N. Sreenivasa Rau, J.
1. This is an appeal against the decision of the Ex-Officio Deputy Registrar of Trade Marks, Bangalore, refusing to register the Appellants' trade mark after considering the opposition of the Respondent The mark consists of two rectangular bars having in its middle an ornamental device of a star and with the words 'Raja agarbathies' displayed prominently in Hindi and English characters on the two bars.
The registration of the mark was sought for in respect of Agarbathies (incense sticks) in Class 3 of the Fourth Schedule to the Trade Marks Rules, 1942. The Respondent opposed the registration on the ground that the applicants' mark was closely similar to Trade Mark No. 86443 which he has got registered in Class 3 in respect of soaps, perfumery, cosmetics, hair lotions and essential oils and that as agarbathies came under the same description of perfumery, Section 10(1) of the Trade Marks Act was a bar to registration of the applicant's trade mark.
It was also urged by the Respondent that even independently of Section 10 (1) the applicant's mark came within the mischief of Section 8 as its use was likely to deceive or cause confusion to the trade and to consumers as they were likely to regard the applicant's agarbathies as having been produced and marketed by the Opponent (Respondent).
The applicant denied both these allegations and further relied on Section 10(2) of the Act on the ground that he had been making use of the mark in respect of agarbathies from 1936 and that it was well within the knowledge of the opponent who had acquiesced in such use. The applicant also relied on Section 25 of the Trade Marks Act on the ground that he had been continuously using the mark long prior to the registration of the opponent's mark.
2. The Deputy Registrar held that the marks were closely similar but that Section 10(1) did not apply to the applicant's mark as agarbathies did not rail under the description 'perfumery'. He however came to the conclusion that the use of the mark applied for was calculated to cause deception and to create confusion in the minds of the consumers as they were likely to think that the agarbathies were the opponent's manufacture on account of the use of the word 'Raja' and that, therefore, the case came under the mischief of Section 8.
He held that even though the applicant was using various marks in which word 'Raja' was an important feature since 1937 it had not been established that the mark in question had been so used and that, therefore, the applicant could not avail himself of the benefit of either Section 10(2) or Section 25 of the Act. In the result, he refused the application.
3. The Deputy Registrar's view in regard to the applicability of Section 10(2) and Section 25 of the Act to the facts of the case is clearly right. The honest concurrent use relied upon must refer to the trade mark sought to be registered and the applicant has not shown that the trade mark now sought to be registered has been so used. It is not enough if one feature of it, even though it may be a prominent feature, has been used. As regards Section 25, the latter part of Clause (b), which it is that applies to this case, attracts the provisions of Section 10(2). Hence the applicant cannot rely on that provision either.
4. In regard to Section 8, the Deputy Registrar has referred to the large volume of business carried on by the opponent and the considerable sums of money spent by him for advertising his goods. It is no doubt true that the evidence shows that the goods have been sold and advertised on a large scale for many years and that the name 'Raja' has become associated with those goods in the public mind.
But there is no evidence whatever to indicate that agarbathies Were amongst the goods so marketed or advertised by the opponent at any time prior to the date of the application in question. The Opponent's goods marketed prior to the date of the application consist of cosmetics and toilet preparations. It is true that no evidence has been let in by either side in regard to the mode of manufacture or the trade channels either in respect of agarbathies or the opponent's goods.
But it appears to us that agarbathies are so clearly distinguishable in their character and use from cosmetics, soaps and other toilet articles both in regard to the process of production and in regard to use that any confusion or deception is wholly improbable. As the Deputy Registrar himself has found, there is reliable evidence to show that the applicant has been marketing agarbathies under trade marks, of which the word 'Raja' is a prominent feature from 1937.
The opponent has also been marketing his goods during the same period. This itself would support the above conclusion. It is urged for the Respondent that the evidence in regard to the prior use of the mark containing the word 'Raja' by the applicant is not relevant in considering the applicability of Section 8. It is difficult to accept this contention. It is beyond dispute that the question of deception or confusion can be and has to be considered with reference to the opponent's use of his mark in relation to his goods during the prior period, for, the confusion or deception can arise only because it is such user that causes the mind of the consumer public to associate the respondent's mark with the goods.
If evidence regarding such user by the opponent of his mark in respect of his goods it relevant, it cannot be said that similar evidence in regard to the applicant's user cannot be availed of in rebuttal. We are therefore of the view that Section 8 would not furnish a proper ground for refusing the application.
5. There however remains the opponent's objection under Section 10(1). The Deputy Registrar, as mentioned above, has held that agarbathies do not come under the description of perfumery and that as the two marks do not relate to the same description of goods, Section 10(1) would not operate as a bar, though the marks are closely similar. There can be no doubt about the close similarity of the marks as the essential feature in both the marks is the word 'Raja' and if the respective goods were the same or of the same description, deception or confusion would be very likely to result.
As to the description of the goods, it is urged for the respondent that the Deputy Registrar's view is wrong and that agarbathies are articles of perfumery. The Deputy Registrar relies upon the usage in the Trade Marks Registry for his view and says that the registry has always considered that perfumery is not goods of the same description as agarbathies and that being bound by this practice and in the absence of evidence he has no alternative but to arrive at the conclusion that agarbathies arc not of the same description as articles of perfumery.
We do not know under what circumstances such practice has come into vogue in the registry. But it is difficult to see how agarbathies can come under any other description. It is to be noticed that the applicant himself sought for registration of his mark under class 3. Class 3 in the Classification of goods under Fourth Schedule reads:
'Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentrifices.' From a reading of the categories of the goods mentioned in this class it is seen that agarbathies cannot come under any other category in the class. It is true that goods coining under a particular description may come under more classes than one. It is not the appellant's case that his goods come under any other class.
In their very nature, agarbathies are articles of perfumery both in their composition and in their use. No extrinsic evidence is needed to establish it. It is also noteworthy that the applicant's firm has all along been known as 'Raja Perlumery Works' and the goods they have been marketing consist almost exclusively of agarbathies, i.e. perfumed slicks.
6. The learned Advocate for the Appellant has referred to the decisions reported in In re. F. Braby and Co's Applications; In re. Shropshire Iron Company's Trade Marks, (1882) 21 Ch D. 223 and Edwards v. Dennis; In re, Kdwards' Trade Mark, (l885) 30 Ch. D. 454. In the former case it was held that a new mark may be registered for some of the goods in a class even though an old mark of a similar kind has been already registered for other goods in the same class provided that the goods and the trades of the proprietors arc sufficiently distinct for no confusion fo take place.
It is seen, however, that the earlier trade mark had been registered for the particular description of goods in a class and not for the class as a whole. Further, the matter was considered under the Trade Marks Rules under which the Court bad discretion to allow the registration of two similar marks in respect of different goods in the same class by different persons.
In the second case, both an action for infringement by the owner of the earlier mark and an application for rectification of the entry in regard to the earlier mark by the owner of the later mark came up for consideration. The earlier mark had been registered for the goods in the whole class of unwrought and wrought metals used in manufacture. The later mark was registered for steel wire and iron wire in the same class.
It was held Unit Sections 2 and 4 of the Trade Marks Registration Act, 1875, did not confer on the registered proprietor of a trade mark in respect of an entire class but of which the articles dealt with in such business formed part only the exclusive user of the trade mark for the entire class but only for the particular articles in connection with which it was actually used. At the same time, the application for the rectification of the register was allowed confining the registration to the goods actually manufactured and marketed by the owner of the earlier mark. What the position would have been if there had been no application for rectification of the register, it is difficult to say.
Further, the report makes it clear that the provisions of the English Trade Marks Act 1875 were materially different since they seem to indicate that goodwill must already have been acquired at the time the registration or assignment of a trade mark. It is seen from Section 14 of the Indian Trade Marks Act, 1940, that registration can be applied for not only in respect of a trade mark used but also in respect of one proposed to be used. It therefore appears to us that the above decisions can be of no material assistance in this case.
7. The opponent having registered his mark for articles of perfumery also under which description the applicant's goods in respect of which he seeks registration of his trade mark come, and the marks being closely similar in the sense that they ore likely to deceive or cause confusion, the terms of Section 10 (1) make it imperative that registration should be refused.
8. This no doubt apparently results in hardship to the applicant since, as we have held above, it is not established that the opponent had produced, marketed or advertised agarbathies up to the date of the application. Perfumery is a very comprehensive term and may apply to a large variety of goods. But as long as the opponent's registration for the goods of the description of perfumery stands no other person can register the same or a similar trade mark in respect of goods which properly come under the description of perfumery.
It would have been open to the Deputy Registrar at the lime of the registration of the opponent's mark to restrict the registration to particular varieties ofPerfumery goods which the opponent was already ealing in or honestly proposed to deal in. Further, the Act itself contains provisions for the removal of a trade mark in respect of any goods and for the rectification of the register. The applicability of those provisions, however, does not arise for consideration in the present appeal and is entirely a mailer for the appellant to consider.
9. We therefore dismiss this appeal. In the circumstances of the case, we direct the parties to bear their own costs.
S. K. Das Gupta, C.J.
10. I agree.
11. Appeal dismissed.