1. This appeal arises out of a petition filed by the first respondent, who will hereafter be referred to as the respondent, on the Original Side of this Court, under Section 46 of the Indian Trade Marks Act, 1940, for a direction that the entry in the Trade Mark Register at Bombay registering the trade mark referred to in paragraph 4 of the petition in the name of the appellant under No. 126612 be expunged from the register and that the registration granted to the appellant under the said entry be cancelled. The petition was disposed of after contest by Ramaswami, J., who allowed the petition to this extent, namely, that he directed a joint registration of the trade mark in the name of both the appellant and the respondent. The respondent in the Court below is the appellant before us.
2. The facts which led up to the petition have been fully set out in the judgment of the learned Judge and it is sufficient to state only such of the facts as are essential for the disposal of this appeal. The appellant and the respondent are the sons of one Bolar Ramappa who was carrying on the business of manufacturing tiles in two factories, one called the Indian National Tile and Lime Works at Hige Bazaar in Mangalore, and the other the Jayaram Tile Works at Kudroli in Mangalore. It is common ground that he was employing for the tiles manufactured at these two factories a distinctive trade mark which may be described as the "Taj Double Bavta" trade mark. In or about 1936, he appears to have registered the trade mark with the Chamber of Commerce at Madras, though this registration did not have any statutory force. The appellant appears to have been assisting the father in his business, it is not necessary to state whether as a mere employee or as a manager. On the 18th December, 1946, the appellant made an application to the Registrar of Trade Marks to register the above said trade mark. He gave his business address as Manager, Jayaram Tile Works, Kudroli. He claimed to have been using the trade mark since 1936. Evidently in reply to a query by the Registrar of Trade Marks he made a statement on 23rd July, 1948, that he was the sole proprietor of the National Tile Works and had been using the said mark since 1936. The trade mark was eventually registered in the name and entered in the register ort 12th May, 1950. This registration under the Statute would take effect from the date of the application. On the 10th November, 1953, this registration was renewed for a period of 15 years from the 18th December, 1953. Meanwhile the father had executed on the 17th January, 1950, a deed settling on one of his sons, the respondent herein, Monappan, the factory called the Indian National Tile Works. Subsequently by another deed, dated 8th February, 1953, the father settled on his second son, the appellant, the factory conducted under the name of the Jayaram Tile Factory. From July, 1951, disputes started between the two brothers because the respondent also began to manufacture tiles using the trade mark which his father had been using. There was an exchange of notices between the lawyers. In 1953, the appellant filed in the District Court of South Kanara a suit against the respondent for infringment of trade mark and claimed an injunction against him. In his plaint he stated that he was the registered proprietor of the trade mark and also relied on the settlement deed executed by the father in his favour on 8th February, 1953, which he alleged conveyed to him also the goodwill and the trade mark and other rights pertaining to the factory. Thereupon the respondent filed the application out of which the present appeal arises, praying for expunging of the registration in favour of the appellant.
3. Section 46(2) under which the application was made runs thus:
Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.
4. There was one prima facie obstacle in the way of the respondent because of the provision in Section 24 of the Act which lays down that
In all legal proceedings relating to a registered trade mark, the. original registration of the trade mark shall after the expiration of seven years from the date of such original registration be taken to be valid in all respects unless such registration was obtained by fraud, or unless the trade mark offends against the provisions of Section 8.
5. The respondent alleged that the registration had been obtained by the appellant by fraud which consisted of willful misrepresentation made to the Registrar of Trade Marks with the full knowledge that the representation was false. The respondent's case shortly was that the registration was obtained on the false representation that the appellant was the proprietor of the trade mark and that he was as such entitled to registration. There is abundant authority for the position that where registration is obtained by suppression of a material fact, or by making a false statement, such registration is made without sufficient cause and that such registration can be said to have been obtained by fraud. There can be no doubt whatever, as the learned Judge has found that the statement made by the appellant to the Registrar of Trade Marks that he was the sole proprietor of the trade mark was false, and false to his knowledge, and the registration was made on the strength of such statement. No attempt was made by Mr. Krishna Rao, learned Counsel for the appellant - and rightly, to establish that the statement was not false. It is beyond controversy that it was the father who had, from the beginning, used the trade mark and he continued to be the proprietor of the trade mark. The appellant set up a case of express consent of the father, or that in any event the registration was obtained by him on behalf of the father who was the true owner. But the father himself has given evidence which in our opinion conclusively destroys this part of the appellant's case. The father indeed professes complete ignorance of the action of the appellant, namely, obtaining a registration of the trade mark in his own name. We are in entire agreement with the following finding of the learned Judge:
On these facts it is clearly established that at the time of registration the respondent was not the proprietor of the mark and therefore the application made by him before he became the owner of the factory as admitted by him in 1953 as proprietor was false to his knowledge and it is this false misstatement which has made the Registrar of Trade Marks to register him in his register as the proprietor of the trade mark in question and that but for this representation he would not have done so.
6. This finding in law would amount to a finding that the registration was obtained by the appellant by fraud. Therefore the provision of Section 24 would not apply and would not have the effect of rendering valid the original registration after the expiration of seven years from its date. If the original registration obtained by the appellant was vitiated by fraud and did not, and could not, confer on him any right under the Trade Marks Act, it follows that the renewal of registration in 1953 would also be invalid. It is not as if in 1953 the appellant made a fresh application without reference to the previous registration. He sought and' obtained a renewal of the original registration in his name. The entry in the appellant's favour must therefore be directed to be expunged from the register.
7. Ramaswami, J., however, did not do so but directed a joint registration of the trade mark in the name of both the appellant and the respondent. In his view the principle underlying Section 10(2) of the Act, if not the letter, will apply to this case. Section 10(2) of the Act is in the following terms:
In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar make it proper so to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods, or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.
8. The learned Judge therefore varied the entry by directing the registry in the joint names of the appellant and the respondent as joint proprietors of the trade mark. The appellant's advocate contended that the learned Judge had no power to direct joint registration. Even assuming he had the power, he should not have exercised it in this case. There is one other provision which may be referred to in this connection and that is Section 17. Sub-section (1) of this section says:
Save as provided in Sub-section (2) nothing in this Act shall authorise the registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof.
9. Sub-section (2) runs thus:
Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except-
(a) on behalf of both or all of them, or
(b) in relation to an article with which both or all of them are connected in the course of trade.
10. We are clearly of opinion that there was no power in the learned Judge to direct such a joint registration. Section 10(2) of the Act refers to concurrent user which is honest, that is independent concurrent user, that is, user which cannot be traced to the same source. There was no application by either party for such a joint registration. The Registrar therefore was not called upon to go into this question and we do not have the benefit of his opinion which is the basis of an order under Section 10(2) of the Act. It may be mentioned that the respondent himself never prayed for such relief. He only wanted the entry in favour of the appellant to be expunged or cancelled. We think it right that before a joint registration is ordered, there should be applications from at least two persons and the Registrar should have an opportunity of forming an opinion by reason of special circumstances existing in the case. The order of the learned Judge, therefore, directing joint registration of the trade mark in the names of the appellant and the respondent is not justified and is hereby set aside. As we have agreed with the finding of the learned Judge that the original registration of 1946-50, of which the 1953 registration was only a renewal, had been obtained by false statements made by the appellant which would amount to fraud, the logical result would be to cancel or expunge the entry. We direct accordingly that the entry in favour of the appellant be cancelled and expunged.
11. There was an attempt before us to put forward the claims of both the parties to the trade mark but they need not be discussed in this appeal. The parties will be at liberty to seek to enforce their rights and obligations and nothing said in this order will adversely affect the rights of either party.
12. In the result the appeal is allowed in part and there will be an order as indicated above instead of the order passed by the learned Judge. The appellant will pay the respondent half the costs of this appeal. Advocate's fee Rs. 250.
13. The order of this Court will be served upon the Registrar in the prescribed manner.