Rajindar Sachar, J.
(1) This is an appeal against the order of the learned single Judge by which he accepted the opposition of the respondents to the registration of the trade-mark 'Escorts' in favor of the appellant which had been allowed by the Assistant Registrar.
(2) The respondent company was incorporated under the Companies Act as far back as 1944. It manufactures and sells various agricultural equipment, razor blades, tractors, washing machines, motor cycles, shock absorbers, thermometers and other medical appliances since 1951. In 1961 the respondents sought and obtained registration of its trade-mark of the word 'Escorts' in clause (9) and (II) of schedule 4 of the Rules framed under the Trade and Merchandise Marks Act 1958 (hereinafter to be called the Act). This trade-mark relates to goods amongst others to electric irons, electric kettles, soldering irons and elements for electric irons and kettles.
(3) Od 23.3.1963 the appellant sought registration of a trade-mark of the word 'Escort' under clause (9) in respect of electric irons, electric kettles, soldering irons and elements of electric irons and kettles. It is not disputed that these items are covered by the earlier registration obtained by the respondents in 1961. The respondents naturally put in opposition to the registration application of the appellant. Section 9 of the Act lays down the requisites for registration in part A and B of the Register. Section 11(a) prohibits registration of a mark, the use of which would be likely to deceive and cause confusion. Section 12(1) further lays down that no trade-mark shall 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 ofgoodi. Sub-section (1) of Section 12 is however, subject to sub-section (3) which empowers in the case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper to do so, that it may permit the registration by one or more than one proprietor of trade-marks which are identical or nearly resemble each other (whether any such trade mark ii already registered or not) in respect of the same goods or description of goods.
(4) The Assistant Registrar found that trade-mark sought by the appellant was prima facie distinctive within the meaning of section 9 of the Act. With regard to Section 12(1) he found that there was hardly any difference from a trade mark point of view between the word 'Escorts' which was the registered trade-mark of the respondents and the word 'Escort' for which registration was sought by the appellant. He, thereforee, found that the applicant/appellant's trade-mark was similar to the opponent's/ respondent's. He also found that the applicant's goods are the same or of a similar description as some of the items covered by the registered trade-mark in favor of the respondents. Thus section 12(1) of the Act stood as a bar to the registration. The respondents had also objected to the registration being given to the appellant by invoking Section 11(a). This the Assistant Registrar did not find in their favor as according to him the use of the trade-mark 'Escort' by the respondents has not been proved. He, however, held the case of the appellant established under Section 12(3) of the Act. He also found that as the goods had been sold by the appellant under the Trade Mark 'Escort' since 1958 the appellant's case fell within section 33 of the Act and thereforee, they were entitled to registration.
(5) In appeal the learned single Judge however, found that from the statement of the sales for the period from 1960 onwards, it is clear that the respondents have been able to establish that their mark 'Escorts' was well known in the trade and that if the registration of the trade-mark was allowed in favor of the appellant it is likely to deceive the public and would be fit both under section 11(a) as well as under section 12(1). He, thereforee, did not think that it was a case in which applicants/appellants deserve registration under section 12(3) of the Act. The learned Judge also has found that the appellant/applicants have not been able to discharge the heavy onus laid upon them that notwithstanding the similarity in the trade-mark it will not cause confusion and deception. He, thereforee, allowed the appeal and dismissed the application for registration filed by the appellant/applicants.
(6) The first objection raised by the counsel for the appellant, Mr. Kanwal Krishan was that as the discretion had been exercised by the Registrar in granting registration the learned single Judge was in error in reversing it. Put so broadly the proposition is unacceptable. Of course if it is meant to emphasise that the discretion exercised by the Assistant Registrar, in a matter where he is expected to have expert familiarity with the subject should not be lightly interfered with by the appellate court, the same can be readily accepted. But the way the counsel for the appellant raised this objection, he almost put forward as a bar to any interference by the appellate court. Naturally we could not accept this extreme proposition which will reduce a statutory appeal to a mere form and inanity. Though the official of the registry are peculiarly fitted to deal with all these matters like 12(3) and where the Registrar has exercised his discretion in the matter, the court would be slow to interfere, yet the court while determining the weight to be attached to the Registrar's view, must exercise its own mind upon the solution of the problem under consideration. Vide (1933) 50 R.P.C. 147 in Alex Pine. & Sons Ld's application (Article 632 ; Narayanan's Trade Mark Act, 2nd edition). The Registrar's decision in exercise of its discretion does not relieve the court of its own individual responsibility. His discretion like the discretion of everybody else is liable to be controlled by the superior tribunal. Vide (1927) 44 R.P.G. 225 in Dislribution Corporation (London) Limited's application. Like all discretions the Registrar's discretion must be judicially exercised ; and such an exercise of discretion is liable to review on grounds which are well understood, See (1937) Ac 473 (HL) Evans v. Barthlam and (1950) 67 R.P.C. 209. Venkateswaran, Law of Trade Mark Act, 1963 Edition).
(7) It is common case that the trade-mark which is sought by the appellant is similar to the one for which registration has already been obtained by the respondent. It is also common case that the goods covered by the appellant's proposed registration application are also covered by the registered trade-mark which was obtained by the respondent in }9G3. Prima facie, thereforee, the applicant's application for registration would be liable to be rejected because of the bar both under section 11(a) and 12(1) of the Act. Even the Registrar had found the on this aspect against the appellant. The only reason why he was persuaded to allow the registration was because he took the view that the user by the 'respondents of the trade mark was only from May, 1951 and the period of a year and 10 months was hardly sufficient to have discharged the onus of proving use and reputation which was upon the opponents. So far as the evidence of user of the trade-mark by both the appellants and the respondents is concerned there was the affidavit of Mr. Hazari on behalf of the respondents in which he had given the figure of the sale of goods under the trade-mark 'Escorts' from the year 1961 to 1964- which showed that the figures of the sale from 1961 of about 5.7 lakhs went to Rs. 20 lakhs in 1962 and Rs. 29 lakhs in 1963 and was Rs. 92 lakhs in 1964. Of course the material date for establishing the use and the reputation of the mark in the market, both by the appellant and respondents would be 22.3.1963 when the application for registration was moved by the appellants. But even then the sales in terms of the affidavit of the respondent which could not be rebutted shows that it was to the extent of about Rs. 20 lakhs. Not only that advertisements of the respondents under their trade-mark including 'Escorts' were said to be about over Rs. 3 lakhs and 82 thousands in the year 1963. Another affidavit of Mr. Charanjit Singh, Secretary of the respondent company filed in August' 1966 which had been ignored by the Assistant Registrar, and which the learned single Judge for reasons mentioned by him and in our view rightly took into consideration shows that the company had been selling; electric iron, vessels and heating elements etc. These are the very goods for the same description for which registration had been sought by the appellant. The sale of these goods starting with over Rs 81,000/. in 1961 rose to Rs. 2 lakhs and 84 thousands in the year 1963. What is however, more important is that the said affidavit also shows that the respondents were selling the goods mechanical and electrical since 1951 and the figures showed that. starting with sales of over Rs. 31 lakhs, the said figure had risen to over Rs. 3 crores and 40 lakhs in the year 1962. The Assistant Registrar wrongly excluded the affidavit of Charanjit Singh, with the result that it did not take into account the large sales which the respondents had been able to build up by 1962, and which were marketed under the trade name 'Escorts'. This fact was naturally very relevant for the purpose of Section 11(a) of the Act. It is well settled that when a person like the appellant applies for registration of his mark, he bears the burden of satisfying the Registrar and who has to be satisfied, whether having regard to the reputation acquired by use of a mark or a name, the mark at the date of the application for registration if used in a normal and fair manner in connection with any of the goods covered by the proposed registration) will not be reasonably likely to cause deception and confusion amongst a substantial number of persons It should also be remembered that Section 11(a) covers cases where the goods may not be of the same description, but if it is likely to deceive and cause confusion, registration would be refused. See (1965) R.P.C. 363 '-Players' Trade Mark Appn. Thus for the purpose of finding out whether the use of the trade-mark 'Escorts' would be likely to deceive or cause confusion under section 11(a) it was necessary to bear in mind not only the sales which took place from the period 1961 to March' 1963 of the goods of the same description but also of the general acceptability of other goods sold by the respondents under their mark 'Escorts' in the market. It is no doubt true, as urged by appellants' counsel that a trade-mark is not necessarily 'disentitled to protection' because its use might deceive or cause confusion and to that extent Section 11 does not over-ride' the power to register given in section 12(3). Vide : 2SCR211 London Rubber Co. Lid. v. Durex Products Incorporated ami another. But cilcumstances of each case have to be considered and no generalisation can be attempted. Though the Registrar had correctly summarised the factors which ought to be considered while disposing of application under .Section 12(3) and which has received judicial recognition in John Pirie & Sons Ltd.'s Appln. (1933) 50 R.P.C. 147 (HL) ; and John Fitton & Go. Ld's Appn. (1946) 66 R.P.G. 110 . We feel that he has not given proper relevance to the requirement of the quantum of concurrent user shown by the applicants having regard to the duration, area and volume of trade and also to the degree of confusion likely to ensure from the resemblance of the applicant's and the opponent's mark. It is no doubt true that the trade mark 'Escorts' was registered in the name of respondents in 1961 for those goods for which the appellants now seek the registration but what cannot be forgotten is that the respondents were in the market selling their goods under their matk 'Escorts' right from 1951 onwards. Where the Assistant Registrar erred was in assuming that as there was only a short period from 1961 onwards with regard to the goods of the same description as the appellant, this period and the extent of user by the respondents was not enough to justify refusal of registration being given to the appellants In this he seems to have assumed as if the relevance that has to be taken into account about the mark is necessarily only with respect to the same description of goods. In this he obviously erred. What has to be found is whether this mark which the applicants seek registration of has come to be known and associated with the name of the opponent, not necessarily with the particular goods of the same description but generally with its goods. Thus if it could be shown that the mark has been quite extensively used in the market by the respondent with the result that any goods which may be marketed under the same mark will be associated with the name of the respondent so that people buying may feel that it is the product of the respondents this could be a sufficient justification for refusing registration of a similar trade mark in favor of the appellants.
(8) In (1899) 16 R.P.G. 12, Dunlop Pneumatic Tyre Co. Ltd. v. The Dunlop Lubricant Co., the plaintiffs were the manufacturers of cycle accessories under the name of 'Dunlop'. Defendants were selling burning oil or lubricants under the name of Dunlop which was not even being manufactured by the plaintiff. Nevertheless an injunction was issued on the ground that the name was substantially identical with that of the plaintiffs and the defendants are not to beallowed the use of the name which the plaintiffs were using.
(9) In (1965) R.P.G. 363 (Supra), an applicant applied for registration of trade mark of the word 'Players' in respect of non-medicated sugar confectionery and biscuits. The opponents were proprietors of a registered trade mark consisting of the work 'Players' in respect of manufactured tobacco. Even though the court came to the conclusion that tobacco cigarettes and confectionery cigarettes are not goods of the same description and the opponent's case under section 12(1) would fail, nevertheless the registration was refused on the ground that the public would regard cigarettes made from Chocolate as emanating from respondent company and accordingly use by the applicants of the mark applied for in respect of confectionery cigarettes would be liable to deceive and cause confusion.
(10) In 57 C.L.R.448 Radio Corporation Proprietory Ltd. v. Disney and 'Minnie Mouse' as trade marks in respect of radio receiving sets and kits. The application was opposed by Walter E. Disney, who had created the cinema characters 'Mickey Mouse' and 'Minnie Mouse'. Registration was refused and this refusal was upheld by the High Court of Australia on the ground that the opponents had shown that names and figures are so closely associated in the public mind, with Walter E. Disney that the use of either the names or the figures in connection with any goods at once suggests that the goods are in some way or the other connected with Disney.
(11) In 2nd 1978(1) Del 667 M/s.Jugmug Electric & Radio Co. v. M/s. Tilerad Private Ltd., the respondents were registered user of trade mark 'Telerad' in respect of radio receiving sets and components thereof. The appellant got it registered with their trade mark telerad in respect of domestic electric appliances It was common case that the respondents did not manufacture domestic electric appliances. Nevertheless their application for rectification was allowed and the registration granted in favor of the appellant was cancelled on the ground that there was some probability that she customers purchasing electric goods may think that the domestic electrical appliances are connected with the respondents firm at the stage of manufacture or at the stage of sale including that either they are manufactured by the respondents or marketed by it and, thereforee) the reputation attached to the manufacture or the marketing goods of respondents would tend to be attached to the goods of the appellant.
(12) It will thus be seen that in all these cases even though the opponent was not manufacturing the goods of similar description for which registration of the trade mark was sought by the applicant, the application was refused on the ground that because of the reputation in the market of the opponents the goods of the applicants may be taken to be those of the opponents. In the present case admittedly the sales by the respondents of their various goods and which are accepted in the market under the trade-mark 'Escorts' have run into over crores. The respondents are undoubtedly 'a well known manufacturing company and have a reasonably known name. They had also started manufacturing goods even of the same description as that of the applicant though it was in the range of a few lakhs by 1963. The user by the appellant was undoubtedly very limited as of his own showing it was to the tune of about 2' lakhs, though as pointed out relevantly by the learned Judge the invoices did not relate to the period subsequent to 1960. In that state of affairs if could not really be said that there was an extensive user by the appellant as to satisfy the test of concurrent user within the terms of section 12(3) of the Act. It is no doubt true that it is not necessary for the applicants trade to be larger than the opponent but then the extent of the business Along with the extent of the business interest of the proprietor and the interest of the public have all to be corelated in deciding whether applicant's mark should be registered or not. In this connection it is relevant to note that there is no absolute right to have the mark registered and if the court is in any doubt that if the mark will cause confusion, registration will be refused. There is of course no fixed rule as to the minimum period of honest concurrent use necessary to lead to registration. In Kerley's Law of Trade Mark and Trade Names', 9th Edition at article 340, it has been stated that there was no reported case in which a period of concurrent use, soshort as 21 years has been proved to be sufficient to bring the application within the advantage of Section 12(2). Even if this view was strictly applied and even a smaller use was held to be established from 1958 on which there is, to say the least, fair amount of doubt the period would be too short to satisfy the test of extent of user for the purpose of Section 12(3) of the Act. It cannot be forgotten that the word 'Escorts' was in the market right from 1951 onwards with a very considerable sale. It is correct that prior to 1961 the goods which were sold by respondents were different but that will not take the case out of Section 11 and would atleast show some indication as to why the appellant had used the word 'Escort'. Considering however, that the respondents were in field with the trade mark even though of other goods from 1951 onwards and considering that there was a very small amount of goods sold by the appellant in a period of a year or two prior to the registration by the respondents, the onus which was on the applicant, was rightly held not to have been destroyed. We, thereforee, see no infirmity in the Judgment of the learned single Judge. The appeal is, thereforee, dismissed. There will be no order as to costs.