1. Both these related Letters Patent Appeals have been Instituted respectively by the defendants in A. S. Nos. 560 and 561 of 1936 before a learned Judge of this Court (Ramachandra Iyer J. as he then was) with reference to the injunction granted by the learned Judge in respect of a registered trade mark (Manthithope,) used in the context of designating medicinal oils. In both the appeals, which differ upon the particular factsotherwise, the common ground is that this name, being a georgraphical appellation of a village in Tirunelveli District, ought not to have been registered as a trade mark. Further it is pleaded that the respondents were not entitled to obtain an injunction of this kind in respect of such an invalid registration offending the provisions of Section 6(1) of the Trade Marks Act, 1940 (V of 1940), which Act governs the parties to this action.
2. We have heard the arguments of the learned counsel for the appellants in both the appeals (Sri R. Gopalaswami Aiyangar and Sri M.R. Narayanaswami). They have attempted to advance the same proposition as that which was advanced before the learned Judge, namely, that the registration of this trade mark (Manthi thope) even in the context of the designation of a particular class of goods, medicinal oils, amounts to a registration of the geographical appellation of a village as a trade mark, and is thus invalid. On the same ground it is alleged that the respondents are not entitled to injunct the appellants. It is sufficient for us to observe that the learned Judge (Ramachandra Iyer J.) went into this matter in considerable detail with reference to the authorities cited by him in his judgment, particularly, the English authorities. After reviewing them, the learned Judge came to the conclusion that the registration of a geographical name as a trade mark is not absolutely prohibited, as would have been the case if Section 6(d)(i) had stood alone, but, that by virtue of Section 6(e) there is a discretion to register even a geographical name, if it is distinctive in relation to a particular class of goods, in this case to medicinal oils.
3. It seems to us that these Letters Patent Appeals must fail upon a shorter and simpler ground, even if there are two views possible upon the above conclusion of the learned Judge. The shorter ground is that it is fairly obvious, having reference to the relevant sections of the Act, that the validity of this registration could not be canvassed at all within the scope of the present proceedings. Section 23 of the Act enunciates that in all legal proceedings, the registration of a trade mark would be prima facie evidence of its validity. Section 24 equally declares that in all legal proceedings relating to a registered trade mark, the original registration of the trade mark, after the expiry of seven years from the date of such original registration, should be taken to be valid in all respects unless such registration was obtained by fraud, or unless the trade mark offends the provisions of Section 8 of the Act. We may here observe, in passing, that Section 8 has also been referred to by the learned Judge, and that that section relates to certain prohibitions of a special kind, such as the existence of a scandalous design, or the use of any design which might be disentitled to protection in a court of justice, which are not relevant to the present context.
4. Under Section 46 of the Act read with Section 72 of the Act, there is a special procedure provided for modification or cancellation of the registered trade mark by any person aggrieved. We might add since, that is also a relevant fact, that the appellants have actually instituted a proceeding under these sections (O. P. 152 of 1959) which isnow pending on the original side jurisdiction of this court for rectification of the register by expunging this trade mark. Under these circumstances it appears to be abundantly clear to us that the validity of the registration cannot be canvassed at all in these proceedings. The learned Judge (Ramachandra Iyer J.) has taken the same view, and granted the injunction on this ground also, after setting forth the relevant Sections 23, 24, 46 and 72 of the Act. For an important reason, even if the other limb of the argument has to be dealt with by us, it would not be expedient or in the interests of justice to do so. It may or may not be the case that the respondents are entitled to the registration even of a geographical appellation as a trade mark, as distinctive in application to a particular class of goods (medicinal oils). If that argument stood alone it would be perfectly proper for us to proceed into it in detail, before holding that the injunction should issue. But where the validity of the registration of the trade mark cannot at all be canvassed in a suit for injunction resulting from an alleged infringement of the registered mark, and collateral proceedings are pending under the Act itself for the cancellation of registration it would be most embarrassing and it would not be in the interests of the parties that we should make any observations upon the merits of that controversy. It is sufficient for us to state that the matter of the validity of the registration cannot be gone into within the scope of the present proceedings, and that, for this reason, the Letters Patent Appeals instituted by the two sets of appellants will have to be dismissed.
5. The appeals are accordingly dismissed. The parties will bear their own costs.
6. These are related appeals by the respondents in A. S. Nos. 560 and 561 of 1956 from the judgment of Ramachandra Iyer J. (as he then was), in respect of actions seeking to restrain the parties concerned from infringement of three registered trade marks. We might immediately state that, in these related appeals, the matter in controversy is within a brief compass. After granting the injunction in favour of the appellants here, the learned Judge (Ramachandra Iyer J.) observed as follows :
'The respondents would, therefore, be entitled to an injunction against the appellants against the use of the word 'Manthithope' in the labels of the appellants. To this extent the decree of the lower court will be affirmed. The decree in regard to the label V trade Mark No. 108806, and in regard to trade mark No. 133585 regarding the name Manthithope Manikottai Swamigal will be set aside. There will be no order as to costs in the appeals or in the suit.'
7. Very briefly stated, the grievance of the appellants here is that after having restrained the defendants by a suitable injunction with regard to the use of the word 'Manthithope' which is a registered mark, in any labels, the learned Judge (Ramachandra Iyer J.) was not justified in qualifying the injunction by setting aside of the decree of the lower court in certain respects, which might be totally misleading in its effect. The argument is that the labels before the court as such, werethe subject-matter of the proceedings and that these labels included the word 'Manthithope' which was the registered trade mark of the appellants as an integral part of these labels. That being the case, the entire labels came within the bar of the prohibition, and it would be misleading and might give rise to future infringements of the rights of the appellants, to qualify the prohibition by purporting to exempt or to except any portion of the offending labels. Further it is pointed out that under the very decrees in conformity with the judgment of the learned Judge the defendants were directed by a mandatory injunction to surrender all the labels, slips etc, constituting the infringement.
8. We have heard the learned counsel for the respondents also, and we think that all that this matter needs is a little clarification. Presumably, what the learned Judge intended by his observation was that he was expressing no opinion on the question whether the labels which might be issued in future by defendants which excluded the word 'Manthithope' but which in all other respects were identical with the labels now in use, would come within the mischief of the prohibition or not. It is obvious that this situation results from the very findings of the learned Judge. Obviously, we can express no opinion upon any future labels which might be used by the defendants which, do not include the word 'Manthithope'. Such labels may offend, or may not offend, that must be left to future adjudication. All that can be stated now is the general principle that no one is entitled to use labels in respect of an identical class of goods which are likely, by any deceptive similarity, to lead the unwary purchaser into making an error. The authorities on this aspect as well as on the form of the injunction which may suitably be granted in such cases have been reviewed in Ahmed Sheriff Saheb v. Isak Sheriff Saheb, (unreported App. No. 260 of 1959), a judgment delivered by one of us. It is sufficient for us to observe, in conformity with the broad principles enunciated in that decision, that as regards the existing labels, they are offending for the simple reason that they include the word 'Manthithope' as an integral part of their design. For these reasons, the injunction will issue against these labels as they stand, and the mandatory injunction will require the defendants to surrender the existing stock of such labels. There is really no necessity to qualify the decree by exempting or excepting any part of the labels as they now appear. We express no opinion on the question whether, in future the defendants would be within their rights in using the labels which do not include the word 'Manthithope' but are otherwise identical with the existing designs. That would depend on the application of the principle regarding the bar of a design which amounts to a deceptive resemblance, stated by us above. It is unnecessary to anticipate the merits of any such future claim or counter claim. With these observations the Letters Patent Appeals are allowed to the extent of the clarification indicated by us, but otherwise dismissed. The parties will bear their own costs.