle or the container in which any food products are packed. Obviously, therefore, the Joint Registrar of Trade Marks was in error in reading into these clauses the requirement as to the name of the manufacturer being exhibited prominently on any part of the container or of the label affixed thereto. The provisions of section 8 of the Food Products Order 1955, on the contrary, clearly suggest that it is not necessary at all to exhibit the name of the manufacturer of the product on any part of the container in which the product is packed or on the label affixed to such container. What is really necessary is to display the licence number of the manufacturer prominently at any rate on the side label of the container. In my opinion, therefore, there was no justification for the Joint Registrar of Trade Marks to observe that name of the manufacturer had to be exhibited prominently on every container in which any food products are packed. As a matter of fact, he has not considered the implications of the two names of Kipre and Co. and the respondent company appearing on the label bearing the mark 'Monarch' and only proceeded on the basis of the alleged legal title which the respondent company claimed to have in the mark 'Monarch' by reason of the agreement Ex. F. between itself and Kipre and Co. In my judgment, the approach of the Joint Registrar of Trade Marks to the question was entirely erroneous. What he had really to consider under the provisions of section 18 was as to whether the respondent company who claimed to be the proprietor of the mark 'Monarch' had at all itself used it as a mark on any of the products sold by it. This would apparently be a question of fact to be decided on a consideration of the use of the mark in question itself. As I have stated above, the label as it stood at the date of the application showed the names both of Kipre and Co. and the respondent company and the respondent company was described as the sole distributors. Prima facie, the mark could not belong to the respondent company and even if it did by virtue of the agreement Ex. F, it could not be said to have been used by it. Accordingly, in my opinion, the respondent company was not entitled to make the applications, as it has done, for the purpose of getting the mark 'Monarch' registered in its name as proprietor thereof.
(34) While dissenting from the Joint Registrar of Trade Marks on this question, I am conscious of the principles which I have already referred to as to jurisdiction of the Court of Appeal while dealing with an appeal against a decision of the Registrar of Trade Marks. It is not on any finding of fact that I am dissenting from the view expressed by the Joint Registrar of Trade Marks on this question. What I really find is that the Joint Registrar of Trade Marks has actually overlooked the requirements of Section 18 of the Act for the purpose of deciding as to whether the respondent company was or was not entitled to make an application for the registration of the mark 'Monarch'. In such cases, I have no doubt that the Court of Appeal has got jurisdiction under the principles above stated to interfere with the finding of the Registrar of Trade Marks.
(35) It may also be noted in this connection that it was admitted by Mr. Audsley on behalf of the respondent company that besides the goods manufactured by Kipre and Co. for itself, it was also selling the goods of Kipre and Co. on its behalf under the same label. In view of this fact, it is difficult to say that Kipre and Co. was not the proprietor of the mark which it had used upon its own products. In these circumstances, I hold that the respondent company is not, entitled to have the mark 'Monarch' registered as proprietor thereof.
(36) It was lastly contended by Mr. Shavaksha that the respondent company had copied the petitioner corporation's mark 'Monarch' . Not only that Mr. Shavaksha argued, the respondent company had also copied the shield device used by the petitioner corporation on its bottles containing a product called 'Tomato Catsup' and accordingly, Mr. Shavaksha submitted that the Joint Registrar of Trade Marks should have declined to order registration of the mark 'Monarch' in the name of the respondent company under clause (e) of section II of the Act which says that a mark which would otherwise be disentitled to protection in a Court shall not be registered as a trade mark. Mr. Shavaksha also urged that in any event in the circumstances of this case the Joint Registrar of Trade Marks should have exercised his discretion under section 18 of the Act against the respondent company and refused to order registration of the mark in its favour. Mr. Shah, the learned counsel for the respondent company, on the other hand, contended that there was no evidence on the record of this case that the respondent company or any of its officers had come to know about the petitioner corporation's mark 'Monarch' at any time prior to 1951 when it decided to adopt the word 'Monarch' for its own products. He urged that there were only two consignments of the petitioner corporation's products imported into this country which could be held to have been proved prior to 1951, that the consignments were very small in size and that, therefore, there was no possibility at all for the respondent company or any of its officers to have ever come to know about the adoption and use of the mark 'Monarch' by the petitioner corporation on its goods in this country. The Joint Registrar of Trade Marks has dealt with this question in paragraphs 20 to 26 of his judgment. In paragraph 21 of his judgment he has stated as follows: -
'Now, it is fairly clear from the evidence that prior to 1950, the opponents, mark had not become so widely well known or so popular as to be likely to be copied by others. Admittedly, there were no imports after 1950 (till about 1955), and, prior to 1950 the imports of the opponents' goods were neither considerable nor continuous. There were only a few sporadic imports and they were of very small quantities. There is, therefore, absolutely nothing in the evidence nor in the circumstances, in 1950 which would suggest that the applicants had copied the opponents' mark'.
Dealing with the contention raised on behalf of the petitioner corporation that it was a case of res ipsa loquitur, the Joint Registrar of Trade Marks in paragraph 24 of his judgment stated as follows : -
'It was stated that, as in the case of the Brown Shoe Company's case 1959 R.P.C. 29 , this is a case of res ipsa loquitur and that no evidence on such points could be expected from the opponents. But it should, at the same time, be remembered that there is no initial presumption of dishonesty as regards any witness; and that the applicants too, cannot prove the negative viz., that they did not act dishonestly. They can if at all, only give reasons why in 1950 they chose the mark in question. The word 'Monarch' is not an invented word (as in the case cited above) and, being an ordinary dictionary word, denoting superiority of quality, there was nothing, strange or suspicious in the applicants having adopted it for their mark to denote the quality of their goods.' Then referring to the evidence of Mr. Audsely on behalf of the respondent company, the Joint Registrar of Trade Marks in paragraph 25 of his judgment stated as follows: 'The opponents had no convincing reasons to put forward why Mr., Audsley should not be believed. It seems to me that the reasons given by Mr. Audsley for choosing the word 'Monarch' are sound and convincing, and I have no hesitation in holding that in choosing the word 'Monarch' in relation to applicants' goods, Mr. Audsley acted honestly and bona fide and that he had no knowledge of the opponents' mark.'
Referring to the contention on behalf of the petitioner corporation that the device of a shield which was being used by the petitioner corporation along with the word 'Monarch' was also copied by the respondent company, the Joint Registrar of Trade Marks in the same paragraph stated as follows:-
'But, Mr. Audsley, in his evidence, has categorically stated that he did not suggest the device of a shield and that it must in all probability have been adopted by their commercial artist, as it was a common ornamentation. Further, it is admitted that, for the opponents' mark, there were many devices other than a shield, and hence, it cannot be said that the device of a shield was the exclusive monopoly of the opponents.'
In conclusion, he stated in the same paragraph:-
'On issue 2 I find that the applicants did not copy the opponents' mark and that they acted honestly and bona fide when, in 1950, they adopted the word 'Monarch' as their mark for their goods.' Before dealing with the cases which were cited by Mr. Shavaksha in course of his arguments in support of his contention that the respondent company having copied the petitioner corporation's mark 'Monarch' should have been held disentitled to any protection in law, I must point out that the Joint Registrar of Trade Marks has failed to take into account while considering issue No. 2 before him a very important circumstance, namely, that the products of the petitioner corporation were being widely advertised in leading American Magazines such as 'Life' and that although Mr. Audsley denied the allegation in the affidavit filed by him on behalf of the respondent company that they were so advertised, he did in his evidence admit that he did occasionally read American Magazines. Besides, the Joint Registrar of Trade Marks has also overlooked the entire bunch of such advertisements produced by the petitioner corporation. It will appear that these advertisements appeared in the issues of the magazines such as 'Life' in the years 1948 and 1949 and the Joint Registrar of Trade Marks seems to have failed to consider altogether as to whether, in view of the admission by Audsley in his evidence that he did read American magazines occasionally, he may not have in all probability come across during the years 1948-49 any magazines such as 'Life', 'Saturday Evening Post' and 'Country Gentleman' which, one may say with confidence, have got a fairly large circulation in this country among the English-knowing people and which carry the advertisements of the petitioner corporation's food products, under the mark 'Monarch' . It may be noted that in one of these advertisements a bottle of 'Tomato Catsup' is shown with the mark 'Monarch' included in a shield design. The Joint Registrar of Trade Marks in view of this particular advertisement as regards Tomato Catsup also failed to consider as to whether the shield device could not have caught the attention of Mr. Audsley which ultimately led him to adopt the design of the shield only for the preparation from tomato under the name 'Tomato Ketchup' with the mark 'Monarch' thereon. In view of these omissions on the part of the Joint Registrar of Trade Marks, I think I will be justified in not placing too much of reliance upon the evidence of Audsley as he has chosen to do and the evidence of Audsley as he has chosen to do and holding that in the circumstances of the case, the respondent company could not but be said to have copied the petitioner corporation's mark 'Monarch' for similar products marketed by it in this country.
(37) Now, turning to the authorities cited by Mr. Shavaksha, the first one he relied upon was in the matter of Vitamins Application Ltd. (No. 2), 1956 R.P.C. I. That was a case in which only one copy of an American Journal showing the mark 'Pabalate ' in respect of certain pharmaceutical substances manufactured and marketed by A.H.Robins Coy. Inc. of the United States of America was received in the United Kingdom. The American Corporation applied for registration of the mark 'Pabalate' in January, 1952, but Vitamins Ltd. (who were proprietors of the mark 'Paravel' opposed the application which was withdrawn on 28th November, 1952. Thereafter on 9th December , 1952, Vitamins Ltd, filed an application to register 'Pabalate' as a mark for pharmaceutical substances. The application was opposed under section 11 of the American Corporation on the ground that they had registered that word in various countries and had advertised it extensively in Medical Journals which circulated in the United Kingdom. They also contended that the Registrar should refuse registration in the exercise of his discretion. At the hearing before the Assistant-Comptroller it appeared that only one copy of a paper showing the American Corporation's mark 'Pabalate' had reached the United Kingdom prior to the date of the application. On these facts, the Assistant Comptroller held that the American Corporation's mark 'Pabalte' had not acquired such reputation in the United Kingdom as would enable him to find in their favour under the provisions of the Act and that the opposition must be dismissed. The American Corporation thereafter appealed to the Court., in addition to the points raised before the Assistant-Comptroller, contended that the use of the mark by the Vitamins Ltd. would not be entitled to protection in a Court of Justice in that such use would amount to 'forging' a 'trade mark' under the provisions of the Merchandise Marks Act 1887. It was held by Lloyd Jacob J :
'(I) That in the definition in Section 4 of the Merchandise Marks Act, 1887, the reference of trade marks 'protected by law' meant only such trade marks as by the provision of section 103 of the Patents, Designs and Trade Marks Act, 1883, would have an existing right of priority for registration in the United kingdom., i.e., those marks in respect of which a period of six months from the first application for registration in a Convention country had not yet elapsed;
2) That as it has been shown that this was the case for the American Corporation's mark 'Pabalate' the objection under this head failed.
(3) That the letter from the American Corporation withdrawing their application for the registration withdrawing their application for the registration of the mark 'Pabalate' did not amount to an abandonment of their rights in such mark;
(4) That in the circumstances the claim made by the applicants in their application on Form T. M. 2 to be 'proprietors' of the mark 'Pabalate' was an improper claim;
(5) That in the case of marks for medicinal products the public interest may require that articles of different origin should not be advertised and sold here and abroad under the same mark;
(6) That the Court would, in its discretion, allow the appeal, and refuse registration of the Mark'.
While dealing with the question of discretion, the learned Judge observed (at page 11) as follows:-
'There are two matters which I have felt it right to take into consideration upon this aspect of the case. The first one is the propriety or otherwise of the action of the applicants in making the application which they made for registration. By the rules, which have the force of statute, it is provided that application of this character shall be made upon Form T.M. No. 2 which requires that an application for registration should assert, in the case of a mark which has not yet been the subject matter of use in trade, that it is proposed to be used by the applicant and that the applicant is claiming to be the proprietor thereof.'
These observations make it clear that the case before the learned Judge was one in respect of a mark which was never used in the United Kingdom before and the applicant company had proposed to use it in respect of certain pharmaceutical substances. It is also clear that the American Corporation had not imported any of its products under the mark 'Pabalate' into the United Kingdom until the date of the application made by the Vitamins Ltd. Only the copy of the paper showing the American Corporation's mark 'Pabalate' had reached the United Kingdom prior to the date of the application. Dealing further with the question of discretion the learned Judge proceeded to observe (at page 12) as follows :-
'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. Where, as here, another party in the same way of business had already put forward a claim to be the proprietor of the identical trade mark and had withdrawn the application for registration merely to avoid controversy and expense, it seems to me impossible to hold that the party who had by opposition secured that result could a few weeks later merely as a result of the withdrawal, claim proprietary rights.
The mere fact that the evidence available may not be sufficient to establish the right of a party to be entered upon the Register, does not of itself negative the proprietary right which that party had asserted by making his application nor does he necessarily deny such right by the withdrawal of the application. Accordingly, in the exercise of my discretion. I must consider whether or not, in making that claim to be the proprietors of this mark, the Respondents were in fact making a proper representation to the Trade Marks Registry.'
The learned Judge then proceeded to consider the second factor which he thought should be considered while exercising the discretionary jurisdiction and that, was, that the evidence disclosed that the mark had been used by the American Corporation upon and in relation to a remedy or an alleged remedy for arthritic conditions in human beings. He observed:
'Having regard to the international character which medicine and the allied sciences have assumed and increasingly assumed over the last two decades, it seems to me that in exercising its discretion under the Act the public interest is not in any way imperilled. For my part I am not satisfied that, in allowing to be used by manufacturers in this country as a brand name for a pharmaceutical substance a word which is in fact used by an American Corporation in respect of the same material and advertised in journals, which on the evidence and received into this country and referred to, the public interest will be best served by permitting registration. Accordingly, on both those grounds it seems to me that it is my duty to indicate that in the light of the fuller consideration which the matter has received in this Court the application should not be permitted to proceed.'
This decision brings out two features of the case in bold relief, firstly, that the American Corporation had not imported into the United Kingdom any of the products under the 'Pabalate' and yet its right to the mark as a proprietor was recognised by the Court on the strength of the advertisement of that product under that in American Journals which had some little circulation in the United Kingdom, and secondly, that in relation to products in pharmaceutical fields, it is the duty of the Court to see the products of different origins are not allowed to be sold under the same name. In the present case, the facts are really stronger. Not only that the petitioner corporation's products are widely advertised in American Magazines of common interest, which have a fairly large circulation in this country, but even these products have been imported into this country though not quite continuously. There can, therefore, be no doubt that the petitioner corporation has a right to the use of the mark 'Monarch' in preference to the respondent company which sought to introduce that mark for the first time in 1951.
(38) The next question that might arise so far as the facts of this case are concerned, is as to whether food products could be placed in the same category as pharmaceutical products, so that such products of different origins should not be allowed to be marketed under the same name in public interest. To my mind, food products are as important to human beings as pharmaceutical products. If the latter are generally intended to be used to cure human ailments, the former are invariably intended to be used for human consumption and nutrition. So far as the latter are concerned, though they might have different origins, they might consist of the same kind of substances, but so far as the former are concerned, they cannot possibly consist of identical substances. Take, for instance, a food product consisting of a preparation from tomatoes. The quality of tomatoes available in this country may be either superior or inferior to but never identical with, the quality of tomatoes available in other countries of the world. Besides, the method of making such preparation and ingredients used therein may vary from country to country. Again, it is common knowledge that trade in canned food products has already assumed an international character and in our own country we have been coming across such products for past several decades, though on a smaller scale at present due to import restrictions, from countries like England, America, Canada, Australia and Holland. The canning industry in this country, though yet in its teens, has also been exporting its food products to some of the countries of the world. It would not, therefore, in my opinion, be right to allow in the interest of public similar kinds of food products having different origins to be advertised and sold in this country and abroad under the same name. From this point of view, in my opinion, Vitamins case, 1956 RPC I aptly therefore, I should in exercise of my discretion refuse registration of the mark 'Monarch' in favour of the respondent company.
(39) Mr. Shavaksha next relied upon Gaines Animal Foods Ltd. 1958 RPC 312. In that case Gaines Animal Foods Ltd. applied for registration of the trade mark 'Gro-Pup' in respect of 'food for dogs'. The application was opposed by the Kellogg Coy. of America on the grounds (1) that the opponent company had imported into that country before the war a small quantity of dog food under the mark 'Gro-Pup' in which they had an extensive reputation in America, and which was extensively advertised in America periodicals which circulated also in the United Kingdom, (2) that the applicants were engaged in trading deceptively in that they adopted as their name a name similar to that of an American corporation which had a trade mark in the United Kingdom in which the name 'gaines' formed a prominent part and by applying for the mark 'Gro-Pup' they were attempting wrongfully to acquire the benefit of the opponents' goodwill in their trade mark. It was held by the Assistant Comptroller that in view of the extremely small amounts of dog food imported into the United Kingdom under the mark 'Gro-Pup' , the opponents had failed to establish that they had acquired a reputation under that mark such as would justify a conclusion advertising of the mark, 'Gro-Pup' dog food in American Periodicals which had some circulation in the United Kingdom; (2) that the conduct of the applicants in relation to the adoption of the name 'Gaines' together with their attempts to register in the United Kingdom the marks 'Pard', 'Rival' and 'Gro-Pup' being marks already in use in America, in respect of dog food, was such that the Registrar felt constrained to refuse the registration of the mark applied for in the exercise of his discretion. It will be noticed that in this case, too, all that the American Company could prove was a reputation about their 'Gro-Pup' food for dogs, not in the United Kingdom but in America and other countries. Nevertheless, the Assistant Comptroller took into account the fact that the American Company's preparation was advertised in American Periodicals which had some circulation in the United Kingdom and also the conduct of the applicants in adopting the mark 'Gro-Pup' for their food for dogs and held that in his discretion he should refuse the registration of the mark applied for. It may be noted that the mark 'Gro-Pup' was not really a distinctive mark and had not acquired any reputation in the United Kingdom in reference to the food for dogs which was manufactured by the American company, yet the applicants were not allowed to get the mark 'Gro-Pup' registered in their name in the United Kingdom on account of their conduct. In the light of the facts of this case, it may be observed that if food for dogs having different origins could not be in the discretion of the registering authority permitted to be marketed under the same mark, it will be perfectly reasonable to hold that food for human being having different origins cannot be allowed to be marketed under the same trade mark.
(40) The last case on this question that was referred to by Mr.Shavaksha was 1959 RPC 29. This case was relied upon by Mr. Shavaksha to show that on the principles laid down therein I must hold on the facts of this case that the respondent company had in fact copied the petitioner corporation's mark 'Monarch' and that, therefore, the respondent company was not entitled to any protection in law in regard to the mark sought to be registered by it. In that case in 1952 BSC Inc., a U.S.A. Company having an extensive business in the sale of ladies' shoes, applied to register their U.S.A. Trade Mark 'Naturalizer' for such shoes, but objection having been raised on the ground that the word did not comply with the requirements of S.9, the application was not proceeded with. On renewing the application in 1955, they found that A.S. Ltd., an English Company, had registered the word 'Naturlizet' for shoes and certain other articles. B.S.C. Inc. then applied for rectification of the Register by expunging the Mark 'Naturlizet' on the ground that their Mark 'Naturalizer' was so well known at the date of A.S. Ltd.'s application for registration that confusion was likely to occur from the use of the word 'Naturlizet' . It was further submitted that A.S. Ltd. had copied B.S.C. Inc.'s Mark and that the Registrar should therefore exercise his discretion by ordering that the Mark be expunged. It was held by the Assistant Comptroller (A) that there having been no sales in the United Kingdom of shoes under the mark 'Naturalizer' , although advertisement of such shoes had appeared in papers circulating there and was known to certain persons resident there, there would have been no ground for rejecting the mark 'Naturlizet' under Section 11; and (B) that there was nothing in the evidence to show that A.S. Ltd. had copied the mark 'Naturalizer', and the application for rectification was therefore refused. On appeal, it was held by Wynn-Parry, J. (1) that the Assistant Comptroller's decision under head (A) was correct; but (2) the evidence, and the similarity of the words, showed that the respondents' word 'Naturlizet' was copied from 'Naturalizer' and that the respondents were not, therefore, in truth proprietors of the Mark 'Naturlizet' and that the Court should in the exercise of its discretion order that the Register be rectified. This was again a case, it may be noted, where no shoes bearing the mark 'Naturalizer' were imported by the American Company into the United Kingdom. All that was shown was that the shoes bearing that mark were advertised in some of the American periodicals which had some circulation in the United Kingdom. Obviously, therefore, it could not be said that the American company had acquired any reputation in respect of its shoes in the United Kingdom and therefore, its claim that the mark 'Naturlizet' should be refused registration under Section 11(a) was rightly rejected. As regards the second question, however the learned Judge observed (at Page 33) as follows:
'Here it is true two words are involved - 'Naturalizer' and 'Naturlizet'. The Assistant Comptroller disposed of this part of the case by saying that on the question of discretion he found nothing in the evidence to establish that the respondents had copied the appellants' mark. With all respect to him., that can hardly be a satisfactory way of dealing with the problem. No evidence by the appellants on such a point could be expected. It must to my mind be a question of res ipsa loquitur or nothing. I find it impossible to treat the case as one of coincidence and to take the view that in evolving the word 'Naturlizet' as a trade mark in relation to ladies' shoes the respondents had no regard to the appellants' mark 'Naturalizer'.
In conclusion, the learned Judge observed (at page 34) as follows :
'In those circumstances, and bearing in mind that the use of the two marks in relation to ladies' shoes would, by reason of their similarity, be liable to cause confusion, it appears to me to follow that the respondents must be taken in effect to have copied the appellants' mark.'
This case was undoubtedly cited before the Joint Registrar of Trade Marks, but the comment that he made on that case was that if no evidence on the question as to whether the petitioner corporation's mark was copied by the respondent company could be expected from the petitioner corporation, there was no initial presumption of dishonesty as regards any witness and that the respondent company, too, could not prove the negative, namely, that it did not act dishonestly. According to him the respondent company could, if at all, only give reasons why in 1950 it chose the mark in question. It seems to me that in making this comment the Joint Registrar of Trade Marks has not done proper justice to the decision which he was dealing with. I fail to see why if the Brown Shoe Company's case 1959 RPC 29 on its facts was held to be a case of res ipsa loquitur, the present case should not be so held. The very similarity of the mark 'Monarch' as well as the conduct of the respondent company in adopting the shield design which was already adopted and used by the petitioner corporation in respect of tomato preparations for its similar preparations, make it impossible to treat the case as one of coincidence and to take the view that in adopting the word 'Monarch' as a trade mark and the shield device for its tomato preparations, the respondent company had no regard to the petitioner corporation's mark 'Monarch' and its shield device. Turning to the evidence of Mr. Audsley in this behalf, it is pertinent to note that he has not given a consistent answer as to the question how the mark 'Monarch' came to be adopted by the respondent company. In one place in his cross-examination he stated that he first thought of several names of our product and it was in 1950 I chose the name'. When pressed to explain as to how among all the words the word 'Monarch' struck him, he said, 'I wanted an ordinary name that can be easily remembered. My idea being that we should turn out articles of quality. There was so much poor stuff in the market at that time. I thought of many names and ultimately decided on 'Monarch'. A further question was then asked as to whether the word 'Monarch' was his suggestion. In reply he stated 'Yes. I discussed the matter of selection of the name with the senior member of my staff. I do not now recollect whether the word 'Monarch' was solely my suggestion or whether it was put into my mind by some of my subordinates.' These answers clearly show that he was not very sure himself as to who had suggested the word 'Monarch'. At one place he said 'I thought of many names and ultimately decided on 'Monarch' and at another place he said 'I do not now recollect whether the word 'Monarch' was solely my suggestion or whether it was put into my mind by some of my subordinates.' It may as well be in this state of his evidence that he had hit upon the word 'Monarch' after reading the advertisements of the petitioner corporation's food products under the name 'Monarch' in the American Magazines which he admitted he occasionally read. In answer to another question whether before actually using the mark he had made enquiries as to whether any other trader was using it, he said, 'I only gave them general directions to make enquiry in the market. I did not direct any specific enquiries to be made of any particular trader. I directed them to make enquiries in the wholesale market also'. When he was asked as to what he meant by 'wholesale market' he replied by saying 'By' wholesale market 'I mean Crawford Market'. These answers also go to show the kind of perfunctory because, they were only limited to the Crawford Market. Surely, in this city there is a large number of provision stores dealing in food products of different origins. Further, it is doubtful whether any enquiry was made in the Crawford Market, because, Saha and Co. have got a large provision store near the Crawford Market and if any enquiries were made with that firm, I am sure, the respondent company could have come to know that the petitioner corporation was already using that mark on its own products. These answers, to my mind, do not carry conviction and I am not prepared to believe that the respondent company had taken any care to enquire properly in the market as to whether the mark was ever being used by any of the traders in the market or any one else either in this country or elsewhere.
(41) Coming to the question of the device of the shield, Mr. Shah, the learned counsel for the respondent company, contended that the respondent company itself was not responsible for adopting it to its goods, because, Mr. Audsley in his evidence, in answer to a question as to whether there was any particular reason why the shield device for the label was adopted, stated none whatsoever. The device might have been adopted by the commercial artist. It was not suggested by me.' It is difficult to believe that the commercial artist should have, without any instructions from the respondent company, gone out of his way to adopt any device for the purpose of embellishing or adding to the mark which was adopted by the respondent company. Even if he did, in my opinion, the respondent company could not get the petitioner corporation was deliberately copied by it. In this connection, a reference may be made to Tavener Rutledge Ltd. v. Specters Ltd. 1959 RPC 83. In that case, T.R. Ltd. and S. Ltd. both sold sweets, and in particular 'fruit drops' in decorated tins. In that action T.R. Ltd. sued S. Ltd. for infringement of copyright infringement of two of the Trade Marks and passing-off, each of these issues depending on the alleged similarity of the decorations of the tins of the respective parties. It was held that the plaintiffs succeeded on all issues except that of infringement of the two trade marks. In regard to the design which appeared on the tins of the defendants it was contended by the defendants that they were not responsible for that design in as much as it was prepared by well known and respectable firm of tin makers and printers called A.Lloyd and Sons, Dealing with this contention Danckwerts, J. observed (at page 89) as follows :-
'It seems to me, therefore, that the similarity of the design is sufficient to be within the rules as regards passing-off actions. After all, if the defendants' artist, the artist employed by their factors, with or without direct instructions from them, it may be deliberately, or by accident so far as that is concerned, marks a copy of the plaintiffs' design it is not really open to the defendants to complain if confusion is said thereby to result, and it seems to me that, whilst I feel some suspicion of the evidence of the defendants' witnesses, even assuming that they were entirely bona fide this is a case in which the get-up was deliberately adopted by them.'
In the light of these observations, I have no hesitation in holding on the facts of this case that the shield device which was adopted by the respondent company along with the marks 'Monarch' was copied from the shield device adopted and used by the petitioner corporation on its tomato preparations along with the mark deliberately and that the respondent company cannot take shelter under the plea that it was designed by its artist without its instructions. In the first place, as I have already stated I refuse to believe that the artist should have on his own added anything to the mark without any specific instructions by the respondent company in that behalf. Even assuming, however, that the artist did it, it was not a mere matter of coincidence or accident that he adopted precisely the device which was being used by the petitioner corporation. Further , it is significant to note that the respondent company has not been able to show that the shield device was used by it on any of its products other than tomato Ketchup. Still further, the label which has been exhibited in this case along with the bottle of Tomato Ketchup shows horizontal lines in red corresponding to the lines which are found on the American Flag, suggesting that product contained in the bottle was of American origin. Besides, the word 'Ketchup' seems to have been evolved from the word 'Catsup' which has been used by the petitioner corporation in respect of its tomato preparations. All these similarities cannot possible be said to be a mere matter of coincidence or accident. On the contrary, one is strengthened in one's belief that the respondent company could not possibly have thought of these features of its label except with the assistance of the label, mark and design advertised and used by the petitioner corporation on its food products. Accordingly, I am firmly of the view that the respondent company did copy the mark as also the shield device of the petitioner corporation and that, therefore, the mark is not entitled to any protection under clause (e) of section 11 of the Act. Even otherwise, I should refuse in exercise of my discretion to allow the mark to be registered in the name of the respondent company. That discretion has not been denied to me under the provisions of the Act. In coming to this funding on this question. I do undoubtedly disturb the finding arrived at by the Joint Registrar of Trade Marks but for very good reasons, as already set out hereinabove; firstly, the Joint Registrar of Trade Marks omitted to consider the effect of the several advertisements which appeared in American Magazines in 1948 and 1949 which were produced as exhibits. He also failed to approach the case in a proper perspective in the light of the decision in 1959 RPC 29. Further, he failed to appreciate the implications of the evidence given by Mr. Audsley as regards the manner in which the word 'Monarch' as well as the shield device came to be adopted by the respondent company came to be adopted by the respondent company in respect of its products. He also failed to appreciate that the respondent company could not escape the responsibility for adopting the shield device of the petitioner corporation merely because its artist, as alleged by it, had designed it without its instructions. In all these circumstances, I am, I think, sufficiently justified in interfering with the finding of the Joint Registrar of Trade Marks on this question as well.
(42) Lastly, it was urged by Mr. Shah, the learned counsel for the respondent company, as also by Mr. Sastri learned counsel appearing for the Registrar of Trade Marks, that I should exercise my discretion under sub-section (3) of Section 12 of the Act and order concurrent registration of the word 'Monarch' both in favour of the petitioner corporation as well as the respondent company, I am afraid, however, I cannot accept this contention in view of my finding that the respondent company has been guilty of having copied the mark of the petitioner corporation. The discretion under the section referred to by the two counsel can only be exercised where two or more parties unknown to each other and unaware of the mark used by each other innocently adopt and use the same mark in respect of their respective goods of the same nature. In this case, however, as I have found that the petitioner corporation was already the sole proprietor of the mark 'Monarch' in respect of its food products in several countries of the world and its products were widely advertised in various American Magazines having a large circulation in different parts of the world including this country and in view of the fact that the petitioner corporation could have without importing any of its food products into his country bearing that mark applied for registration of that mark as proprietor thereof., prior to 1951 before the respondent company started using that mark, it is difficult to hold that the respondent company had started using that mark quite innocently and without any knowledge on its part about the same being widely used by the petitioner corporation on its food products. On the facts of this case and also in the interest of business morality, it is impossible to exercise my discretion under sub-section (3) of section 12 of the Act and order concurrent registration of the mark 'Monarch' in favour of both of the petitioner corporation and the respondent company.
(43) In the result, the petition is allowed. The order passed by the Joint Registrar of Trade Marks on the application filed by the respondent company for registration of the mark 'Monarch' is set aside and the applications are dismissed. The respondent company to pay the costs of the petitioner corporation of the proceedings before the Joint Registrar of Trade Marks as also of this petition and also to pay the costs of this petition to the Registrar of Trade Marks. As far as the costs of this petition payable to the petitioner corporation are concerned, they shall be taxed on the long cause scale with two counsel.
(44) Petition allowed.