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The Andhra Perfumery Works Joint Family Concerns Vs. Karupakula Suryanarayaniah and ors. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtChennai High Court
Decided On
Case NumberLetters Patent Appeal No. 106 of 1964 and O.S.A. No. 49 of 1964
Reported inAIR1969Mad126
ActsTrade and Merchandise Marks Act, 1958 - Sections 11, 14, 56 and 107
AppellantThe Andhra Perfumery Works Joint Family Concerns
RespondentKarupakula Suryanarayaniah and ors.
Appellant AdvocateMohan Kumaramangalam and ;K.K. Venugopal, Advs.
Respondent AdvocateV. Rajagopalachari and ;B.T. Seshadri, Advs.
DispositionAppeals dismissed
Cases ReferredSomerlile Ltd. v. Brown
intellectual property rights - registration - sections 11, 14, 56 and 107 of trade and merchandise marks act, 1958 - whether mark 'ganesh' is publici juris and cannot be registered as trademark - appellant contended that 'ganesh' is deity venerated by hindus and common to trade so it is publici juris - occurrence of few fraudulent infringement without knowledge of respondent will not make mark common to trade - evidence available to prove that respondent's were proprietors and inventors of this trade mark - any acquiescence or abandonment does not amount to knowledge of facts to render mark as publici juris - held, 'ganesh' not publici juris and can be registered as trademark by respondent. - - this was also partly because lord ganesh is a deity venerated by the hindus, as a symbol.....m. anantanarayanan, c.j.1. these related appeals involve certain problems of great interest and significance, in the application of the law of trade marks to the facts pf the record. it is not so much that the problems involved are bare of authority; indeed, the contrary is true, and we have a plethora of decisions from which to select leading precedents, but that the issue, whether certain of those dicta now require modification or a certain refinement does appear to arise. we might state, at the outset itself, that the authorities that we have examined fall into three main groups: (1) english precedents, many of these dating from the last decades of the 19th century, (2) expositions, supported by authorities, of the relevant principles, appearing in the treatises, halsbury's laws of.....

M. Anantanarayanan, C.J.

1. These related appeals involve certain problems of great interest and significance, in the application of the law of Trade Marks to the facts pf the record. It is not so much that the problems involved are bare of authority; indeed, the contrary is true, and we have a plethora of decisions from which to select leading precedents, but that the issue, whether certain of those dicta now require modification or a certain refinement does appear to arise. We might state, at the outset itself, that the authorities that we have examined fall into three main groups: (1) English precedents, many of these dating from the last decades of the 19th Century, (2) expositions, supported by authorities, of the relevant principles, appearing in the Treatises, Halsbury's Laws of England, Third Edition, Volume 38; Kerly on Trade Marks, 8th Edition (R.G. Lloyd), The law on the Trade and Merchandise Marks by Dr. Venkateswaran (1963 Edition) and (3) the enactment itself, and one or two decisions of the Supreme Court and of our High Court.

2. Before proceeding to the facts, it may be convenient to formulate certain of the relevant issues, in a broad mode. Before a Trade Mark attains the status of being placed in the Register, when does it become distinctive of the goods of its proprietor and user? What are the criteria to be applied, to test such distinctiveness, at a stage which is prior to placement in the Register? Assuming that such distinctiveness existed, can it be lost by successful piracy alone? Should such common user, whether surreptitious or open, be substantial or is it enough that a certain volume of it exists? Should there be knowledge of this user, on the part of the proprietor of the distinctive mark, and either acquiescence or abandonment, for the mark to sink into a common use? What are the tests of Publici juris? Upon whom lies the onus, in a contest, to prove the elements publici juris, as an objection to the registration?

3. At the outset we shall indicate, in broad outline the facts which led up to these appeals. At a subsequent stage, after examining the precedents and the authorities it will become incumbent on us to make a detailed analysis, of the categories of evidence upon which reliance is placed by the appellant firm, and the effect of this evidence on the issues of the fact involved.

4. In both the appeals, the Andhra Perfumery Works, a joint family concern represented by its Manager, is the appellant firm and will hereinafter be referred to as the appellants. There were two closely-related proceedings before Sadasivam, J., one of which was C.M.A. No. 203 of 1962. This was an appeal from the order of the Assistant Registrar of Trade Marks, directing the placement in the Register of a device of Lord 'Ganesh' and the Legend 'Ganesh Durbar Bathi' in respect of the Agarbathis produced by the National Flag Perumery Works (respondent) which, admittedly, fell within the category of Item 3 of the Fourth Schedule, of the Trade and Merchandise Mark Act, 1958. LPA NO. 106 of 1964 is the appeal from the judgment of the learned Judge (Sadasivam, J.) O.P. No. 202 of 1962 was a proceeding before the same learned Judge under Sections 56, 107 and 108 of the Act (Act XLIII of 1958) by the Andhra Perfumery Works (Appellants) praying for the rectification of Part A of the Register, by expunging therefrom this registered Trade Mark. The two proceedings involve identical issues of law and fact, and were very properly dealt with together.

5. The order of the Assistant Registrar of Trade Marks, from which the former appeal arose, is a detailed one, and it furnishes the entire history of the proceedings. We shall indicate the salient events here, and also refer, in a condensed form to the averments and the evidence in the related Original Petition for rectification. The respondent applied for registration of the Trade Mark on 24-5-1960. The relevant affidavits disclose the following facts. The respondent claimed that the Mark bearing the device of Lord 'GANESH' and the word 'GANESH' had been adopted by him from the year 1953, and honestly and continuously used, upto the date of the application, in respect of the goods (Agarbathis). The Mark became very popular in the market, and achieved public repute and patronage, as distinctive of those goods. The business of the respondent firm in this respect expanded from Rs. 3,000/- per annum in 1953, to 41/2 lakhs of rupees in 1960. Similarly, the advertisement expenses show a steep rise from about Rs. 800/- per annum to Rs. 10,000/- per annum in the relevant period. The Assistant Registrar of Trade Marks himself has pointed out, in his order, that though the actual application was on 24-5-1960, this itself has something of a prior history. The earliest attempt by the respondent firm to register was long prior to the year 1960 (8-1-1954), and there was a subsequent application on 7-1-1957, for registration of the Trade Mark or device on the strip-label. Both the applications were pending, and accepted for advertisement, when certain procedural defects came to light, because of the splitting up of the same attempted registration into distinct applications. A comprehensive application was later filed. Between 1953 or 1954, and 1960, the respondent firm claims to have combated piratical attempts, which came to its knowledge, firstly by two actions in Courts, and next, by several threatened actions, which ended in undertakings by those rivals, to refrain from further surreptitious user of the Mark.

6. The grounds on which the appellant firm and certain associates opposed the registration are of great importance. The main ground was that the word 'GANESH' had been in use for a number of years as a Trade Mark, amongst manufacturers of Agarbathies all over India. This was also partly because Lord Ganesh is a deity venerated by the Hindus, as a symbol synonymous with success and welfare, and the Mark was thus common to the trade. It was either publici juris from the outset, or it had later become so, and the Mark and device of the respondent firm had lost all distinctiveness. There were more than forty manufacturers of Agarbathis in Mysore State alone, using the Mark. Mr. Mohan Kumaramangalam for the appellant firm had stressed, that many of these producers would appear to be concentrated in one town in Mysore-Chintamani, which is also the Headquarters of the respondent firm. Actually, one Srinath Kundanlal and Bros., of Amritsar, had earlier registered this word in respect of incense and Agarbathies, and it is not in dispute that, in view of an opposition from that firm, the respondent-firm agreed to exclude the territories of Punjab, Delhi (Union) and Hirnachal Pradesh (Union) from the rights conferred by the registration. Since the respondent acquiesced in the use of 'GANESH' Mark by many other manufacturers, there is also abandonment. We may take it that, in the related Original Petition, rectification was sought for by the appellant firm on the same grounds, the main development here being the filing of certain further affidavits, referred to and discussed in the order of the Assistant Registrar of Trade Marks.

7. At this stage of the discussion, it may not be necessary for us to proceed into the particulars of the categories of evidence, and the contents of those categories. But, since it is on the application of the formulated principles that the Issues in this case have to be decided, we shall first refer to the precedents and the dicta laid down therein, and subsequently proceed to the determination of the issues, in the light of the principles and the facts of the record.

8. The first precedent that has to be examined, undoubtedly is the early leading case, Ford v. Foster, (1872) 7 Ch A 611. A point of some importance is that this case appears to be anterior to the English Act, whereby the registration of Trade Marks took form. The history of that matter is to be found in Dr. Venkateswaran's Treatise, on the 'Three Marks Rule' (pp, 266-67). It appears that prior to the enactment of the Trade Marks Act, 1875, in the United Kingdom, the practice was that there were several instances of honest concurrent user, in respect oi different persons in the same trade and goods. The test for the registration was then formulated by a Rule, for Jessell. M. R. said:

'Monstrous injustice would have been done if a man who has had a trade mark for perhaps forty years should lose it because another man who had it for four years had happened to register it first.' The formulated Rule was that an identical mark could be registered for the same goods by different persons, upto the number three, and not beyond. Where, more than three persons had acquired common law rights of user in the Mark, it was treated as publici juris or common of the trade. The entire history is very revealing, in the light thrown on the difficulties encountered in engrafting the statute and its requirements, on the prior practice and the state of the common law.

9. To return to (1872) 7 Ch A 611, it is not now necessary to set forth the facts of this celebrated case, at any length. But the citation of two passages becomes essential, for both bear intimately on the issue now before us. At page 628, Mellish, L. J., said as follows:

'Then the question is, has it become publici juris? And there is no doubt, I think, that a word which was originally a trade mark, to the exclusive use of which a particular trader, or his successors in trade, may have been entitled, may subsequently become publici juris, as in the case which has been cited of Harvey's Sauce. It was admitted that, although that originally had been the name of a sauce made by a particular individual, it had become publici juris, and that all the world were entitled to call the sauce they made Harvey's sauce if they pleased. Then what is the test by which a decision is to be arrived at whether a word which was originally a trade mark has become publici juris? I think the test must be, whether the use of it by other persons is still calculated to deceive the public, whether it may still have the effect of inducing the public to buy goods not made by the original owner of the trade mark as if they were his goods. If the mark has come to be so public and in such universal use that that nobody can be deceived by the use of it, and can be induced from the use of it to believe that he is buying the goods of the original trader, it appears to me, however hard to some extent it may appear on the trader, yet practically, as the right to a trade mark is simply a right to prevent the trader from being cheated by other persons' goods being sold as his goods through the fraudulent use of the trade mark, the right to the trade mark must be gone.' As we shall see later, these remarks, which were subsequently approbated by Lord Macnaghten in Leahy v. Glover, (1893) 10 RFC 141, still embody the law that applies to such a context; but, perhaps, some refinement may be necessary, for what the learned Judge stated was, no doubt, a vital part of the test of publici juris; but it is not the entire test. Another passage, which Is equally important, because it bears upon the principle of the loss of distinctiveness by piratical uses, is in the judgment of James, L. J., in the same case (P. 625).

'It has been said that one murder makes a villain and millions a hero; but I think it would hardly do to act on that principle in such matters as this, and to say that the extent of a man's piratical invasions of his neighbour's rights is to convert his piracy into a lawful trade.'

10. The next authority that we propose to examine is National Starch Manufacturing Co. v. Munn's Patent Maizena and Starch Co., 1894 AC 275. Without proceeding into unnecessary particulars, we may state that in 1956 the appellants in that case invented 'Maizena' as their Trade 'Mark for flour made from maize, but did not register this Trade Mark in the Colony of New South Wales, which was the relevant territory in the case, till December 1889. The Trade Marks Act, 1865, permitted such registration. The case is an interesting one, because the lack of promptness on the part of the appellant firm did affect the question of common user, which might have destroyed the distinctiveness emerging in the interval. The matter was put in the form that if, during the period in question, the word had been used for fraudulent purposes by others, though as a mode of common use, it did not impair the Trade Mark of the appellant But. If it was used and understood before 1889 'as a term descriptive of the article, as a product of maize, and did not denote such product to be of the manufacture or merchandise of a particular person, then it must be regarded as having become, in the sense of law, publici juris and was no longer registrable by the appellant as their trade mark'.

11. A precedent relied on by Mr. Kumaramangalam for the appellant firm, is in the Matter of, Samson Cordage Works' Application (1927) 44 RFC 313. The Mark consisted of diamond shaped spots arranged in pairs, positioned diagonally, in respect of window sash-cords, trolley cords, etc., Mr. Justice Astbury observed:

'Sir Duncan asks -- How came it that ironmongers and others ordered spot cord from the manufacturers that we have heard about in this case? My answer is. 1 do not know. Sir Duncan's answer is: Because Samson's Cord has acquired a reputation in the market, of which thev desired to avail themselves, I am not satisfied about that, nor do I think that there is any sufficient evidence on the point to that conclusion.'

Another significant passage in the same judgment, runs as follows:--

'Then it is contended' on behalf of the applicants that Section 41 of the Act shows that a mark may be registered, although another person may have previously used it, provided in the meantime the applicant's mark has become distinctive in the trade. That of course Is true, but is only intended to deal with a very limited class of case, where some person or persons happen to have made in the past something for which the applicant asks for registration, by reason of the mark asked for having become distinctive, but it has no bearing on such a case as this, where there has been shown to be a general practice of putting spots and other analogous marks upon various kinds of cords and ropes.'

12. Louise & Co., Ltd. v. Gainsborough. (1902) 20 RFC 61, decided by Farwell, J., is of great interest, because of the background. Gainsborough painted the picture of the 'Duchess of Devonshire', known by this name which became very celebrated as a painting. Its popularity was used by the plaintiff firm in 1892 to register a Trade Mark, consisting of a reproduction of this painting, for hats, bonnets and headgear. The defendant carried on a similar millinery business under the style of 'Mr. Gains borough', and was using the same reproduction. The picture was stolen in 1876, which added to popular knowledge concerning it. It was held that the picture had been in common use from 1876 onwards in the that and millinery' trade, and was not distinctive of the plaintiff's goods. It had hence to be expunged from the Register, as lacking distinctiveness.

13. Boord & Son v. Thorn and Cameron Ltd., (1907) 24 RFC 697 is the famous 'CAT AND BARREL' case. The facts of this case are well known in the Trade Mark Law, and need not be digressed upon here. But the following passage in the judgment of the Court of Session in Scotland (page 721) is significant:

'My Lords, I do not go into these matters in detail because it would only ba reading evidence for hours. I will just say that, taking the matter as a jury would, it seems to me that none of these people have really proved anything more than a very sporadic use of the labels with a cat and barrel on them, and that by none of them is there really any trade proved that would associate their goods with a cat and barrel. ...... On the whole matter. I think the evidence falls far short of what would be necessary to displace Boord & Son from the Register as Owners of the 'Cat and Barrel' mark which has been associated for so long with their gin. ............'

14. In re. Arthur Fairest Ltd.'s Application to register a Trade Mark (1951) 68 RFC 197 is significant, for the dictum that 'before the objection under Section 11 can be sustained it is necessary for an opponent to establish a reputation in trade in connection with a trading style, device or mark', for it is having regard to that reputation that 'the possibility of confusion upon reasonable user of the mark applied for will arise.' This is relied on by the learned Counsel for the respondent firm.

15. In Barlow & Jones v. Johnson Jabez and Co.. (1890) 7 RFC 395, the question was whether the word 'OSMAN' denoted a particular towel of the plaintiff's manufacture, or like Harvey's Sauce, was a term common to the trade. It was held, on the evidence, that the word was not common to the trade, and that, since the plaintiffs did not know of the defendant's user of the word 'OSMAN' on defendant's towels, the plaintiffs were entitled to register, as they did in 1886. The motion to rectify was declined. The case is important, as showing that surreptitious user, which never comes to the knowledge of the proprietor, cannot suffice to destroy distinc-tlveness. The following passage is of considerable importance in the present context:

'If so assuming there is no acqurescence, how can a man acquire a right by wrongful user? How can that which is in the eve of the Court of Equity fraudulent and injurious, defeat the rights of others -- unless there is acquiescence? But unless there was knowledge, there could not be acquiescence. Though the points run together they are separate points, and it follows that at the time of the registration in 1886, there was no user, except a wrongful and unknown user, as far as the plaintiffs were concerned, of this name 'OSMAN' by the defendants.'

16. There is the judgment of Kekewich. J.. In Ripley v. Bandey, (1897) 14 RFC 591, which contains a passage of very great interest upon the difficulties that might arise in applying the test of publici juris, to facts very similar to those in the present case. Where a man has expended money, time and ingenuity and achieved distinctiveness of his Trade Mark, in relation to his expanding business, it seems opposed to equity that surreptitious piracy should destroy that dis-tinctiveness, and deprive him of his just gains. It is for this reason that, where piracy alone is the source of the movement or user that might render the mark common to the trade. Courts should be careful to see if any such movement can be inferred, as within the knowledge of the proprietor, and either acquiescence or abandonment, or such feeble action relative to the movement as to amount to forfeiture, can be held established. The learned Judge expressed himself vigorously on this aspect of the law, if we may say so with respect, and the passage runs as follows:

'I do not myself see how it is any answer to a man who Comes forward to establish such a common law Trade Mark to say that, some time after your character was established and your goods were known, and your money, time, and ingenuity had been expended, perhaps in large advertisements and otherwise, others began to use it, and so, because they began to use it after your rights had been ascertained, it is in common use. That seems to me to be an argument which contradicts itself in the mere statement. When once appropriation has been made, common use becomes impossible: until (and possibly that is the logical result of this case) the person entitled to the Trade Mark allows others to use it so as to forfeit his right to appropriate the term, and so the words sink again into common use from which, of course, after that, they cannot be revived. But until something of that kind has happened, it seems to me that words once appropriated cannot be said to be words in common use, merely because others, who ex concessis on the mere statement, are trespassers, have attempted to use those words subsequently. Therefore, to my mind, the defence on the ground of common use entirely breaks down.'

17. Lastly, we may take note of a precedent of the Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd., : [1960]1SCR968 which has also been quoted in the judgments before us. This passage approbates the statement of law in Kerly, and explains the different situation of the same issue, whether a Mark is common to the trade, which might arise in opposition proceedings. In that context, the user of other Marks must be established by evidence. Finally, on the aspect of the precedents, we may refer to Devidoss & Co v. Alathur Abboyee Chetty & Co : AIR1941Mad31 . This bears upon acquiescence on the analogy of the dicta of Fry, J., in Willmott v. Barber, (1880) 15 Ch D 96 and the statement of the law is:

'To support a plea of acquiescence in a trade mark case, it must be shown that the plaintiff has stood by for a substantial period and thus encouraged the defendant to expend money in building up a business associated with the mark.'

18. We shall deal, in a more condensed form, with the citations which have been placed before us from Kerly on Trade Marks (8th Edition, page 246), Halsburv's Laws of England (Third Edition) Volume 38, Paragraphs 869 and 894 and Dr. Venkateswaran on Trade Marks Act (1963 Edition), these last passages being cited from a number of pages of the work. In the present case, the diffculty is partly that, in a context of this character, one has to be careful to see that a circular argument does not emerge. Certainly, if there is some evidence on record which shows that the Trade Mark or the word 'GANESH', with or without the variance of prefixes or suffixes, was used by about forty traders in that area, as the appellant claims, then it would be common to the trade; that may be so, ab initio. If that is the interpretation, then the attempt of the respondent firm to register this mark, on the basis of their business in Agarbathies built up from 1953 to 1960, must necessarily fail. When a word is publici juris, like the word 'DURBAR' which the respondent firm disclaimed, there can be no registration, for there cannot be distinctiveness. This is a question of fact, as Kerly points out (paragraph 3, page 119). If, on the contrary, the word had attained distinctiveness as the mark of the respondent firm, this distinctiveness may be lost. But, unless it is lost, it is entitled to recognition. The loss may be due to abandonment, acquiescence in successful piracy on a large scale, or a volume of common user, which is public and which destroys distinctiveness. The Mark may be publici juris in a particular branch of the trade only (Kerly, pages 245-246). The occurrence of a few fraudulent infringements, without the knowledge of the proprietor, will not make the mark common to the trade (Dr. Venkateswaran's Treatise, pages 659 to 661). Again, mere disuse for a short period, may not amount to abandonment. When rectification is attempted, the onus is on the applicant to show that the Mark had lost its distinctiveness. There are several authorities, including passages in Kerly, which need not be quoted again here, clearly to the effect that mere surreptitious user, sporadic user, piracy in a concealed manner against which action was taken or attempted by the proprietor, when the piracies came to light, cannot possibly destroy the distinctiveness earlier achieved.

19. Mr. Mohan Kumaramangalam for the appellants has sought to rely on certain dicta in Halsbury, that 'user subsequent to that of the applicant, but prior to registration, may render a mark non-distinctive and therefore unregistrable (Re. Bosch Akt's Application, (1925) 43 RFC 18, Somerlile Ltd. v. Brown, (1934) 51 RFC 205). Also on the dictum in the same passage that 'user by others in a single area may be sufficient to prevent registration.'

20. Hence, there are only two issues of fact in these related proceedings. The first, whether the respondent firm has established distinctiveness in respect of this mark prior to 1960, and during the period 1953 to 1960? In other words, was distinctiveness first achieved, and did Infringements or piracies follow in its wake, or do we commence with a situation in. which the Mark has become, or is becoming, publici juris, and one manufacturer is heading the race to obtain registration? To be very clear about this the decision as between the alternative possibilities is essential, for, otherwise, the argument becomes circular. If the distinctiveness is held as first established, what is the adequacy of the evidence which has been adduced by the opponents (here the appellant firm), to show that distinctiveness was destroyed, and that the Mark has become publici juris?

21. From this point onwards, we shall be concerned with the particulars and categories of the evidence, We have no doubt whatever that this Mark achieved distinctiveness first, as the mark of the respondent firm in respect of Agar-bathies, and, indeed, this seems to have been beyond controversy. For, the learned Judge (Sadasivam, J.), refers to the relevant facts as practically indisputable. Again, as we have seen from 1954 itself, the respondent firm was not merely achieving this distinctiveness, but attempting to obtain the security of registration, and was taking action against infringers and their piracies. It is sufficient here to refer to the earlier suit by the respondent firm O. S. No. 909 of 1954, a passing off action in respect of 'GANESH DURBAR BATHI', to the subsequent actions in O. S. Nos. 4 and 5 of 1961, and to the several undertakings given by others, some of whom have later filed affidavits, to the effect that they would refrain from using Marks in respect of Agarbathis which are variations of 'GANESH'; those undertakings clearly followed threatened legal action. One of those undertakings alone, reproduced at page 39 of Volume I of the typed papers, given by S.V. Parasuramiah, requires some detailed comment later. In other words, the evidence, as far as the respondent firm is concerned, proves this. They were the proprietors and inventors, of this device and Trade Mark. In respect of their Agarbathis, they had a very prosperous business, which vastly expanded from 1953 to 1960. Their advertisements were considerable, and their goods found very wide markets and public support. They attempted registration fairly early, but owing to complications in procedure a formal shape emerged only in May 1960; in the meantime, a number of other dealers, obviously in the wake of their success, began to manufacture Agarbathis with the Trade Mark of 'GANESH' or palpable variations of the same. These infringements appear to have been on quite a small scale, as we shall presently show. The evidence is quite imperfect and unsatisfactory, to prove that there were about forty persons of this kind, or that their user could possibly have been adequate in volume, to come within the knowledge of the respondent firm. Certainly, some of these attempted piracies came within the knowledge of the respondent firm. Two or three suits were filed, and in other instances, undertakings to desist were obtained, after threatened legal action. This is the picture which emerges from the record. Added to it, is the circumstance stressed by all the judgments before us. No one, not even the appellants, attempted any parallel or anticipatory registration in respect of 'GANESH' at any time. Even now, the appellant firm has not been able to aver that its trade and user of the Mark have been such, as to amount to an honest concurrent user, justifying a claim for registration.

22. It is in this context that the categories of the evidence have to be examined. They are (1) affidavits of individuals in the list of the forty alleged traders, concurrently using the label, (2) orders from their clients, mainly postcards and letters, for their goods, accompanying those affidavits, (3) affidavits of two printers in respect of cartons and labels bearing these various Marks, namely, B. N. Jayaraj and N.R. Nanjundiah, along with a number of letters and post-cards to these printers from manufacturers of Agarbathis, for printing labels etc., and (4) affidavits of other users of Agarbathis. There are, of course, certain counter-affidavits filed on behalf of the respondent firm. But one very extraordinary circumstance must at once be noticed. The Assistant Registrar of Trade Marks was apparently concerned with the seven affidavits filed before him, relating to the alleged user of the 'GANESH' Mark. He thought that a viva voce examination of these persons, and inspection of their account books, will be helpful; he attempted to procure these vital pieces of evidence. He failed. The clear representation before him was that the accounts will not show the individual sales in respect of this category of goods, namely, Agarbathis with the word 'GANESH' or variations of that word. Simply stated, no such figures of sales are available, or were ever made available.

23. With regard to the cartons and labels, the affidavits of the printers are supported by the correspondence from the third-party manufacturers. But what does this prove? it proves, at the highest, that there were sporadic instances of user, clearly piracies, by other persons, who became aware of the affluent business of the respondent firm, and the popularity of 'GANESH' Agarbathis. These persons did place orders for cartons and lables with printers, specialising in such work. But whether those cartons and labels were ever used, on any scale worth notice, is a different matter altogether. The volume of advertisements is practically 'nil', and there is no reliable evidence indicating such advertisements. In those circumstances, we are finally compelled to rely on (1) the documents filed relating to orders in respect of similar goods, (2) affidavits of third parties and (3) the undertakings of S. V. Parasuramiah, to which we have made reference earlier.

24. Mr. V. Rajagopalachari for the respondent firm has made a factual analysis of the correspondence relating to orders placed by persons like K.S. Madar Sahib, K.V. Ramalingiah Chetty, S.V. Parasuramiah, Narayana Rao, C.R. Venugopal, etc. He has shown how, for the relevant years, from 1955 to 1958 or 1960, the orders were extremely meagre, and almost negligible. There is no evidence that even these meagre orders were actually complied with, by the supply of Agarbathis. We have already stressed that the relevant accounts are not produced, and are not forthcoming. Affidavits of third parties are very unsatisfactory, and form no basis for any clear inference of common user, or of the device being publici juris.

25. Finally, we are left with the one document on which Mr. Kumaramangalam has placed some reliance, namely the undertaking given by S. V. Parasuramiah (pp. 37 to 29 (39?) of Vol. I. Prima facie, this is evidence in favour of the respondent firm, for Parasuramaiah gave an undertaking in respect of 'Balaganesh Durbar Bathi' and another Trade Mark, the latter undertaking being an absolute one. But with regard to the former, the translation of the text runs as follows:

'Many people are trading by the use of many kinds of names, that is to say, many traders are trading using the name of Ganesh Durbar Bathi. But if any of my equals in that group gives it lip, I shall also do so. When I told K.S. Krishniah Setty like that, Krishniah Setty said 'Yes' and agreed ......'

26. Mr. Kumaramangalam places considerable reliance on the language of this document. For, according to him, it is prima facie evidence that, in June 1958, the respondent firm was aware that many traders were trading, using the name 'Ganesh Durbar Bathi'. Reliance is also placed on an endorsement in the translation to this effect: 'N. B, Scribe K.S. Krishniah Setty, written on plaintiff's letter paper'. But when we carefully scrutinised the Photastat of the original, which was in Canarese written in Telugu script, we found that there are no words corresponding to the postscript. It seems to have been added by some unknown person, in the translated copy; clearly, in the absence of other evidence, it cannot be relied on. This apart, we are unable to spell out, from the language of the agreement, anything more than this. The respondent firm was then aware of several piratical attempts, which might have been on quite a small scale. They were putting some of them down by actions in Court, and they were accepting undertakings from others, on threatened action, to desist from further use of the Mark. We are quite unable to infer from this knowledge, assuming that it existed, any acquiescence or abandonment; nor does it amount to knowledge of facts, which would render the mark publici juris.

27. Upon an application of all the tests and principles that we have earlier discussed. In relation to the facts of the record, which have been elaborately dissected and placed before us, we have no doubt whatever that the learned Judge (Sadasivam, J.) was right in his conclusions, and that the appeals must fail. They accordingly fail and are dismissed with costs.

28. Before leaving these appeals, wemay refer to one argument, that theword 'GANESH' applies to the LordGanesa who is the deity of auspiciouscommencement of all undertakings inHinduism, and hence that it would bewrong to create a monopoly in respectof such a term, for one particular proprietor. But it was never pretended thatthe word 'GANESH' cannot becomedistinctive for respondent firm's Agarbathis, or that it is not registrable, Weneed only observe, without proceedingfurther into this aspect, and leaving theissue quite open, that there are severalother names of the deity (Vigneswara,Vinayaka etc.) which could be appropriately used by persons, desiring to associate their goods with the favour of thedeity, if the Mark and device, which arethus invented, do not otherwise infringeany Prior registered device under theTrade Mark Law.

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