(1) This appeal has been preferred under S. 109 of the Trade and Merchandise Marks Act of 1958, (hereinafter referred to as the Act) against the decisions of the Asst. Registrar of Trade Marks, Madras, dismissing two applications filed by the appellant, Applications Nos. 154321 and 149486, declining to register the trade marks.
(2) The applications for registration were filed as early as June 1951 and June 1952 under the old Trade Marks Act of 1940 but as they had a chequered career they were ultimately disposed of by Madras Officer acting under the provisions of the Act of 1958 in 1960.
(3) The appellant T.G. Balaji Chettiar who is carrying on business in the manufacture and sale of soaps filed three applications : (I) A. No. 149485 dated 20-6-1951and (ii) A. No. 149485 dated 20-6-1951 and (iii) A. No 154321 dated 5-6-1952, for registration of a trade mark containing the word 'surian'. alleging that he has been carrying on the business in the manufacture and sale of soaps using this trade mark for a very long time, thereby implying that he is or has become the owner of proprietor of this trade mark and therefore entitled to registration. Application No. 149485 the second application was ordered to be registered and therefore we are not concerned with the same, Application No. 149486 was refused by the Bangalore Registry by the Ex-Officio Dy, Registrar, Bangalore on 23-8-1954 and Application No. 154321 was similarly rejected by the same officer on 27th July 1954. The appellant thereupon took the matter to the High Court of Mysore, which by its judgment dated 4-12-1957 reversed the decision of the Deputy Registrar of Trade Marks and directed him to dispose of the appellant's application according to law and on merits, after the applications are duly advertised and after hearing oppositions if any to such registration. It is after this remand that the Asst Registrar of Trade Marks, Madras by his order dated 16-9-1960 rejected the two aforesaid applications of the applicant.
(4) Messrs. Hindustan Lever Limited, the respondent herein contested the applications for registration in those proceedings. Before I proceed further it may be necessary to mention briefly the facts concerning the business activities of the respondents, Hindustan Lever Limited. The respondents and their predecessors-in-title have for over 65 years past been carrying on business in the manufacture and sale of soaps. For over 65 years their soaps have been sold throughout India with the name or mark Sun, or Sunlight, by using a label printed on a cardboard or on a paper wrapper used for packing the soaps. The various trade marks used by the respondents in the course of their trade and business have been registered under the Trade Marks Act of 1940 and the following are the relevant particulars of registration:
Trade Mark Registration No. Advertised in journal No. Sunlight Word 87099 35
Sun Device 87107 39
Sunlight Carton 87108 49
Sunlight Carton 87109 49
Sunlight Wrapper 136246 79
Sun Word 47011 92
Sunshine Word 87136 34
Sunsilk Word 144805 92
Sunset Word 161414 159
Sunbeam Word 87135 34
(5) It is beyond dispute that the soaps manufactured by the respondents and marketed and sold in India with the aforesaid labels bearing those marks are very famous and popular, occupying a pre-eminent position in that line of business and in India in particular. It appears that the respondents' sales turnover in the course of the years 1935-1951 have progressively increased by leaps and bounds, with the result that the turnover which was in the region of 20 Lakhs of rupees in 1935 has reached a huge figure of about 5 erores in the year 1951. I m not referring to the further expansion of the business activity of the respondent for the subsequent years and I am confining only to the period when the appellant's applications were filed for registration. It may also be mentioned that the respondents trade mark containing the word 'Sun' 1470711 which was registered on 19-1-1951 renewed on 14-12-1957 for a further period of fifteen years and the trade mark of the respondents No. 87107 the trade mark Sun having the device of the Sun, with the legend. Sunlight soap was registered on 9-10-1943 and on 9-4-1950 was renewed for a period of fifteen years. Trade Mark No. 136246 for wrapper with the world Sunlight has been registered. The respondents' trade marks. "Sunlight", "Sunshine" and "Sun" have been used on a large scale in all their soap products and they have built up a large and valuable reputation and goodwill for their goods bearing these trade marks. Their 'Sunlight' soap is well advertised all over India through newspapers cinema feature film, advertisement bills in about twelve languages and undoubtedly command the largest sales. It may als be mentioned that in the user of these trade marks and labels consisting of the word or device, Sun or Sunlight a label bearing blue, red and yellow colour scheme(with clear and distinctive features) has been uniformly used. Evidence also shown that the respondents attached great weight and importance to their trade marks, "Sun", "Sunlight" etc., and have throughout been very vigilant to protest and prevent registration of marks using the word or the device. "Sun " in any mark or resembling the word Sunlight or the label marks in the course of the competing and rival business activities of the traders in the field.
(6) At this stage itself it may be convenient to refer to the documents, H.L. Series which have been filed as enclousers to the affidavit of Mr. K.S. Phansalkar(General Sales Manager of the respondents) in opposition to the application of the appellant for registration, A. 154321. H.L. 3 is the statement of sales turnover of the respondents' goods, carrying the Sunlight, Sun device and Sunshine marks. This shows that in the year 1935 the turnover was over Rs. 20,43,378 and in 1952 it was Rs. 5,07,00,000 and odd and in the year 1958 it was Rs. 6,68,00,000. H.L. 4 series in the statement of the expenses incurred annually towards the advertisement charges of the respondents, good carrying the Sunlight, Sun device and Sunshine products. In the year 1935 the advertising expenditure was Rs. 1,76,888 in 1952 it was Rs. 9,47,760 and in 1958 the advertisement charges came to Rs. 19,68,000. H.L. 6 series contains numerous instances in which applications of rival business men for registration of marks resembling the word of label Sunlight Soap and containing the Sun devices were successfully objected to by the respondents. This statement shows that in various parts throughout India whenever any attempt was made to imitate the trade mark or the label of the respondents the latter had successfully objected to and all these applications for registration of trade marks by the rival traders were withdrawn or abandoned or suitable amendments were made in the trade marks by deleting the device of Sun: This document also shows that if the rival trader did not agree the objections raised by the respondents before the authorities concerned were upheld and the applications of registration of trade marks by rival traders were refused. The total number of instances referred to in H.L. 6 series run into hundreds H.L. 7 contains lists of apologies and undertakings given by or taken from various manufacturers of soaps from Madras, Bombay, Calcutta, Delhi and other places. The total number of instances in which such undertakings were taken amount to 602 during the period 1935 to 1956. The documents H.L. 8 is a statement containing the particulars of cases in which the respondents had successfully taken action against traders who infringed the trade marks of the respondents either in civil or in criminal courts in India. Such proceedings range from the year 1926 to February 1954. In ver may of these court proceedings the respondents have obtained perpetual injunctions and have also recovered damages for infringements of their trade marks. At this juncture reference may be made to the decision in Lever Brothers, Port Sunlight Ltd., v. Sunniwite Products Ltd., (1949) 66 RPC 84 rendered in January 1949 in which Lever Brothers, Port Sunlight Ltd., (the predecessors of the respondents) who carried on business in England filed an action for infringement of a trade mark against one Sunniwite Products Ltd., on the ground that the latter infringe the trade mark, Sunlight by using the word "Sunniwite". Romer, J. who decreed the claim has dealt with the progressive growth and expansion of the trade and business of Lever Brothers in the manufactures and sale of Sunlight Soap. In this judgment there is particular reference to the significance of the use of the word Sunlight in the labels and the particulars colour scheme of the wrappers. This again is another instance showing how the respondents have been vigilant even in other countries when there was any attempt at the infringement of their trade marks.
(7) In short, the respondents have been very vigilant and watchful and any endeavour on the part of any manufacturer or trader to imitate the respondents' trade marks was at once protested and objected to showing the great zeal exhibited by the respondents in nipping at its bud any attempt at imitation. The relevance of this will be seen when I deal with the appellant's plea of concurrent and honest user of the marks of which they seek registration.
(8) I shall now examine the merits of the rival contentions of the parties in this back-ground of the respondents' business and trade in the manufacture and sale of soap.
(9) The main points that were debated before me are: (i) Whether the applicant-appellant is the proprietor of the marks sought to be registered within the meaning of S. 18 of the Act? (ii) Whether S. 11(a) and S. 12(1) operate as a bar to the registration of the appellant's marks? (iii) Whether the appellant is entitled to concurrent registration under S. 12(3) of the Act. It is obvious that the burden of proving that the marks in respect of which registration is sought are entitled to go on the register is on the appellant and if there should be any doubt in the matter the applications will have to be refused and that the burden or onus becomes heavier still when the Asst. Registrar has exercised his discretion and come to the conclusion that the marks in question are deceptively similar or identical with the respondents marks and the appellant's marks are sure to deceive or cause confusion. Unless the Registrar has gone clearly wrong on his perspective of approach his decision ought not to be lightly interfered with.
(10) I shall now take up the first question as to whether the applicant is the proprietor of the mark in question within the meaning of S. 18 of the Act. Section 18 states that any person "claiming to be the proprietor of a trade mark used or proposed to be used by him.... shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark. When questioned as to how the appellant claimed to be proprietor of the trade mark within the meaning of S. 18, Mr. Rangaswami Iyengar, learned counsel for the appellant in the course of the hearing of the appeal mentioned that between the years 1934 to 1938 one Viswanathan was carrying on business in the manufacture and sale of soaps under the name and style of Kumaran Soap Works, using the trade mark. Surian, that during the period 1939 to 1945 the appellant, Balaji Chettiar, carried on the business after having purchased the same from Viswanathan aforesaid, and that during the years 1945-1958 the appellant had entered into partnership with two others. The firm Kumaran Soap Works, has been registered with the Registrar of Firms on 12-5-1945 consisting of the partners, S.V. Ramaswami Chettiar M.L.K. Narasimha Chettiar and T.G. Balaji Chettiar, the appellant. With a view to justify and sustain the application which has been filed by Balaji Chettiar in 1951 learned counsel for the appellant urged that as a result of the arrangements between the partners inter se his client has become the sole owner of the mark in the question. According to learned counsel as a result of the arrangement in 1958 inter se between the partners resulting in a dissolution his client became the sole proprietor of Kumaran Soap Works and that this subsequent event should be taken note of in upholding the appellant's right as the proprietor of the mark within the meaning of S. 18. Alternatively it was contended by learned counsel for the appellant that under Section 18 it is not necessary for the applicant to establish as a matter of fact that the applicant was the proprietor of the mark, and that it was sufficient if in the application he merely claims to be the proprietor of the mark. His contention was that no further proof was necessary, and that the applicant will be obliged to establish his ownership only if the opponent or the party in opposition claims for himself the ownership of the mark. In other words, the question of ownership of the mark will be relevant only if there is a competing claim of ownership on the part of the applicant and on the part of the opponent and that it is not open to Hindustan Lever Limited, a third party to question the claim of the appellant as the proprietor of the trade mark.
(11) I am clearly of the opinion that there is no substance whatsoever in the points urged by learned counsel for the appellant on this portion of the case. The respondents in their opposition have clearly disputed that the appellant is not the proprietor of the marks of which registration was sought, and in the counter statement filed by the appellants they have merely stated that the opponents have not shown "how the applicant is not the proprietor". in the affidavit filed by Mr. K.S. Phansalkar on behalf of the respondents the objection has been clearly raised that Balaji Chettiar the appellant, is not the sole owner of the mark in question and that he is not entitled to prosecute the application in his own name. The argument that it is sufficient if an applicant for registration simply claims to be the proprietor has to be stated merely to be rejected. I have no doubt that having regard to the scheme of the Act, namely, the maintenance of the purity of the register, unless a person alleges and also proves that he is the proprietor of the trade mark he cannot obtain registration of it. It is elementary that no person is entitled to put the trade mark of another person on the register. A reference to the observations in the decision in Re, Vitamins Ltd.'s Application (No.2), 1955-3 All ER 827 at p. 834 and the observations of Fry, L.J., in In Re, Apollinaris Company's Trade-Marks, 1891-2 Ch 186 at p. 226 will clearly show that it is incumbent upon the applicant to establish that he is the proprietor of the mark and that if questioned he must substantiate the same. The person who first designed or who used a trade mark first is the person entitled to claim the proprietorship thereof unless subsequently he has dealt with the same and some other has obtained rights thereto in the manner known to and recognised by law. In this case it is not claimed that the appellant was the first inventor or the first owner of the trade mark. On his own showing when the trade mark had been invented and owned by one Viswanathan and had also been used by the partnership firm, the appellant cannot claim to be the proprietor unless the places materials to substantiate how he became the sole proprietor of the trade mark. Vide 38 Halsbury 546 paragraph 909. If the firm as claimed by the appellant has been using the trade mark unless there is any evidence it has to be prima facie presumed that is the property of the firm. Vide Lindley on Partnership 12th Edition page 474. I see considerable force in the argument of learned counsel for the respondent. Sri Thiagarajan, that even though his clients have been objecting right from the beginning that the appellant is not the proprietor of the trade mark within the meaning of S. 18 the appellant had not adduced any evidence or place any materials to substantiate his claim. He has not even obtained declarations from the other partners of the firm or declarations o other persons from whom the appellant alleges he has obtained the ownership of the trade mark. Even assuming for which there is no proof whatsoever, that the applicant became the sole proprietor in the year 1958 that will not enable the appellant to obtain registration as the crucial dates are 1951 and 1952 when the applications in question for the registration were made. I have therefore no hesitation in concurring with the finding of the Asst. Registrar of Trade Mark that the appellant's application is liable to be dismissed in limine on this ground alone.
(12) While dealing with next point it is necessary to extract the relevant provisions of S. 11 and S. 12 of the Act Section 11 is as follows:
"A mark (a) the use of which would be likely to device or cause confusion; or.................
(e) which would otherwise be disentitled to protection in a Court;
shall not be registered as a trade mark." Section 12 runs as follows:
"(1) Save as provided in sub-section (3) no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which already registered in the name of a different proprietor in respect of the same goods or description of goods.
xx xx xx xx xx xx
(3) 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(whether any such trade mark is already registered or not) 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".
At the outset it may be mentioned that in the initial stages the appellant claimed disclaimer in respect of the device, 'Sun' and the word Sun on the ground that is a feature common to the trade but the Registrar declined to register on the ground that in view of the disclaimer aforesaid there was no other portion of the trade mark possessing any distinctive feature justifying registration. In the subsequent stages the appellant went back upon this admission and claimed that they re not features common to the trade. I am adverting to this aspect as in my opinion it has got a bearing upon the question of the appellants honest concurrent user of the marks in question.
(13) The brief facts in regard to Application No. 149486 are as follows: This was advertised in Journal No. 122 dated 1-10-1953 at page 415 and registration was sought in respect of the bar soap. In the application he had claimed user of the marks since 1939. When the Mysore High Court remanded the matter to the Assistant Registrar the appellant advertised in Journal No. 226 on 1-11-58 at p. 1140. This time the trade mark advertised was completely different and he has introduced the word 'Special' in between the word Surian and Soap. Here also user was claimed from 1939. On both the occasion as observed earlier the appellant claimed the device of the Sun and the word Sun are features common to the trade. The respondents filed their opposition. Opposition No. 4204 in March 1959 in which they objected that the word Surian which is the Tamil equivalent of the word Sun is confusingly similar and deceptive and should not be registered as the marks propounded by the applicant greatly resembled the marks of the opponents and were calculated to deceive and cause considerable confusion in the course of their business and that the registration of the appellant's trade marks would enable the appellant's goods to be sold and passed off as the goods manufactured by the opponents
(14) The facts relating to A-154321 are as follows. In 1949 the respondents noticed that the appellant had begun to use a wrapper containing the words Surian Soap and also a pictorial representation of a sun as shown in H.L.L. the Annexure to the affidavit of Phansalkar. The respondent immediately lodged their protest and the appellant gave up this label. In 1950 the appellant used in his label containing the same words Surian Soap with a pictorial representation of Sun containing the 'Sun's rays. Here again, the respondents immediately protested and objected and the appellant gave up that label. It is thereafter that on 5-6-1952 this application was filed by the appellant for the registration of the trade mark. In the label are retained the words Surian and Soap and the Sun is shown with a curve, the pictorial representation consisting of the blue, and yellow colour resembled very much the pictorial representation of the label used by the respondents. This label was advertised after the remand order of the High Court on 16-8-1958 in Journal No. 221 at p. 728.
(15) The opposition of the respondents to this application is Opposition No. 4169 and the affidavit of Phansalkar filed in support thereof contains all the details in particular the immediate protest or objections raised by the respondents and how from time to time the appellant has been changing the trade marks and the label.
(16) Mr. V. Thyagarajan learned counsel for the respondent urged that on these facts which show frequent changes of the marks and the pictorial representation it is impossible to uphold the appellant's claim to registration on the basis of prior honest concurrent user within the meaning of S. 12(3) Before I proceed further it is necessary to advert to a point on which considerable reliance was placed by learned Counsel for the appellant. He urged that the Assistant Registrar of Trade Marks has acted with material irregularity in having consolidated both the applications and that his client has been prejudiced by the Assistant Registrar importing the views which he has formed in one application in the consideration of the other. But learned counsel did not persist in this objection when his attention was drawn to the note in the Registrar's file that on 11-9-1959. Mr. Rangaswami Iyengar who appeared for his client, before the Registrar had agreed to this course and had no objection to the consolidation of both the applications.
(17) A mark shall be deemed to be deceptively similar to another mark if it is so nearly resembles with the other mark as to be likely to deceive or cause confusion. In deciding this question it is sufficient to consider two registered trade marks of the respondents: (i) mark No. 87107 consisting of a label containing a device of the rising Sun and the legend 'Sun light' and (ii) Registered trade mark No. 147011 consisting of the word 'Sun' (solus). The argument of the respondents which has found favour with the Asst. Registrar of Trade Marks is that the Tamil word 'Surian' (trade mark of the appellant) is the translation of the word Sun and is therefore deceptively similar to their mark, so as to be governed by the prohibition contained in S. 12(1) of the Act and S. 11(a). From the supporting affidavit which have been filed by the respondents there can be no doubt it that a Tamil Knowing purchaser who is not conversant with English will refer to and ask for the respondents' soap as the Surian mark soap. There is every likelihood of customers and dealers being given the Surian mark soaps of the appellant when those customers and traders really intend and mean the Sunlight soap of the respondents. There is great room for confusion and mistakes occurring in the minds of the trading community in thinking that the Surian mark soap(marketed by the appellant) is the product of the respondents. It must be forgotten that the soaps manufactured and marketed by the respondents are low priced soaps and are used very largely(a substantial major portion) by low class and illiterate people who do not know English and are not even familiar with the Tamil and there is greater danger of the appellant's soaps(with Surian marks) being dumped in the market and passed off as the Sunlight Soaps manufactured by the respondents. It is too much to except the poor class of customers like laborers and servants to embark upon a minute investigation of the difference of the Sunlight soap and Surian soap as belonging to two different proprietors. The evil of the situation becomes more apparent when we notice the imitation and close similarity in get up of the label and the particular colour scheme which has been copied by the appellant. I have therefore no hesitation in holding that under S. 11(a) and 12(1) of the Act registration will have to be refused on the ground that the use of the word Surian, the Tamil equivalent of 'Sun' is deceptively similar and sure to cause confusion. In this case the conclusion has to be reached not merely on a consideration of the principle in the abstract but also on the evidence as disclosed in the supporting affidavit which demonstrates the actual confusion and mistake which had crept into the market.
(18) Supporting affidavit of various dealers show that the customers have been in the habit of asking for the respondents Sunlight soaps as Surian soaps in Tamil and have got accustomed to the particular blue, red and yellow colour scheme, namely, the blue colour at the top, red and yellow on the middle and blue on the sides.
(19) I shall now refer to some of the leading decisions in which it has been held that if a person is the owner of a registered trade mark in a particular language another person cannot claim registration of the same trade mark of the same word in any other language using the equivalent in translation both under S. 11(1) and under S. 12(1).
(20) In the leading case in the Golden Fan Case; In re: Trademark of John Dewhurst & Sons Ltd., (1896) 13 RPC 288, the applicants J.D. & Sons Ltd., applied for registration of a label containing the device of three shells on a shield and the Burmese expression "Shway Latoung Fasai", which is the equivalent of the English words "Golden fan brand". It was not found that in respect of similar classes of goods there were already trade marks registered containing the device of fans and in particular the device of Golden fan. The owners of these trade marks and the device of a gold fan had no objection to this and consented to the registration of the applicant's mark. The Comptroller nevertheless refused registration on the main ground that mark of which registration was sought was sure to create confusion and deception in view of the similar marks already registered in respect of similar goods. The matter ultimately went to the court of Appeal and this view of the Comptroller was finally upheld and registration refused. Dealing with the objection that the words of which registration was sought were in Burmese characters and not in English characters, Lindley, L.J. put the matter thus at p. 295.
"It is important as showing that the comptroller ought not to register Oriental words, or words in Oriental characters, without knowing what they mean. He is entitled to require a translation, and accordingly we have on the application by Messrs. Dewhurst this endorsement on the form which they have signed and sent in. "The meaning of the Burmese characters appearing on the mark is the ' The Golden Fan Brand".
(21) Now, what is the position of the Comptroller? His position is this: Well, now you tell me what these hieroglyphics mean you are asking me to put on the Register the word. "The Golden Fan Brand' that is to say, for the very same object which you would have if you were to put these words on the register in the English language' and he says, 'the principle of the Red Star case is applicable to this case and I, in the exercise of my discretion think that it can. I can quite see the importance to Messrs. Dewhurst of getting it--because they would get advantages by having this on which they will not have without it. They see that well"
"But then let us look and see what the position of the Register will be, and how far the interests of the public will be protected if that is done. I have already dealt with the consents. As to the consents, I do not say that they are immaterial, it appears to me that they are valuable as affording some evidence that there may not be deception but when you come to consider that these Trade Marks are on the Register for an indefinite time, when you consider that unless they are restricted to particular countries, which is a point I will deal with presently they are applicable all over the word and when you consider how they are sold and passed from one hand to another these consents do not protect the public the least in the word, and I do not see how any amount of evidence can get over the difficulty that you will be having upon the Register two Trade Marks, one a picture of a gold fan, and the other words 'The Golden Fan' which ought not, in my judgment, to be allowed by reason of the obvious deception there will be and which must grow up if these words are used, as they would be necessarily in the course of trade, if the trade is pushed in other countries than Burmah. Therefore, I think on that principle, which is an extremely far-reaching one, that the Comptroller is right I think that it does not matter what the language or nor what the hieroglyphics are, if the meaning of the foreign language is a mere verbal description of a mark already on the register. If you have got a mark on the Register, applicable to cotton goods of golden fan, you cannot have another mark called a "Golden 'fan' in any language or in any hieroglyphic. That appears to me to be the real broad ground upon which ought to decide this case".
Lopes, L. J.. stated the matter in these terms at p. 297.
"I think, that Comptroller was perfectly right in doing what he did, in permitting the registration of these words, subject to the disclaimer of any intention to use them as any essential part of the trade mark.
I do desire to say one word about a matter which I consider a very important one. We have been told here that the rival traders, those who have trade marks resembling, as pictures the word sought to be registered, consented to this registration. Now, to my mind those consents are absolutely immaterial. I may be, and I think it is properly said that those consents are some evidence of their not being probability of persons being deceived. I think to that extent they may be used but to say that they are to have any greater effect. I think would be most mischievous. The public have no notice of these consents. The general public are to be protected as well as traders".
I may next refer to the decision in the Falaxar Case, J.C. Eno Ltd. v. Vishnu Chemical Co., AIR 1941 Bom 3. It is true that it was passing off action. But the question related as to how far the use of the Marathi equivalent of 'fruit salt' would amount to the infringement of the rights of the plaintiff who was the owner of the trade marks Eno Fruit Salt of fruit salt J.C. Eno Ltd., were selling in India and effervescent saline under the name Eno Fruit Salt and the defendant began selling a similar preparation under the Marathi name Falaxar. It was held that Fala and Kshar are the Marathi equivalent commonly used in Marathi as meaning fruit and salt and in combination would mean fruit salt. Blackwell, J. delivering the judgment followed the principle of the Golden fan case referred to earlier. Reference may be made to the following observations at p 6:
"Pausing here for a moment counsel for the defendants actually went to the length of contending that it would be open to the defendants of procure registration in England of the Marathi word Falaxar, although the plaintiffs there have got on the register the word Fruit Salt as their registered trade mark. In my opinion, the suggestion that the defendants would be entitled to register in England the word Falaxar is completely met by the observations of their Lordships in the case to which I am referring. Iam clearly of opinion that they would be entitled or permitted to register the word Falaxar in England. They would be asked what it meant and if they were honest they would have concede that in fact it was intended to convey the word fruit salt. "....." Counsel for the defendants pointed out, as was the fact that in that case there was a symbol upon the register and what was sought to be registered were certain words. He sought to distinguish that case from a case in which words might be upon the register and an application might then be put forward to put on the register words having an equivalent meaning. In my opinion, no such distinction as is sought to be drawn can in fact be drawn. Indeed the case would have been, in my opinion, still stronger if instead of a golden fan being already upon the register the words "Golden Fan Brand" had been registered I am clearly of opinion, as was indicated by their Lordships in that case, that on one would have been allowed to register in England words conveying a meaning similar to Golden Fan Brand".
Elaborating how the confusion and deception would arise the learned Judge stated thus at page 8:
"I have already pointed out that very many people in India Know English as well as different vernacular languages. But even if an Indian does not know English but knows only some vernacular language, if a trader is permitted to use in that language words which have become associated with the goods of another trader in another language and are distinctive of the goods of that other trader, he is thereby putting into the power of unscrupulous dealers to mislead and practice a deception upon the individual knowing only the one language in that he may thereby be enabled to pass off upon that unsuspecting person goods as and for the goods of the other trader to which those particular words in another language have by long user become attributed.
It was argued for the defendants that an educated person knowing both Marathi and English would read the whole label on Ex. (E) and could never be deceived. He would it was said see the words at the bottom "Manufactured by Vicco-Vishnu Chemical Company Bombay". But unfortunately the world is full not to careful but of careless persons, and of people who frequently are not careful to read the whole of everything that they ought to read and in my opinion looking at the general get-up of Ex. (E) and seeing the word Falaxar thereon, even an educated person might be misled into thinking that he was getting the plaintiffs' fruit salt. It is in evidence before me that illiterate persons frequently bring chits to Chemists' shops and to the shops of persons who sell such preparations as Exs. (c) and (E) and that on such chits the word Fruit Salt is written. Such chits may be given to them either by their doctor, or by their master. Suppose, an illiterate person knowing no English were to bring such a chit to an unscrupulous dealer who was desirous of selling Ex. E, the dealer might give a bottle of Ex. (E) to the illiterate person, who might very easily say, 'Is this Fruit Salt?' having been told by his master or doctor that what he was to get was fruit salt. He might easily use those words even if he knew no English and did not understand them. IT would then be open to the dealer if his would be purchaser knew Marathi to point to Ex. E and say. 'Cannot you read the word Falaxar?. That means fruit salt.' That is that sort of thing which in my opinion might happen over and over again if traders were permitted to do what the defendants have done, in this case, viz., use a coined Marathi word which does not in fact exist in Marathi, but which would convey the meaning 'fruit salt'. I hold on the evidence before me that the plaintiffs have acquired a right to the exclusive use of the words 'fruit salt' in connection with their saline, that those words are a distinctive mark and that no one has a right to use those words in any language in connection with similar goods as being likely to deceive".
The principle of this decision and the observations extracted above clearly apply to the instant case.
(22) I may next refer to the Bench decision of the Hyderabad High Court in Balakrishnayya v. Registrar of Trade Marks for Hyderabad, ILR (1954) Hyd 694 in which the application of a proprietor of a soap factory by name Prabhat Soap Factory for registration of his trade mark, "Prabhat" soap was refused on the ground that Prabhat in Hindu language means sun. It is interesting to notice that the opposition to registration was as the instance of Messrs. Lever Brothers on the ground that the pictorial representation of the trade mark, Prabhat soap, was deceptively similar to that of Sunlight, and that the use of the word Prahabat, the Hindi equivalent of the English word, Sunlight, would cause deception and confusion in the market. There also Lever Brothers relied upon their label and the registered mark No. 87107, consisting of the device of a Sun with rays protruding therefrom. The Hyderabad High Court followed the decision in Falaxar case, AIR 1941 Bom 3 referred to earlier and the principle of the decision in Kumaravel Nadar's case, AIR 1949 PC 109 and held that the Hindi translation of the English word, Sun cannot be registered as it is bound to cause deception and confusion. Vide observations at pp. 725 to 728. It is unnecessary to multiply authorities on this point as in my opinion the law is well settled. Indeed learned counsel for the appellant did not draw my attention to any decision in which the view was taken that the registration of a trade mark in one language cannot operate as a bar for the registration of the trade mark of the same word in any other language. I therefore hold that registration has to be refused to the appellant both under S. 11(a) and under S. 12(1). I accept the view taken by the Assistant Registrar of Trade Marks that there is identify and close resemblance between the marks of the appellant and the respondents with regard to the distinguishing and salient features of the marks and it would result in deception and confusion. There is also the further fact that factual confusion and deception had occurred in the trade as referred to in the supporting affidavit filed on behalf of the respondents. There is no pretense for contending in this case that the appellant has discharged the burden which lies upon him. In this connection it is significant to mention that the statement in para 3 of the respondents' opposition No. 1469 in Appln No. 154321 " that the goods(meaning the goods of the respondents) sold under the said marks are known by the name. Sunlight or Sun or their vernacular equivalent and are recognised by the get up of the labels" has not been challenged or denied by the appellant.
(23) I shall now consider the next question as to how far the appellant is entitled to registration on the basis of honest and concurrent user or other special circumstances within the meaning of S. 12(3). Here again, the appellant's case fails for paucity and total lack of evidence about the actual user of the particular marks in question. Further the background of the case also conclusively shows that the appellant cannot claim to have used the particular marks in question in an honest manner. Besides, the circumstances of the case are positively against the registration of the appellant's mark. As regards the quantum of evidence and the heavy burden which lies upon the appellant it is sufficient to refer to the following head-note in the latest Bench decision of this Court in Chinnikrishnan Chettiar v. Sri Ambal & Co., 1964-2 Mad LJ 206:
"Evidence of honest concurrent user must be clear cogent and specific. Affidavit containing vague statements without any particulars of the places period or the figures of concurrent user without deception are worthless as proof of there having been no deception. The fact that customers in the same place of business where both the traders carried on business were perfectly able to distinguish one from the other and that there was no deception or element of confusion must be proved by the evidence of the customers and agents and also by invoices and records of sales. Where affidavit are filed under R. 54 of the Trade and Merchandise Marks Rules, they must be filed under such circumstances as will fix the other side with a fair notice be evidence other wise they would not be evidence and cannot be considered by the Court on the point of honest concurrent user".
The evidence adduced in this case regarding the applicant's concurrent user about duration, area and volume of trade is worthless. The appellant has given discrepant versions as to when he commenced using the trade marks in question. Further it is significant to notice that the trade marks which are sought to be registered are completely different from the trade marks which were originally mentioned at the time of the application in years 1951-1952. Even assuming that there is some evidence of the user of the trade marks in respect of which the applications were filed in 1951 and 1952 that will not be evidence of user of the trade marks as subsequently amended and altered. The argument of learned counsel Mr. Thyagarajan that when the trade marks under went changes no right can be founded upon alleged user of the original marks as in 1951-1952 has to be accepted. It is sufficient to refer to the decision in, In the matter of Massachusetts Saw Works (1918) 35 RPC 137 and B.L. Betaiah v. V.R. Subramanya, Trading as Manyam Ltd., AIR 1959 Mys 85. Both before the Assistant Registrar and before me learned counsel for the appellant could not explain the serious discrepancies about the time when the marks in question were used by the appellant i.e., years 1934, 1936, 1939 and 1941.
(24) The matter does not stop there. The appellant has not furnished any evidence on the factual question of user. Even in the course of arguments before me learned Counsel could not point out evidence touching this aspect. The respondents have not been given copies of the documents and affidavit which were referred to by the applicant in the statutory application even though the respondents made specific complaint about it and also desired to be furnished with copies. Vide Opposition No. 1469 para 3 of the affidavit of Phansalkar and also the affidavit of Stanley Demis Menezes, Page 35,, para 3(Respondents and Defendants). There has been no attempt whatsoever to comply with R. 54. The figures of turnover referred to in the nature of things cannot be treated as evidence. That does not contain particulars and details with regard to the sale of soaps containing the trade marks in question. It is obvious that some turnover to combined omnibus sales for same indefinite period of the appellants soaps products in general, without particular reference to the particular trade marks cannot constitute any satisfactory basis to determine the concurrent user. I entirely agree with the reasons given by the Asst. Registrar of Trade Marks in holding that the appellant has not compiled with R.54 and that it is impossible to uphold the plea of concurrent user in this state of record.
(25) It is important to bear in mind that the concurrent user must be of the entire trade mark and it would not be enough if one feature of it alone had been used. The evidence must be evidence of the user of the trade mark as a whole and documentary evidence must be furnished to prove the same when challenged. User by different persons at different times cannot avail and the applicant must prove that the alleged prior users are his predecessors in title one claiming through the other. In other words independent user to some trade mark by independent unconnected persons cannot constitute concurrent user. As observed already there is no proof how the applicant(in the claim of title) derived title and became the owner of the trade mark and how he is entitled to rely upon prior user of other persons.
(26) The user, if any, can by no means be said to be honest. At every time the respondents have been objecting to and at every stage the appellant has been resorting to one device or other to imitate the trade mark of the respondents and thus capture the trade. It is a deliberate attempt to cause deception and confusion. In short the instant case betrays a total lack of commercial honesty required under S. 12(3). Even in the conduct of the proceedings, I must say that the appellant is guilty of ever-reaching. He has suppressed material documents and has not produced the evidence about the sales.
(27) For all these reasons I dismiss the appeal with costs.
(28) Appeal dismissed.