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S.M. NooruddIn Vs. Mahomed Oomer Mahomed Nurulla Saheb - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtMumbai High Court
Decided On
Case NumberMisc. Petn. No. 289 of 1953
Judge
Reported inAIR1956Bom641
ActsCode of Civil Procedure (CPC), 1908 - Order 19, Rule 2 - Order 41, Rule 23; Trade Marks Act, 1940 - Sections 41 and 70; Indian Evidence Act, 1872 - Sections 69; Trade Marks Rules, 1942 - Rule 81
AppellantS.M. Nooruddin
RespondentMahomed Oomer Mahomed Nurulla Saheb
Appellant AdvocateM.P. Laud and ;M.R. Mody, Advs.
Respondent AdvocateS.V. Gupte, Adv.
Excerpt:
(i) intellectual property rights - sections 41 and 70 of trade marks act, 1940 - agreement giving permission to petitioner to use trade mark in district of trichinopoly - application for trade marks registration objected on ground of existence of such agreement - such objection cannot be sustained as respondent had not objected to use of trade mark within reasonable time. (ii) trade mark registration - trade marks act, 1940 - claim for trade mark registration on ground of abandonment - applicant has to prove that there was infringement of trade mark with knowledge of trade mark owner before such claim can be entertained. - indian evidence act, 1872 section 24: [v.s. sirpurkar & deepak verma,jj] dying declaration - multiple murders by accused - dying declaration not implicating one.....1. this is an appeal against a decision of the registrar of trade marks, bombay. it is necessary at the outset to set out the history of this litigation as it has a direct hearing on some of the questions that have been canvassed before me on this appeal.2. the petitioner applied for registration of his trade mark known as 'hautin' in respect of bidis, cigars, scented tobacco and tobacco throughout india on 21-8-1942. the application was advertised on 1-10-1945 and the respondent filed his notice of opposition on 23-3-1946. against this notice of opposition the petitioner submitted a counter-statement on 12-7-1946. thereafter on 5-12-1947 the respondent filed an affidavit of the evidence in support of opposition in which a document called a panchnama dated 19-10-1937 was referred to.it.....
Judgment:

1. This is an appeal against a decision of the Registrar of Trade Marks, Bombay. It is necessary at the outset to set out the history of this litigation as it has a direct hearing on some of the questions that have been canvassed before me on this appeal.

2. The petitioner applied for registration of his trade mark known as 'HAUTIN' in respect of Bidis, cigars, scented tobacco and tobacco throughout India on 21-8-1942. The application was advertised on 1-10-1945 and the respondent filed his notice of opposition on 23-3-1946. Against this notice of opposition the petitioner submitted a counter-statement on 12-7-1946. Thereafter on 5-12-1947 the respondent filed an affidavit of the evidence in support of opposition in which a document called a Panchnama dated 19-10-1937 was referred to.

It was alleged that under the said panchnama the petitioner had admitted the right of the opponents father to the trade mark 'HAUTIN' and had been permitted to use the trade mark in Trichinopoly only until such time as the petitioner's father may choose to object to it; but the document was not filed with the Registrar along with the affidavit.

At the hearing before the Registrar a document bearing date 7-11-1937 and not 19-10-1937 was produced purporting to have been signed by the petitioner, the petitioner denied his signature and he desired to lead evidence to show that the signature was not his. - The Registrar refused to grant any adjournment to the petitioner, proceeded with the matter and passed an order basing it mainly on this document of 7-11-1937 granting registration to the petitioner in Trichinopoly and Tanjore only and rejecting it with regard to the rest of India.

Against this decision of the Registrar an appeal was filed which 'was heard by Shah J. My learned brother held that the Registrar was not justified in refusing an adjournment. He therefore set aside the order of the Registrar and directed him to hear the petition according to law and dispose of it. There were also cross-objections filed by the respondent which the learned Judge held were not maintainable. Against this decision of the learned Judge an appeal was filed to a Division Bench of this Court. The appeal Court took the view that the learned Judge was in error when he held that the cross-objections were not maintainable, and the appeal Court remanded

'the whole matter to the Registrar with directions that he should consider the application of the respondent de novo, hear all the evidence which is to be led both on the question of authenticity of the panchnama and also on the question of the proprietorship of the mark and also with regard to the user of the mark, and, after considering toe evidence, decide whether the respondent is entitled to registration of the mark, and, if so, whether to an unlimited extent or with limitations.'

On the question of costs the appeal Court directed that both the costs of the petition and the costs of the cross-objections will abide the result of the application'. Thereafter the matter went back to the Registrar who re-heard the matter and granted registration to the petitioner for Trichinopoly only and rejected his application for registration for the rest of India. He directed the petitioner to pay Rs. 3,000/- by way of costs to the opponent.

Against this decision of the Registrar of Trade Marks the petitioner tamo in appeal, and I heard and disposed of the appeal in the first instance on 1-7-1954. then took the view that it was not competent to the Registrar to take into account the so-called panchnama and I therefore set aside the decision of the Registrar of Trade Marks and remanded the case back to the Registrar with a direction to ignore the panchnama and to consider the matter afresh.

In making the order of remand I also pointed out that the Trade Marks Registrar had not determined whether the petitioner was the proprietor of the trade mark, and therefore he should proceed to determine it before coming to a final conclusion on the application of the petitioner. I further pointed out that it had been urged before the Registrar that the petitioner had made false and reckless statements in reference to matters material to the determination of the petition and that therefore the Registrar should carefully consider whether the petitioner had not thereby debarred himself from obtaining the registration.

The learned Registrar had taken the view that although the petitioner would have been debarred if this was a case arising under the English Law in England, he would not be so debarred in India. I held that the Registrar was in error in coming to that conclusion and I directed the Registrar to consider whether in the exercise of his discretion he ought not to refuse registration if he was satisfied that the applicant has made any misleading or untrue statements recklessly on any matters material to the determination of the application.

I also pointed out that the Registrar appeared to have lost sight of the judgment of the appeal Court whereby their Lordships had made the costs of the appeal before Shah J. and of the cross-objections to abide the result of the application, and therefore he should consider this matter in determining the question of costs.

3. Against this judgment of mine an appeal was filed. A Division Bench of this Court held that I was in error in coming to the conclusion that the Trade Marks Registrar was not entitled to take into account the panchnama. The appeal Court was pleased to uphold my finding that if it were found that the petitioner had made any misleading or untrue statements recklessly on any matters material to the determination of the application the Registrar would have the discretion to re-hise registration; but they held that on the facts of this case no such misstatement had been made. The appeal Court set aside the order of remand and sent the matter back to be disposed of by me. The appeal Court also added :

'We might say this, with respect to the learned Judge, that we are most anxious that the matter should be finally decided by him and that as far as possible he should avoid the necessity o a further remand to the Registrar.'

4. Upon the matter coming up for argument before me on remand, the first point urged before me by Mr. Laud on behalf of the petitioner is that I should remand the matter back to the Registrar because the Registrar had failed to. give effect to the order of the appeal Court made on 13-8-1051 asking the Registrar to hold the trial de novo (See -- 'Mohamcd Oomer Muhamed Noorullah v. S. M. Nooruddin' : AIR1952Bom165 .)

When this submission was sought to be made, Mr. Gupte for the respondent drew my attention to that portion of the judgment of the appeal Court delivered on 20-4-1955 in the appeal against my judgment which relates to the anxiety of the appeal Court to see that this matter is finally decided, and he asked mo to consider whether it was opep to me, having regard to the remarks which I have set out above, to entertain the application for a remand at all at this stage.

5. Now, in decinding this appeal, I have to exercise judicially all the powers of an appeal Court which include the power to make a remand if the circumstances of the case justify a remand. If I make an order of remand which is unjustified, undoubtedly an appeal will lie and the appeal Court can set aside the order of remand, if it is satisfied that it should not have been made; and to the extent to which my original order of remand was set aside, it is obviously not open to me to make a remand for any of the purposes for which I had made the original order of remand.

But, with respect to the Division Bench who decided the appeal, I do not read the observations which are set out above as in any way attempting to fetter my judicial duty in making an order of remand if such an order is justified on grounds other than those on which the original order of remand was made. I will, therefore, proceed to consider, in the first instance, the application for a remand which has been pressed by Mr. Laud with all the vigour at his command. His case is that what was done upon remand was that affidavits were put in on behalf of the opponent.

These affidavits were of three persons who had been previously examined and cross-examined before the Trade Marks Registrar in the prior proceedings. The affidavits set out in estenso the evidence given by the deponents before the learned Registrar and confirmed the said evidence. An application was made on behalf of the petitioner that the deponents should be called to give evidence, or at least to submit themselves to cross-examination by the respondent. This application was rejected by the Registrar.

Mr. Laud's grievance is that if there was a de novo trial, notwithstanding the fact that these witnesses had been previously examined and cross-examined, he had a right to cross-examine them over again, and since this right was refused to him, I should remand hack the case to the Registrar in order to afford to the petitioner an opportunity of cross-examining these witnesses.

6. Now, there is no doubt that under the Civil Procedure Code, Order 19, Rule 2. where upon any application evidence is given by affidavits the Court has the power at the instance of either party to order the attendance for cross-elimination of the deponent; and under S. 70 (a), Trade Marks Act the Registrar has all the powers of the Civil Court for the purposes inter alia of receiving evidence and enforcing the attendance of witnesses. Therefore I have no doubt that the Registrar would have power in a suitable case to require that any person who had made an affidavit should attend for cross-examination at the instance of either party.

But the question is whether there was any obligation on the Registrar to make such an order. There is no doubt that the appeal Court directed a de novo trial; but a trial before a Trade Marks Registrar is not in every respect a trial before a Civil Court and does not involve the leading of oral evidence necessarily. Section 70(b), Trade Marks Act provides that evidence shall be given by affidavits; but it also provides that the Registrar may if he thinks fit take oral evidence 'in lieu of or in addition to such evidence by affidavit'.

It is obvious therefore that it was open to the Registrar not to admit oral evidence or to admit oral evidence in addition to the evidence by affidavits. Be appears in this case to have taken the view that in addition to the affidavits which were put in on behalf of the opponent he will admit oral evidence, and the petitioner was given every opportunity of which he availed himself of leading oral evidence.

Mr. Laud's contention is that assuming that the Trade Marks Registrar had the power to decide whether he shall or shall not allow oral evidence in lieu of or in addition to the evidence by affidavits ho had exercised his judgment and come to a decision at the first hearing that oral evidence should be led and the present deponents had been called as witnesses, examined and cross-examined; and it was not open to the Registrar now to come to a contrary conclusion on the same facts and to hold that evidence on affidavits of these very witnesses who had been examined on a previous occasion was adequate and that such evidence should only be supplemented by oral evidence of other people.

In my opinion there is no substance in this argument. In the first place when the petitioner filed an appeal before Shah J. it was not one of his complaints that he had no opportunity to cross-examine these witnesses. His only grievance was that he did not have a proper opportunity to lead evidence of his own; and therefore when the order of remand was made what was intended obviously was that the petitioner should be given a further opportunity to lead such evidence as he liked and not that the witnesses that had been examined and cross-examined should be examined and Cross-examined over again, for that could not possibly have served any useful purpose.

The entire evidence of these witnesses was incorporated in the affidavits made including cross-examination, and if the Registrar came to the con-elusion that he would accept the evidence by affidavits of these three witnesses and only admitted oral evidence in addition to the evidence by affidavits, in my opinion, he was within his power to do so.

There was no obligation on him at the instance of the petitioner to require that the deponents should attend for being cross-examined, and if in his discretion he thought fit not to make any such order, that is not a matter in respect of which this Court will interfere in appeal. In my opinion, therefore, the new ground that has been made for a remand of this matter to the Registrar must fail and I must proceed to deal with the matter on the merits.

7. Now, in the first instance since the so-called panchnama is a document which must be taken into account I have got to consider whether the Registrar rightly held that the document was proved. The Panchnama is dated 7-11-1937 and the terms of the Panchnama may well be reproduced:

'Dated the 3rd of Ramzan 1356 A. H. Corresponding with the 7th of November 1937 A. D.' The day of (of the week) Sunday, Agreement

To

M. Mahomed Omar Saheb, may his shadow bo prolonged, Proprietor of Spate Clover Bidi, Hautiu Bidi and Diamond Bidi Factory, No. 37, Mannadi, Madras, from S. M. Nooruddin son of Saheb, Trichi, Bidi Merchant.

Sir

Your English notice dated 19-10-1937 A. D. having been received and the contents thereof having been noted and your objection and complaint being proper, I agree as follows in the presence of religious heads, and the Panchas for the forgiveness of (my) fault. You Mahomed Omer Saheb, proprietor of Spate Clover and Hautin and Diamond marks, had circulated the said trade marks before I did; I have, unknowingly, circulated Hauteen mark in my own town, after spending a lot of money. Now by putting a stop to this matter great loss will be caused (to me). I a poor man am unable to put up with this loss.

I submit that I will circulate (the said trade mark) for some days in my own city. Whenever you or your hens would rake up the said matter I am ready to take back the said mark 'Hautin' forthwith. This is all.

Written by Signature of the witness :(a) The humble one Saiyed Shah Mahomed Inayatullah Qadri, Head Qazi, . of George Town, Madras Presidency.Seal of Qazi Shah MahomedInayatullah, George Town,Madras.Attestation ofTajammul Hussein Iman, may God pardon him.'

The panchnama is signed by the petitioner in Tamil as 'S. M. Nooruddin' and it is attested by two witnesses, one Saiyed Shah Mahomed Inayatullah Qadri, Head Qazi of George Town, Madras Presidency, and another Tajammul Hussein Iman. Now, both these attesting witnesses were dead before the question of the genuineness or otherwise of this document arose. The Kazi died in 1942 and Tajammul in 1943, and M. Mahomed Omar Saheb in whose favour the so-called panchnama has been made and who was the father of the opponent died on 17-12-1942.

Undoubtedly the petitioner denied the signature on this document and it was essential that the I document should be proved. In the circumstances' of the case, the proof that was forthcoming of this document was the evidence of three witnesses, one was Kazi Vikhayatulki, who was the son of Kazi Inayatullah. He identified the signature of his father as well as the signature of Tajammul and stated that the body of the writing is in the handwriting of one Munshi Abdul Gani who died in 1937. Nothing was brought out in the cross-examination of Kazi Vikhayatulla which would affect either his credibility or shake his evidence in any other manner.

The second witness who was called' was Mahomed Yusuf. He was the nephew of Tajammul Hussein Iman and he identified the signature of Tajammul and stated that Tajammul had died in 1943. He further stated that he was present when the panchnama was made and saw him sign. He further stated that he actually saw the applicant sign and he was present when the Kazi signed. In the cross-examination of this witness again nothing was elicited which would go to his credit nor was any fact elicited which would affect his evidence-in-chief.

In addition to these two witnesses, one Sheikh Dawood was called who is a maternal uncle of the opponent. He was living with the opponent's father and taking part in the business as a member of the family, He only deposed to the fact that the deceased father of the opponent, had shown him the document in 1937. Now, ignoring the evidence of Sheikh Dawood, who merely ways that the document was in existence in 1937, the evidence of Kazi Vikhayatulla and Mahomed Yusuf is by itself sufficient to establish that the document was executed by the petitioner, because there is no other conceivable way in which proof of the document could have been given as Kazi Inayatullah and Tajammul are both dead and the father of the opponent is also dead.

The position is exactly similar to the position that obtained in the case of -- 'Abdulla Paru v. Gannibai' 11 Bom 690 (B), where a deed of conveyance purporting to bear the mark of a vendor which was duly attested by four witnesses was denied by the executant. All the attesting witnesses were dead, and the signature, of one of the attesting witnesses was proved by calling a witness who knew his handwriting and Farran J. held that the deed was properly admitted in evidence.

Against this evidence, which is prima facie proof of the so-called Panchnama, we have the denial by the petitioner of his signature, and in so far as the evidence of the petitioner is concerned, the Registrar of Trade Marks who heard his evidence had deliberately recorded his opinion that even if his evidence stood by itself he would have had no difficulty in discarding his evidence in toto. The Registrar had the best opportunity of judging whether or not the petitioner was a witness of truth, and if he thought fit to reject his evidence in toto, this Court which did not have the opportunity which the Registrar had would not interfere with that finding. (After further considering the evidence his Lordship concluded:)

In my opinion, therefore, all the matters that have been urged by Mr. Laud as leading to the conclusion that this document is not a genuine document are not matters of any substance at all and the document has been proved by the proof of the signature of the attesting witnesses and the denial by the petitioner of the execution of this document is dishonest. Therefore, the learned Registrar was quite right in coming to the conclusion that this panchnama was proved.

8. Having come to that conclusion the learned Registrar proceeded to consider what the effect of this panchnama would be on the right of 'the petitioner to obtain registration of the trade mark. In doing so, obviously the learned Registrar assumed that the petitioner was the proprietor of the trade mark because unless he was the proprietor of the trade mark he would not be entitled to apply for registration under S. 14, Trade Marks Act, 1940.

In my judgment delivered on the last occasion I pointed out that there was no clear finding by the Registrar as to whether the petitioner was the proprietor of the trade mark and I had directed the Registrar on remand to determine this matter before coming to a final conclusion. However, as the appeal Court has set aside that order of remand, I must assume that the appeal Court was of opinion that it was not necessary to have a finding from the Trade Marks Registrar as to the proprietorship of the trade mark.

Nonetheless, unless it is established that the petitioner was the proprietor of the trade mark he is not entitled to apply for registration, and since the Registrar has not recorded any finding on the question and as the order of remand in so far as it relates to the Registrar being asked to give a finding has been set aside I must attempt to arrive at a conclusion myself as to the proprietorship of the trade mark on such materials as are available on the record, some of which are dispersed also over the judgment of the Registrar.

Having gone through these materials, it appears that on 7-3-1932 a declaration of ownership was registered and there was a second declaration on 21-7-1939, both of which declarations inter alia related to the trade mark 'HAUTIN'. It also appears that the account books of the petitioner were produced before the Registrar which showed that over a period of years he had marketed his goods under the trade mark 'HAUTIN' in several areas and the statement Z-13 was prepared and put in showing the sales of the petitioner's goods in the different areas in which they circulated.

In so far as Trichinopoly for which area the registration was granted by the Registrar was concerned, not only was the use of the trade mark proved but it has been conceded by Mr. Gupte at the Bar that the trade mark was used in any event in Trichinopoly. It would, in my opinion, be legitimate to hold from these facts that the petitioner had proved the proprietorship of the trade mark at any rate in the area of Trichinopoly and as I will presently point out, it is unnecessary to decide whether he had proved proprietorship for other areas.

9. Now, as the so-called panchnama stands, it is clear that the petitioner undertook not to use the trade mark outside Trichinopoly and therefore the Registrar declined to give him registration of the trade mark outside the area of Trichinopoly. With regard to Trichinopoly itself although the panchnama allows the petitioner to circulate the trade mark for some days, it provides:

'Whenever you or your heirs would rake up the said matter I am ready to take back the said mark 'Hautin' forthwith,'

and therefore the position is that although the petitioner continued to use the trade mark 'HAUTIN' in Trichinopoly with the permission of the respondent's father, he had agreed that at any time the respondent's father or his heirs could 'Stop him from doing so.

The learned Registrar came to the conclusion that an agreement of that kind could not be enforced against the petitioner after a lapse of an unreasonably long time. He held that in the case of trade marks public interest is also concerned, and if by reason of the respondent's abandoning his right in a particular area for an unduly long time the trade mark has come to be associated in that area with the goods of the petitioner, it would not be right to refuse registration to the petitioner in that area.

In my opinion this reasoning of the Registrar is right. In this case cross-objections have been filed by the respondent objecting to the registration for Trichinopoly and what is urged by Mr. Gupte is that when the Registrar took the view that the opponent had for an unreasonably long time permitted the petitioner to use the trade mark 'HAUTIN' in Trichinopoly, he lost sight of the fact that the present opponent was a minor during that period.

Now, it is true that the present opponent was a minor but his father who was the proprietor of the trade mark and whose right to the trade mark had been admitted by the panchnama was alive till 1942 i.e., for about 5 years from the date of the panchnama. That in itself is, in my opinion, a long enough time to establish a case of abandonment of his right by the opponent, and the minority of the opponent after he became entitled to the rights that his father had in the trade mark 'HAUTIN' only came after the lapse of 3 years.

That minority cannot therefore extend the time during which the respondent or his father could have reasonably contended that they were entitled to stop the petitioner from using the trade mark any further. In my opinion, therefore, the cross-objections of the opponent on this particular point must fail.

10. It is next urged by Mr. Laud on behalf of the petitioner that the ground on which the Registrar granted registration for Trichinopoly, viz., abandonment of the rights by the opponent, equally applied to the other seven districts in which it was proved that the petitioner had sold his goods, and therefore the Registrar should have granted registration in respect of these districts as well.

Now, this argument completely ignores the fact that before you can talk of abandonment of a right there must be an infringement of the right to the knowledge of the person who has the right. In the case of sales in Trichinopoly the opponent had knowledge by the very panchnama that the petitioner was using and was going to use in future the trade mark 'HAUTIN' in Trichinopoly. There was no such knowledge in respect of the other seven districts and there is no evidence to which my attention has been drawn which would establish the fact that the opponent had such knowledge.

This contention of Mr. Laud must, therefore, fail and the order of the Trade Marks Registrar refusing registration in these seven districts as well as the rest of India will stand.

11. The next question that has been urged on behalf of the petitioner is the question of costs. The Registrar awarded to the respondent Rs. 3000/- as costs, and what is urged by Mr. Land is that the Registrar had no jurisdiction to grant costs exceeding a certain scale fixed by the Trade Marks Rules, 1942. Rule 81 provides that the Registrar may award such costs as he considers reasonable, but the Rule has a proviso in the following terms:

'provided that the amount of costs awarded in respect of the matters set forth in the Sixth Schedule to these Rules shall not exceed the amount therein, specified.'

Then when one turns to the Sixth Schedule, entry No. 1 is 'for one day's hearing involving examination of witnesses', and the amount specified is Rs., 25/-. Entry No. 2 is 'for one day's hearing when there is no examination of witnesses', and the amount specified is Rs. 16/-. The total hearing before the Registrar in this case is said to have lasted 10 days on some of which days there was no exa-mintition of witnesses, and therefore what is contended is that the Registrar had no jurisdiction to award costs exceeding in any event (25 x 10) i.e., Rs. 250/-.

This argument, it appears to me, is based on a construction of the Sixth Schedule which does not appear to me to be warranted. The heading for the .entries in the Sixth Schedule is 'Matter in respect of which cost is to be awarded' and when the matter is 'one day's hearing' with or without examination of witnesses, the maximum amount is 'Rs. 25/- or Rs. 16/-. That appears to me to relate to costs of a day's hearing when granted and not to the costs of the entire proceedings, because if the Sixth Schedule related to costs of the entire proceedings, Rule 81 itself would not have stated that the amount of costs awarded in respect of any 'matters' set forth in the Sixth Schedule shall not exceed the amount there staled, and secondly the Sixth Schedule would have stated that the amount of Rs. 25/- or Rs. 16/- was for each day's hearing.

Indeed Entry No. 6 in the Sixth Schedule which is 'Commission for examination of witnesses' states as the amount payable Rs. 4/- for each day's sitting. In that entry the matter in respect of which cost is to be awarded is commission for examination of witnesses, and therefore if the matter in respect of which cost to be awarded was the entire hearing of the application before the Registrar, it would have been so set out in the Sixth Schedule and the amount prescribed would have been stated to be for each day's hearing. The Trade Marks Registrar has not granted costs for any particular day's hearing and therefore the question of the maximum amount laid down in the Sixth Schedule does not arise.

In my opinion the discretion of the Registrar in awarding costs under Rule 81 is entirely unfettered and he is to award such costs as he considers reasonable having regard to all the circumstances of the case. In awarding a lump sum as costs the Registrar was the best judge of all the circumstances & therefore this High Court will not interfere with his discretion in awarding Rs. 3000/- as costs to the opponent although the petitioner succeeded partially on his petition in that he got registration for the city of Trichinopoly.

12. Now, apart from the cross-objections which the opponent has filed on the order of the Registrar granting registration for the city of Trichinopoly, there is also another cross-objection regarding the costs of the proceedings before Shah J. When tbe matter was taken up in appeal against the decision of Shah J. the order made by the appeal Court with regard to the costs was that the costs of the petition before Shah J. and the cross-objections filed before Shah J. will 'abide the result of the application' before the Trade Marks Registrar.

In my judgment delivered on the last occasion in making a remand to the Trade Marks Registrar I pointed out that the Registrar had lost sight of this direction in the order of the appeal Court and I had directed him to take this into account. Obviously neither party had drawn the attention of the Registrar to this order either, and Mr. Gupte in his cross-objections urges that upon the facts as they have turned out the only authority that could have determined what was to have happened to the costs which the appeal Court had directed should 'abide the result of the application' would be the Registrar.

Now, the phrase 'abide the result of the application' is usually capable of being easily applied in a case in which the application either succeeds or fails; but in this case the application succeeded partially and the applicant was not only deprived of his costs but he was made to pay the costs of the opponent. In such circumstances it appears to me that the appropriate authority for determining what was to happen to the costs of the petition before Shah J. and the cross-objections was the Trade Marks Registrar.

He had failed to determine it partly because he lost sight of the order and partly Because neither party asked him to determine it; and, in my opinion, the opponent was entitled to file cross-objections and require the appeal Court to direct the Trade Marks Registrar to determine the said costs which I had done by my order of remand dated 1-7-1954, But that order of remand has also been set aside.

In the interval another interesting development took place, and it appears that the opponent took out a notice of motion before the appeal Court for a direction that the costs of the petition and cross-objections before Shah J. should be awarded to him as against the petitioner and this notice of motion was dismissed with costs.

This notice of motion was in fact taken out on 8-1-1954, i.e., before my judgment of 1-7-1954, and had already been dismissed; but neither party drew my attention to the order of dismissal passed by the appeal Court nor even mentioned the fact to me that such- a notice of motion had been taken out. It may be open to argument that by reason of such dismissal the matter is now res judicata and ft is not open to any Court to award any costs to one party or the other; but Counsel appearing before are agreed that in enter to avoid any further proceedings in this already long drawn out litigation I should determine this question of costs in the light of the facts that are established in these proceedings.

Mr. Laud for the petitioner has argued that he has succeeded on the application before the Registrar of Trade Marks and he should therefore get these costs because the costs were to abide the result of the application. One difficulty in the way of Mr. Laud is that he has not filed any appeal in regard to this particular matter against the decision of the Trade Marks Registrar; but quite apart from this, it seems to me difficult to take the view that the petitioner succeeded in the application before the Trade Marks Registrar to any appreciable extent.

It is true that he got registration for the area of Trichinopoly, but he had applied for the registration for the whole area, viz., India. He failed in his application at any rate with regard to practically the whole of India except the city of Trichinopoly. Of course it may well be that from the point of view of the sales of his goods Trichinopoly might be more valuable to him than the rest of India, a matter in respect of which I have no material before me,

But there is one further fact which is of importance, viz., that the Trade Marks Registrar not only did not give any costs to the petitioner but awarded Rs. 3000/- as costs against him to the opponent. So, although the petitioner succeeded partially in his application he lost wholly on the question of costs. The phrase 'abide the result of the application' therefore becomes somewhat difficult to apply to the peculiar facts as they have turned out to be.

Having regard to all the circumstances of the case, however, I think that justice of the case will be met by directing the petitioner to pay to the Opponent 3/4ths or the costs of the petition and the cross-objections before Shah J. and to that extent the cross-objections succeed.

13. Regarding the costs of the hearing before me, as regards the prior hearing the order I had made then was that there shall be no order as to costs of the appeal. That order, however- has been set aside by the appeal Court and I nave been directed to consider afresh the question of costs of the hearing before me including the last hearing.

As it happens the opponent has substantially succeeded on this appeal before me. The petitionerhas failed to obtain any relief and the opponenthas succeeded in his cross-objection regardingcosts of the petition before Shah J. and the cross-objections. However, the opponent has failed on his cross-objections relating to the grant of registration for the city of Trichinopoly. Having regard to alt the circumstances of the case I direct that the petitioner, shall pay to the opponent 3/4ths of the costs of the hearing before me including the costs of the first hearing.

14. Order accordingly.


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