S.B. Wad, J.
(1) This is an appeal under Section 109(2) of the Trade and Merchandise Marks Act, 1958. The appeal is directed against the order of the Assistant Registrar of Trade Marks dated 4.10.1980, dismissing appellant's objection under Section 21 of the Act and granting registration of Trade Marks 'Hicks' to Respondent No. I, being No. 286365. The order is the appeal has already been pronounced on 29th May, 1981. Following are the reasons in support of the said order.
(2) The trade mark 'Hicks' was registered under No. 11374 dated 4.3.1943 in Glass Ix in respect of Thermometers and similar scientific instruments in the name of M/s. M.F. Stanley and Company Ltd. U.K. The trade mark with which we are concerned is in respect of Thermometers (Clinical, Chemical and Industrial) only. Import of Thermometers was banned in India in 1957 so as to encourage the indigenous industry. An agreement was entered into between Pearls and Beats (India) and Health, Hicks and Perkin Thernometer Ltd. U.K. in furtherance of which the appellant-company, namely Hicks Thermometers India Ltd. was incorporated in 1961. The said U.K. Company was wholly owned subsidiary company of M/s. Stanley & Co., the proprietor of Trade Marks. A technical and consultancy agreement for the manufacture of Thermometers in India was entered into between the said subsidiary and the respondent company on 28.6.1961. M/s. Stanley & Go. through the said agreement allowed the use of the trade mark by the respondent-company on the condition that the respondent-company will pay royalty, will have two nominees of the subsidiary company on its Board of Directors and the technical standard as insisted by the subsidiary company was maintained. By agreement dated 21.1.1964 between the respondent and M/s. Stanley, the respondent company was permitted to register itself as a sole registered user of the registered trade mark No. 11374 and other trade marks. Accordingly the respondent-company was registered as the sole user of the trademark. The said agreement was to expire on 5th May, 1971. The technical consultancy agreement was terminated on 30th June, 1968 by the principal company and the subsidiary company, through letters dated 12th December, 1967 and 8th December, 1967. It was, however) clarified in the said letters 'that our technical advisory service will continue to be available and you will continue to be entitled to the rights to use our trade marks, designs and manufacturing methods etc. (under Clause 13 these remain our property after termination), in return for which you will continue to be liable for the payment of royalities.'... ...........'Our cooperation may yet lead to a profitable enterprise and to the remission of outstanding and future royalties.' Although the registered users agreement came to an end on 5th May, 1971, the registered trade mark No. 11374 continued to be on the register in the name of M/s. Stanley till 4.2.1972. The respondent-company wrote to M/s. Stanley for the renewal of the registration of the trade mark but no renewal was don'. On March 1, 1973 the respondent-company applied to the Registrar of Trade Marks for the registration of trade mark 'Hicks' in their own name. Before making an application the respondent- company informed M/s. Stanley of their intention to get the registration of the said mark in their name. There was no response. This is probably because, by this time M/s. Stanley & Go. was wound up and had become defunct.
(3) The appellant-company objected to the registration of trade mark under Section 21 on the following grounds :
(1) Appropriation and use of the trade mark 'Hicks' by the respondents) (who were merely registered users), after 4.2.1972, is likely to cause confusion and deception. The registration was opposed under Section 11.
(2) The trade mark applied fur is a common surname without any distinctiveness. Section 9 does not permit registration of such a trade mark.
(3) That the respondents are not proprietors of the mark within the meaning of Section 18(1) of the Act.
(4) That the discretion under Section 18(4) could not be exercised in favor of the respondents.
The respondents on the other hand justified registration in their name for following reasons:
(I) that the registration of the trade mark was in the knowledge and consent of the British collaborators. (ii) M/s. Stanley & Go. had abandoned the trade mark and had discontinued it without any intention of renewing their right. The company is itself defunct, appropriation of the trade mark by them was bonafide. (iii) Surname 'Hicks' is distinctive in India. (iv) By long association, the consumers and traders are satisfied with the thermometers of respondents and there was no likelihood of any deception or confusion in their minds. (v) The opposition by the appellants was the result of personal animosity for the use of the registered trade mark. (vi) That the appellants association was not a person, within the meaning of Section 21 of the Act, and thereforee objection petition under Section 21 was not maintainable.
Evidence was produced by both the parties in the form of affidavits. In addition the respondent produced 31 affidavits of chemists and other dealers, all over India to prove the reputation of the respondent's trade mark. The Assistant Registrar has pronounced a very detailed and well reasoned order. He has personally gone through all the documents on record. He has also exhaustively dealt with the case law on the point and standard commentaries. I am convinced that no interference is called for With the order of the Assistant Registrar. Although Section 109 provides for a statutory appeal to High Court, the scope of the appeal is not similar to the appeal under C.P.C. The High Court exercises same discretion as that of the Registrar. It is well established by several decisions of the English Courts and the Indian Courts that unless the discretion is arbitrarily or capriciously exercised, High Court should not interfere with an order of the Registrar. Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., AIR 1953 S.C. 538. The Registrar deals day-to-day with these commercial matters and his expertise, knowledge and experience of trade and commercial realities must be taken into account before High Court finally decides to upset an order. Court will not lightly interfere, unless the decision is unreasonable or impossible to accept Vrailal Manilal [C.J.). Chagla Court High Bombay 1954 of 36 No. (Appeal Dharamchand, Kodarlal v. Co.
(4) Section Ii of the Act enacts a prohibition. An applicant may satisfy that the trade mark is distinctive, under Section 9 or that he is the proprietor under Section 18(1). But the trade mark cannot be registered if it falls within the provisions of Section 11 of the Act. The object of Section 11 is protection of the consumer public at large. It does not aim at settling the rival claims of two or more private claimants to a trade mark. The section casts a positive duty on the Registrar to see that the trade mark shall not be registered if the general public is likely to suffer. We arc here concerned with the allegations that the trade mark in question is deceptive and its appropriation and use is likely to create confusion.
(5) These allegations fall under provision of Section 11. The said section reads 'A mark the use of which would be likely to deceive or cause confusion shall not be registered as a trade mark.' The primary burden is naturally on the applicant to satisfy the Registrar. The appellants contend that the burden was wrongly casts on them by the Registrar. Reading of the impugned order closely, slows that the allegation is not correct. The Assistant Registrar considered the affidavits of the respondent and 31 affidavits produced by it from the persons dealing in thermometers. Since the appellants had also produced their evidence in the form of the affidavits, the Assistant Registrar naturally considered them to find out whether the respondent's claim has been disproved. There is nothing wrong in this approach. The appellants have also objected to reliance being placed on the 31 affidavits of the traders. The objection is twofold. The first objection is that these affidavits are stereotyped proforma affidavits. Looking to form alone, this impression appears to be correct. But one thing is clear. This proves that chemists traders who dealing in thermometers and are buying the thermometers for the last more than 15 years, are satisfied with the quality of' Hicks' thermometer manufactured by the respondent They have stated so in ihe affidavits. In the nature of things, it is natural that the affidavits would be in the same form, namely showing association with the goods of the respondent for certain number. I do not think that the Assistant Registrar has committed any error of Jaw in relying on the said affidavits. The second objection of the appellants is that these affidavits do not show the reputation acquired by the respondent as the proprietor of the trade trade mark. It is submitted that they merely speak of the manufacture by the respondent as the registered users. The period for which the reputation claimed by the respondents is from 1971 to 1973. But up to 4.2.1972, the mark was still registered in the name of M/s. Stanley & Co. The crucial period thereforee is after 4.2.1972. Amongst the affidavits produced from the traders, there are some affidavits which advert to the reputation of the respondent's thermometers during 1972.
(6) The real question for decision under Section 11 is whether the trade mark as claimed by the respondent would cause deception or would cause confusion. The standard of average reasonable man is applied by a court. Average intelligence and imperfect memory of a layman are taken into account. The average consumer in India knows that the imported thermometers are not available in the market. He has been buying 'Hicks' thermometers which was manufactured in India with foreign collaboration. The thermometers have established a standard and quality of themselves. The specifications and standard of manufacture were achieved under exacting supervision of foreign collaboration Ordinarily a consumer would not be mindful or concerned as to when the foreign trade mark has come to an end. Indeed the technical collaboration had already come to an end in 1968. Perhaps, by this time the indigenous product had acquired 'Hicks' standard of precision and realibity. The evidence of the traders since 1966 and particularly after 1968 is very useful to appreciate this fact. The technical distinction between registered proprietors and registered users manufacturing the goods is relevant only to the rival manufactures for earning monopolistic profits. The common man is hardly interested in this technical wragle. He wants a thermometer on which he can blindly rely when he is sick. Here his experience is the best guide. There is a marginal difference of degree in the normal temperature of a sick person and the temperature showing that he is sick. So also there is slight different of degree in what is called a high temperature. This small difference may prove fatal if a thermometer is not reliable. I do not think that the respondent's thermo- meters with trade mark 'Hicks' are likely to deceive or cause confusion in the minds of lay public. A new manufacturer, on the other hand, who has no benefit of working under exacting standards and precision and foreign collaborators is likely to create more confusion and deception if he is allowed to push substandard thermometers in market.
(7) Section 12 deals with likelihood of deception by two or more similar trade marks owned by two or more persons. The counsel for the appellants submits that the Assistant Registrar has confused between the requirements of Section 11 and Section 12. I do not find any such confusion in the impugned order. Since, the appellants had given an impression, through their application in opposition, and during the arguments that they are also interested in manufacturing thermometers under the said trade mark, some reference to the appellants in this context was inevitable.
(8) The second objection of the appellants is that 'Hicks' is a common surname and there is no distinctiveness with the trade mark. The Assistant Registrar has elaborately discussed, this question on the basis of the evidence on record. Although, 'Hicks' is a surname, the name is not common in India at all. The approach to the question of surname for the purposes of Section 9 cannot be a mechanical approach. If a surname is a foreign surname the distinctiveness is mostly self-evident. It need not to be explored by referring to the telephone directory or similar evidence. Considering the history of the use of the surname 'Hicks', right from the collaboration agreement of 1961 (sanctioned by Government), surname 'Hicks' has acquired distinctiveness in India. Much more so, in relation to thermometers. The Assistant Registrar has also referred to the dictionary meaning of the word 'Hick'. It was not necessary to go to the dictionary meaning considering the special facts of this case. The submission of the appellants of a base of Section 9, is without any merit and is rejected. Even assuming that the submission is correct, the trade mark can be registered in register 8'.
(9) This takes us to the last submission of the appellants. The objection here is that the respondents have not established its proprietorship in the trade mark. The relevant portion of Section 18(1) of the Act reads 'any person claiming to be a proprietor of a trade mark used or proposed to be used by him, which he is desirous or registering it, shall apply in writing to the registrar'. The Section does not require that before applying, a person must conclusively establish his proprietorship of a trade mark. It is sufficient that a person 'claims' to be a proprietor of a trade mark. If he is already using the mark, it is a practical demonstration of his claiming the proprietorship. But the section does not need the use of the trade mark in present. It is enough, if he proposes to use it in future. At this stage, it is only the validity of his 'claim', which is to be considered. The respondents were in fact using the trade mark, first as a registered users and thereafter without registration. After 4 2.1972 the foreign proprietors abandoned the trade mark. They did not renew the registration although the respondents informed them about it. They also did not raise any objection to the respondents' filing an application for the registration of the trade mark in its own name, although an express notice was sent by the respondents. This is sufficient evidence of abandonment. The respondents were first person to pick up this abandoned trade mark. They had reasons to do it. The respondents had invested large amount for setting up a factory, paid royalties and collaboration fee for number of years and had also worked under the supervision of the foreign collaborators. It is well established, that law does not require a definite period for acquisition of the reputation either by way of an original acquisition of the reputation either by way of an original acquisition or acquisition of an abandoned trade mark. Even assuming that the reputation is to be computed after 4.2.1972, the duration of 13 months is sufficient in the present case for creating reputation in favor of the respondents. There is no substance in the opposition of the appellants.
(10) The preliminary objection, that an unregistered association cannot be considered as a 'person' under Section 21(1) of the Act is legally untenable, and is rejected. Appellants' association is an unregistered association. The words 'person' is not defined in the Trade and Merchandise Act. thereforee Section 3(42) of the General Clauses Act, 1897 is applicable. The definition of a 'person' under the said sub-section is, 'a person shall include any company or association or body of individuals, whether incorporated or not'. I have no hesitation in holding that the appellants' association is a 'person within the meaning of Section 21.1 of the Trade and Merchandise Marks Act, 1958.
(11) The Assistant Registrar has exercised the discretion judicially and judiciously. There was distinctiveness about the trade mark. The respondents had established their reputation sufficient for new acquisition or abandoned trade mark. There was no confusion or deception likely to be caused by the trade mark. While exercising the discretion, under Section 18(4), the Registrar has to take into consideration, the entire history of the trade mark, the surrounding circumstances, the approach of the traders in relation to a particular mark and the interest of the public. The source of trade mark registration is in equity and the Registrar cannot ignore the equity between the parties. The impugned order has correctly applied these principles. The appellants had not made out any ground for interfering with the discretion of the Assistant Registrar.