Avadh Behari Rohatgi, J.
(1) These are two appeals. This judgment will govern them both.
(2) The dispute arises this way. There are two industries engaged in the manufacture of dress hooks which are generally used in garments. One is Ropi Industries. Henceforward I will call them Ropis. It is a partnership concern. They set up this industry in 1963. They manufacture hooks at Navsari a town in Gujarat. They started with humble beginnings. In the beginning their sales were only a few thousand. Over the years the sales have increased. They sell their goods at various places in India including Delhi.
(3) The other industry is called L. D. Malhotra Industries. Henceforward I will call them Malhotras. They also manufacture dress hooks. They are located in Delhi. They got their mark Kismat (word per se) registered with the Registrar of Trade Marks on December 26, 1967. On that date they were not using this word. In their application under s. 18(1) of the Trade Marks Act 1958 (the Act) to the Registrar they said that they proposed to use it. The Registrar registered the word 'per se'. They started using the mark on the hooks which they manufactured.
(4) On December 31, 1969, Ropis made an application for registration of their trade mark in part A of the register in clause 26 for cloth hooks. On November 1, 1970, their application was advertised in the trade mark journel. On February, 1, 1971, Malhotras filed an opposition. The grounds of their opposition were ss.11, 12 (1), 27, 28 and 29 of the Act. Ropis sought registration of a lable mark of which the word Kismat is a dominant part. In their application Ropis stated that they were using the label mark Kismat since May 4, 1963. They adduced evidence before the Assistant Registrar. They gave their sale figures right from April 1, 1963, to the date of the filing of the application. They also filed a number of affidavits of their dealers and other traders.
(5) The Assistant Registrar held that Ropis were the prior users of the trade mark KISMAT. He upheld their claim under s. 33 as well as under s. 12(3) of the Act. He found that there was ample and positive evidence in support of Ropis' claim under s. 33 and 12(3) of the Act. The Registrar has summarised the evidence. I need not go through it over again. The Assistant Registrar's conclusion was that there was conclusive and unimpeacheable evidence to establish (1) rior use of the trade mark and that (2) there was honest and concurrent use of the word KISMAT.
(6) As regards the opposition of Malhotras under ss. 11 and 12(1) he held (1) that goods of the two industries are the same ; (2) that their respective marks are deceptively similar. The word Kismat of which Malhotras hold registration is also a dominant feature of Ropis' mark; (3) that Malhotras were competent to take objection to the registration of Ropis' mark under s. 11 since they had established sufficient user, that is, user from 1967 to 1969.
(7) Since Ropis succeeded under ss. 33 and 12(3) he allowed their application and ordered that their trade mark label be registered.
(8) All these proceeding took place at Bombay. None of the parties preferred an appeal against this order. This order thereforee became final between the parties. This is the first round of litigation.
(9) On April 2, 1971, Ropis made an application for the rectification of the register under s. 56(2) of the Act. This application was filed at Delhi. In this application their grievance was that Malhotras' mark Kismat word per se offended against ss. 9 and 11 (a) and (e). In support of their application Ropis filed a number of affidavits and other documentary proof. Malhotras did not file any evidence. It is true that onus lay on Ropis in rectification proceedings. They sought to discharge it by means of affidavits and documentary proof By order dated April 30, 1973, the Assistant Registrar exercised the discretion for removal of the mark of Malhotras under s. 56(2) and ordered that their mark be expugned from the register of trade marks.
(10) It will be convenient to summarise the findings of the Assistant Registrar at this stage:
(1)Ropis arc 'a person aggrieved within the meaning of s. 56(2) and thereforee entitled to file a rectification proceeding;
(2)There was ample evidence of prior user of the trade mark by Ropis since May 4, 1963 ;
(3) Malhotras had knowledge of the mark of Ropis and its reputation;
(4) 'THEtrade affidavits especially from Delhi clearly established that the Ropis goods bearing trade mark ' Kismat were coming to Delhi and trading community was personally aware of the Ropis' goods bearing the said mark.'
(5)Malhotras have not rebutted the evidence of Ropis Ropis led ample evidence. Malhotras gave no evidence;
(6)Trade mark Kismat has become distinctive of Ropis' goods and the public associate the goods with their goods;
(7)That the user of the same word Kismat by Malhotras would lead to confusion and deception.
(8)The registratiton of Malhotras' trade mark was effected contrary to provisions of s. 11 (a) and (e) ; and
(9)Ropis had established their title to the mark as against Malhotras. Malhotras' claim to proprietorship was held not to be well founded.
(10)The Assistant Registrar, as I have said, allowed the application for rectification. He ordered the removal of Malhotras' mark. He gave his reasons in these words :
'BUTwhen it is proved that registration was effected contrary to any provisions of the Act and the presence in the Register of the mark would enabel the registered proprietors to cause deception and confusion among the public with impunity, it would be in the public interest to remove the mark from the Register. In the circumstances I have no hesitatiton in exercising my discretion in favor of the removal of the mark.'
(11) This was his decision. This was the second round of litigation between the parties.
(12) Against this decision Malhotras have appealed to this Court under s. 109(2) of the Act. It has been classified as C.M. (M). The Act provides for an appeal against the order of the Registrar. Threfore to all purposes it is an appeal. I will first deal with this appeal.
(13) Dates are important. In the case of Ropis it has been established that they were using the lable trade mark containing the word Kismat since April 1, 1963, though they made an application for registration of this trade mark on December 31, 1969. The Registrar granted them registration by order dated January 9, 1973. The registration was granted with effect from December 31, 1969. The rectification proceedings were started by the Ropis against Malhotras on April 2, 1971 and the order of rectification was made on April 30, 1973.
(14) As regards Malhotras they got their word Kismat registered on December 26, 1967. It was proposed to be used. They did not claim any prior user.
(15) Now it will appear that Ropis were first in the field. Their user dates back to April 1, 1963. But they are later in registration. Malhotras were the first to get their trade mark registered. In other words Ropis were prior and anterior in use while Malhotras were prior in registratiton but posterior in use. Who has got a better right of the two. That is the question.
(16) In this appeal against the order of rectification four points arise for decision. First is the question of use of the trade mark. Use plays an all important part. A trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. Registration under the statute does not confer any new right to the mark claimed or any greater rights than what already existed at common law and at equity without registration. It does. however, facilitate a remedy which may be enforced and obtained throughout the State and it established the record of facts affecting the right to the mark. Registration itself docs not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected (See Consolidated Foods Corpn. v. Brandon & Co. : AIR1965Bom35 (1).
(17) Now at common law the use of the mark was the only way in which trade mark rights in it could be- acquired : Kerly's Trade Mark 10th edition page 245. It is difficult to understand the statutory low relating to trade marks without understanding the state of the common law as it existed before the law was codified. In a recent decision of the House of Lords in Gec v. The Ge Co. Ltd. (1972) 2 All E R 507 (2) Lord Diplock said : 'The right of property in a trade mark was recognised at common law before it was the subject of any enactment. The 1875 Act did not itself create any right of property in trade marks. As its title itself indicates and its provision confirm, it simply provided for the registration of trade marks and spelled out the consequences of registration and non-registration on the proprietory rights of the owner of the trade mark and the remedies available to him for the protection of those proprietary rights.
'THE1875 Act must, thereforee, be construed in the light of the common law relating to trade marks in 1875. I use the expression 'common law' to include the doctrines of equity applied in what at that time was the separate Court of Chancery. My Lords, it may well be a legitimate criticism of our methods of drafting legislation that in order to ascertain the meaning of an Act of Parliament passed in 1938, it should be necessary not only to consider its legislative history over the previous 63 years but also to engage in what in other systems of law might be regarded as antiquarian research, namely, the state of the common law as .it existed before the first Act to alter it was passed nearly 100 years ago. .But, in my view, the 1938 Act which purports to consolidate our existing law becomes intelligible only when this course, which is a well recognised aid to statutory construction, is adopted.'
(18) As regards the common law of trade marks before the first Act of 1875 he said :
'THEright of property in a trade mark had special characteristics. One, which it shared with patents and with copyright, was that it was a monopoly, that is to say, it was a right to restrain other persons from using the mark. But it was an adjunct of the goodwill of a business and incapable of separate existence dissociated from that 'goodwill. To be capable of being the subject-matter of property a trade mark had to be distinctive, that is to say, it had to be recognisable by a purchaser of goods to which it was affixed as indicating that they were of the same origin as other goods which bore the same mark and whose quality had engendered goodwill. Property in a trade mark could thereforee only be acquired by public use of it as such by the proprietor and was lost by disuse.'
S, 33 of our 1958 Act reads :
'NOTHINGin this Act shall entitle the proprietor of 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
'USEbeing proved) to register the second-mentioned trade mark by reason only of the registration of the first-mentioned trade mark.'
(19) This section saves vested rights. This means that the anterior use by a person of a trade mark is protected under law. This was the position at common law. The common law rule was that a mark did not become a 'trade mark' until it had been publicly used as such by its proprietor and that such public use was the only means by which title to a trade mark could be acquired by the first proprietor of it [See Gec 2 case (supra)]. The 1958 Act recognised this principle of common law and embodied it in s. 33.
(20) On facts it appears to me that Ropis had a priority both in adoption of the mark and in the user thereof and thereforee Malhotras were not entitled to claim the mark as proprietors and apply for registration thereof. This is the crucial point in the case.
(21) Second is the question of deception and similarity. 'Trade mark law developed from a desire to prevent deception' (Kerly page 11). The Assistant Registrar has come to the conclusion that the goods are the same and respective marks are deceptively similar. The only difference between the two is that Malhotras' registered trade mark is of the word Kismat per se. In the case of Ropis it is a trade mark lable of which the word Kismat is a prominent part. Under s. 11(a) a mark the use of which would be likely to deceive or cause confusion shall not be registered as a trade mark. The word likely' is of considerable importance. It is not necessary that it should be inteded to decieve or cause confusion- The crux of the matter is not the intention of the defendant in taking a certain name but the probable effect of such action on the minds of the public. However innocent may be his intentions, he will be restrained from trading under a name so much like that under which the plaintiff who was first in the field trades, that the public are very likely to be deceived into systematic, and not mere occasional, confusion. It is its probable effect on ordinary public, unwary purchasers and incautious persons which has to be considered. The infringer may be completely honest, he may have no deceitful intention, but the result is confusion. If it is likely to cause confusion though actually attempt to deceive may not be there. the court will find the infringer guilty of infringement. On this point the Registar's finding is that the two marks are likely to cause confusion and people will fall into error.
(22) The question of deceit or confusion arises under s. 11(a) of the Act.
'IT is a hypothetical question which first arises on an original application for registration. It looks to the future use of the matter as a trade mark and embraces any normal and fair use which as registered proprietor the applicant would be entitled to make of it in the ordinary course of trade in respect of goods of the class for which it is registered.'
In issues of this kind judges are entitled to give their own opinion as to likelihood of deception or confusion and, in doing so are not confined to the evidence of the witnesses called at the trial. [Per Lord Diplock in Gec case (supra)].
(23) The essence of a trade mark is the association that it bears in the mind of a potential buyer of the goods to which it is applied. I can see no reason for differentiating between cases where the con fusion arises because 'the trade mark is associated with the name of a manufacturer to which some other manufacturer's name is similar, and cases where it is associated with a design or with descriptive words and the confusion arises because some other manufacturer uses a similar design or similar descriptive words to indicate the origin of his goods. In my view s. 11 is wide enough to embrace 'confusion' resulting from any of these kinds of association.
(24) The Assistant Registar has reached the conclusion that the registration of Malhotras' mark is in contravention of s. 11(a) and (e). Such a mark is 'disentitled to protection in a court'. To the effect is the prohibition of registration contained ins. 12(1) of the Act. S. 32(b) goes even further. It says that if the trade mark is registered in contravention of the provisions of s. 11 or offends against the provisions of that section on the date of commencement of the proceedings the original registration of the mark cannot be taken to be valid notwithstanding the expiry of 7 years from the date of the registration. This is a serious inroad into the doctrine of conclusiveness of registration as to its validity after 7 years. On this point I agree with the finding of the Registrar.
(25) Third is the question of honest concurrent use under s. 12(3). The counsel for Malhotras strongly relied upon this provision. In fact his two main planks are 1. priority in registration and 2. honest and I concurrent user. On the first point I will say with Shah J: 'Priority in adoption and use of a trade mark is superior to priority in registration.' (Foods Corporation Case, supra).
(26) Now remains the question whether Malhotras have a right to claim on the basis of honest concurrent use under s. 12(3) that their mark should not be expunged. There can be no gainsaying the fact that s. 12(3) could have been a valid defense of Malhotras in the rectification proceedings launched by Ropis against them. The onus for the claim under s. 12(3) lay on them while onus of rectification generally lay on Ropis. On an examination of the evidence the Assistant Registrar came to the conclusion that Ropis have discharged the burden of proof while there was no evidence before him in respect of Malhotras' claim for honest concurrent use. In order to succeed under s. 12(3) the proprietor has to establish that his adoption was honest, it. was bona fide and that he was using it concurrently. The discretion under s. 12(3) can only be exercised when two or more parties unknown to each other and unaware of the mark used by each other innocently adopt and use the same trade mark in respect of their respective goods of the same nature. The adoption ought to be honest, bona fide and without any knowledge on the part of the adoptor. About the origin of the doctrine of concurrent user Lord Diplock says this :-
'BUTthe interest of the public is not being deceived about the origin of goods had and has to be accommodated with the vested right of property of traders in trade marks which they have honestly adopted and which by public use have attracted a valuable goodwill. In the early 19th century trade was still largely local; marks which were identical or which closely resembled one another might have been innocently adopted by traders in different localities. In these their respective products were not sold in competition with one another and accordingly no question of deception of the public could then arise. With the rapid improvement in communications, however, in the first half of the 19th century markets expanded; products of two traders who used similar marks on their goods could thus come to be on sale to the same potential purchasers with the consequent risk of their being misled as to the origin of the goods. Furthermore, it was accepted that as an adjunct of the goodwill of the business the right to use a trade mark might be acquired by more than one successor if the goodwill of the business were divided, as it might be, for instance, where the business had formerly been carried on in partnership or from more than one manufactory or shop. To meet this kind of situation the doctrine of honest concurrent user was evolved. Under this doctrine a trade mark remained entitled to protection in cases where the use of it had not originally been deceptive but a risk of deception had subsequently arisen as a result of events which did not involve any dishonesty or other wrongful conduct on the part of the proprietor of the mark. If, however, his own wrongful conduct had played a part in making the use of the mark deceptive, the Court of Chancery would not grant him an injunction against infringement. This was but a particular application of the general equitable doctrine that he who seeks equity must come with clean hands. In cases of honest concurrent user, neither of the owners of the mark could restrict the other from using it, but as against a usurper who infringed it either owner of the mark could obtain an injunction [Dent v. Turpin (1861) 2 J&H; 139 (3). Southorn v. Reynolds (1865) 12L.T.754'.
(27) The Assistant Registrar has recorded the finding that Malhotras being in the same trade knew about the adoption of this mark by Ropis. Ropis' goods were being sold in Delhi market. Two traders of Delhi have sworn affidavits. The Assistant Registrar thereforee concluded that Malhotras had knowledge of Ropis' mark and its reputation. If the origin or the adoption of the mark is tainted it cannot be said that its adoption by the trader is honest and bona fide. I thereforee reject the claim of Malhotras under s. 12(3) of the Act.
(28) Fourth is the question of rectification. Under s. 56(2) rectification can be ordered if an entry which was lawful at that time when it was originally made has as a result of subsequent events become one which wrongly remains on the register. The power to expunge is also extended to any entry made 'without sufficient cause'. The court is empowered to expunge the entry of a trade mark in both cases' In my opinion the continued presence of Malhotras' trade mark on the register is unlawful by virtue of s. 11(a)(e) and 12(1). By reason of the registration of Ropis' mark on January 9. 1973, the earlier entry regarding Malhotras' mark became one 'wrongly remaining' on the register. At the time of the rectification application its continued presence on the register was prohibited by virtue of other provisions of the Act. The matter of rectification is in the discretion of the Registrar. This court will not interfere with his discretion if discretion has not been exercised in a capricious or arbitrary manner.
(29) The counsel for Malhotras has raised three points. Firstly it was submitted that Ropis are not a 'person aggrieved' within, the meaning of s. 56(2). It was submitted that after Ropis had obtained their registration in the first round of litigation they could harbour no grievance against Malhotras. They no longer, it was said, remained an aggrieved party as they got all that they wanted. I do not agree- A person whose trading interests are affected is a person aggrieved. By the continued presence of the entry on the register their business interests will certainly suffer. They will be hurt by this trade mark remaining on the register. They have an interest in the removal of the mark. The courts have interpreted the word 'person aggrieved' liberally. I hold that Ropis are a 'person aggrieved'.
(30) The second contention of the counsel is that the judgment dated January 9, 1973 became conclusive between the parties. He said that it operated as rest judicata in rectification proceedings and thereforee the Assistant Registrar had no jurisdiction to order removal of the mark. In this connection he relies on the following observations of the Assistant Registrar in the proceedings for registration:
'THUSthe Opponents can at the most claim user for 2 years before the date of the filing of the Applicants' application. As already stated, the sales figures are given in para 5 of Shri R. C. Malhotra's affidavit. It will be seen there from that the Opponents had sold goods worth nearly 4 lakhs of rupees under their mark during the relevant period of two years between 1967 and 1969. Considering that the goods viz. dress hooks are very cheap, I hold that the Opponents have established sufficient user for their mark to qualify for taking an objection under section 11.'
(31) In my opinion the order of the Assistant Registrar dated April 9, 1973, does not constitute rest judicata in the rectification proceedings. At the stage of registration the only question before the Assistant Registrar was whether he would grant the application of Ropis or refuse it. He was concerned with no other question. Of course if the opposition had succeeded he would have refused registration. In that case the judgment would have operated as a bar to any future proceedings. But the opposition failed. Ropis succeeded in obtaining registration. Nor do I find that there is any finding in favor of Malhotras in the observations set out above. The Registrar was merely referring to the affidavit of Malhotras and saying that their sales of nearly four lakhs of rupees were shown during the period of two years. This in his view was sufficient user which qualified Malhotras for taking an objection under s. 11. This affidavit at best can be said to have given a standing to Malhotras to make an opposition. This all. But on s. 11 (a) and (e) the Assistant Registrar has positively reached the finding that the registration of Malhotras' mark is calculated to cause confusion and is disentitled to the protection of a court. It was certainly open to Malhotras to have led evidence of honest concurrent use in rectification proceedings. But they did not choose to lead any evidence. The counsel relies only on the above observation. On the basis of this slander statement I cannot hold that there was honest concurrent use under s. 12(3). The third point raised by the counsel is about copyright. Both the industries have copyright in their marks. Ropis were the first to get it registered under the Copyright Act. Malhotras got it later. The counsel says that the registrar would not have granted him copyright if he had found that there was any chance of deception or confusion. This argument in my opinion is irrelevant. I am dealing with a case under the 1958 Act. I am not dealing with the case under the Copyright Act, 1957. Lastly Mr. Gupta argues that Ropis have not made out a case in pleadings for rectification. He invited my attention to the application for rectification dated May 30. 1971 In paragraph 8 of the application Ropis have clearly said that Malhotras had prior knowledge of their mark and thereforee are not bona fide in the adoption and registration of the mark. I think this clearly sets out their case.
(32) Mr. Gupta referred me to paragraphs 4 and 6 of the application. In para 4 Ropis were making a mention of the proceedings pending at Bombay. In para 6 the complaint of Ropis against Malhotras was that though their word Kismat per se was registered they were using a label trade mark very much similar and identical with the mark of Ropis. This complaint it seems to me was quite justified. It has not been denied by Mr. Gupta that the label trade mark which is being used by Malhotras is very much the same as Ropis' label mark with this difference only that the names of the two industries are different on them. This is not such a difference as would entitle me to say that the complaint is unjustified.
(33) Mr. Gupta referred me to Wondon Rubber Company v. Durex Products Inc. : 2SCR211 and Roche & Co. v. G. Manners & Co., : 2SCR213 in support of his contention that the totality of the marks is to be taken into account by a court In order to arrive at the conclusion whether there are chances of deception and confusion. He said that in the case of Ropis the label mark is recognised in the trade as such. In his case he argued he was merely using the word Kismat per sc. I am not imprcssed by this argument. I have already said that the word Kismat in both the trade marks is exactly the same with this difference that in the case of Malhotras it is word per se for which they have obtained registration. In the case of Ropis it forms a prominent part of the label mark. Incautious and unwary purchasers are not likely to make any distinction. They are likely to be confused with the common word Kismat which is used by both admittedly. The main and the. leading features of both the marks appear to be the same.
(34) For these reasons I would uphold the order of the Assistant Registrar and dismiss C.M. (Main) with costs.
(35) Now I turn to the other appeal. After two skirmishes the parties are now locked in a third battle. This has just started. On September 6, 1974 Ropis commenced an action in the court of the Additional District Judge for infringement of their registered trade mark, injunction, passing-off and accounts.
(36) In this suit they claimed an ad interim injunction against Malhotras restraining them from using the trade mark Kismat G the word per se. An ex parte temporary injunction was granted. But after hearing both sides the trial court on March 18, 1975, dismissed the application under O. 39 r. 2, Code of Civil Procedure. Ropis now appeal to this court against the order of refusal to grant injunction. This is Fao 113 of 1975.
(37) Mr. Gupta on behalf of Malhotras has mainly urged one ground. He says that there cannot be an injunction in favor of Ropis because they are guilty of laches and delay. In other words he has argued that by reason of estoppel and acquiscence Ropis arc disentitled to seek a discretionary order in their favor. It is said that Malhotras got their trade mark registered in 1967. From 1967 till 1974 when the suit was brought Malhotras have been using their trade mark without any let or hindrance and thereforee Ropis are not entitled now to prevent them from using their trade mark.
(38) There can be no doubt that interim injunction will not be granted if the plaintiff has delayed for an appreciable time after he knew of the matters complained of, unless the delay is explained. In the present case I find that there is no delay. It there is any it has been properly explained.
(39) On December 26, 1967, Malhotras got the word Kismat per se registered. In December 1969 Ropis got their label mark registered. Malhotras filed an opposition in those proceedings. Those proceedings ended in favor of Ropis. Thereafter on April 2, 1971, they started rectification proceedings which ended in 1973. Though the registration of Ropis label trade mark was ordered on January 9, 1973 certificate of registration was issued to them on May 14, 1974. The rectification order in the second proceeding was made on April 30, 1973. Public notice of the order regarding the removal of the mark was published in the Gazette on June 16, 1974. The suit was brought in September 1974, as I have said. Unless there is rectification one registered proprietor cannot sue another : See s. 23(3).
(40) What appears to me is that Ropis have been battling all along the line with Malhotras. These two decisions-registration and rectification- are of importance to the rest of the case. The order of registration is final. Rectification order was the subject of appeal [C. M. (M) 67 of 1974]. I have dismissed the CM. (main). The election of F C. M. (M) will have direct effect on the decision of this F.A.O. The two matters, namely, registration and rectification on the one hand and the matter of injunction on the other stand or fall together. Since Ropis have succeeded in the first two rounds of litigation their path is now clear.
(41) In February 1970 when Malhotras filed the opposition they came to know that Ropis were asking for registration. Malhotras inspire of all that have gone on with their sales though their opposition was dismissed. Then there were rectification proceedings. There also they failed but they went on with their business. In such circumstances it hardly lies in the mouth of Malhotras to comedo this court and say
'WEhave been trading upon the reputation of the other side, by trading upon that reputation we have been making money. We have been warned that we should not so trade and yet we took the risk, and now protect us from our folly or our own dishonesty because the other side has delayed in coming to Court and we have a large stake in the sales which we are effecting by reason of using a trade mark which resembles the trade mark of another'
: See Ciba Ltd. v. M. Ramalingam, : AIR1958Bom56 .
(42) It has been said that acquiscence which will deprive a man of his legal rights must amount to fraud, and in my view that is an abbreviated statement of a very true proposition. A man is not to be deprived of his legal rights unless he has acted in such a way as would make it fraudulent for him to set up those rights. The plaintiff, ' the possessor of the legal right, must have encouraged the defendant in his expenditure of money or in the other acts which he has done, either directly or by abstaining from asserting his legal right : See Willmott v. Barber (1880) 15 Ch. D. 96 (8). Applying this principle enunciated by Fry J in 1880 I cannot say that Ropis in any manner encouraged Malhotras to go on with their sales. Ropis were asserting their right at every stage. They succeeded in two proceedings. Now without any loss of time they have launched the third proceeding.
(43) The counsel argued that if Ropis could not bring the suit for infringement earlier as their trade mark was not registered there was nothing to prevent them from suing in tort in passing-off. He referred me to s. 27(2) of the Act. I do not agree. Before registration was inaugurated by the Act it was practically possible for a trader to protect his trade mark by calling evidence to show that the use of the mark by the defendant was calculated to pass off the defendant's goods as his goods, and this is still possible, and is often done, where the mark in question is not registered. But the evidence to be adduced on behalf of the plaintiff in such an action must often be elaborate and expensive, and is sometimes difficult to procure, while if the registration is properly effected, all that is necessary is to produce the Registrar's certificate. (Kerly page 246).
(44) In order to succeed in passing off action Ropis had to bring elaborate and expensive evidence. This is sometimes difficult to procure as Sir Duncan Kerly has said. thereforee they adopted the convenient course of first obtaning the registration. Then it was necessary for them to obtain rectification of the register. It is only thereafter that they could sue Malhotras for infringement. An action for infringement is necessarily an action on a registered trade mark. Until there was rectification Ropis could not sue Malhotras. S. 28(3) was a bar in their way. My conclusion thereforee is that there is no delay.
(45) In considering whether to grant an interlocutory injunction, the right course for a judge is to look at the whole case. He must have regard not only to the strength of the claim but also to the strength of the defense, and then decide what is best to be done. The remedy by interlocutory injunction is so useful that it should be kept flexible and discretionary. It must not be made a subject of A strict rules. [Hubbard v. Vosper (1972) 2 W.L.R. 389 (9) per Lord Denning]. Keeping this principle in mind I think there ought to be an injunction against Malhotras. More so now when Ropis have succeeded in their rectification proceedings before the Assistant Registrar and in this court.
(46) For these reasons I would allow the appeal (FAO 113 of 1975) with costs and set aside the order dated March 18, 1975, and instead grant an injunction to the plaintiff restraining Malhotras from manufacturing, selling, marketing dress hooks of any kind under trade mark Kismat or any such or similar mark which is liable to cause confusion and deception in trade and public.
(47) C. M. (Main) 67 of 1974 I have already dismissed with costs. Counsel's fee Rs 300.00 in both cases.