1970 (3) TMI 160 - SC - Companies Law

Whether the numeral 50 and the word Fifty were common to the trade at the time of the original registration and were therefore not distinctive of the bells manufactured by the respondent- company, Sup. CI- 6? Whether the respondent-company had fraudulently declared at the time of registration that they were the originators or proprietors of the said two marks 50 and Fifty ? Held that - No contention, therefore, can be raised that the trade marks, 50 and Fifty , were not distinctive, i.e., adapted to distinguish the cycle bells of the respondent-company at the date of the registration, and therefore, were not registerable as provided by s. 9. Though evidence was produced by the appellant companies to show that there were other bells in the market with Fifty or 50 inscribed on them, no evidence was led to show that the use of the word Fifty or the numeral 50 was substantial. In these circumstances, it is impossible to sustain the contention founded on cl. (c) of S. 32. Under s. 56, the power to rectify is undoubtedly discretionary. Where such discretion has been properly exercised, a court of, appeal would refuse to interfere. In the present case, however, the Trial Court did not appreciate the principle embodied in ss. 32 and 1 1, with the result that the Division Bench was justified in interfering with the discretion exercised by the Trial Court. Appeal dismissed.

Issues Involved:
1. Distinctiveness of the trade marks '50' and 'Fifty'
2. Alleged common usage of the trade marks
3. Bona fide intention and use of the trade marks
4. Fraudulent registration claims
5. Applicability of Section 32 of the Trade and Merchandise Marks Act

Detailed Analysis:

1. Distinctiveness of the Trade Marks '50' and 'Fifty':
The primary issue was whether the trade marks '50' and 'Fifty' were distinctive of the respondent company's goods at the time of registration and at the commencement of the proceedings. The learned Single Judge initially found that the numeral '50' was not distinctive due to its common usage by various manufacturers. However, the Division Bench concluded that the marks had become distinctive through extensive use by the respondent company, as evidenced by the increase in sales from Rs. 19,644 in 1949-50 to Rs. 14.83 lacs in 1961-62. The Supreme Court upheld this view, noting that the marks were distinctive at the commencement of the proceedings as required by Section 32(c).

2. Alleged Common Usage of the Trade Marks:
The appellants argued that the numerals '50' and 'Fifty' were commonly used in the trade and thus not distinctive. The Single Judge found that several dealers and manufacturers used the numeral '50' before and after the respondent's registration. However, the Division Bench and the Supreme Court noted that the foreign manufacturers like Lucas used these numerals merely as type marks, not as trade marks. The Supreme Court emphasized that a few unchallenged, scattered infringements did not render a registered trade mark common.

3. Bona Fide Intention and Use of the Trade Marks:
The appellants contended that the respondent did not register the marks with a bona fide intention of using them. The Single Judge found no evidence of fraud or lack of bona fide use. The Division Bench and the Supreme Court agreed, noting that the respondent had actively protected its trade marks through legal actions and opposition to other registrations, demonstrating a bona fide intention to use the marks.

4. Fraudulent Registration Claims:
The appellants alleged that the respondent fraudulently declared themselves as the originators of the marks '50' and 'Fifty'. Both the Single Judge and the Division Bench found no evidence to support these claims. The Supreme Court concurred, stating that there was no averment or proof of fraudulent registration by the respondent.

5. Applicability of Section 32 of the Trade and Merchandise Marks Act:
Section 32 provides that after seven years from the date of registration, a trade mark's validity is presumed unless it is proved that the registration was obtained by fraud, the mark was registered in contravention of Section 11, or the mark was not distinctive at the commencement of the proceedings. The Supreme Court emphasized that the burden of proof was on the appellants to demonstrate that the marks were not distinctive or were registered fraudulently. The Court found that the appellants failed to discharge this burden, noting that the marks had become distinctive through extensive use by the respondent.

Conclusion:
The Supreme Court dismissed the appeals, affirming the Division Bench's decision to uphold the registration of the trade marks '50' and 'Fifty'. The Court found that the marks were distinctive at the commencement of the proceedings, there was no evidence of fraud, and the respondent had a bona fide intention to use the marks. The appeals were dismissed with costs, and the registration of the trade marks was deemed valid.

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