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Prem N. Mayor and ors. Vs. Registrar of Trade Marks and ors. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtKolkata High Court
Decided On
Case NumberTrade Mark Appeal No. 20 of 1965
Judge
Reported inAIR1969Cal80
ActsTrade and Merchandise Marks Act, 1958 - Sections 12(1), 18, 18(4), 19, 20, 21, 22, 23, 31, 32 and 133; ;Evidence Act, 1872 - Sections 13 and 43; ;Trade Mark Rules - Rules 37 to 43 and 51 to 55
AppellantPrem N. Mayor and ors.
RespondentRegistrar of Trade Marks and ors.
Appellant AdvocateB.K. Bachawat and ;A.C. Roy, Advs.
Respondent AdvocateTibrewalla, Adv.
DispositionAppeal dismissed
Cases ReferredAmritdhara Pharmacy v. Satya Deo. There
Excerpt:
- p.b. mukharji, j. 1. this is an appeal under section 109 of the trade and merchandise marks act, 1958 from the decision of the deputy registrar of trade marks dated the 7th november, 1964, dismissing the appellant's opposition to the respondent pannalal agarwal's application for registration. the other respondent in this appeal is the registrar of trade marks.2. before stating the facts giving rise to the points for decision in this appeal it will be worth drawing attention to the present situation in respect of registration of trade marks and the delay that has occurred in this case. the application for registration was made as early as the 18th april, 1960. this appeal in this court is being heard eight years after that application was made. about two years passed from the date of the.....
Judgment:

P.B. Mukharji, J.

1. This is an appeal under Section 109 of the Trade and Merchandise Marks Act, 1958 from the decision of the Deputy Registrar of Trade Marks dated the 7th November, 1964, dismissing the appellant's opposition to the respondent Pannalal Agarwal's application for registration. The other respondent in this appeal is the Registrar of Trade Marks.

2. Before stating the facts giving rise to the points for decision in this appeal it will be worth drawing attention to the present situation in respect of registration of Trade Marks and the delay that has occurred in this case. The application for registration was made as early as the 18th April, 1960. This appeal in this Court is being heard eight years after that application was made. About two years passed from the date of the application for registration for advertisement to issue; such advertisement issued on the 1st January. 1962. Again another two years elapsed before the matter was heard before the Deputy Registrar on the 6/7th October, 1964. This period of two years was too long for affidavits. The period that elapsed for advertisement was also too long. The appeal from the decision of the Deputy Registrar, Trade Marks was filed expeditiously. The Deputy Registrar's decision was given on the 7th November, 1964, and the appeal to this Court filed on the 5th February, 1965. Then again more than three years have elapsed before the appeal came up for hearing. It is necessary to emphasise that registration of Trade Marks is of vital importance and significance to trade and commerce and there should be reasonable diligence and expedition at every stage throughout the process of registration. If an applicant for registration of a Trade Mark has to wait for eight or ten years to have his mark registered, then it is a lamentable state of affairs which should be remedied.

3. The facts of the case giving rise to this dispute are simple. Respondent Pannalal Agarwal of 157, Netaji Subhash Road, Calcutta made an application on the 18th April, 1960, for registration of Part A of the Register of a Trade Mark consisting of a label containing the device or a composite picture of a goddess seated on a lion and the words 'Ma Durga Brand' underneath the device in Class 7 in respect of agricultural implements specially for chaffcutter blades. At the preliminary stage before acceptance of this application for registration by the Registrar the applicant Pannalal Agarwal agreed to amend the designation of the goods to 'Chaffcutter blades' and to disclaim the letters 'Ma'. The application so amended was advertised as accepted subject to opposition. The advertisement appeared in Trade Marks Journal dated the 21st January, 1962. A notice of opposition was filed on the 20th March, 1962, by the appellant. When I say the opposition was filed by the appellant, there is a point which may be indicated. The appellant is a registered firm under the Indian Partnership Act but the person registered as the owner of another Trade Mark called the 'Lion Brand' was a Joint Hindu family Firm. I shall return to this point later.

4. Continuing with the facts of the case the appellant's opposition was based on the prior user, registration and reputation of a Trade Mark No. 12301 registered in Class 7 in respect, inter alia, of 'chaffcutter blades and knives'. Affidavits according to the Trade Marks Rules were filed before the Registrar in support of the respective cases of the appellant and respondent Pannalal Agarwal. The whole case of the opposition of the appellant to the registration of 'Ma Durga Brand' with that device described above was based on the contention that that mark resembled the registered Trade Mark of the appellant and there was likelihood of confusion or deception. The short point, therefore, for decision is whether the respondent Pannalal Agarwal's mark is deceptively similar to the appellant's registered mark within the meaning of Section 12(1) of the Trade and Merchandise Marks Act, 19587 The language of Section 12(1) of the Trade and Merchandise Marks Act, 1958, is, inter alia, as follows:--

'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 is already registered in the name of a different proprietor in respect of the same goods or description of goods.'

The test of 'same goods or description of goods' in Section 12(1) of the Act applies here because the appellant's trade mark No. 12301 on the register is in respect of the same goods for which respondent Pannalal Agarwal applied for registration viz., 'chaffcutter blades' of the description quoted above. The whole point therefore is reduced to this question, whether the respondent Pannalal's application for registering the 'Ma Durga Brand' trade mark is identical with of deceptively similar to the registered trade mark of the appellant?

5. What then are the respective marks Involved in this dispute? The appellant's trade mark consists of a label containing the device of a lion, a blank scroll above and a scroll containing the words 'Lion Brand below the lion device. It wag registered on the 18th February. 1943, in Part A of the Register in Class 7 in respect of 'agricultural implements of the larger kind, and parts thereof: agricultural machinery and parts thereof, including chaffcutter blades and knives'. This registration was renewed for a period of 15 years on 18-2-1950 which expired in 1965.

6. The striking features of the Appellant's trade mark are the device of a Lion and the words 'Lion Brand'. These are the distinguishing and essential features of that mark. In fact, the device contains no other picture of anything else but that of a lion of the above description. The Appellant's goods, it is said, were bought and sold by reference to the word 'Lion' of that device.

7. Respondent Pannalal Agrawal's mark, for which he applied for registration, consists of the label containing the device of a goddess seated on a lion and the caption 'Ma Durga Brand'. The goddess device is a four-armed device of a goddess holding a trident in one hand, a sword in another, a discus in the third and a bow in the fourth. This goddess device has all the well-known attributes or symbols of a four-armed goddess Durga. In the label she is shown seated on her 'Vahan' (mount) which is a lion. The goddess device is so blended with the lion device that the lion device has totally lost all its individuality and the identity of the label has merged into that of Goddess Durga. The dominating and the commanding attention, feature, concentration and totality of the picture are occupied by the figure of the Goddess. Respondent Pannalal Agarwal's goods are bought and sold by reference to the Goddess Durga Brand and not to the device of lion.

8. The appellation of the respective marks, viz., Appellant's 'Lion Brand' and the Respondent Pannalal Agarwal's 'Ma Durga Brand' are entirely distinct and separate. There is no phonetic similarity: there is no visual similarity. No doubt the lion is common to both. But even the pictorial representation of the lion in either case is entirely distinct and separate. The majesty of the Goddess sitting on the lion overwhelms the lion part of the device in Respondent Pannalal Agarwal's application for registration. The lion in 'Ma Durga Brand' is also very different from the lion in the 'Lion Brand'. I shall not dissect the picture of the lion showed in this picture because what, I shall presently show. Is not intended by the law. It is enough to say that the lion in the 'Lion Brand' is not only sole or solitary lion without a rider but makes a full face with all the manes showing while the lion in the 'Ma Durga Brand' is a lion facing sideways and it is the image of goddess Durga which faces the front. Therefore, what is important is that the first glance and the first impression of these two marks would be 'lion' in the case of 'Lion Brand', and Goddess 'Durga' in the case pf 'Ma Durga Brand'.

9. As I understand the law of Trade Mark on the point, the general requirement of the law is that the mark must be distinctive in the sense that it must be adapted and distinguished. This distinctiveness is fundamental and primarily a matter of fact Past decisions may offer suggestions or principles for guidance showing what kinds of evidence or considerations should influence the Court in coming to the conclusions but they are of no further help. It is a caution in Trade Mark law which is frequently missed and yet of central significance. Distinctiveness being primarily a matter of fact, evidence can be given regarding distinctiveness in fact. There are no narrow or rigid rules about distinctiveness Such distinctiveness may be either in individual features or in general arrangement. A mark should therefore be considered as a whole on its total impression and as a general rule attempts to dissect a mark in order to destroy distinctiveness have been disapproved in such cases as Re, Hawthorn & Co., Ltd., (1934) 52 RPC 15 and Re, William Bailey (Birmingham) Ltd., Re, Gilbert & Co., (1935) 52 RPC 136. In fact, the general principle of trade mark law in determining the question of identity or deceptive similarity is that the marks, names or get-up concerned must always be considered as a whole as the true test. See the observation of the Supreme Court hi Corn Products Refining Co. v. Shangrils Food Products : [1960]1SCR968 where it says 'It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole'. It is the totality of the impression, phonetically and visually, which is the test. If that totality of impression is likely to cause deception or confusion, then the identity is established. If not, then they are dissimilar. Support for this view of the law is obtained from Article 874 at p. 527 and Article 987 at p. 589 of Lord Simond's 3rd Edn. of Halsbury's Laws of England, Vol. 38. In that authority, in Article 992 at p. 591 of 38 Halsbury it has been stated also 'where there are common elements in two or more marks, more regard must be paid to the parts that are not common but the common parts must not be disregarded.' There are a number of authorities cited in support of that proposition. So even if the lion is a common part in these two marks under consideration, the fact that one is alone lion and the other a lion with the goddess Durga with four arms would avoid any risk of identity or deceptive similarity or confusion.

10. Both the decision of the Dy. Registrar and learned Counsel appearing for the Registrar of Trade Marks before me have relied on the unreported judgment of the Bombay High Court in Prabhudas Bhaichand v. Tribhubandas Kusaldas, a decision of Shah, J., delivered on January 12, 1961 (Bom.). That case discussed the competition between two marks -- one only a horse and the other a horse with a rider who was a fairy with wings. The first was known as the 'Horse Brand' and the other was known as 'Pari Ghora'. Shah, J., in course of his judgment upholding the decision of the Registrar of Trade Marks there in allowing registration of the horse with the fairy inter alia observed as follows:--

'This makes, in my opinion, all the difference between the respective designs of the petitioners and the respondents. Whereas the petitioners' design does not spell any mythological legend, the design of the respondents does spell it. To the sight of an ordinary man, the design of the horse in the mark of the petitioners would appear to be more of a race horse than a celestial horse, but the picture of the horse in the design of the Respondents mere looks like a celestial horse, The distinguishing feature, in my opinion, is the picture of the fairy on the top of the horse and if one finds out distinguishing features in the two different designs, the test laid down by our Court in the case cited above is clearly satisfied.'

11. If the horse with a fairy carries the mythological tradition, the 'Ma Durga Brand' of Respondent Pannalal Agarwal in this case carries a more forceful mythological and religious legend known to the people of the country who are familiar with the goddess Durga with the 'Vahan' of a lion. The point is of some importance because the Appellant contended before this Court that these goods were purchased by ordinary illiterate and uneducated peasants in carrying on their agricultural occupation. There is however no evidence on the point of what classes of purchasers usually buy the Appellant's goods. I shall come to the question of evidence presently. But even assuming that purchasers of the goods in question are illiterate, uneducated peasants, that fact does not help the Appellant in the present case. For in spite of illiteracy and lack of education in the peasants of India, they are quite familiar with the image and idea of what is a lion and what is Goddess Durga. It needs emphasis in this case that the type of goods on which the Appellant uses his trade mark demands skill and technology which may not associate the purchasers of this class of goods with the total darkness of illiteracy and lack of education.

12. In fact, it will not be inappropriate to quote Shah, J., again in that Bombay decision where on a similar argument of Illiteracy the learned Judge observed as follows:--

'As stated above, the design must be looked at as a whole and when the Respondent's design is thus looked at, the idea that is clearly conveyed to one's mind and this does not require any amount of literacy because all that one has got to do is to see with one's eyes, which do not require to be literate or illiterate is that it is a picture somewhat of a celestial character having no parallel in this mundane world. One does not find fairies on the surface of the earth nor believe that witness (sic). Fairies are mythological figures and, irrespective of one's literacy or illiteracy, I should imagine everybody knows what a fairy or Pan. In Indian language means.'

13. Applying that test, it can be equally said on the facts here before me that a goddess with four arms is not a familiar mundane figure which can be seen in the roads and streets. If the fairy was celestial in the Bombay case, Ma Durga is more celestial in the present case. They are therefore sufficient distinctive characteristics of this device for which the Respondent Pannalal Agarwal seeks to have a registration.

14. It will be appropriate here at this stage to come to the facts found by the Deputy Registrar. The appellant's position on the facts appears to be hopeless. It is his case that registration of the respondent Pannalal Agarwal's mark will cause deception or confusion but no evidence whatever has been produced about the possibility of such deception and confusion. Secondly, although the date of registration of the appellant's trade mark shows the date when it was registered, there is no evidence whatever of continuous user from any independent source. Thirdly, there is no evidence from any independent source about the reputation that this mark of the appellant is alleged to have acquired. Fourthly, no fact or evidence has been produced to show the annual turnover of the appellant's goods or even to show the class of purchasers who buy his goods. No cash memo on behalf of the appellant has been produced. No accounts on behalf of the appellant have been shown. No advertisement or publicity has been proved on behalf of the appellant or his goods. On that state of records about facts found and evidence given, I am not at all impressed by the merits of the appellant's case on deception and confusion.

15. The appellant seems to rely only on two circumstances. The first circumstance is that his mark is already a registered trade mark. I am afraid that ia not enough. The Supreme Court observed in : [1960]1SCR968 as follows:--

'Now of course the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register. If any authority on this question is considered necessary reference may be made to Kerly page 507 and Willesden Varnish Co. Ltd. v. Young & Marten Ltd., 39 RPC 285 at p. 289.'

It is needless to point out that the only presumption that follows from registration of a trade mark is its prima facie evidentiary value about its validity and as stated in Section 31 of the Trade and Merchandise Marks Act, 1958 which reads as follows:--

'(1) in all legal proceedings relating to a trade mark registered under this Act (including applications under Section 56), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.

(2) in all legal proceedings as aforesaid a trade mark registered in Part A of the register shall not be held to be invalid on the ground that it was not a registrable trade mark under Section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is found that the trade mark had been so used by the registered proprietor or his predecessor-in-title as to have become distinctive at the date of registration.'

16. Section 32 of the Act makes further provision that subject to Sections 35 and 46, in all legal proceedings relating to a trade mark registered in Part A of the register, including of course applications under Section 56, the original registration of the trade mark shall after the expiration of 7 years from the date of such registration be taken to be valid in all respects unless it is proved:--

(a) that the original registration was obtained by fraud; or

(b) that the trade mark was registered in contravention of the provisions of Section 11 or offends against the provisions of that section on the date of commencement of the proceedings; or

(c) that the trade mark was not at the commencement of the proceedings, distinctive of the goods of the registered proprietor.

17. Except the presumption noted above there is no other presumption recognised by the statute. The appellant's reliance therefore on the mere circumstance of his prior mark on the Register cannot help him in this respect.

18. The other circumstance on which the appellant relies is on a series of judgments mostly of the Subordinate Courts of Punjab except one of the Punjab High Court. In order to show that the appellant had brought legal proceedings to assert his title to his registered trade mark against diverse parties, these judgments were used as parts of the affidavits filed by the appellant before the Registrar of Trade Marks.

19. Now apart from the legal question how far these judgments are admissible and whether they are at all any proof against respondent Pannalal Agarwal, the value and weight of these judgments are negligible in this case. In the first place, the parties were different. in the second place, the facts were different. In the third place, the trade marks which were alleged to have been infringing the appellant's trade mark in these legal proceedings were entirely different from the present case before me. Fourthly, not anyone of the witnesses who deposed in those cases has been produced here in this case, nor any of their affidavits used in the present case. These judgments intended to be used in support of the appellant are not judgments in rem. They are judgments inter partes and are confined to the facts of dispute in those individual cases. The respondent Pannalal Agarwal is not a party to any of these judgments or proceedings. On those facts I do not consider that these judgments or their facts can be used against respondent Pannalal Agarwal,

20. I shall notice at this stage some of the authorities on this point. The Privy Council in Gopika Raman Roy v. Atal Singh, AIR 1929 PC 99, a case not under the Trade Mark law laid down the obvious principle that the Evidence Act does not make finding of fact arrived at on the evidence before the Court in one case evidence of that fact in another case where the parties are not the same. Sea the observations of Sir John Wallis in the Privy Council at page 102 of that report.

21. On behalf of the Appellant, reliance was placed upon the Privy Council decision in Gobinda Narayan Singh v. Shamlal Singh, 58 Ind App 125=(AIR 1931 PC 89) to show that under Sections 13 and 43 of the Indian Evidence Act the judgment in a previous suit was admissible; but that was only admissible as establishing the particular partition resulting from that suit and it was clearly laid down by the Privy Council that neither the reasons nor any finding of tact was relevant in the subsequent suit before the Privy Council. See observations of Sir George Lowndes, J., at p. 136 of that Report (of IA)=(at p. 92 of AIR).

22. There are some decisions on trademark judgments, regarding their admisibility, probative value and weight. The well-known decision of the Privy Council in the Coca-Cola Co. of Canada Ltd. v. Pepsicola Co. of Canada Ltd.. AIR 1942 PC 40 is relevant on the point. There Lord Russell delivering the judgment of the Privy Council observes at pp. 41 and 42 'the Court is not entitled to refer to or even rely upon a judgment given in proceedings to which neither the plaintiff nor the defendant was a party as proving the facts stated therein.'

23. The Supreme Court in Sitaldas v. Sant Ram : AIR1954SC606 , while discussing religious endowments in Hindu law observed at p. 614: 'But the judgment itself we think can be received in evidence under Section 13 of the Evidence Act as a 'transaction' in which Kishore Das, from whom Ishar Das purports to derive his title, asserted his right as a spiritual collateral of Mongal Das and on that footing got a decree.' That observation is of no help to the Appellant in this case for there the title and its derivation made for a unity of the subject and all the persons claiming thereunder. Here all that is absent. It is not the Appellant's right or assertion of his trade mark which is in question in the present appeal. The question in the present appeal is whether Respondent Pannalal Agarwal's application to register 'Ma Durga Brand' would create any deception or confusion with the Appellant's registered trade mark. For that purpose I fail to understand how these other judgments where the parties, the subject-matter and the alleged infringing trade marks were all different could be used against the present Respondent Pannalal Agarwal, in my opinon, they cannot be used either in fact or in law, in the present case.

24. Incidentally, it has been rightly criticised by the learned Counsel on behalf of the Registrar of Trade Marks that even the Appellant's assertion of the right to his trade mark, for which these other judgments could be admissible, become Inadmissible because that assertion and the plaintiffs in those cases were not the same person as the present Appellant because those other legal proceedings, as I have said before, were instituted by a joint Hindu family and the present Appellant is the partnership firm registered under the Indian Partnership Act.

25. On this point objection was raised by the learned Counsel on behalf of the Registrar of Trade Marks that in fact the Appellant is not the registered owner of the trade mark and therefore is not entitled even to object. But that point cannot succeed because Section 21 of the Trade and Merchandise Marks Act 1958 dealing with opposition to registration speaks of 'any person may object to an application for registration.' Therefore 'any person' need not be only a prior registered trade-mark owner. Even a customer, a purchaser or a member of the public likely to use the goods may object to the registration of a trade mark in respect of such goods on the ground of possible deception or confusion. Deception or confusion is a matter of public Interest which is an important concern of the trade mark law.

26. I shall refer here to two decisions of the Supreme Court at this stage. One has already been mentioned in connection with another point viz.. : [1960]1SCR968 . This decision lays down the law that in order that a trade mark may acquire reputation among the general public, what is necessary is that the reputation should attach to the trade mark. In other words, the reputation is the reputation of the trade mark and not the maker of the goods bearing the trade mark. The Supreme Court in that case lays down further this law at p, 144 by observing as follows:--

'As we have earlier stated, the Appellant had opposed the registration of the Respondent's mark under Section 8(a) and also under Section 10(1). In order that Section 10(1) might apply to the case, the Appellant had to establish that its mark had been registered in respect of the same goods or description of goods for which the Respondent had made its application for registration,'

27. The other Trade Marks Act decision of the Supreme Court is reported in : [1963]2SCR484 , Amritdhara Pharmacy v. Satya Deo. There the Supreme Court at p. 452 observed as follows:--

'It would be noticed that the words used in the sections and relevant for our purpose are 'likely to deceive or cause confusion.' The Act does not lay down any criteria for determining what is 'likely to deceive or cause confusion.' Therefore, every case must depend on its own particular facts and the value of authorities lies not so much in the actual decision as in the tests applied for determining 'what is likely to deceive or cause confusion.' On an application to the Registrar, the Registrar or an opponent may object that the trade mark is not registered by reason of Clause (a) of Section 8 or Section 10(1) as in this case. In such a case, the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion. In cases in which the Tribunal considers that there is doubt as to whether deception is likely, the application should be refused. The trade mark is likely to deceive or cause confusion by its resemblance to another already registered if it is likely to do so in the course of legitimate use in a market in which two marks are assumed to be in use by the traders in that market.'

28. The Supreme Court there followed the celebrated observations of Parker, J., in in Re. Pianotist Co.'s, (1906) 23 RPC 774 at p. 777 on the principles of comparison in these terms:--

'You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer which would be likely to buy those goods. In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owner of the marks.'

29. The Supreme Court in Amritdhara's case : [1963]2SCR484 also followed and approved the law laid down by Kerly on Trade Marks, 8th Edn. at p. 400 where it is stated: 'For deceptive resemblance two important questions are:

(1) who are the persons whom the resemblance must be likely to deceive and

(2) what rules of comparisons are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who on seeing a mark thinks that it differs from the mark on goods which he has previously bought but is doubtful whether the impression is not due to imperfect recollection.'

30. On the application of these tests of comparison I have no reason to doubt that the marks in this case have no identity or any reasonable similarity to cause deception in any manner whatsoever.

31. In this view of the matter, the question of onus which was argued is no longer relevant or important for the decision in this case. The question of onus of proof in trade mark law is a complicated question. No fixed or rigid formula is available nor is there any fixed doctrine of onus which can be spelt out of the Trade Mark law or the statute. The brief analysis of the Trade and Merchandise Marks Act, 1958 and the rules made thereunder emphasise certain broad principles and features. The applicant for registration has certain duties and onus to discharge while making an application for registration of a trade mark. Sections 8 to 14 of the Act indicate the requisites for registration and the limitations for application. The applicant for registration has to prima facie satisfy the Registrar that he does not infringe these statutory requirements. It is needless to point out that the Register is maintained under Section 6 of the statute. Sections 18, 19, 20, 21 and 22 of the Act lay down the procedure for application for registration, its acceptance by the Registrar, the withdrawal of his acceptance in certain cases, the opposition for registration and correction or amendment, and the advertisement of the application for registration. From these Sections 18 to 22, one thing is clear that when an applicant makes his application for registration, the onus in the first place is upon him to show that he is within the law prima facie and he does not infringe Sections 8-14 of the statute. It is only when he has discharged that primary onus that the application can be accepted by the Registrar under Section 18(4) of the statute. The Registrar can refuse the application at that stage or may accept it absolutely or may accept it subject to amendments, modifications, conditions or limitations as he thinks fit. But when he accepts it, then that acceptance prima facie shows that the applicant has crossed the preliminary hurdle of onus unless it is withdrawn under Section 19 of the statute. If it is not withdrawn, then this application is advertised inviting opposition, if any, to registration. The stage which follows after advertisement appears to throw the burden upon those who are opposing to prove their opposition and the onus is upon them to show that what the Registrar has prima facie accepted is not entitled to registration. The onus, therefore, would be upon the opposer to support his grounds of opposition at that stage. The Trade Marl Rules under Section 133 of the Trade am Merchandise Marks Act 1958 appear to subscribe to that view. Trade Mar] Rules 37 to 43 show the preliminary onus upon the applicant for registration of a trade mark. Rules 51 to 55 appear to show that the onus shifts then to the opposer to support his grounds of opposition by evidence. Rule 53 expressly requires evidence in support o opposition and Rule 53 (2) goes so far as to say that if an opponent makes no opposition under Rule 53 (1) within the time therein prescribed, he shall, unless the Registrar otherwise directs, be deemed to have abandoned his opposition. This rule shows definitely that if he does not oppose and if he does not support his opposition by evidence, he would be deemed to have abandoned his opposition. This would indicate that the onus is upon the opposer to support his grounds of opposition.

32. After this reference to the Indian statutes and rules, one decision under the British Act, may be now noticed. That decision is reported in (1945) 63 RPC 97 under the title of, in the matter of an application by a Smith Hayden & Co. and is by Evershed, J. It is said there that the 'question of resemblance is one of first impression and that the applicants had discharged the onus of showing that confusion and deception would not arise by any oral or other resemblance between the marks.' This was the famous case of 'Hovis' bread. At p. 102 of that Report, Evershed, J., declared that 'the onus lies upon Smith Hayden & Co. as applicants for registration of satisfying the Court that a negative answer should be given to both questions, regard being had to the whole range of goods covered by the proposed registration.'

33. In fact it is stated in 38 Halsbury (Simonds Edition) Article 984 at page 588,

'The basic general conditions which arise in determining the degree of resemblance of trade marks etc., in all proceedings in which comparison arises are very similar, but the onus of proof may differ in the various types of cases. Thus, in the case of applications for registration of trade marks and in opposition thereto, the onus is on the applicant to satisfy the Registrar that the Trade Mark applied for is not likely to deceive or cause confusion, whereas in applications for rectification the onus is on the applicant for revocation. In action for infringement of a trade mark or passing off the onus is on the plaintiff'.

34. This statement, however, does not hold good for the context of the Trade and Merchandise Marks Act, 1958 in India and the rules made thereunder show how the onus shifts from one stage to the other.

35. Finally, Kerly on. Trade Marks, Ninth Edition, states the law at pages 448-49 in Section 833 in these terms:--

'The different proceedings in which the question of deception and confusion arises are summarised in paragraphs which follow, and some observations relevant to the proceeding in question are added.

'(1) On an application to register, the Registrar or an opponent may object that the trade mark is not registrable by reason of Section 11 and of Section 12(1).

'In such cases the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not reasonably likely to deceive or cause confusion so that the refusal to register does not involve the conclusion that the resemblance is such that either an infringement action or a passing-off would succeed. In cases in which the Tribunal considers that there is doubt as to whether deception is likely the application should be refused.

'Apart from the difference in onus, the question to be considered under Section 12 is roughly equivalent to asking whether any normal and fair use of the mark sought to be registered would infringe the other -- whilst the question to be considered in an ordinary dispute under Section 11 is roughly equivalent to asking, whether any normal and fair use of the mark sought to be registered would be likely to cause passing-off.'

36. As I have already said it will not be necessary to pursue this point of onus any further, having regard to the view that I have taken of the merits of the case.

37. Reliance has been placed on behalf of the appellant on an English decision, in the matter, William Henry Huxley, (1924) 41 RPC 423. There was one device containing four pictures separately but put together. One of such pictures was that of a ship. The other was a mark with a picture of ship only. It was held that it was a case which was likely to cause deception or confusion. This authority was invoked in the present appeal on the ground that if ship was the vitiating factor in that case then the lion can be equally so in this. I have no hesitation in rejecting this submission. The reasons are plain. In the first place, there the competing marks consisted of in one case four separate pictures put together but nevertheless separate and one such separate picture was a ship only and this was very similar to the ship in the other competing mark. The lion in 'Ma Durga' here cannot be so separated. It is one composite picture inseparable with the goddess dominant in the whole picture. Secondly, in Huxley's case in (1924) 41 RFC 423 the competing words in both cases were 'Ship Brand'. Here I see no earthly connection between a 'Lion Brand' and the 'Ma Durga Brand'.

38. For the reasons and authoritiesstated above, I uphold the decision of theDeputy Registrar of Trade Marks, Calcutta dated the 7th November, 1964 anddismiss this appeal with costs.


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