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1985 (9) TMI 340 - SC - Companies LawWhether a proprietor of a trade mark who intends to use it solely by a registered- user is entitled to registration of his trade mark under Sec. 18 of the Trade Mark Act? Held that - To enable the proprietor of a trade mark who has got it registered on the ground that he intends to use the trade mark to avail himself of the fiction created by section 48(2) he must have had in mind at the date of his application for registration some person to whom he intends to allow the use of the trade mark as a registered user. This would eliminate all chances of trafficking in a trade mark. If an applicant for registration did not have at the date of his application for registration a particular registered user in view he cannot be said to have had a bona fide intention to use the trade mark and in such an event he cannot resist ar. application made under clause (a) of section 46(1) of the 1958 Act. Turning now to the present Appeal the facts on the record show that only when it was decided to introduce DRISTAN tablets in the Indian market through the Indian Company that the Appellant made its application to register the trade mark DRISTAN . There was a close connection in the course of trade between the Appellant and the Indian Company. The Appellant owned 40 per cent of the shareholding in the Indian Company. It had entered into a technical collaboration agreement with the Indian Company which provided for strict quality control and for formulae and services to be provided by the Appellant. The manufacture marketing and advertising of all products under the said agreement were to be under the control of the Appellant. There was no royalty payable by the Indian Company to the Appellant in respect of the use of the trade mark DRISTAN . In the event of the collaboration agreement being terminated by reason of the happening of any of the events mentioned in the said agreement amongst which events was the shareholding of the Appellant becoming less than 40 per cent the Indian Company was to cease to be entitled to manufacture the tablets DRISTAN or to use its formula or to use the trade mark DRISTAN . There was here therefore no question of any trafficking in a trade mark. In these circumstances the intention of the Appellant to use the trade mark DRISTAN through the Indian Company which was subsequently to get itself registered as the registered user of the said trade mark cannot but be characterized as bona fide. Appeal allowed.
Issues Involved:
1. Whether a proprietor of a trade mark who intends to use it solely by a registered user is entitled to registration under section 18 of the Trade and Merchandise Marks Act, 1958. 2. Whether the words "proposed to be used by him" in section 18(1) of the Trade and Merchandise Marks Act, 1958, include a proposed user by someone who will get himself registered as a registered user under section 48(1) of the said Act. 3. Whether the trade mark "DRISTAN" was deceptively and confusingly similar to the trade mark "BISTAN." 4. Whether the Appellant had a bona fide intention to use the trade mark "DRISTAN" at the time of application for registration. 5. Whether the Appellant made use of the trade mark "DRISTAN" within a period of one month before the date of the First Respondent's Application for Rectification. 6. Whether the Appellant obtained the registration of the trade mark "DRISTAN" by making a false statement in its application. Detailed Analysis: 1. Entitlement to Registration under Section 18: The Supreme Court held that the legal fiction created by section 48(2) of the 1958 Act applies to section 18(1). Therefore, the words "proposed to be used by him" in section 18(1) can be read as "proposed to be used by him or by a registered user." This interpretation aligns with the statutory purpose and avoids the absurdity that would result from a narrow reading. 2. Interpretation of "Proposed to be Used by Him": The Court concluded that the legal fiction in section 48(2) should be given full effect. Thus, "proposed to be used by him" includes proposed use by a registered user. The Court emphasized that the statutory fiction must be carried to its logical conclusion, which means the use by a registered user is deemed to be use by the proprietor for all purposes under the Act. 3. Similarity to "BISTAN": The Court noted that the Registrar and the Division Bench of the Calcutta High Court had rejected the contention that "DRISTAN" was deceptively and confusingly similar to "BISTAN." The Court found no reason to disturb this finding, particularly since the proprietor of "BISTAN" had not opposed the registration of "DRISTAN" nor alleged confusion or deception apart from supporting affidavits. 4. Bona Fide Intention: The Court examined the facts and found that the Appellant had a bona fide intention to use the trade mark "DRISTAN" through the Indian Company, which was to be registered as a registered user. The collaboration agreement and the continuous chain of events leading up to the application for registration supported this finding. The Appellant's intention was genuine and not aimed at trafficking in the trade mark. 5. Actual Use of the Trade Mark: Given that the first condition of clause (a) of section 46(1) was not satisfied (i.e., the Appellant had a bona fide intention to use the trade mark), the Court found it unnecessary to decide whether the Appellant had made actual use of the trade mark within one month before the date of the Application for Rectification. 6. Alleged False Statement in Application: The Court rejected the First Respondent's argument that the Appellant had obtained registration by making a false statement. The application form (TM-1) did not require the Appellant to specify whether the trade mark was to be used by a registered user. The Court suggested that it might be better if the form were amended to include such a requirement. Conclusion: The Supreme Court allowed the appeal, reversing the judgment of the Division Bench of the Calcutta High Court and setting aside the order passed by it. Consequently, the Appellant's appeal before the Division Bench of the Calcutta High Court was allowed with costs, and the judgment of the learned Single Judge and the order passed by him were reversed and set aside. The First Respondent's Application for Rectification was dismissed with costs, and the order of the Registrar of Trade Marks dismissing the Application for Rectification was confirmed. The First Respondent was ordered to pay the costs of the appeal.
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