1. This Letters Patent Appeal has been filed against the judgment of Maharajan J. in C. M. A. No. 164 of 1970, whereby the order of the Assistant Registrar of Trade Marks, Madras, the second respondent, made on 15-4-1970, in Appln. No. 316827 filed by the deceased first respondent was confirmed overruling the appellants' objections.
2. The trade with which we are concerned in this appeal is in safety matches. The appellant is the owner of the Trade mark label 'Anil', the Tamil equivalent of 'Squirrel'. The appellant's device consists of a Squirrel sitting on its hind legs on a tree branch with its forelegs raised and holding a nut close to its mouth. The figures of the Squirrel and the tree branch are in greenish background with the legend 'anil' printed in bold white letters at the top and the words 'Safety Matches' in while letters at the bottom, and the words ' The national match works, Sivakasi' in small letters in black printed below the tree branch and above the words 'safety Matches'. The first respondent's trade mark consists of the device of the squirrel standing on all its legs on a tree branch in a yellow circle and the legend 'The Squirrel' printed in bold white letters at the top and the words 'Safety Matches' 'Royal Match works, Pudhusurengudi' printed in white letters at the bottom. The figures of the squirrel and the tree branch and the said legend and words in the first respondent's trade mark are in bluish black background.
3. The appellant filed O. S. No. 12 of 1963 in the District Court, Ramanathapuram at Madurai, on 3-7-1963, for an injunction restraining the first respondent from infringing his trade mark label and obtained an interim injunction on 4-7-1963 in I. A. No. 179 of 1963. It is alleged that the order of interim injunction was served on the first respondent on 24-7-1963. The first respondent thereafter filed application No. 316827 in Class 34 before the Assistant Registrar, of Trade Marks. Madras, in June 1964 for the registration of his trade mark, alleging that from 1933 he has been regularly using his distinctive trade mark to indicate that the goods, to which the trade mark relates, are manufactured by him. He furnished in his application, particulars of sales of the safety matches manufactured by him under that trade mark from 1938 to 1963 with some breaks in the middle. He alleged that the Collector of Ramanathapuram had given a licence dated 2-2-1938 to one Mangalasundari Match Works Purasangudi claimed to be his predecessors in the business, for the use of the Squirrel label for the trade in safety matches and that a licence dated 10-5-1940 has been granted to him by the Assistant Commissioner of Customs, Southern division in respect of the Squirrel label. He further alleged that his Squirrel label had become distinctive by long and extensive user and that it should be registered in his name under the provisions of the Trade and Merchandise Marks Act, 1958. In October 1964, he filed amended particulars of the turnover in squirrel matches from 1938 to 1964.
4. The appellant opposed the first respondent's application for registration of his trade mark contending that his mark was adopted in 1923 to distinguish the matches manufactured by him and the grounds of opposition were:
(1) The appellant is the Proprietor of the registered trade marks Nos. 101, 505 in class 34 consisting of the label containing the device of a squirrel as its main and important feature. The mark was advertised in the Trade Marks journal No. 86 dated 1-10-1950.
(2) By very long, extensive and continuous user the appellant's mark has acquired great reputation and the public have come to associate his mark with the goods manufactured by him. The appellant's goods are well known for their high quality and there is great demand for his goods all over India.
(3) The first respondent, who is aware of the appellant's mark, its immense popularity and reputation adopted his mark, which is very closely similar to the appellant's mark if not identical with it, in order to create confusion in the minds of the public and pass on his inferior goods as those manufactured by the appellant and thereby unlawfully benefit himself and cause loss to the appellant.
(4) The appellant is interested in protecting his rights obtained by long user and has taken and continues to take prompt action against those imitating him mark.
(5) In view of the reputation enjoyed by the appellant's mark by long user, registration of the first respondent's mark is barred under S. 11 of the Act.
(6) The prior registration of the appellant's mark is a bar to the registration of the first respondent's mark under S. 12(1) of the Act as the goods are identical and the marks are also identical or at any rate deceptively similar.
(7) The first respondent's mark is not distinctive of his goods and is objectionable under Ss. 9 and 11 of the Act.
(8) The first respondent has claimed false user of his mark and has adopted his mark recently. His user is neither honest nor open. He has not come with clean hands and does not deserve any consideration. The discretion vested in the Tribunal has to be exercised against the first respondent.
(9) The appellant has filed a suit against the first respondent for infringement of the trade mark. The first respondent has filed the application for registration after infringing the law.
(10) The public are likely to be confused and led to think that the first respondent's trade mark is the appellant's own trade mark newly introduced into the market, and the first respondent's goods are likely to be passed off as those manufactured by the appellants in view of the fact that the two marks are closely and deceptively similar if not identical.
5. The first respondent filed a reply denying the points made by the appellant in his objection and contended that his mark is eligible for registration on the ground of honest and concurrent user since 1933, that his mark is fully distinctive within the meaning of S. 9 of the Act and is in continuous and exclusive user since 1933, to the knowledge of the appellant and that his mark is, in any event, eligible for registration under S. 12(3) of the Act.
6. In the course of the enquiry before the Assistant Registrar, of Trade Marks it was conceded by Mr. M. P. Rao on behalf on the first respondent that the mark applied for is 'so closely similar to the appellant's mark that if it is used in respect of the same goods, confusion or deception is likely to arise and purchasers of matches are not likely to distinguish one product from the other.' Thus it was conceded that the first respondent's mark is open to objection under S. 12(1) of the Act. The Assistant Registrar found the first respondent's contention that the use of his mark is not likely to cause confusion and that S. 11(a) of the Act was not attracted is untenable and that ordinarily the first respondent's application for registration of his mark has to be refused as his application could not be sustained on the grounds mentioned in Ss. 11(a) and 12(1) of the Act. But it was urged before the Assistant Registrar that there was acquiescence on the part of the appellant over a very long period resulting in the respondent acquiring common law rights in the use of the mark. An offer was also made to confine the registration of the mark to the 'State of Mysore' where it was submitted that 'the marches of the first respondent have enjoyed major sales. The Assistant Registrar disallowed the objections raised by the appellant and ordered the application of the first respondent to be proceeded with further only on the first respondent amending the destination of the goods in the application to read as matches for sale in 'Mysore State' and restricted the registration of the trade mark to 'Mysore State' and the colours shown in the representation on the form of the application. In his order the Assistant Registrar observed as follows :--
'The evidence of the applicant that he has printed labels year after year and that he has sold the goods during certain years establishes a prima facie case for him. The opponents have not produced any evidence in rebuttal. Apart from this the opponents were aware of the use of the mark by the appellant applicant as long ago as the year 1938 when they caused a notice in the form of a circular to be sent to him. Although the applicant denied the right claimed by the opponents and asserted his own right to use the trade mark, the opponents left the matter to slip. If ever they had a right to object to the use of the mark they had that right then which for want of necessary diligence on their part they seem to have lost. The opponents came to know of the user of the mark once again in the year 1952 and once more in the year 1963 and it was in the year 1963 they made an attempt to stop him from using the mark. Although possessed of a registered mark, they have taken no action to stop the use of the mark by the applicant at the appropriate time. This circumstance does not constitute sufficient ground to view the opponents' case with sympathy and I have necessarily to hold that they are estopped by reason of laches and acquiescence from asserting likelihood of confusion or that they would be damaged by the registration sought by the applicant. In view of the opponent's inaction over 30 years after their initial protest to the applicant during which time the applicant appears to have continued and enlarged the use of the trade mark, it would be a great hardship to the applicant appears to have continued and enlarged the use of the trade mark, it would be a great hardship to the applicant if he is to be denied the right to have the trade mark registered. I am therefore satisfied that in the present case the applicant has not only established honest concurrent user but also the existence of special circumstances so that his mark ought to be given the benefit of the provisions of S. 12(3) of the Act.'
7. On appeal to this court, Maharajan J. who heard the civil miscellaneous appeal, thought that 'except that the animal chosen is common to both the labels, there is not much of identity between the label' and observed in his Judgment :-
'However Mr. M. P. Rao appearing for the respondent seems to have made a concession before the learned Assistant Registrar to the effect that the respondent's trademark was so closely similar to the appellant's mark that if it were used in respect of the same goods, confusion or deception was likely to arise and purchasers of matches were not likely to distinguish one product from the other,'
The learned Judge thought that the discretion which the Registrar could exercise under S. 12(3) of the Act to permit registration of more than one proprietor of trademark which are identical or nearly resemble each other subject to such conditions and limitations, if any, he may think fit to impose in the case where there is honest concurrent user or other special circumstances exist, is unfettered and concurrent registration may be allowed even when the probability of confusion was considerable. The learned Judge found that the appellant's squirrel trademark took effect from 1-10-1950, that the appellant sent a circular on 6-5-1938 protesting against the first respondent using the trademark 'Anil' for which the first respondent sent a reply on 18-5-1938 saying that he has been using his 'Anil' trademark from 4-1-1933 and no exclusive right thereto can be claimed by the appellant, that 14 years thereafter the appellant sent another notice to the first respondent objecting to the use of the trademark for which the first respondent sent a reply stating that the appellant was infringing his trade mark and that 11 years thereafter the appellant sent another letter dated 28-3-1963 protesting against the use of the 'Anil' trademark. From this the learned Judge found that the first respondent has been making honest and concurrent user of the squirrel trade mark for over a quarter of a century and he rejected the contentions that every time the appellant sent a notice, the first respondent desisted for the time being from using the trade mark, as unacceptable. The learned Judge dismissed the appeal with costs observing :-
'In the case, the user of the respondent had commenced more than a decade before the appellant's trademark was actually registered, and the respondent has been using his trademark honestly for nearly three decades. The extent of the sales turnover of the respondent and the period of user his trade mark would appear to justify the registrar exercising his discretion in his favour.'
The learned Judge then observed in the end of his judgment that he had 'already compared and contrasted the features, of the rival trademarks and held that they are not identical nor do they closely resemble each other.' The learned Judge had further observed in his judgment that no instance of actual confusion has been proved.
8. Mr. G. Ramaswami, the learned counsel for the appellant, submitted that the learned Judge erred in observing more than once in his judgment that the two marks are not identical and that he also erred in thinking that proof of actual deception is necessary. Mr. Ramaswami further submitted that the learned Judge overlooked the fact that registration under S. 12(3) of the Act could not have been allowed by the Assistant Registrar if he has not found that the two marks are identical or nearly resemble each other in respect of the same goods or description of goods. As stated earlier, the appellant is the owner of the trademark label 'Anil' which is the Tamil equivalent of squirrel sitting on its hind legs on a tree breach with its fore legs raised and holding a nut close to its mouth, and the figures of the squirrel and the tree branch are in greenish background with the legend 'Anil' printed in bold white letters at the top and the words 'safety matches' in white letters at the bottom and the words. 'The National Match Works, Sivakasi.' in small letters in black printed below the tree branch and above the words 'Safety matches'. The first respondent's trademark consists of the device of a squirrel standing on all its legs on a tree branch in a yellow circle with the legend 'THE SQUIRREL' printed in bold white letters at the top and the words 'safety matches' and 'Royar Match works Pudhusurangudi.' printed in white letters at the bottom. The figures of the squirrel and the tree branch and the said legend and words in the first respondents trademark are in dark bluish background.
9. The Supreme Court has made observations in Chinna Krishna Chettiar v. Ambal and Co. : 1SCR290 from which it is seen that it is for the court to decide the question of a comparison of the competing marks as a whole and their distinctive and essential features whether if the appellant's mark was used in a normal and fair manner in connection with the trademark in safety matches and similarly fair and normal user is assumed of the first respondent's mark, there will be such a likelihood of deception that the mark ought not to be allowed to be registered. The Supreme Court has observed in Parle Products v. J. P. and Co. : 3SCR289 :
'According to the Karly's Law of Trade Marks and Trade Names (Ninth Edition para 838): Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark; and not having the two side by side for comparison. Might well be deceived, if the goods were allowed to be impressed with the second mark into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of foot-ball. It would be too much to expect that persons dealing with trademarked goods, and relying as they frequently do, upon marks should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing, Marks are remembered rather by general impressions or by some significant details than by any photographic recollection of the whole. Moreover, variations in details might well be supposed by customers to have been made by the owners of the trademark they are already acquainted with for reasons of their own.'
In order to come to the conclusion whether one mark is deceptively similar to another the board and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and, if so, whether they are of such a character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered trade mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him'. In the light of this test, laid down by the Supreme Court, we are of the opinion that there is such an overall similarity between the two marks with which we are concerned in this case that a person dealing with the goods of the appellant based on his acquaintance with the appellant's trademark would be misled into accepting the goods manufactured by the first respondent with his trademark as the goods manufactured and marked by the appellant. There is overall similarity between the two marks, the main feature of which is the squirrel, whether it be the squirrel sitting on its hind legs and keeping its forelegs up with a nut in those legs or whether it be standing on all its legs on a smaller or longer branch of a tree. In these circumstances, we are of the opinion that Maharajan, J., erred in thinking that there is no similarity between the two marks and that Mr. M. P. Rao was not justified in making the concession that the two marks were deceptively similar if not identical. Proof of actual deception is not necessary. As submitted by Mr. G. Ramaswami the learned counsel for the appellant, registration of the mark under S. 12(3) of the Act would not have been prayed for by Mr. M. P. Rao on behalf of the first respondent, if the two marks are not either identical or nearly resemble each other in respect of the same goods, or description of goods. A perusal of S. 12(3) of the Act would show that the very basis for registration of the mark under that sub-section is the identity or near resemblance of the two marks. S. 12(3) reads thus :-
'In case of honest concurrent use 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 or trademark which are identical or nearly resemble each other (Whether any such trademark 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.'
We find that the two marks bear an overall similarity as would be likely to mislead a person usually dealing with one to accept the other if offered to him, and that it is only on that basis that the request was made by Mr. M. P. Rao, on behalf of the first respondent before the Assistant-Registrar, for confining the registration of the first respondent's trademark to one under S. 12(3) of the Act.
10. Mr. G. Ramaswami submitted the following points on behalf of the appellant : The appellant had obtained registration of his trademark form the Registrar of Assurances Calcutta, even on 9-2-1938 claiming user for a long time under the Indian Merchandise Marks Act read with the Indian Penal Code. The first respondent was put on notice of the registration of the appellant's trademark as early as 6-5-1938 and he did not oppose the registration of the appellant's trademark when the appellant applied for registration under the Trade and Merchandise Marks Act on 3-10-1944, and the appellant's trademark was advertised in the Trade Marks Journal D/-1-10-1950. The first respondent did not take any steps to apply for the removal of the appellant's registration till now either on the ground of prior user or any other ground. No amount of user by the first respondent, after the notice of the registration of the appellant's mark, will help the first respondent and such user cannot be construed as honest concurrent user under S. 12(3) of the Act. The first respondents had admitted in para 3 of his affidavit dt. 11-4-1968 that from 4-1-1933 up to Feb. 1938, he was using the trademark 'Anil' and the trademark 'The Squirrel' only from Feb. 1938. There is no material to prove the first respondent's user of the mark and no reliance could be placed on the two sets of sales figures furnished with his affidavits dated 15-6-1964 and 17-10-1965. The first respondent had applied for registration of his trademark only after he had been served with the order of interim injunction in O. S. No. 12 of 1963 on the file of the District Court of Ramanathapuram at Madurai on 24-7-1963 and he is not entitled to registration of his trademark on the ground of alleged acquiescence since his user of the trademark is dishonest.
11. On the other hand, Mr. S. Chellaswamy, the learned Counsel for the first respondent, submitted that in the case of honest concurrent user or of other special circumstances, the court or Registrar may permit registration of identical or similar marks of the same goods or description of goods by more than one proprietor subject to such conditions and limitations as may be thought fit and that each case must be considered on its own merits. He further submitted that when once the honesty of the user has been established the fact of knowledge loses much of its significance, though it may be a matter not to be wholly overlooked in balancing the considerations for and against registration. It was submitted that the quantum of production and sale may vary from time to time and between one trader and another and that there may even be interruption in the business and none of these may deviate from the conclusion of concurrent user if the user was in the course of trade and was resumed after some interruptions and no hard and fast rule can be laid down regarding the volume of use required for the purpose of Section 12(3) of the Act and it is sufficient if it is shown that there was a commercial use of the mark. Mr. Chellaswami further submitted that it is enough, to support a plea of acquiescence in a trademark case, if it is shown that the appellant had stood by for a substantial period and thus encouraged the first respondent to expend money in building up a business associated with the mark.
12. There is no dispute that the appellant had issued the circular dated 6-5-1933 informing the trade that he has been selling safety matches under the trademarks and representations of 'Anil' 'Water Lilly' 'Ship' and Victoria' on the said matches and those marks have been registered in Calcutta under the Trade Marks Registration Act as Trade Mark No. 587 and that he had sent circular to show that he had advertised his exclusive right over the said trademarks in 'Jayabrathi', the Tamil journal dated 28-4-1939. The circular was intended to give notice in order to prevent infringement of the trademark. The first respondent had sent a reply dated 18-5-1938, after receipt of the appellant's circular dated 6-5-1938, stating that he has acquired exclusive title to the trademark 'Anil' and that the appellant has infringed upon his trademark. The first respondent has further stated in that letter that the trademark 'Anil' was used by the first respondent as early from 4-1-1933 when his factory was working in the name and style of 'United Match Works' and afterwards under the name and style of the 'The Royal Match Works' and that the appellant was using the trademark 'Anil' with the mala fide idea of running the first respondent's business. The appellant sent a rejoinder dated 31-5-1938 denying that the labels with the colour and design of 'Anil' has been used at all by the first respondent, that even if the first respondent had used such labels in 1933, he had abandoned it since and can claim no right to it and that the appellant had his trademark registered by the Registrar of Assurances, Calcutta, and has no intention to infringe any trademark of any other person.
13. There was a lull after the exchange of these notices in May 1938, until the appellant sent a lawyer's notice dated 17-11-1952 to the first respondent alleging that the appellant is the manufacturer of matches with the trademark label 'Anil' for the past over 30 years and had also registered that mark with the Registrar of Trade Marks as Trade Mark Nos. 101505 and 101507 in class 34 and had renewed the same for a period of 15 years from 3-10-1951, and that he found the first respondent recently affixing to the safety matches manufactured by him the 'The Squirrel' label with the design of Anil as the central figure and it was a close and colourable imitation of his 'Anil' trademark. The appellant threatened to proceed against the first respondent in civil and criminal courts, if he failed to desist from using the labels 'The squirrel' or any other colourable imitation of his trademark 'Anil' within a week of the receipt of that notice. The first respondent sent a reply dated 30-11-1952 saying that he has been using 'The squirrel' label complained of by the appellant since 1933 for the safety matches manufactured by him to the knowledge of the appellant, that the appellant's 'Anil' label is only a colourable imitation of the first respondent's squirrel label and the appellant began to use the 'Anil' label for the matches manufactured by him several years after the first respondent began to affix 'The squirrel' label to the matches manufactured by him and that, in any event, there has been a concurrent user of the label in question by him for a considerably long time, and the appellant is estopped from questioning the propriety of the first respondent using 'The Squirrel' label in connection with his trade in safety matches.
14. There was again a lull thereafter until the appellant sent a lawyer's notice dated 24-3-1963 alleging that he has been manufacturing and selling safety matches for over 40 years affixing the 'Anil' trademark label to the safety matches manufactured by him, that he found in or about 1952 that the first respondent has been using 'The Squirrel' label the equivalent of the 'Anil' label with the anil or squirrel as the centre figure and that the appellant had no necessity to take further action after he had sent the earlier lawyer's notice dated 17-11-1952 because the first respondent had stopped using the squirrel label after receipt of that notice and was carrying on his business by affixing other labels to the matches manufactured by him. The first respondent sent a reply dated 27-4-1963 denying that he was found using 'The squirrel' label only in 1952 and saying that he has been using the 'Squirrel' trademark as early as from 4-1-1933 when he started the manufacture and sale of safety matches and that he did not stop using 'The Squirrel' label after receipt of the appellant's lawyer's notice dated 17-11-1952 as alleged in his last notice dt. 28-3-1963. Thereafter the appellant filed O. S. No. 12 of 1963 in the District court of Ramanathapuram at Madurai on 3-7-1963 for a permanent injunction restraining the first respondent from infringing his trademark label and obtained an interim injunction on 4-7-1963 which was said to have been served on the first respondent on 24-7-1963 before he filed the application before the Assistant Registrar of Trade Marks, Madras, out of which this Letters Patent Appeal has arisen.
15. There can be no doubt that, as observed by Maharajan, J., in his Judgment, the Registrar Trade Marks had unfettered discretion to grant or not to grant registration under S. 12(3) of the Act. But, as in the case of all other discretionary powers, the Registrar should exercise this power judicially. We find the following passage at p. 210 of Narayanan on Trade Marks and Passing off (Second Edition):-
'The words ' in the opinion of the Registrar' and ' he may permit the registration' clearly show that the Registrar has an unfettered discretion to grant or not to grant registration under S. 12(3). As in the case of all other discretionary powers, the Registrar should exercise this power judicially. In all matters relating to trademark law, not only the interest of the parties inter se that has to be safeguarded but also those of the public. Public interest should, therefore, be borne in mind while exercising the discretion. Every case under the section must be determined on its own merits.'
The requirement of 'acting judicially' in essence is nothing but a requirement to act justly and fairly and not arbitrarily or capriciously. We have found that the two marks are deceptively similar and that the necessity for invoking S. 12(3) would arise only when the resemblance between the two marks is likely to deceive or cause confusion. It would follow that registration under S. 12(3) is justified even of the simultaneous use of the marks will result in some amount of confusion, for the existence of possibility of deception of confusion is contemplated by S. 12(3) of the Act itself.
16. There is no dispute between the parties that the appellant's trademark was first registered in Calcutta under the Trade Marks Registration Act in 1938 and that the number of his registered trademark is 587. The first respondent has filed sales particulars and affidavits dated 15-6-1964 and 17-10-1965 and revised particulars have been filed with the affidavit dated 17-10-1965 on the ground that the figures furnished with the affidavit dated 15-6-1964 are not the correct and were based on insufficient material. The Assistant Registrar accepted these particulars and found that the first respondent has been manufacturing and selling safety matches with the 'Anil' label from 1938 to 1964. In Halsbury's Laws of England (Third Edition Vol. 38) at p. 539 it is stated thus :-
'Apart from the statutory powers for refusal, no person has an absolute right to registration of a trademark and the registrar has always discretion to refuse registration. He may only exercise this discretion after he has decided the preliminary questions of fact in the appellant's favour. The discretion must be exercised judicially on reasonable grounds which are capable of being clearly stated and may be exercised if the registrar considers that the refusal is in the public interest. The court and the House of Lords have a similar discretion, but are very reluctant to interfere unless the registrar is clearly wrong.'
17. The appellant has contended that the sales particulars furnished by the first respondent are false and unacceptable. There is no material on record to show that the Assistant Registrar was not justified in accepting the sales figures furnished with the first respondent's affidavit dated 17-10-1965 as genuine. Therefore, we are reluctant to interfere with the discretion of the Assistant Registrar in accepting those sales figures and coming to the conclusion that the first respondent has been using the trademark with the squirrel as the main feature from 1938.
18. There is no material on record to show that the first respondent had discontinued the user of this trademark after receipt of the circular dated 6-5-1938 and notices dated 17-11-1952 and 28-3-1963 referred to above. Nor is there any material on record to show the period of discontinuance of the user of the trademark by the first respondent. It is stated at page 184 in Karly's Law of Trade Marks and Trade Names (Ninth edition) that a temporary discontinuance of the use of a mark may not prevent subsequent registration. The first respondent had no doubt knowledge of the registration of the appellant's trademark as early as 1938 Nevertheless, he has been using his trademark all along even thereafter. At page 184 of the same ninth edition of Karly's Law of Trade Marks and Trade Names it is stated thus:--
'Knowledge of the registration of the opponent's mark may be an important factor where the honesty of the user of the mark sought to be registered in impugned, but where once that honesty of the user has been established, the fact of knowledge loses much of the significance. Though it may be a matter not to be wholly overlooked in balancing the considerations for and against registration.'
The Assistant Registrar had taken the fact that the first respondent had notice of the registration of the appellant's trademark as early as in 1938 in coming to the conclusion that having regard to the other circumstances in the case the first respondent is entitled to registration under S. 12(3) of the Act subject to the conditions and limitations imposed by him with regard to the same. We find the following passage in Narayanan on Trade Marks and Passing Off (Second Edition) at p. 206, paras 618 and 619 :-
'The extent of concurrent use required to bring the case within S. 12(3) will depend upon the degree of resemblances between the marks and the nature of the goods. If the marks are closely similar and the goods are the same, very extensive use over a considerable length of time may be necessary to justify registration. At the other extreme, if the similarity between the marks is doubtful and the goods are different, user on a small scale would be considered sufficient. A short period of concurrent use in combination with other special and exceptional circumstances may enable a trademark to be registered despite the presence on the Register of closely resembling mark.' 'No hard and fast rule can be laid down regarding the volume of use required for the purpose of the section. Ordinarily it would be sufficient if it is shown that there was a commercial use of the mark. Trademark is a kind of property and is entitled to protection under the law, irrespective of its value in money so long as it has business or commercial value. The fact that one party has much larger sales than the other does not affect their rights.'
It may be that the first respondent was not honest in applying for registration of his trade mark only after he had been served with an order of interim injunction in the suit which had been filed by the appellant in 1963 for a permanent injunction restraining him from using the impugned trademark. But it could not be stated from that fact that his user of the trademark for the period prior to the institution of the suit from about 1938 was not honest and concurrent. The appellant had not taken prompt action against the first respondent for restraining him from infringing his trademark. As already stated, his submission that the first respondent stopped using the trademark every time a circular or a notice was sent to him is not acceptable. We find the following passage at page 361 of Narayanan on Trade Marks and Passing Off (Second Edition):-
'Delay by itself after knowledge of the infringement will not deprive a registered proprietor of a trademark of his statutory rights to sue for infringement and obtain the appropriate remedies in respect thereof. However, owners of trademarks should not adopt a sort of Rip Van Winkle policy of going to sleep and not watching what their rivals and competitors in the same line of business are doing. Inordinate delay on the part of the plaintiff, without more, may bar the plaintiff's claim.' The appellant has committed inordinate delay in taking action against the first respondent for the infringement of his trademark and is, therefore, estopped from contending that the first respondent is not entitled to have his trade mark registered under the provision of S. 12(3) of the Act.
19. Mr. G. Ramaswami, the learned counsel for the appellant, submitted that Maharajan, J. has not considered the question relating to the triple identity position. Venkateswaran has stated in his Law of Trade Marks at p. 385 thus :-
'Where there is the triple identity position that is to say where the marks the respective goods and the respective areas of user are all identical, notwithstanding long user, registration is generally refused. An objection on the ground of 'triple identity position' may be overcome by making suitable amendments in the mark or by mutual limitation of the area of the use of the marks, the area being not contiguous.'
20. The question of triple identity position has been considered by the Assistant Registrar in the present case, for he has imposed necessary limitations while ordering registration of the first respondent's mark under S. 12(3) of the Act by restricting the registration to 'Mysore State and to the colours so shown in the representations on the form of the application by directing that the destination of the goods manufactured by the first respondent should be marked as 'matches for sale in the State of Mysore.'
21. In these circumstances, we are of the opinion that no interference with the judgment of Maharajan J. is called for in this case. We accordingly dismiss the Letters Patent appeal but, under the circumstances of the case, with out costs.
22. Appeal dismissed.