1. These two related appeals arise from an order of Gokulakrishnan J. Who declined to interfere with a common order of the Assistant Registrar of Trade marks in M. A. S. Nos. 127 and 128.
2. The first appellant had registered on 1-1-1970 a trade mark under the name and style of 'Omar Khayyam Hotel Restaurant and Bar'. The respondent was called on by the Assistant Registrar to file any objections to the application of the first appellant since the respondent was using the mark 'Omar Khayyam Wineries (P.) Ltd.' But no objections were filed. The respondent, however, on 10-1-1970, appealed to the Assistant Registrar under S. 46 of the Trade and Merchandise marks Act, 1958, for rectification of the trade mark of the first appellant, registered and notified in the Trade Mark Journal on the date aforesaid. This application was resisted by the first appellant, but all the same was allowed by the Assistant Registrar. Gokulakrishnan J. declined to interfere.
3. The facts briefly are these: On 16-11-1965, there was an advertisement in the Deccan Chronicle by the Omar Khayyam Hotel Restaurant and Bar. This notice said that this name and style had been used by the first appellant for his catering business at Hyderabad and that the expression 'Omar Khayyam' he was using also has a principal feature in his trade mark for the bakery, biscuits, pastry, tea, coffee, beer, ale and porter for mineral and aerated waters and other non-alcoholic drinks, wines, spirits and liquors falling under classes 30, 32 and 33 of the Fourth schedule to the Trade and Merchandise Marks Rules, 1959, framed under the Act. The notice further announced that Omar Khayyam Hotel, Restaurant and Bar alone was entitled to use the name and style by virtue of adoption, invention and user as provided under the Act. It warned that any person or persons either imitating or in any manner making a colourable imitation of the aforesaid trading style or trade mark would make himself or themselves liable for both civil end criminal actions. Earlier on 15-12-1965, the first appellant's assignor of the trade mark had applied through its authorised agent one R. D. Sinha for registration of a trade mark under class 33 of the Fourth Schedule to the Rules under the Act in respect of wines, spirits, and liquors, in the name of Agha Hyder Hussain National, manufacturer and trader, trading as Omar Khayyam Hotel, Restaurant and Bar. It was said there that this mark had been continuously used since 1-4-1964, in respect of the said goods.
4. S. 46(1)(a) of the Trade and Merchandise Marks Act, 1958 reads-
"(1) Subject to the provisions of S. 47, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either--(a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of S. 45 apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up-to date one month before the date of the application; or cl. (b) of the proviso and the rest of the section are not necessary to notice for our present purpose."
5. A 'trade mark' as defined in S. 2(v) means a registered trade mark or a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark; and in relation to the other provisions of the Act, except Chapter X, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to include a connection in the course of trade between the goods and some person having the right, either proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person.
6. Chapter III deals with the procedure for and duration of registration. One of the effects of registering a trade mark is as mentioned in S. 28(1). The registration of a trade mark in Part A or Part B of the register shall, if valid, give to there registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by the Act.
7. Once, therefore, a person gets a particular style registered as his trade mark, he gets exclusive right to the use of the trade mark in relation to the goods, in respect of which it has been registered. Under S. 46 which provides for removal from register and imposition of limitations on ground of non-use, it is open to an aggrieved person to have the trade mark of any person who has registered it removed from the register on the ground mentioned in cl. (a) of sub-s. (1) of that section. The two factors constituting that ground, which are cumulative are: (1) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him; and (2) that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being upto a date on month before the date of the application. The first limb is a mental factor, the bona fide intention to use the goods covered by the trade mark, and the other relates to factual user of such goods covered by the trade mark registered. So, in order to succeed, the applicant should show (1) that he is an aggrieved person; and (2) that the ground under cl. (a) of S. 46(1) exists.
8. We may at once state that there is no controversy before us that the first appellant has never used the trade mark in relation to any alcoholic or non-alcoholic liquor or goods in trade or business under the name and stay of 'Omar Khayyam' or even 'Omar Khayyam Hotel, Restaurant and bar'. There is a so an affidavit filed by the respondent to the effect. There can, therefore, be no dispute that the second limb of cl. (a) of S. 6(1) has been satisfied by the applicant before the Assistant Registrar of Trade Marks.
9. Before us, in support of the appeal, three grounds are urged--(1) the application for removal of the registered trade mark by the respondent is made within a month of the registration is incompetent; (2) the respondent is not a person aggrieved; and (3) in the circumstances, since the opening paragraph of S. 46(1) uses the word 'may' the relief of removal is discretionary and since the respondent had used the trade mark after the 1st appellant had his trade mark registered, the discretion should not be exercised in favour of the applicant.
10. As to the first ground, we are of the opinion that S. 46(1) addresses itself to a state of affairs upto a date one month before the date of the application. It, therefore, looks to the past. If the first appellant had not used the trade mark in relation to the goods as its proprietor at any time upto a date one month before the date of the application. Then, the second limb of cl. (a) of S. 46(1) is satisfied. The application for removal from the register need not have to wait until one month from the date of registration. There is no justification for such interpretation. Since as we said it is not in dispute that as a matter of fact, the first appellant had not used 'Omar Khayyam' as a trade mark in connection with any goods covered by such trade mark at any time prior to 1-1-1970, obviously, he is hit by the second limb of cl. (a) of S. 46(1).
11. It is strenuously argued for the appellants that the first part of cl. (a) of S. 46(1) has not been satisfied or according to the first appellant, he had always intended to use the trade mark in connection with both alcoholic and non-alcoholic beverage. But this is not made out. As we said, the advertisement in the Deccan Chronicle dated 16-11-1965 related to Omar Khayyam Hotel, Restaurant and Bar and it did not mention any stocking or sale of alcoholic or non-alcoholic beverage under the name and style of 'Omar Khayyam'. We are not concerned with the question at the moment whether the first appellant can continue to use the expression 'Omar Khayyam Hotel, Restaurant' and say that 'Omar Khayyam Hotel, Restaurant and Bar' was either manufacturing or selling such beverage under the name and style of 'Omar Khayyam'. Even the application dated 15-12-1965 to the Assistant Registrar of Trade Marks made by the assignor of the first appellant did not say that he was selling alcoholic or non-alcoholic beverage under the name and style of 'Omar Khayyam'. All that was mentioned in the application was that he applied for a trade mark in class 33 in respect of wines, spirits and liquors in the name of Agha Hyder Hussain. Indian National, Manufacturer and Trader, trading as Omar Khayyam Hotel, Restaurant and Bar whose address was in Hyderabad and who claimed to be the proprietor thereof and by whom the said mark had been continuously used since 1-4-1964 in respect of the said goods. So it is clear that there was no bona fide intention or otherwise on the part of the first appellant that the expression 'Omar Khayyam' would be used by him. We are of the opinion therefore, that both the limbs of cl. (a) of S. 46(1) were proved to have been satisfied by the respondent.
12. The second ground of the first appellant is that the respondent was not a person aggrieved. So far as his trade mark registered under class 33 is concerned, there is no doubt that he is a person aggrieved. This is because under the name and style of Omar Khayyam Wineries (P.) Ltd., since obtaining licence therefor he has been manufacturing and selling goods covered by class 33 relating to alcoholic beverage in the fourth schedule to the rules under the Act. But so far as the goods covered by class 32 of that schedule are concerned, we are of the opinion that the respondent cannot be regarded as a person aggrieved. This is because it is not engaged in manufacturing or using of the goods covered by class 32 in the fourth Schedule to the rules under the Act. The policy behind S. 46(1)(a) is that in competition with dealing in the same kinds of goods, the person hit by cl. (a) should not be regarded as a person aggrieved. This is for the obvious reason that such a person has nothing to do with such goods as in the case of the respondent here.
13. The effect of this finding is that the appellants will succeed in L. P. A. 2 of 1973; but the ground does not affect the respondent in the appeal.
14. There remains for consideration the last ground. We think that there is not much substance in this ground. The only ground on which it is said that the discretion of the Assistant Registrar should be used in favour of the first appellant is that he used the mark much earlier. But as we held, this has not been substantiated factually.
15. Hence L. P. A. 2 of 1973 is allowed and the other appeal is dismissed. No costs in either.
16. Ordered accordingly.