P.B. Mukharji, J.
1. This is an appeal from the order and decision of the Deputy Registrar of Trade Marks made on the 5th May, 1954, refusing to register the applicant's mark, 'Maja', on the objection of the opponent's who claimed the mark 'Raja'.
2. In the application for registration, the applicant applied for registering the trade mark, 'Maja', in class 3 of the goods. It was an application to register the word 'Maja', simpliciter without any design associated with it. The opposition stated the grounds where it was not alleged that the applicant had not used the word 'Maja', without any associated design.
3. The parties adduced evidence before the Registrar on affidavits, on the basis of these allegations in the application, opposition and counter-statements.
4. The learned Deputy Registrar in his decision found that on the evidence adduced it was apparent that the mark sought for registration was not the mark that was claimed in the evidence as used and came to the conclusion that it was a part of a composite mark and was always associated with the design of a picture of a Spanish woman with a fan in hand. It was nobody's case on the pleadings before the Registrar. It was the Registrar's discovery from the evidence appearing on the affidavits. On that basis, the learned Registrar held :.* . 'the mark applied for is only a part of a mark which has never been used separately and the applicant's evidence of distinctiveness offered and their whole case is based ab initio on the user of a composite label. The application is not for a label.
Therefore, giving the matter my best consideration I can, I find the proper order in this case is that this application shall be refused.' The result, therefore, is that the decision was arrived at by the Registrar on a point of fact which was not in issue before him but which he himself discovered or appears to discover on the evidence as supplied on the basis of the pleadings and not on the basis of the issue whether it was part of a mark or a separate mark and whether it was a composite mark at all.
5. This, in our judgment, has caused manifest injustice and has been very unfair to the parties concerned, specially to the applicant. I shall state the reasons very briefly. If the Deputy Registrar felt that the evidence on the affidavits seemed to indicate that the mark was the composite mark always associated with the picture of a woman, he should have asked and ordered the applicant to file further affidavits or bring evidence to show that such mark has been used separately without the picture of the woman. He did not take that course. In fact the Deputy Registrar gives the reason that the application was not for a label. That reason itself is therefore the ground why he should not have refused the application. The application was for the mark simpliciter. It was, therefore, a duty on his part to be satisfied on evidence after full notice to the applicant as to on what point the evidence was required. He did not discharge that duty by drawing from the affidavits as such an inference that they all indicated that the word 'Maja' was a composite mark used always on a label with the device of a woman in Spanish costume with an open fan in hand.
6. No question of principle is involved in this case. It certainly is the Registrar's duty to register a trade mark and to see whether a trade mark is registrable or not. Nobody disputes that proposition. Supposing an applicant for trade mark conies to register a trade mark before the Registrar. The application is advertised. Suppose then there is no opposition. Even then no doubt the Registrar would have to be satisfied and would have to decide whether the mark is registrable under the Act. But that does not mean that the Registrar should use the power of coming to a decision either on facts which do not exist or on facts which he invents or on facts on which no opportunity is given to the applicant to bring further evidence to satisfy him. Such a course would be procedurally hard and unfair. It will make nonsense of RULE 31 of the Trade Mark Rules which says that the notice of opposition shall inter alia include a statement of the 'grounds' upon which the opponent objects to the registration. The grounds in this case were stated. No ground was taken that the mark applied for was a part of a mark which was never used separately and that such mark was a part of a composite label. What is the good then of the rule requiring grounds to be taken? The learned Counsel for the Deputy Registrar argued as to what would happen to the case where there was no opposition. I have just already discussed that point. It is unnecessary any more to discuss that aspect of the case when in the present appeal there was opposition and the rules govern what should be stated in the notice of opposition and how the grounds should be declared. The Deputy Registrar never asked the opponent to amend his notice of opposition to include the ground on which he ultimately came to dismiss the whole application for registration.
7. In the decision under appeal, the Deputy Registrar says that the Counsel for the applicant saw the force of the objection on the ground that the mark was the part of a composite mark, and the Counsel was supposed to have said that, if necessary, he was prepared to amend the mark. The Deputy Registrar then complains that there was no request on Form TM-16 before him for amendment. I am afraid the Deputy Registrar completely tailed to understand the legal position. What would the applicant amend? He applied for registration of a trade mark, 'Maja', simpliciter without the design of the picture of a woman and I do not see why he should be made to amend the petition on a ground which was not in issue at that time before the Deputy Registrar. The more logical, the fairer and the proper course would have been to ask the opponent to amend his ground of opposition to include that ground if the Deputy Registrar was finally going to decide on that ground. Then the parties would have been on notice and the applicant could have been given opportunity to file further counter-statement on facts on the new ground, and would have brought forth the necessary evidence. It may just as well be that evidence and affidavits without the issue being there so happened to indicate that it was a part of a composite mark but if opportunities were given to the applicants to show that they had used the word 'Maja' simpliciter without the picture of a woman on a variety of goods in that event the Deputy Registrar would have had to come to an entirely different conclusion, and in that event he would have to allow the application.
8. For these reasons, on a review of the record as a whole, we feel that justice has not been done in this case. We, therefore, set aside the order of the learned Deputy Registrar of Trade Marks and remand the case back to him for a fair trial on evidence and we direct that he should give opportunities to the applicant to adduce evidence before him by affidavit or otherwise to show that the word, 'Maja', has been used separately by the applicant and if so, what is the nature of that user and equally he should give an opportunity to the opponent to adduce evidence either on affidavits or otherwise to contradict the applicant's case.
9. There will be no order as to costs.
R.S. Bachawat, J.
10. I agree.