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indo-pharma Pharmaceutical Works Private Limited Vs. Pharmaceutical Company of India - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtMumbai High Court
Decided On
Case NumberO.C.J. Suit No. 35 of 1970
Judge
Reported in(1978)80BOMLR73
Appellantindo-pharma Pharmaceutical Works Private Limited
RespondentPharmaceutical Company of India
DispositionAppeal dismissed
Excerpt:
trade and merchandise marks act (xllll of 1958), section 33 read with section 12(3) - interpretation of section 33--distinction between the provisions of section 33 and section 12(3)--the principle of issue estoppel.;section 33 of the trade and merchandise marks act, 1958, provides that if the opposition to the application for registration or the claim for injunction is based on the fact that the opponent or the plaintiff is the proprietor of a registered trade mark, then the opposition must be rejected or relief denied if the applicant or the defendant to the suit is able to establish that he used his trade mark, in respect of which opposition is made or relief sought, continuously prior to the date of registration of the opponent's or the plaintiff's registered trade mark. section 33.....s.k. desai, j.1. this is a pure infringement action instituted by the plaintiff company, which is the proprietor of trade mark no, 214336 in class 5 which consists of the word 'butacortindon' registered in respect of medical and pharmaceutical preparations as of march 16, 1963. the defendants are a firm which also is a manufacturer of pharmaceutical preparations and have been the proprietors of trade mark no. 224322 consisting of the word 'butacort' registered in class 5 in respect of the pharmaceutical preparation for sale to the hospitals of the government of gujarat. this was pursuant to an order of the deputy registrar of trade marks dated september 12, 1967. in the suit the plaintiffs complain of the defendants' efforts to sell their pharmaceutical preparation under the trade mark.....
Judgment:

S.K. Desai, J.

1. This is a pure infringement action instituted by the plaintiff company, which is the proprietor of Trade Mark No, 214336 in Class 5 which consists of the word 'BUTACORTINDON' registered in respect of medical and pharmaceutical preparations as of March 16, 1963. The defendants are a firm which also is a manufacturer of pharmaceutical preparations and have been the proprietors of Trade Mark No. 224322 consisting of the word 'BUTACORT' registered in Class 5 in respect of the pharmaceutical preparation for sale to the hospitals of the Government of Gujarat. This was pursuant to an order of the Deputy Registrar of Trade Marks dated September 12, 1967. In the suit the plaintiffs complain of the defendants' efforts to sell their pharmaceutical preparation under the trade mark BUTACORT to persons other than the hospitals of the Government of Gujarat. It is submitted that such action amounts to an infringement of the plaintiffs' registered trade mark No. 214336. According to the plaintiffs, their said preparation BUTACORTINDON is a fast selling item, its sales running into several lakhs. Accordingly the plaintiffs have in this suit sought a permanent injunction against the defendants in respect of the defendants' preparation bearing the mark BUTACORT, but the injunction sought is limited to sales other than to the hospitals of the Government of Gujarat. The plaintiffs have also sought from the defendants damages as a result of such infringement which are assessed at Rs. 25,001,

2. In their written-statement the defendants have submitted that they had placed on the market their pharmaceutical preparation containing Prednisolone and Phenyl Butazone under the trade mark BUTACORT, a Schedule H & 1 drug, in 1962. The defendants have further stated that they applied for registration of the trade mark BUTACORT by application No. 224322, which application was opposed by the plaintiffs, who, as stated, had obtained registration of their mark BUTACORTINDON on March 16, 1963. According to the defendants, the Deputy Registrar of Trade Marks held in the opposition proceedings that the defendants were prior users and were, therefore, entitled to registration under the provisions of Section 33 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the said Act). The defendants submit that as such prior users who have continuously used the trade mark, the defendants are entitled to protection under Section 33 of the said Act. The original written-statement did not contain sufficient particulars about such user, which have been added by amendment. According to the averments in these amendments, on November 30, 1961 the defendants had applied to the Drugs Controller (Maharashtra State) for a licence to manufacture their pharmaceutical preparation BUTACORT. The granting of permission was intimated by the officer to the defendants by a communication dated December 18, 1961. Thereafter, according to the amendment, the defendants started producing and marketing their product BUTACORT from December 1961 onwards. Accordingly the defendants submit that they had continuously used their trade mark BUTACORT from a date prior to the registration of their mark BUTACORTINDON by the plaintiffs and accordingly the plaintiffs were not entitled to interfere with or restrain the use by the defendants of their trade mark although it may be identical with or nearly resembling the plaintiffs' mark BUTACORTINDON. By further amendment which became necessary on account of a technical objection made by the Plaintiffs although an issue had been earlier framed, the defendants have submitted that in the opposition proceedings to the defendants' application the issue as to the defendants' prior and continuous user was an issue, and this issue had been decided by the Deputy Registrar in defendants' favour. The defendants have accordingly claimed the benefit of that specific decision and have submitted that by reason of that determination the plaintiffs must be non-suited by reason of the provisions contained in Section 33 of the said Act.

3. On the pleadings the following issues were framed:

(1) Whether the defendants' mark BUTACORT is deceptively similar to the plaintiffs' trade mark BUTACORTINDON as alleged in paragraph 4 of the plaint?

(2) Whether the defendants' use of the mark BUTACORT in relation to pharmaceutical preparations not covered by its registration is an infringement of the plaintiffs' registered trade mark BUTACORTINDON bearing No. 214336 as alleged in paragraph 6 of the plaint?

(3) Whether in view of the decision of the learned Deputy Registrar of Trade Marks dated September 12, 1967 in the matter of Application No. 224322 the plaintiffs are barred from disputing the prior continuous user of the mark BUTACORT by the defendants on the principles of res judicata or principles of Issue Estoppel?

(4) If the answer to Issue No. 3 is in the negative, whether the defendants have used the mark BUTACORT continuously prior to the registration of the plaintiffs' mark BUTACORTINDON?

(5) Whether by virtue of the provisions of Section 33 of the Trade and Merchandise Marks Act, 1958, the plaintiffs are not entitled to object to the use of the mark BUTACORT by the defendants anywhere in the country?

(6) To what reliefs the plaintiffs are entitled?

(7) And generally.

4. There is very little evidence led by the parties in this suit. On April 28, 1977 the defendants had handed in a tabular statement, which was marked exh. 1, and a stipulation between the parties was noted, which was to the effect that the eight sales as mentioned in the statement, exh. 1, were accepted by the plaintiffs as having been made by the defendants on the dates, to the parties, at the places, for the quantities and for the amounts (invoice prices) as shown in the said statement. Accordingly upon such stipulation the defendants agree not to lead other independent evidence to prove these eight sales. It was made clear, however, that for the remaining sales, as indicated in the statement, the defendants would have to lead evidence separately to prove and substantiate the same.

5. On behalf of the plaintiffs counsel appearing tendered a certified copy of the plaintiffs' trade Mark 214336, a certified copy of the defendants' trade mark 224322 and a certified copy of the order and judgment of the Deputy Registrar of Trade Marks.

6. Inasmuch as a plea of issue estoppel had been raised by the defendants it had become necessary to ascertain what the pleadings were before the Trade Mark Registry, on which pleadings the Deputy Registrar had given his judgment and order, exh. C (collectively). Accordingly a compilation of documents containing the record of opposition proceedings before the Deputy Registrar of Trade Marks was put in and from this compilation the defendants' application for registration of the mark BUTACORT, the notice of opposition by the plaintiffs and the counter-statement of the defendants to the notice of opposition were by consent marked as exh. 2 (collectively). As stated earlier, there is very little of oral evidence, no witnesses have been examined by the plaintiffs and on behalf of the defendants only their partner, one Kishorekant Maneklal Shah, has been examined. He has put in the licence issued in respect of their preparation BUTACORT as exh. 3 and the letter from the Director of Industries and Central Purchasing Officer, Government of Gujarat, as exh. 4. Exhibit 5 is a notification of the very same Government containing a list of suppliers of medicinal preparations. We are concerned only with the defendants and their preparation BUTACORT as shown in this list. As stated earlier, only eight sales in exh. 1 were stipulated to by the plaintiffs and, therefore, in respect of one other sale the said witness of the defendants put in a copy of invoice dated September 29, 1962, which sale was further supported by the entry in the defendants' sales register, which entry pertains to this very invoice viz. invoice bearing serial No. 817. It may be pertinent at this juncture to observe that out of the eight sales in exh. 1 only three sales are prior to the date of registration of the plaintiffs' trade mark. These sales are respectively dated June 20, 1962, June 30, 1962 and November 16, 1962; the purchasers are Gangabai Premji Harji General Hindu Hospital & Maternity Home, Anjar (Kutch); Civil Surgeon, Rajkot, and the Medical Officer, Bhavsinghji Hospital, Porbunder respectively, and are in the amounts of Rs. 60, Rs. 7 and Rs. 60 respectively. The remaining five sales in exh. 1 are for May to September 1963 and are also for fairly small amounts. In fact the aggregate amount of sales of all the eight sales in exh. 1 (three before the date of the plaintiffs' registration and five after) comes to Rs. 264. All these sales mentioned in exh. 1 are very clearly to Government hospital or similar public institutions in the State of Gujarat. The defendants have been able to show only one sale other than the sale which would qualify within the above description and that is the sale evidenced by exhs. 6 and 7. This is a sale to a concern called Adarsh Traders having its place of business at 369, Sheikh Memon Street, Bombay 2. Again, the total price realised by the defendants for their preparation BUTA-CORT under Invoice No. 817 is the rather petty amount of Rs. 1050. The date of the sale as given in this invoice is September 29, 1962, and thus we have (proceeding on the footing that the sale in Bombay is also proved) four proved sales in respect of the preparation BUTACORT prior to the date of registration of the plaintiffs' mark. This value comes to Rs. 127 in respect of sales to Government and public hospitals in the State of Gujarat and Rs. 1050 in respect of sale to a private firm in Bombay.

7. At this stage before dealing further with the evidence, reference may be made to the opposition proceedings before the Registrar of Trade Marks. The application by the defendants for registration of their mark BUTACORT in respect of their medicinal preparation is dated September 11, 1964 and that application says that the mark is 'proposed to be used'. This averment in the application could be read as indicative of a future use; but the accompaniment to the application clearly indicates that it is the defendants' case that they have been using the said mark since 1961. The notice of opposition to this application filed by the plaintiffs clearly indicates that the plaintiffs' principal contention is that the plaintiffs are the proprietors of the registered trade mark 214336 consisting of the word 'BUTACORTINDON'. The plaintiffs have in the notice of opposition also denied the applicants' claim to the use of the mark. More specifically it is contended that any alleged use of the mark was not prior to the registration of the plaintiffs' mark BUTACORTINDON. It was also submitted that any such user was also not continuous (see paragraph 6 of the notice of opposition). In their counter-affidavit or counter-statement the defendants have alleged that they had filed an application for rectification of the plaintiffs' mark 214336. It has been contended that the plaintiffs were aware of the defendants' mark BUTACORT as early as 1962 and the plaintiffs' adoption of their mark BUTACORTINDON was itself not bona fide and honest. According to the counter-statement the defendants had been continuously using the mark BUTACORT since November 1961 upto the date of the application. It is stated in the said counter-statement or counter-affidavit that 'the applicants are supplying their product BUTACORT to Government hospitals only'. Reference is also made in the relevant paragraphs of the application to the applicants' (defendants') mark being included in the Gujarat Government Rate Contract Tender issued every year.

8. A number of affidavits were subsequently filed before the Registrar of Trade Marks and by the ultimate order dated September 12, 1967 it was stated that the defendants' applications to rectify the register were allowed to be treated as withdrawn as requested by the defendants. As far as the defendants' later application No. 224322 was concerned, the order made was that it should be accepted for registration in respect of a specification of goods reading as 'medicinal preparation for sale only to Government hospitals in the State of Gujarat', and it was observed that the plaintiffs' opposition be dismissed. The relevant portion of the judgment reads as follows:

As regards the opposition by the Registered proprietors to the applicants' application, Shri S.B. Shah submitted that the opposition was based on Section 12(1) of the Act. There can be no doubt that the applicants' trade mark BUTACORT is deceptively similar to the Registered proprietors trade mark BUTACORTINDON and that, therefore, Section 12(1) constitutes a bar to the registration of the applicants' mark. It was, however, pointed out that the applicants were entitled to the benefit of Section 33 of the Act inasmuch as they have continuously used the mark since before the registration and use of the Registered proprietors' trade mark. I am satisfied from the evidence before me that the applicants have used their mark since at least 1962.

In the circumstances, in view of the provisions of Section 33, I order that the applicants' application No. 224322 be accepted for registration in respect of a specification of goods reading as 'medicinal preparation for sale only to Govt. hospitals in the State of Gujarat' and the said opposition dismissed. There will be no orders as to costs.

9. It appears to me that the plaintiffs' opposition to the defendants' later application in respect of their mark BUTACORT (application No. 224322) was principally based on the provisions contained in Section 12(1) of the said Act. The defendants sought to meet the opposition by seeking to establish that they had continuously used their trade mark BUTACORT from a date prior to the date of registration of the plaintiffs' mark BUTACORTINDON; and it appears from the judgment and order above referred to that the Deputy Registrar upheld the said contention of the defendants and came to the conclusion that he could not refuse to register the defendants' mark merely by reason only of earlier registration' of the plaintiffs' mark. However, the Deputy Registrar, presumably acting on the discretion conferred on him under Section 12(3) of the said Act, granted registration to the defendants in respect of their trade mark BUTACORT subject to the limitation or condition indicated in his order viz. that it was registered for 'medicinal preparation for sale only to Government hospitals in the State of Gujarat'.

10. The matter in the suit clearly lies in a very narrow compass. The defendants have contended that although it may be conceded that the two marks are very similar, the plaintiffs are precluded from attempting to interfere with or restrain the use by the defendants of their trade mark BUTACORT by reason of the provisions contained in Section 33 of the said Act. It is next submitted that Section 33 of the said Act requires the defendants to establish that they have used their mark BUTACORT from a date prior to the plaintiffs' registration of their mark BUTACORTINDON. According to the defendants, they must be deemed to have established this by reason of the judgment and order of the Deputy Registrar in the opposition proceedings to the defendants' application No. 224322., In the alternative, the defendants have submitted that on the evidence led in this suit the defendants have established their continuous user of the trade mark BUTACORT previous to March 16, 1963 which is the date of registration of the plaintiffs' trade mark BUTACORTINDON and are, therefore, entitled to resist the plaintiffs' claim for injunction in view of the specific provisions of Section 33 of the said Act. On the other hand, counsel on behalf of the plaintiffs has submitted that what the Deputy Registrar of Trade Marks had determined was not merely that the defendants were prior users of the said trade mark but prior users of the said mark in a restricted or limited manner i.e. the use being confined to government hospitals in the State of Gujarat only; and if the defendants were entitled to the benefit of the provisions of Section 33 of the said Act, it was submitted that it would be for such use as found by the Deputy Registrar which use alone would be protected and no further use can be permitted to the defendants. In other words, it was submitted that the decision of the Deputy Registrar should be accepted and applied in toto and, if fully applied, the plaintiffs would be entitled to the injunction sought for inasmuch as the plaintiffs had not sought to restrain the defendants to the extent of the user proved before the Deputy Registrar and implicit in the registration granted by the Deputy Registrar to the defendants. It was alternatively submitted that it was not permissible for the defendants to submit or for the Court to decide to utilise the decision of the Deputy Registrar except in its entirety and to give effect to a portion of such decision only. The Court was invited further to consider the evidence led by the defendants in the suit and on such evidence to hold that the defendants could not be said to be prior continuous users of their mark BUTACORT from a date earlier than March 16, 1963, so that the defendants should be held not entitled to claim the protection of the statutory provision to be found in Section 33 of the said Act.

11. In order to consider and decide as between the rival contentions, attention will be required to be lavished principally on Section 33 of the said Act. Accordingly this provision may be fully extracted. Section 33 of the said Act provides as follows:

33. Saving for vested rights.

Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior

(a) to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or

(b) to the date of registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his; whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second-mentioned trade mark by reason only of the registration of the first-mentioned trade mark.

12. Neither counsel has been able to draw my attention to any decision of the Supreme Court or a High Court in India dealing with the aspect of Section 33 under consideration and, therefore, the matter will have to be decided as res Integra, It may be mentioned that my attention was drawn to an unreported decision of Bhatt J. in Geoffrey Manners & Co. Ltd. v. Mega-Pharma Laboratories (1974) O.C.J. Miscellaneous Petition 26 1974 (Unrep.). No. 1032 of 1973 I will refer to the said decision a little later on, but it does not appear to be of much use on the point under consideration though it does summarize the law generally.

13. Our Trade Marks Acts have been based on similar enactments in the U.K. and, therefore, a brief foray into the historical development of similar legislation in the U.K. will be rewarding. Turning to the position in the U.K. it is found that there was no provision similar to Section 33 of the said Act in the Trade Marks Registration Act, 1875; the text of this enactment is to be found at p. 658 of tenth edn. of Kerley's Law of Trade Marks and Trade Names. The same position continued under the Patents, Designs and Trade Marks Act, 1883, and there was no comparable provision in this enactment also; the text of the Act of 1883 is to be found at p. 664 of Kerly's book. A similar provision made its appearance for the first time in the Trade Marks Act, 1905; the text of this enactment is to be found at page 687 of Kerly's book, and we find that an almost identical provision is perceivable in the proviso to Section 41 of the Trade Marks Act, 1905. It will be useful to set out Section 41 of the above Act in its entirety:

41. Registration to be conclusive after seven years.-In all legal proceedings relating to a registered trade mark (including applications under section thirty-five of this Act) the original registration of such trade mark shall after the expiration of seven years from the date of such original registration (or seven years from the passing of this Act, whichever shall last happen) be taken to be valid in all respects unless such original registration was obtained by fraud, or unless the trade mark offends against the provisions of section eleven of this Act;

Provided that nothing in this Act shall entitle the proprietor of a registered trade mark to interfere with or restrain the user by any person of a similar trade mark upon or in connexion with goods upon or in connexion with which such person has, by himself or his predecessors in business, continuously used such trade mark from a date anterior to the user (or registration, whichever is the earlier) of the first-mentioned trade mark by the proprietor thereof or his predecessors in business, or to object (on such user being proved) to such person being put upon the register for such similar trade mark in respect of such goods under the provisions of section twenty-one of this Act.

14. The aforesaid proviso is found to have become an independent section in the Trade Marks Act, 1938, and is now designated as Section 7. The text of this enactment is to be found at p. 517 of Kerly's book. This section also may be usefully set out:

Saving for vested rights.

7. Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date anterior

(a) to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor in title of his; or

(b) to the registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his;

whichever is the earlier, or to object (on such use being proved) to that person being put on the register for that identical or nearly resembling trade mark in respect of those goods under Sub-section (2) of section twelve of this Act.

It is very clear that it is Section 7 as also the marginal note or the heading thereof from which one could trace the genesis of Section 25 of the Trade Marks Act, 1940, which was the first Indian legislation on the subject of trade marks. It will be noticed that Section 25 of the Indian Act is, except for a minor verbal change, identical with Section 7 of the English Act. It is Section 25 which subsequently became Section 33 in the said Act and I have already extracted that section earlier in this judgment.

15. It was submitted by learned Counsel for the plaintiffs that all that was sought to be protected by Section 33 of the said Act were the rights which had been vested in the defendants and it was contended that what had vested in the defendants was a limited right of user restricted to Government hospitals in the State of Gujarat. The first question to which one has to address oneself is whether this reading of the statutory provision is borne out by the wording of the section. Section 33 falls into two parts. What is being considered by the Court in this suit is covered by the first part of the section and what was earlier considered by the Deputy Registrar on the defendants' application No. 224322 and the plaintiffs' opposition thereto was governed by the second and the later part of the section. The section, however, when fairly construed, can be paraphrased as follows:

(i) The Registrar shall not refuse to register a mark identical with or nearly resembling another earlier registered trade mark if the applicant in respect of the trade mark sought to be registered later on is able to satisfy that he or his predecessor in title has continuously used that trade mark from a date prior to the date of registration of the mark which is already registered (ignoring the portions of the section which are not applicable in our case).

(ii) In an infringement suit the proprietor or a registered user of a registered trade mark is not entitled to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it, if the other person has continuously used his trade mark in relation to certain specific goods from a date prior to the date of registration of the trade mark the owner or proprietor or a registered user of which is seeking relief from the Court.

16. The section thus provides that if the opposition to the application for registration or the claim for injunction is based on the fact that the opponent or the plaintiff is the proprietor of a registered trade mark, then the opposition must be rejected or relief denied if the applicant or defendant to the suit is able to establish that he used his trade mark, in respect of which opposition is made or relief sought, continuously prior to the date of registration of the opponent's or plaintiff's registered trade mark. Thus a plain and bare reading of Section 33 would seem to suggest that if continuous and prior user (as explained in the section) is proved, the opposition must fail before the Registrar and the relief for injunction refused by the Court. The section does not provide for the opposition to fail partially only and succeed partially. Similarly the section does not suggest that in the suit some limited relief may be granted despite proof of prior continuous user. As far as the opposition was concerned, it is clear that the Deputy Registrar derived his power to grant limited or conditional registration to the applicants on their application not by reason of the provisions contained in Section 33 of the said Act but by reason of the discretion conferred on the Registrar by Section 12(3) of the said Act. There is no such discretion conferred by any provision in the said Act on the Court, and the prohibition or the disability cast on the proprietor of the earlier registered trade mark by Section 33 would prima facie appear to be total. Such a plaintiff is not entitled under the provision, as it stands, to interfere with or restrain the use by any other person who has previously used the mark or a similar mark provided such previous user can properly be characterised as continuous user. It is not the actual previous use which is protected from interference or restraint but all use. A fair reading of Section 33 (ignoring for the time being the marginal note or the heading) would seem to suggest that the user which is protected against interference or restraint is user and not such user which in fact existed on the date of the first registration of the trade mark whose owner or proprietor has moved the Court complaining that another person is using an identical or a deceptively similar trade mark.

17. It was, however, sought to be submitted vigorously that the marginal note made it clear that only vested rights of the defendants were sought to be protected and preserved and such vested right could only mean the right to use the trade mark to the extent to and in the manner in which it was used at or prior to the date on which the plaintiffs' trade mark was registered. It was submitted by counsel for the plaintiffs that this alone could be within the purview of the expression 'vested right' and as the section sought to save only the vested rights, the defendants could not be protected further by extending the field of the protection conferred by Section 33 of the said Act, to such use as did not exist on the date on which the plaintiffs got their trade mark registered. In other words, it was sought to be submitted that the plaintiffs were entitled to the injunction in the terms in which they have sought it and inasmuch as the plaintiffs have not sought to interfere with or restrain the use by the defendants of their trade mark to the extent the defendants had used it on the date on which the plaintiffs got their trade mark registered. It was also submitted that if in the opinion of the Court the protection conferred by Section 33 could be interpreted in a wider as also a narrower sense, the Legislature had made it clear by the marginal note or the heading that it was conferring the narrower and not the wider protection on the defendants by reason of their prior user. The question which then arises for consideration is whether such use of the marginal note or heading warranted in the case before me?

18. On the other hand, my attention was drawn by Mr. Tulzapurkar to a passage in Maxwell 'On the Interpretation of Statutes', twelfth edn. at pages 9 and 10. According to Maxwell:

The notes often found pointed at the side of sections in an Act, which purport to summarise the effect of the sections, have sometimes been used as an aid to construction. But the weight of the authorities is to the effect that they are not parts of the statute and so should not be considered, for they are 'inserted not by Parliament nor under the authority of Parliament, but by irresponsible persons.

19. This latter view was confirmed by the House of Lords in Chandler v. Director of Public Prosecutions [1964] A.C. 763, where the side-note ('Penalties for spying') to Section 1 of the Official Secrets Act 1911 was held not to restrict the wide words of the section, which made it an offence for any person for any purpose prejudicial to the safety or the interests of the State to approach or be in the neighbourhood of or enter any prohibited place. The offence could, therefore, be committed by demonstrators who had no intention of spying. Lord Reid said (p. 789):

.In my view side notes cannot be used as an aid to construction. They are mere catchwords and I have never heard of it being supposed in recent times that an amendment to alter a side note could be proposed in either House of Parliament. Side notes in the original Bill are inserted by the draftsman. During the passage of the Bill through its various stages amendments to it or other reasons may make it desirable to alter a side note. In that event I have reason to believe that alteration is made by the appropriate officer of the House-no doubt in consultation with the draftsman. So side notes cannot be said to be enacted in the same sense as the long title or any part of the body of the Act.

20. It was also submitted that even if the Court were inclined to utilise the marginal note as an aid to construction of the statutory provision, the marginal note did not have the effect ascribed to it by counsel for the plaintiffs. It was submitted that the phrase 'vested right' had no reference to the anterior or prior use as can be proved in the suit or in the proceedings before the Registrar, but the word 'vested' was used to indicate the restriction or qualification or limitation pertaining to the goods in relation to which there had been prior or anterior use of the trade mark which was identical with or deceptively similar to the registered trade mark whose proprietor was initiating the opposition or claiming injunction. It was submitted that it was that user (emphasis being on the goods) which was protected and that idea was sought to be enacted by the marginal note 'Saving for vested rights'.

21. There is one more argument which militates against giving to the marginal note the restrictive effect sought for by Mr. Shah. The words of the section will prima jade have to be given the same meaning as they had when the provision was enacted as a proviso to Section 41 of the Trade Marks Act, 1905. If at all, by being removed as a proviso and enacted as a substantive section, the Legislature intended to give the provision a wider effect and not a mere restrictive effect. Further, the right in a trade mark has been recognised as a right in the word which the owner takes out of the common use and appropriates for himself. It is such appropriation which gives proprietorship in the trade mark to the person who appropriates the same. My attention has not been drawn to any authority which would confer such proprietary right restricted to a locality or a type of sale. On the other hand, there are observations in a number of English judgments to the contrary.

22. It has been oft observed that the intention of the Legislature is to be gathered from the language used in the statutory provision and that where the language

23. is plain and fairly admits of only one meaning, it would not be proper for the Court to try to find out whether any other meaning can be given to the statute if in the opinion of the Court the effect of the provision on its fair reading would be unreasonably and unnecessarily wide. This comment is posed in the context of an argument that Section 33 of the said Act cannot be interpreted to confer an absolute protection to a party who fails to get his mark registered and is only able to prove a limited prior sale (and the limit may be territorial or of a type or character of sale). Although considerations of fairness may perhaps require some limit being put on the protection conferred, in my opinion such limit cannot be fairly read in the statutory provision and it will not be proper nor permissible for the Court to interpret the statutory provision by reading therein such a limit when a fair interpretation or construction or the language of the statutory provision does not warrant the same.

24. As stated earlier, these provisions came to be referred by Bhatt J. in his decision in Geoffrey Manners & Co. Ltd. v. Mega-Pharma Laboratories. Bhatt J. in the said decision was considering rival arguments based on Sections 11, 12 and 33 of the said Act and made the following observations with-reference to Section on 33:

.Section 33, therefore, has been enacted for the specific purpose of saving the rights of proprietors of marks whose user has been anterior in point of time to that of a proprietor of a registered trade mark, That is to say the registration of a trade mark by a proprietor will not affect the user of an identical or nearly resembling mark by another proprietor if the second mentioned proprietor has used the same on his goods prior to the registration of the mark of the first mentioned proprietor. It also goes further and allows the Registrar to permit registration of such a mark by enacting that the Registrar shall ignore the registration of the mark of the first mentioned proprietor. This is consistent with the common law that no person should affect the rights of another in relation to trade marks merely because his mark is placed upon the Register prior to that of a proprietor of a mark who has used his mark anterior in point of time but has failed to register. Section 33 of the said Act, therefore, is enacted only to save such rights and no more.

In the aforesaid case reliance was sought to be placed on Section 33 for purposes far beyond what is necessary for me to consider. It is unnecessary to consider other observations in the judgment except to say that such far-fetched interpretation of Section 33 or the extreme effect sought to be conferred on the same was rejected by Bhatt J. We are, however, in our case not concerned with any such contention or submission.

25. To revert back to our case, in my opinion Section 33 of the said Act confers absolute protection or immunity on a defendant who is able to prove or establish continuous user prior to the date of registration of the mark of the plaintiff who is seeking an order of injunction or restraint against him. The question then to which one must turn one's attention now is whether the defendants have established any such continuous prior user as is required.

26. It is in the context of being required to prove such continuous prior user that counsel for the defendants has placed reliance on the decision of the Deputy Registrar in the opposition proceedings and on the principle of Issue Estoppel. The principle of issue estoppel has been discussed in Halsbury's Laws of England, fourth edn., in vol. 16, para. 1530. The discussion reads as under (p. 1030):

1530. Issue estoppel.-An estoppel which has come to be known as 'issue estoppel' may arise where a plea of res judicata could not be established because the causes of action are not the same.

A party is precluded from contending the contrary of any precise point which, having once been distinctly put in issue, has been solemnly and with certainty determined against him. Even if the objects of the first and second actions are different, the finding on a matter which came directly (not collaterally or incidentally) in issue in the first action, provided it is embodied in a judicial decision that is final, is conclusive in a second action between the same parties and their privies. This principle applies whether the point involved in the earlier decision, and as to which the parties are estopped, is one of fact or one of law, or one of mixed fact and law. The conditions for the application of the doctrine have been stated as being that (1) the same question was decided in both proceedings; (2) the judicial decision said to create the estoppel was final; and (3) the parties to the judicial decision or their privies were the same persons as the parties to the proceedings in which the estoppel is raised or their privies. Where one party has raised an issue which his opponent alleges is barred by issue estoppel the opponent can either plead the estoppel and leave the matter to be dealt with at the trial, or he can attempt to have the offending plea struck out.

27. Mr. Tulzapurkar on behalf of the defendants has submitted that when the defendants applied in 1964 to have their mark BUTACORT registered, the plaintiffs opposed the application contending that they were the proprietors of the earlier registered trade mark BUTACORTINDON which was very similar to the mark in respect of which the defendants had applied and, therefore, under Section 12(1) were entitled to call upon the Registrar to refuse the defendants' application. According to him, the only statutory provision which was available to the defendants to counter such opposition was the one to be found in the second part of Section 33 (as previously indicated). According to Mr. Tulzapurkar, the issue whether the defendants had continuously used their trade mark BUTACORT from a date prior to the date of registration of the plaintiffs' trade mark was directly in issue before the Deputy Registrar, though in the opposition proceedings, and inasmuch as the issue had been decided in favour of the defendants by the Deputy Registrar, the issue raised in Court was also required to be decided by the Court in the defendants' favour irrespective of whether in the opinion of the Court the evidence led by the defendants before it can be regarded as sufficient evidence of the defendants' prior continuous user as required by the section. According to this submission, if Issue No. 3 was answered in favour of the defendants and in the affirmative, Issue No. 4 became unnecessary and the Court was not required to apply its mind to what was required to be proved in respect of the prior continuous user required by Section 33 and was bound to allow on this issue the decision of the Deputy Registrar. It is in this context that it becomes necessary to consider what was the decision of the Deputy Registrar as far as Section 33 was concerned.

28. I have already briefly indicated my reading of Section 33. I have also stated that the qualification or limitation or condition to the defendants' application could be imposed only under Section 12(3) and not by reason of any discretion or power conferred on the Registrar under Section 33. Under Section 33 the plea of continuous prior-use was required to be considered and decided in favour of the defendants if the plaintiffs' opposition was to be rejected and the application of the defendants granted. I have already extracted earlier in this judgment the relevant portion of the judgment and order of the Deputy Registrar. The words which have been considered proceed upon the application of Sections 12(1), 12(3) and Section 33 of the said Act. The nature of the opposition is considered in the first place and the answer is then sought from the applicants (defendants) and this answer is provided by Section 33. This answer is accepted and the Registrar must necessarily proceed to accept this only on the defendants satisfactorily establishing their prior continuous user as required by Section 33. It is to be remembered that the use which has to be established by the applicants under the second part of the statutory provision (of Section 33) is not independently described or depicted but is only 'such use' i.e. the very use as described in the first part (with which we are concerned in the suit) being proved, and the decision of the Deputy Registrar obviously proceeds upon the footing that in the opinion of the Deputy Registrar such use had been proved in the opposition proceedings.

29. On the application of the principle of issue estoppel Mr. Tulzapurkar referred me to three authorities to which brief reference may now be made. The first of these was Thoday v. Thoday [1964] P. 181. The relevant observations are to be found in the judgment of Diplock L.J. at pages 197, 198 of the report. Diplock L.J. proceeds in these observations to distinguish in the first instance between what he designates as 'cause of action estoppel' and 'issue estoppel'. He then goes on to explain the concept of issue estoppel in the following words (p. 198):

.The second species, which I will call 'issue estoppel', is an extension of the same rule of public policy. There are many causes of action which can only be established by proving that two or more different conditions are fulfilled. Such causes of action involve as many separate issues between the parties as there are conditions to be fulfilled by the plaintiff in order to establish his cause of action; and there may be cases where the fulfilment of an identical condition is a requirement common to two or more different causes of action. if in litigation upon one such cause of action any of such separate issues as to whether a particular condition has been fulfilled is determined by a court of competent jurisdiction, either upon evidence or upon admission by a party to the litigation, neither party can, in subsequent litigation between one another upon any cause of action which depends upon the fulfilment of the identical condition, assert that the condition was fulfilled if the court has in the first litigation determined that it was not, or deny that it was fulfilled if the court in the first litigation determined that it was.

It may be borne in mind that immediately after the above passage Diplock L.J. proceeds to distinguish between 'issue estoppel' and 'fact estoppel'. According to him, the determination by a Court of competent jurisdiction of the existence or non-existence of a fact, the existence of which is not of itself a condition the fulfilment of which is necessary to the cause of action which is being litigated before that Court, but which is only relevant to proving the fulfilment of such a condition, does not estop (at any rate per rent Judicatum) either party in subsequent litigation from asserting the existence or non-existence of the same fact contrary to the determination of the first Court.

30. Although the point was not argued, it will become necessary to consider whether the decision of the Deputy Registrar in the opposition proceedings gives rise to any issue estoppel or the decision would merely amount to fact estoppel. If it is merely an instance of fact estopped then, according to Diplock L.J., the plaintiffs would not be estopped in the present litigation from asserting the non-existence or denying the existence of prior continuous user.

31. The principle of issue estoppel was applied by English Courts in Zeiss Stiftung v. Rayner & Keeler (No. J).4 This was a direct case under trade marks law and on an application of the principle of issue estoppel it was held that the decisions of Qadeeruddin J. in the High Court of West Pakistan at Karachi and of the Joint Registrar of Trade Marks in India were decisions giving rise to issue estoppel, the pertinent issue being that the plaintiff did exist as a corporate body in East Germany and it was held, therefore, that the defendants were estopped from denying the plaintiff's existence in the proceedings being considered by the English Court (see pp. 1009 and 1010 of the report). The principle, however, has not been discussed but only applied in the aforesaid decision. The application, however, is considerably illuminating.

32. The third decision is of the High Court of Mysore viz. K.R. Chinnakrishna Setty v. Ambal & Co. AIR[1973] Mys. 74. This was also a trade mark action in which it was held that the decision given in the earlier proceedings between the same parties with regard to registration of the trade mark operated as res judicata in a proceeding under Section 105. The plaintiffs in the appeal before the Mysore High Court were Sri Ambal & Co., Madras, a registered firm carrying on business in manufacture and sale of snuff. The suit was instituted by the plaintiffs against the defendants under Section 105 of the said Act for an injunction restraining the defendants from using, exhibiting or advertising by themselves or through their servants or agents or others the offending trade mark 'Sri Andal Snuff' or 'Sri Andal Officers' Snuff' or any other colourable imitation of the plaintiffs' registered trade mark 'Sri Ambal Snuff' and from trading under the name and style of 'Sri Andal & Co.' or any other name and style which was a colourable imitation of the plaintiffs' trading style 'Sri Ambal & Co.' Earlier defendants No. 1 had filed an application before the Registrar of Trade Marks for registration of their mark 'Sri Andal' and the Assistant Registrar had allowed the said application holding that the mark 'Sri Andal' was not deceptively similar to the plaintiffs' trade mark 'Sri Ambal' and therefore Section 12(1) of the said Act was not contravened. The objections of the plaintiffs in the notice of opposition to the application had been over-ruled by the Assistant Registrar. Aggrieved by the said order of the Assistant Registrar, the plaintiffs had filed the appeal, which was allowed by a single Judge and the decision of the single Judge confirmed in the Letters Patent Appeal by a division Bench and subsequently by the Supreme Court. In the suit counsel for the defendants tried to urge the contentions which are indicated in para. 6 of the report. The Court held that the decision in the matter of the trade mark application and the plaintiffs' opposition would govern the rights of the parties in the suit also observing that 'if a mark cannot be registered on the ground that it contravenes Section 12(1), then it follows that the user of the said mark will have to be restrained also in the suit filed under Section 105' (see para. 9 of the report). According to the Mysore High Court, the decision given in the earlier proceedings must operate as res judicata at the subsequent stage when a suit is filed, and it sought support for the view in the decision of the Supreme Court in Raj Lakshmi Dasi v. Banamali Sen : [1953]4SCR154 . Thus the principle was applied although the earlier decision was not one in a suit and, therefore, the same could not be brought within the four corners of Section 11 of the Code of Civil Procedure Code.

33. I have observed while discussing Thoday v. Thoday that 'issue estoppel' will be required to be distinguished from 'fact estoppel'. The issue directly arising before the Deputy Registrar in the matter of the plaintiffs' opposition to the defendants' application of 1964 for registration of their mark BUTACORT was whether the defendants proved continuous prior user and if so whether thereby the defendants were entitled to have their trade mark registered, although the same was deceptively similar to the plaintiffs' earlier registered mark BUTA-CORTINDON. Applying the test indicated by Diplock L.J. I am of opinion that what was decided by the Deputy Registrar was an issue in the proceedings before him and not a fact. In order to reject the contentions of the plaintiffs under Section 12(1) the Deputy Registrar was required to give a finding that the defendants had established their prior continuous use as was required under Section 33 of the said Act; and as pointed out earlier, though the Deputy Registrar was applying the second part of the said section, the use which is postulated for the application of the second part is identical with such use as is required to enable the defendants to take the benefit of the first part of the said section in this action. If the issue of prior continuous user then had been determined in favour of the defendants in the matter of the plaintiffs' opposition to their application, it must follow that the said issue will operate as res judicata by reason of the application of the principle of issue estoppel and that the decision must be respected by me irrespective of whether on the evidence before me I would have decided in the same manner as decided by the Deputy Registrar.

34. Mr. Tulzapurkar submitted that the issue was a necessary issue for the determination of the decision given by the Deputy Registrar, that the issue had been decided by a Court of exclusive jurisdiction and further that the parties had accepted the finality of that decision by not preferring an appeal therefrom. According to him, the conclusion of the Deputy Registrar was the final view and could not be considered a prima facie view. Accordingly as the issue was identical in the suit and between the same parties, he submitted that the issue was required to be answered in favour of the defendants by application of the principle of issue estoppel. As pointed out earlier, Mr. Shah submitted that the defendants were required to establish their prior continuous user in the suit itself and could not avail themselves of the decision of the Deputy Registrar. In the alternative his submission was that the decision of the Deputy Registrar must be looked at in its entirety and not piecemeal. According to the latter argument, the Deputy Registrar had decided prior continuous use but limited to the State of Gujarat and also limited to Government hospitals therein.

35. I am unable to accept either of the submissions of Mr. Shah in the behalf. In my opinion the use which was required to be proved by the defendants in their application proceedings before the Deputy Registrar of Trade Marks when their application was opposed by the plaintiffs was continuous user prior to the date of registration of the plaintiffs' mark and the identical issue arises in the suit. The determination will not give rise to fact estoppel but, in my opinion, to issue estoppel. It is true that the evidence led before the Deputy Registrar and the finding of fact was that this prior continuous use was of a limited nature, limited both in the matter of territory and in the nature of the persons with whom the applicants dealt. This qualified or restrictive nature of the use, however, appears to me to be irrelevant for the purpose of applying the decision on that issue in the suit. It may have some relevance if protection or immunity conferred by Section 33 could have been construed as limited to such actual use as is proved; but this would not depend on the question of issue estoppel but would turn on the proper interpretation of Section 33. Even as far as that restricted or limited use is concerned, it would appear that the decision of prior continuous user would give rise to issue estoppel and the nature of that use decided by the Deputy Registrar of Trade Marks would at the highest be a fact estoppel and it would be open to the defendants to establish in Court some user beyond that found by the Deputy Registrar. However, in the view that I have taken of the proper scope of Section 33 and of the application of the principle of issue estoppel it is unnecessary to go further or deeper into this aspect of the matter.

36. It has been pointed out that the defendants have led evidence in this Court and sought, independently of the decision of the Deputy Registrar, to establish their continuous use prior to the date of registration of the plaintiffs' trade mark. As stated earlier, out of the eight sales stipulated for in exh. 1 three petty sales are of a date prior to the date of registration of the plaintiffs' trade mark. We may also proceed on the footing that the sale in favour of Adarsh Traders which is also prior to this date stands proved. Thus as far as prior use is concerned, we have, excluding for the time being the oral evidence, the following documentary evidence:

(1) Defendants' application dated November 30, 1961 and the permission of the Director, Drugs Control Administration, Maharashtra State, dated December 18, 1961, permitting the defendants to manufacture BUTACORT tablets.

(2) The acceptance tender of the Director of Industries and Central Purchasing Officer, Government of Gujarat, dated November 17, 1961, accepting the defendants' offer (presumably made earlier) for supply bottles of BUTACORT tablets, in hundreds and thousands.

(3) Schedules of rate contract issued on March 22, 1963 of the Government of Gujarat, which also mention the defendants as suppliers of BUTACORT tablets.

(4) It is pursuant to these that we have the first three sales in exh. 1, which alone are relevant for our purposes.

(5) The only independent sale-independent in the sense of not being to a Government hospital in Gujarat-is in respect of one bottle of Butacort tablets sent to Adarsh Traders, and it has to be borne in mind that this firm of Adarsh Traders were the defendants' principal if not the only distributors when the defendants' commenced their business in a small way in 1960 and thereafter.

37. In the opposition proceedings there has been a clear admission on behalf of the defendants-and this has been brought on record of this suit in cross-examination-that in the price list for April 1964 the defendants had not mentioned this product Butacort. There was also an admission that the product was not sold to chemists (see exh. F). The sale to Adarsh Traders, which is sought to be established in the suit, seems to be genuine despite a clear admission to the contrary in the affidavit made in the proceedings before the Deputy Registrar, which is that of the defendants' partner. As far as the price list was concerned, it was sought to be established by this person who was the only witness examined that the earlier price list was one for July 1963 and although the price list did not mention this product, an addendum was subsequently (but before the price list of 1964) got printed and the price lists of 1963 and of 1964 used to be distributed along with this addendum. In the cross-examination Mr. Shah has brought on record a number of discrepancies and differences between the manner of printing and get-up of the price list and of the addendum. In addition to these discrepancies, the clear admission made in exh. 6 is required to be considered. In my opinion, it will be unsafe to accept as proved this addendum, exh. 8A, as having been issued by the defendants in 1963 or in 1964. The only evidence then of the user by the defendants of their mark BUTACORT is of the few sales of this product as indicated earlier and the letters to the State of Gujarat. No further attempt has been made to show the quantum of total production (quantity wise or moneywise) or the actual aggregate sales of the product for the relevant period which would be the period prior to the date of registration of the plaintiffs' mark BUTACORTINDON.

38. It was submitted by Mr. Shah that such user as has been established by the defendants in this case cannot be accepted as satisfactory evidence of continuous prior user as is envisaged by Section 33 of the said Act.

39. I may make it clear that in the view that 1 have taken of the application of the principle of issue estoppel, where I have accepted Mr. Tulzapurkar's submission and rejected Mr. Shah's I am not called upon really to decide whether the defendants can be said to have established the case of continuous prior user in this Court as is envisaged by Section 33 of the said Act. I am, however, inclined to briefly indicate my view on this question. I think this course is desirable inasmuch as the view that I have taken of Section 33 is not supported by any authority and, indeed, none having a direct bearing on the question has been cited before me. It has been submitted by Mr. Shah that the use which is required to be established for the purpose of conferring on a party the protection or benefit provided in that section must be fairly substantial or extensive and although no hard or fast rule can be laid down or limits or parameters determined, it has been submitted with considerable force that the use proved by the defendants in the Court can hardly qualify or could be accepted as such use as is postulated by the said section. It has been submitted that considered from any angle the use proved is insignificant and not substantial. The question is: Would it be proper to regard such isolated instances of use of a mark as equivalent to continuous user which is indicated as the basic requirement for the conferment of the protection of Section 33 of the said Act?

40. Counsel on both sides drew my attention to authorities in which there are observations which would support their respective stands on this question. Mr. Shah drew my attention to the observations of Vice-Chancellor Leigh Clare in Williams's Ld. v. Massey Ld.(1911) 28 R.P.C. 512 The view expressed is that the user within Section 41 of the Trade Marks Act, 1905, cannot mean sale of a single piece or of a very few pieces of goods with the trade mark on. According to the learned Judge, under Section 41 substantial user is meant and there must be something like substantial user proved (see p. 515 of the report).

41. Observations in a similar vein are to be found in the decision given by Maugham J. in Smith Bartlet and Co. v. The British Pure Oil Grease and Carbide Co. Ld. (1933) 51 R.P.C. 157 On the other hand, Mr. Tulzapurkar drew my attention to the discussion at p. 251 of Kerly's Law of Trade Marks and Trade Names, tenth edn. He. submitted that a reasonable construction is required to be put on the requirement bearing in mind the date of commencement by the defendants of their independent business and the date of appropriation of the mark. According to him, once there was user, continuous user must be presumed unless there were circumstances shown from which an intention to abandon the trade mark could be inferred. My attention was drawn in this connection to observations in Mouson & Co. v. Boehm (1884) 26 L.R. 398, which is referred to by Kerly, and also to observations in paras. 19 and 20 of the decision of the Supreme Court in London Rubber Co. v. Durex Products Inc. : [1964]2SCR211 It was submitted that the use by the defendants was such use as was consistent with the fact that the production of tablets with the mark BUTACORT first commenced in December 1961 and that although such use was on a small scale, it could not be said to be non-continuous.

42. As stated earlier, I am not really called upon to decide this point for myself inasmuch as I have taken the view that the decision of the Deputy Registrar on the question of the opposition by the plaintiffs to the defendants' application in 1964 concluded the issue in favour of the defendants. Were I required to decide this issue for myself, I would have lavished a little more attention and discussed the aforesaid authorities and tried to establish the correct principle. To a large extent, it appears to me, the question of continuity of use of a Trade Mark and the question of abandonment thereof cannot be regarded as being similar much less identical. It would not be proper to hold that unless there is clear evidence of an intention to abandon, continuity must be presumed. It must be borne in mind that what Section 33 requires is for the defendants (or the applicants in the trade marks application) to establish positively and affirmatively their continuous user from a date prior or anterior to the registration of the other mark. Once initial user of such mark is established, further evidence of actual use (not necessarily sales) would be required and any lacunae cannot be got over by mere presumption. There cannot be any hard and fast rule indicative of what user is required; in a particular case, however, the question may not pose any great difficulty. The evidence led by the party seeking to establish continuous prior user will be required to be considered in the background of the nature of the product, the type of sales, the territory within which it is sold and the scale of manufacture of the party. If the type of sales and the manner of use proved in the present case is scrutinised from this angle, I would have myself been inclined to hold that the defendants have not established such continuous prior user as would entitle them to the protection or immunity conferred by Section 33. To a considerable extent, my view in this matter is influenced by my interpretation of Section 33. I have rejected the submission of Mr. Shah that Section 33 only protects the actual previous use which may be limited which is proved as having existed prior to the date of registration of the other mark. In the view that I have taken, once continuous prior user is established, the person who establishes such user secures absolute protection and immunity whereunder file proprietor of a registered trade mark becomes disentitled to restrain or interfere with the use by prior user although such subsequent user may be far more extensive than the prior user which such party has been able to establish. If that is so, then, in my opinion, there is warrant for requiring such prior user to be established by clear and cogent evidence and for insisting that such user must be much more substantial than what has been established by the defendants in the suit before me. Had I been inclined to, accept Mr. Shah's submission on the proper construction of Section 33 of the said Act, a different approach would perhaps have been in order.

43. As stated earlier, although this is my view on the evidence before me, I am bound by the decision of the issue implicit in the decision of the Deputy Registrar of Trade Marks in the matter of opposition to application No. 224322, which was the application of the defendants which had been opposed by the plaintiffs under Section 12(1) of the said Act. In this view of the matter, the defendants will secure for themselves the total immunity which, in my view Section 33 confers on them, though, if I had been left to decide the matter for myself, my view would have been that on the evidence before the Court the defendants had not established the user envisaged by the section and were therefore not entitled to secure for themselves such immunity. If I had come to the conclusion that I was not bound by the decision of the Deputy Registrar on this issue, then I would have been inclined to grant to the plaintiffs the injunction sought for substantially (perhaps with a slight variation or clarification). However, since I am of the view that I am bound by the decision on the issue as determined by the Deputy Registrar, the plaintiffs must fail in their suit and will be disentitled to any injunction.

44. In this connection it is required to be observed that the limitation or condition imposed by the Deputy Registrar at the time of granting to the defendants their application appears to me to be irrelevant in this suit. The registration with condition is relevant only if the defendants were to commence an infringement action complaining of the breach of their registered trade mark by a third party. In such infringement action commenced at the instance of the defendants the limitation or condition put or imposed by the Deputy Registrar on the defendants would be relevant and in such a suit (were the defendants to initiate action) the defendants would only get such relief as would be circumscribed or limited by the conditions imposed by the Deputy Registrar. The suit before me is not for affording any right to the defendants by reason of their registration but rather of considering whether they have secured any immunity or defence against the plaintiffs' claim in suit by reason of Section 33 of the said Act. For the purpose of considering this limited question the restrictions or conditions imposed by the Deputy Registrar under Section 12(3) of the said Act appear to me to be throughly irrelevant.

45. In the result, the issues are answered as follows:

Issue No. 1-In the affirmative. This has been conceded by Mr. Tulzapurkar.

Issue No. 2-In the affirmative but subject to what is hereinafter stated, particularly with respect to Issue No. 5.

Issue No. 3-In the affirmative and in favour of the defendants for the reasons indicated in the judgment.

Issue No. 4-In the view that I have taken it is unnecessary to decide this issue; but I have already indicated what my answer would have been if answer to Issue No. 3 had been in the negative.

Issue No. 5-In the affirmative and in favour of the defendants.

46. In the view that I have taken of the immunity conferred by Section 33 of the said Act on the defendants, the plaintiffs' suit must be dismissed, but there will be no order as to costs. Orders accordingly.


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