1. This is an appeal filed under Sub-section (2) of Section 109 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as 'the Act') from a judgment of the Joint Registrar of Trade Marks dated July 29, 1969 allowing an application for rectification of the register of trade marks made by the present respondents under Section 56(2) of the Act. That application for rectification was made by the present respondents to the Registrar of Trade Marks, and not directly to this Court, as the case was not one which was governed by the provisions of Section 107 of the Act. The trade mark in question in these proceedings consists of the word 'Amar' in respect of textile piece goods which would fall under Class 24. The said mark was registered by the present petitioners in Part B of the Register under No. 212206B as of November 8, 1962. Registration was actually granted on March 25, 1964, but the same would, by virtue of the provisions of Section 23 of the Act, relate back to November 8, 1962 which was the date of the making of the application for registration before the Registrar by the present petitioners. On May 21, 1964, the present respondents applied for registration of the same word mark 'Amar' under No. 222437 in Part B of the Register in regard to textile goods comprised in Class 24, and on September 2, 1965, they filed Rectification Application No. BOM-124 before the Registrar for cancellation of the registration of the petitioners' said mark No. 212206B. That Rectification Application was granted by the Joint Registrar by his judgment and order dated July 29, 1969, and it is from that judgment and order that the present appeal has been filed in the usual form of a 'Miscellaneous Petition.'
2. The case of the present petitioners is that one of their partners Arjandas was a partner in a firm named Radhakishan Kanshiram which was carrying on business in textile piece goods in Ahmedabad, and the said firm was using the trade mark 'Amar' for various textile piece goods; that the said firm of Radhakishan Kanshiram was dissolved 'in about the year 1955'; and that the present petitioner-firm, in which the said Arjandas became a partner, adopted the said trade mark in respect of textile piece goods from the year 1958, and as from that time onwards till July 20, 1966 sold goods bearing the said mark aggregating in value to a little over Rs. 53 lakhs. As against that, the case of the present respondents is that it is they who first adopted the said mark 'Amar' in respect of textile piece goods in the year 1955, and had during the period between the said year and July 6, 1965 sold goods bearing the said mark aggregating in value to over Rs. 63 lakhs. It is also the present respondents' case that they had actually sold from time to time goods bearing the said mark to the present petitioners themselves who, admittedly, were also doing business as commission agents at all material times. The present respondents' case is that the present petitioners had no right to register the said mark in their own name as they have done under No. 212206B, because they were not the proprietors of the said mark, and also because the registration of the present petitioners' said mark was likely to cause deception or confusion within the terms of Section 11(a) of the Act. According to the present respondents, they came to know of the user of the said mark by the present petitioners on their own goods only when the mills who were stamping the same on behalf of the present respondents received notices from the present petitioners objecting to their stamping the said mark for the present respondents.
3. After the usual procedure was followed in the registry, and evidence filed in the form of affidavits, the Registrar heard both parties and delivered his judgment ordering that the register be rectified by expunging the entry relating to trade mark No. 212206B from it on two grounds, viz. (1) that it had been made contrary to the provisions of Section 11(a) of the Act; and (2) that the present petitioners could not properly claim that, on the date from which that registration was effective, viz. November 8, 1962, they were the proprietors of that mark.
4. Before dealing with the merits of the controversy between the parties, I must refer to the relevant statutory provisions with which I am concerned in this case. Section 11(a) lays down that a mark the use of which would be 'likely to deceive or cause confusion' cannot be registered as a trade mark, and it is well-settled that before an objection under Clause (a) of Section 11 can be sustained by a party, it is necessary for him to establish reputation in the trade in connection with the trade mark, unless the trade mark is distinctive per se. Sub-section (1) of Section 12 lays down that, save as provided in Sub-section (3) thereof, no trade mark can be registered in respect of any goods or description of goods 'which is identical with or deceptively similar to' a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods. Sub-section (3) of that section, however, permits registration of the same trade mark to be granted in respect of the same goods or description of goods to more than one proprietor thereof in case of honest concurrent user of that mark by the parties concerned. As held by me in the case of In re R.T. Engineering etc Co. (1970) 73 Bom. L.R. 586, under Section 11(a) what is to be considered is the possibility of deception or confusion by considering actual user, whilst under Section 12(1), the Court has only to take into account notional fair user on the basis of the similarity of the two marks. Section 18 enacts that any person 'claiming to be the proprietor of a trade mark', Who is desirous of registering it, must apply in writing to the Registrar in the prescribed manner. It is not necessary to refer to the remaining part of that section. Section 56 of the Act, with which I am directly concerned in this case, inter alia, provides in Sub-section (2) thereof that any person aggrieved 'by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register,' can apply in the prescribed manner to the High Court or to the Registrar for expunging or varying that entry as may be thought proper. It is on an application made under this statutory provision that the Joint Registrar has, in the present case, ordered the register to be rectified by expunging therefrom the mark which the present petitioners had got registered under No. 212206B.
5. It will be convenient at this stage to deal with certain points of a preliminary nature which arise in connection with the provisions of Section 56. It is not disputed that in an application for rectification made under Section 56(2), the burden of proof is on the applicant for rectification (Kerly on Trade Marks, 10th edn., page 232, para. 11-63; Bali Trade Mark (1970) 73 Bom. L.R. 586; and Shavaksha on Trade and Merchandise Marks Act, 2nd edn., p. 168). The second point of a preliminary nature which may be disposed of is that the granting or refusal of an application for rectification under Section 56(2) is a matter resting in the discretion of the Registrar of Trade Marks. This legal proposition is not disputed by either side, and no authority need be cited for that proposition, but if authority be needed, reference may be made to Shavaksha's standard work on the Act (2nd edn., p. 26) in which passages from certain English decisions have been quoted, to the effect that in view of the great experience of the Registrar in the matter of trade marks, the Court should not lightly interfere with his discretion, but should interfere with it only if it comes to the conclusion that he has misdirected himself or acted upon some wrong principle. To the same effect are the observations of the division Bench of this Court in the case of Ciba Ltd. v. M. Ramalingam : AIR1958Bom56 and of another division Bench of this Court in the case of Sunder v. Caltex (India) Ltd. (1965) 70 Bom. L.R. 37 The next point that arises in connection with Section 56 of the Act is as to what is the crucial date for the purpose of determining whether or not the register should be rectified in a given case. A plain reading of Sub-section (2) of Section 56 shows that it provides for such rectification in two cases, viz. first, when the entry has been 'made' in the register without sufficient cause or, secondly, in a case in which though an entry may initially have been properly made, when it is 'wrongly remaining' on the register by reason of something that has subsequently occurred. It, therefore, stands to reason that for the purpose of the first ground of rectification, the crucial date should be the date when the entry was made in the register, whereas for the second ground of rectification, it should be the date on which the rectification is sought by the party concerned. That is precisely what has been laid down by the High Court of Justice in England in the case of In the Matter of Applications by Pan Press Publications, Ld. (1948) 65 R.P.C. 193.
6. That brings me to a consideration of the merits of the controversy between the parties to the present case. In the exercise of his discretion, the Joint Registrar has granted rectification of the Register by expunging the present petitioners' mark on two grounds, viz. that the registration was in contravention of Section 11(a) of the Act, and that the present petitioners could not properly claim to be the proprietors of the trade mark in question. I would prefer to consider the second of those grounds first. In foot note No. 7 at. page' 45 of Kerly on Trade Marks, reference is made to a decision of the Registrar expunging a mark, inter alia, on the ground that although the application had been made in good faith, in fact the claim to proprietorship was wrong because the applicant for rectification was, by reason of his prior use, the proprietor of that mark. In the case of Consolidated Foods v. Brandon & Co. (1961 66 Bom. L.R. 612 a single Judge of this Court has quoted, with approval, a statement from a judgment of the Rangoon High Court to the effect that as between two competitors who are each desirous of adopting a mark, it is 'entirely a question of who gets there first', and has stated that priority in adoption and use of a trade mark is superior to priority in registration. It was, on that basis that the learned Judge held (at p. 630) that as between the two users of the mark before him since the petitioner-corporation had a priority both in adoption of the mark and in the user thereof, the respondent-company was not entitled to claim the mark as a proprietor and apply for registration thereof. The question that I must proceed to consider, on the material on record, therefore, is as to who had priority in adoption and use of the mark 'Amar' which is in dispute in the present case. The present petitioners have no doubt sought to claim registration on the footing that they have used it since the year 1958, but, on a careful scrutiny of the material on record, I have come to the conclusion that they have failed1 to prove that they had sold any goods of their own bearing the said mark, at any rate, till 1961. In the affidavit filed by Arjandas, one of the partners of the present petitioner firm, it is alleged that the mark in question was being used by another firm in which the said Arjandas was a partner prior to the dissolution of that firm 'in about the year 1955'. There is, however, nothing except the bare word of the said Arjandas to prove that fact, and even the statement of Arjandas on the said point is beautifully vague, in so far as the dissolution of the earlier firm is stated to have taken place only on approximate basis in the year 1955 as is clear from the use of the word 'about' in connection with the same. The said Arjandas has further affirmed that from about January 1958 the petitioner-firm in which, he became a partner had started using the said mark, and in paragraph 8 of his affidavit he has purported to give the figures of the sales of goods bearing the same mark in the years 1958, 1959 and 1960. There is, however, no documentary evidence by way of books of account to support that claim, it being the case of the present petitioners that their books upto the year 1960 had been eaten up by white ants. Whether white ants did, in fact, eat up the present petitioners' books or not, the fact remains that we have no books of account to support the figures in paragraph 8 of the affidavit of the said Arjandas in regard to the years 1958, 1959 and 1960. reliance was also sought to be placed by Mr. Tulzapurkar on the affidavits of three persons who claim to have purchased goods bearing the said mark from the present petitioners. The first of those affidavits is of one Dherashah who has stated that he purchased goods bearing the said mark from the petitioners in the years 1958 and 1959-60, but the evidence produced by him shows that he had purchased only two bales in those three years. The second affidavit is of one Hariam who claims to have purchased goods bearing the said mark from the present petitioners in. the years 1957-58 and 1959-60. It is curious indeed that this man claims to have purchased goods in the year 1957 bearing the mark in question from the present petitioners when, according to the present petitioners themselves, it was not till 1958 that they started using the said mark on their own goods. The extent of the sales in the case of this person also is only two bales in the course of the said four years. The third affidavit is of one Moti Ram who also claims to have purchased goods bearing the said mark from the present petitioners in the year 1957-58. The observations which I have made in regard to the alleged purchase in 1957 in respect of the deponent Hariam apply to this deponent also, and in his case the purchase is of one bale only during those two years. With the affidavit of Chhogomal, the manager of the respondents, dated June 2, 1967, are annexed two invoices, one of January 20, 1958 and the other of February 3, 1958 showing purchases by the present petitioner-firm from the present respondent-firm of goods bearing the mark 'Amar' aggregating to Rs. 6,766.58 and, indeed, those purchases have at no time been disputed by the present petitioners whose own case is that they were made by them as commission agents on behalf of their constituents. The total of the purchases made by Dherashah, Hariam and Moti Ram which have been placed on affidavit by them aggregates to only about Rs. 5,000, and those goods could, therefore, very well have been sold by the present petitioners to the said deponents out of the goods bearing the mark 'Amar' which, admittedly, the present petitioners had, in their turn, purchased from the present respondent under the invoices dated January 20, 1958 and February 3, 1958 to which I have already referred. The said purchases which are relied upon by the present petitioners can, therefore, be of no use whatsoever to them for the purpose of proving that in the years 1958, 1959 or 1960 they had used the mark 'Amar' on goods of their own, as alleged by them. In order to prove that fact, nothing would have been simpler for the present petitioners than to have produced affidavits from the mills at which stamping on such goods is invariably done, which the present respondents have produced in support of their mark. Sufficient time was, in fact, given to the present petitioners to produce such evidence from the mills, but they have not done so, and the only conclusion that I can draw is that they have no such evidence and they have at no time got the mark 'Amar' stamped by any mills during the years 1958, 1959 or 1960, and that the goods which they had sold to some parties bearing the mark 'Amar' in those years were goods which they had obtained as commission agents from the present respondents themselves. Mr. Tulzapurkar on behalf of the present petitioners sought to rely on some orders which, it is alleged, had been received from other parties showing the use of the said mark by the present petitioners prior to 1961 and he has shown to me the order forms on which he relies and has furnished me with a list of the same. There are fourteen such order forms for goods aggregating to twenty-five bales which he has produced before me, and his contention is that since the said goods were of a value far in excess of the value of the goods which the present respondents had sold to them, they could only be goods which had been independently got stamped by the present petitioners themselves, as bearing their own mark. It may be mentioned that those order forms are not a part of the record in the present rectification proceedings, and Mr. Chagla has objected to Mr. Tulzapurkar referring to or relying upon them. Mr. Tulzapurkar has, however, drawn my attention to the fact that they are referred to and relied upon in paragraph 8 of the affidavit filed by Arjandas on December 29, 1967 in the present proceedings themselves, though the order forms have not been filed in these proceedings. I do not propose to shut my eyes to these order forms merely on that technical ground, but I have come to the conclusion that the present petitioners have not proved the authenticity of those order forms. First and foremost, there is no affidavit filed by any of the alleged purchasers of those goods as was done by the three purchasers, viz. Dherashah, Hariam and Moti Ram in support of the present petitioners' case to which I have already referred. Unless these order forms are placed on affidavit, it is impossible for me to rely on them, as it is not at all difficult for any party to obtain a blank order form of any firm in Bombay and make out a document thereon. Moreover, if such affidavits are made, the deponents would be able to state on oath whether the said transactions appear in their own books, a fact which I have no means of finding out in the absence of those affidavits. The petitioners' own books, as already stated above, are very conveniently missing as having been eaten up by white ants. Thirdly, again as already stated above, there is no evidence that any goods were got stamped by the present petitioners by any mills till the year 1961. I have, therefore, come to the conclusion that the present petitioners have not proved that they have sold any goods of their own bearing the said mark till the year 1961. As against that, as the learned Joint Registrar has pointed out in his judgment, there is abundant evidence to prove the use of the said mark by the present respondents since November 1955. Apart from the affidavits to which he has; referred, the figures of the sales of such goods which are to be found set out in paragraph 9 of the affidavit of Clihogomal Thakurdas dated December 10, 1965 are substantiated by the present respondents' own books of account. Indeed, it may be stated in fairness to Mr. Tulzapurkar that he has not seriously disputed these sales of the present respondents. I have, therefore, no hesitation in holding that the present respondents have been using the mark in question on their own goods since November 1955. It can also not be disputed that the present petitioners had knowledge of that fact, in view of the admitted position that, at any rate, in 1958 they had themselves purchased goods bearing the said mark from the present respondents. Moreover, it is also an admitted position that the shops of the present petitioners and the present respondents are in fairly close proximity to each other, and I have, therefore, also no difficulty in coming to the conclusion that the present petitioners had knowledge that the present respondents were selling their own goods with the mark 'Amar' stamped on them right from November 1955. The position, therefore, is that it has been established by the material on record in this case that the present respondents were the first users of the mark in question to the knowledge of the present petitioners, and that the present petitioners, therefore, could not claim to be the proprietors of that mark, as the Joint Registrar has rightly held. I do not accept Mr. Tulzapurkar's contention that in exercising his discretion under Section 56(2) of the Act, the Joint Registrar has; misdirected himself.
7. The next question to which I must address myself is, whether the registration of the present petitioners' mark was made in contravention of Section 11(a) of the Act. It was sought to be contended by Mr. Tulzapurkar that the present respondents have failed to discharge the burden of proof which, lay upon them to prove that the registration, of the petitioners' mark was in contravention of Section 11(a) because they have not been able to prove any case, of actual confusion. In that connection, it must be borne in mind that what has to be proved for the purpose of Section 11(a) is the likelihood of deception or confusion, and not actual deception or confusion (In re R.T. Engineering etc. Co., at pp. 590-91, following Bali Trade Mark, at p. 496). It is true that, as stated by Kerly on Trade Marks (at page 478, para. 17-38), if one or more cases of actual deception are made out to the satisfaction of the Court, that would, of course, afford very strong evidence that the resemblance of the marks in question was so close as to be likely to deceive, but it is further stated in Kerly that the absence of such evidence of actual deception is a circumstance which varies greatly in weight according to the nature of the case. The circumstance that the mark in question in the present case is identical and the goods on which the stamp is being used by both parties are also identical, must, in my opinion, lead to the conclusion that confusion or deception inevitable. As stated in the case of Sunder v. Caltex (India) Ltd. already cited above (at p. 45), broadly speaking, one of the factors creating confusion would be the nature of the mark itself. As far as the necessity of the present respondents to establish the reputation of their mark in the trade in connection with the textile piece goods is concerned, I agree with the Joint Registrar that there is sufficient material on record to prove the same. I have, therefore, come to the conclusion that the Joint Registrar was right in holding that the registration of the present petitioners' mark was made in contravention of the provisions of Section 11(a) of the Act.
8. It was, however, sought to be contended by Mr. Tulzapurkar that the conduct of the present respondents in acquiescence in the use of the said mark by the present petitioners, and their delay in adopting proceedings, disentitle them to relief by way of rectification. The important question of law that arises in regard to this contention of Mr. Tulzapurkar is whether, in proceedings under Section 56(2) of the Act for rectification of the Register, the Court has merely to see the conduct of the parties, or whether it is also concerned, with the purity of the register in public interest even if the conduct of the parties applying for rectification may show some amount of delay or acquiescence. It was strenuously urged by Mr. Tulzapurkar on behalf of the present petitioners that, except in a case in which a mark is inherently incapable of registration under Section 9 of the Act, the Court is not concerned with the question of purity of the register, and if the applicant for rectification is 'unmeritorious', it should decline to grant his application. In support of that proposition, Mr. Tulzapurkar relied on two passages from Kerly on Trade Marks, (pp. 214-215, paras. 11-26 and 11-27), but in my opinion, a fair reading of those passages does not bear out the proposition urged by Mr. Tulzapurkar, in so far as the proposition stated in Kerly (para. 11-27) that the Court is not bound on an application of unmeritorious defendants to remove an entry from the register which on the face of it is not illegal because the original registration might have been opposed by a third person who did not oppose and who at the time of the motion to rectify has discontinued use, is a proposition which is hedged in by various conditions. It cannot be read as a simple proposition to the effect that if the applicant for rectification is an 'unmeritorious' person, he must be denied relief even if the question is one that affects the purity of the register or public interest. In the course of his reply on this point, Mr. Tulzapurkar also relied on the decision of two single Judges of this Court, one being the decision of Shah J. in the case of Nekumar v. Mohanlal Hargovindas : AIR1963Bom246 and the other being an unreported decision of my brother Lentin in Shree PrajaPat Tiles Co. v. Shree Saurashtra Tiles Mfg. Co. (1975) Miscellaneous Petition No. 759, but apart from the fact that, in my opinion, the views expressed by the learned single Judges in the said two cases cannot prevail over the views expressed in the decision of the division Bench of this Court in Ciba's case already cited above on another point, neither of these two cases lays down the proposition for which Mr. Tulzapurkar contends. The question which arose before Shah J., in Nekumar's ease was whether, on a true construction of Section 56(2), the Registrar had jurisdiction to rectify the register on any ground other than the grounds stated in the application for rectification by a 'person aggrieved' (para. 11). It is that proposition that was negatived by the learned Judge (para. 12), and it is, in that connection that it was stated by the learned Judge that the tribunal cannot act suo motu under Section 56(2) in eases other than those in which the mark is, in its very nature, incapable of registration or where the registration is illegal or improper, but the applicant for rectification must substantiate his grounds (paras. 12 and 14). With respect to Shah J., he was bound by the law laid down by the division Bench in its decision in Cilm's case which he has cited in regard to the purity of the register, but which he has distinguished on grounds which are difficult to appreciate. In Ciba's case the Court was not dealing with a mark which was inherently incapable of registration The observations of the division Bench in Ciba's case were not made only in reference to Section 10 of the Act of 1940 (corresponding to Section 12 of the present Act), but were also made in reference to Section 46 of the Act of 1940 (corresponding to Section 56 of the present Act), and I am bound by the same. As far as the unreported judgment of my brother Lentin is concerned, that learned Judge was also bound by the decision of the division Bench in Ciba's case. Moreover, I do not read the said judgment as laying down that the question of the purity of the register cannot enter into a consideration of an application for rectification based on grounds other than those contained in & 9 of the Act. In fact, the contention of Mr. Tulzapurkar before the learned Judge, which has been characterized by the learned Judge as correct, was that the Court would not go into the question of purity of the Register in each and every case, but would go into it 'only for certain reasons, namely if the mark was inherently incapable of registration or the registration was illegal ab initio on the face of it.' The last disjunctive portion of that sentence would, perhaps, also cover a case in which an entry was 'made' in the Register in contravention of Section 11(a) of the Act. In the case before the learned Judge, 'the two devices were ex facie similar', and the question was one under Section 12(1), as well as a question of fraud in falsely claiming to be the proprietor of the trade mark at the time of making the application for registration under Section 18 of the Act. On the other hand, as against these two decisions, we have the decision of the division Bench of this Court in the case of Ciba's Ltd. v. M. Ramalingam referred to above. The facts of that case were that the appellants had got their mark 'Ciba' registered on August 24, 1946, and on November 3, 1949 the respondents got their mark 'Cibol' registered. On March 16, 1950, the appellants applied under Section 46(2) of the Act of 1940 (which corresponds to Section 56(2) of the present Act) for rectification of the register on the ground that the respondents' mark so closely resembled their mark that its registration contravened Section 10(7) of the Act of 1940 (which corresponds to Section 11(a) of the present Act). It is, therefore, quite clear that, in Ciba's case the tribunal was not dealing with a mark which was inherently incapable of registration under Section 6 of the Act of 1940, which corresponds to Section 9 of the present Act. The Registrar ordered rectification, but Coyajee J., reversed that order. On further appeal to a division Bench, the Registrar's order was restored. The division Bench took the view that, in view of the phonetic as well as visual resemblance between the two. words, it was clear that the subsequent registration of the respondents' mark was not justified in law (at p. 561), and no case had been made out for interfering with the discretion exercised by the Registrar in favour of the appellants (at p. 566). In so holding, Chagla C.J., delivering the judgment of the Bench, observed, as follows (p. 560):
Now, in considering both Section 46 and Section 10, it has got to be remembered that the primary duty of the Court is towards the public and the maintenance of the purity of the register. When a case is sought to be made out that a particular trade mark is likely to deceive or cause confusion, the contest is not so much between the parties to the litigation as it is a contest between the party defending his right to a particular trade mark and the public, and the duty of the Court must always be to protect the public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive or cause confusion. The object of maintaining a trade mark register is that the public should know whose goods they are buying and with whom particular goods are associated. It is, therefore, essential that the register should not contain trade marks which are identical or which so closely resemble each other that an unwary purchaser may be likely to be deceived by thinking that he is buying the goods of a particular person or a particular firm or a particular industry, whereas he is buying the goods of another person or firm or industry.
The learned Chief Justice proceeded to state (at pp. 563-564 and 565) that, the question of delay had, therefore, to be approached from the point of view of the substantial injury, if any, caused to the respondent thereby, which should 'outweigh the interest of the public' which the Court has to consider. He added that the consideration of hardship cannot be taken into account where the party who seeks protection on that ground is not 'an innocent party', but is a party which has 'deliberately selected' a mark resembling the mark of the other party. In the case of Amritdhara Pharmacy v. Satya Deo : 2SCR484 , the plea of acquiescence was considered and upheld by the Supreme Court in regard to honest concurrent user by the respondent in a part of the territory, viz. the State of Uttar Pradesh, so as to bring the case within Section 10(2) of the Act of 1940, which corresponds to Section 12(3) of the present Act. The two main facts and circumstances relied upon by the Supreme Court for that purpose were that the user by the respondent in that territory was not fraudulent, and that the appellant was well aware of that user and had stood by and allowed the respondent to develop his business. In my opinion, the decision of the Supreme Court in Amritdhara's case is limited to the facts of that case and must be understood in the context of the claim of honest concurrent user by the respondent before that Court, in as much as the circumstances establishing the plea of acquiescence were relied upon only in order to 'bring the case within Sub-section. (2) of Section 10' of the Act of 1940. The said decision does not deal with the law bearing on the plea of acquiescence in general. There is nothing in the judgment of the Supreme Court in Amritdhara's case which could be said to run counter to, or to modify, the views expressed by Chagla Clause J. in Ciba's case in regard to the Court's duty to maintain the purity of the register which are, therefore, still good law. We have also the high authority of the House of Lords in the case of Bali Trade Mark in regard to Section 11 of the Trade Marks Act of 1938 in England, the material part of which, it may be stated, corresponds substantially to Section 11 of our present Act. Referring to that section and the previous history of the legislation on the point, it was observed by Lord Upjohn (at p. 495), 'Section 11 and its forebears were designed not so much for the protection of other traders in the use of their marks or their reputation but for the protection of the public.' In the said case, it was held that the mere fact that the mark had been registered for twenty-five years was not a ground which would justify the Registrar in exercising his discretion in favour of allowing the mark to remain on the register. Reliance was sought to be placed for that proposition by Lord Upjohn on an earlier decision of that House itself to which it is unnecessary for me to refer. Following: the decision of the division Bench of this Court in Ciba's case, by which I am bound and with which I respectfully agree, as well as the observations of Lord Upjohn in the Bali Trade Mark's ease to which I have referred and with which also I agree, I, therefore, hold that in considering an application for rectification under Sub-section (2) of Section 56 of the Act, the Court has to consider not merely the conduct of the parties, but also the question, of purity of the register in public interest, whether the rectification is sought on the ground of contravention of Section 9 or on any other ground. In the view which I have taken above viz. that the present petitioners could not properly claim to be the proprietors of the trade mark 'Amar' and that the registration of the said mark was made in contravention of Section 11(a) the Act, I would, for the sake of the purity of the register in public interest, grant rectification and order the present petitioners' said mark to be expunged from the Register, even though the conduct of the present respondents may show some delay or acquiescence on their part.
9. In the event, however, of my being wrong in that view, I must proceed to consider whether there has been such acquiescence or delay on the part of the present respondents as would disentitle them to relief by way of rectification. In that connection, the first thing that must be borne in mind is that, as already stated above, the crucial date for the purpose of the present case in which the present respondents:' contention is that the entry was 'made' in the register without sufficient cause and not merely that it was 'wrongly remaining' on the register by reason of subsequent events, is the date from which the registration became effective, viz., November 8, 1962. Any conduct after that date cannot really be of assistance for the purpose of denying relief to the present respondents when their case is that the entry was wrongly made on that date. In the view which I have taken on merits, the present petitioners have failed to prove that they had sold any goods of their own bearing the said mark, at any rate, till 1961. The delay, if any, is, therefore, only of a few months. Reliance was sought to be placed by both sides on a passage in Kerly on Trade Marks (p. 217, paras. 11-34) in which it is stated that the delay of the applicant in coming to the Court to ask for rectification of the register is not of itself any bar to his application, but it will be some evidence against the applicant, on whom the burden lies of showing that the registration was made without sufficient cause, if he has stood by and allowed the registered proprietor to use the mark objected to for a length of time, especially if no case of actual deception is proved.
10. Turning to the facts of the present case bearing on the question of delay and acquiescence, it was sought to be contended on behalf of the present respondents that they had not taken any action earlier because they were not aware of the respondents selling goods bearing the mark 'Amar' till the year 1965, but I do not accept that contention of theirs for the simple reason that it is a matter of record that they had themselves sold goods worth about Rs. 25,000 bearing this mark to the present petitioners in the year 1963 and, as already stated earlier, goods of a lesser value even in the year 1958. The close proximity of the shops of the respective parties would also make it difficult for me to believe that either of them did not know that the other was selling goods bearing the mark in question. As far as the present respondents are concerned, However, unless they became aware of the extent of the sales of the present petitioners in respect of goods bearing the said mark, there would have been no person to apprehend that the goods which the present petitioners were selling were goods of their own on which the said mark had been stamped. The present respondents might very well have thought that the present petitioners were selling goods bearing the mark 'Amar' which they had themselves sold to the present petitioners in the year 1958, and again in the year 1963, as such sales may have spilled over to the year 1964. As soon as the mills in which the present respondents were getting their goods stamped with the mark 'Amar' received a notice from the present petitioners: as a result of which the present respondents became aware of the rights which the present respondents were claiming, the present respondents took the necessary action in the year 1965. On facts, I have, therefore, come to the conclusion that there is no such acquiescence or delay on the part of the present respondents as would disentitle them to relief by way of rectification. Moreover, to apply the test laid down by Chagla C.J. in Ciba's case, already cited above, at pages 563-564 and 565, the present case is not one in which the hardship to the petitioners could be said to outweigh the interest of the public which the Court has to bear in mind, and, in the view which I have taken, the present petitioners were fully aware of the present respondents' proprietorship of the said mark, and were, therefore, not innocent parties who could claim to have suffered substantial injury by reason of delay. If at all, such delay, as has occurred in the present ease has had any effect, it has had the effect of wrongly benefitting the present petitioners. This is, therefore, eminently a case in which the interest of the public in regard to the purity of the register must prevail. I, therefore, reject Mr. Tulzapurkar's contention based on acquiescence and delay.
11. The last contention of Mr. Tulzapurkar was that the Registrar should, in any event, have given the benefit of honest concurrent user by the respondent by adopting the course laid down in Sub-section (3) of Section 12 of the Act. The decision of the Supreme Court on this point in Amritdhara's case cited above is clearly distinguishable from the present case on facts in so far as, in that case, the findings of the Court were that the user by the respondent was not fraudulent and the appellant was well aware of that user. As observed by S.M. Shah J. in the Consolidated Foods' case (at p. 644) the discretion under Section 12(3) 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. As already stated above, the facts of the present case do not show that the use of the said mark by the present petitioners was honest. It was, therefore, impossible for the learned Registrar to have exercised his discretion under Sub-section (3) of Section 12 in favour of the present petitioners. Mr. Tulzapurkar sought to contend that the user of a mark by a party may be innocent, even if he knows that the same mark is being used by another party, and in support of that contention, he relied upon the decision of the Comptroller General in the case of In the Matter of Applications by John Taylor Peddie (1943) 61 R.P.C. 31, as well as the decision of the Court of Appeal in England in the case of the Genette Trade Mark, but a reference to those cases shows that in both of them the marks of the rival traders concerned were not identical. As was observed by the Comptroller General in Peddie's case (at p. 36), Angier may honestly have thought that confusion and deception were not likely to be caused by the use of the words 'Supervita' and 'Supavite'. In Genette's case also such an honest view was possible and even likely as between the marks 'Ginette' and 'Genette' (see the facts set out at pp. 191-192). In my opinion, honest concurrent user is possible in cases where the goods are not identical, or the marks are not identical, or a question as to whether one of the traders had abandoned his mark arises. In other words, it is possible in cases in which there is some scope for bona fide thinking on the part of a trader that the other trader is not the proprietor of the trade mark, but it is impossible where, as in the present case, the mark is identical and the goods on which it is used are also identical. I, therefore, reject this contention of Mr. Tulzapurkar also.
12. In the result, this petition must be dismissed with costs.