1953 (5) TMI 13 - SC - Indian Laws

Whether the judgment of Mr. Justice Shah was subject to appeal under clause 15 of the Letters Patent of the Bombay High Court? Whether Mr. Justice Shah was right in interfering with the discretion exercised by the Registrar in refusing registration of the appellants mark? Held that - So far as the present case is concerned the goods sold under the respondents trade mark are well-known and are commonly asked for as II Eagley or Eagle , and the particular feature of the trade mark of the respondents by which the goods are identified and which is associated in the mind of the purchaser is the representation of an Eagle appearing in the trade mark. If the trade mark conveys the idea of an Eagle and if an unwary purchaser is likely to accept the goods of the appellants as answering the requisition for Eagle goods, then undoubtedly the appellants trade mark is one which would be likely to deceive or cause confusion. It is quite clear that the onus in a passing off action rests on the plaintiff to prove whether there is likelihood of the defendant s goods being passed off as the goods of the plaintiff. It was not denied that the general get up of the appellants trade mark is different from the general get up of the respondents trade mark. That being so, it was held by the Madras High Court in the passing off action that on the meager material placed on record by the plaintiffs they had failed to prove that the defendants goods could be passed off as the goods of the plaintiffs. The considerations relevant in a passing off action are somewhat different than they are on an application made for registration of a mark under the Trade Marks Act and that being so the decision of the Madras High Court referred to above could not be considered as relevant on the questions that the Registrar had to decide under the provisions of the Act. Appeal dismissed.

Issues Involved:
1. Appealability of Mr. Justice Shah's judgment under clause 15 of the Letters Patent of the Bombay High Court.
2. Validity of Mr. Justice Shah's interference with the Registrar's discretion in refusing the registration of the appellants' trade mark.

Issue-wise Detailed Analysis:

1. Appealability of Mr. Justice Shah's Judgment:
The primary issue was whether the judgment of Mr. Justice Shah was subject to appeal under clause 15 of the Letters Patent of the Bombay High Court. The Supreme Court concluded that Mr. Justice Shah's decision constituted a judgment within the meaning of clause 15, making it appealable. The Court cited section 76 of the Trade Marks Act, which allows appeals to the High Court from the Registrar's decisions, and noted that the High Court's practice and procedure apply to such appeals. The Court referenced Viscount Haldane L.C.'s principle from National Telephone Co., Ltd. v. Postmaster-General, which states that when a statute refers a question to an established court, the ordinary procedures and rights of appeal of that court apply. The Court also cited R.M.A.R.A. Adaikappa Chettiar v. Ra. Chandrasekhara Thevar and Secretary of State for India v. Chellikani Rama Rao to support the view that the High Court's jurisdiction includes appeals under special statutes unless explicitly excluded.

The Court rejected the argument that section 108 of the Government of India Act, 1915, limited the High Court's power to make rules only for jurisdiction existing at the time of the Act's enactment. The Court emphasized that the power conferred by section 108 was broad and included jurisdiction conferred by subsequent legislation. The Court also dismissed the objection that the repeal of section 108 and its replacement by section 223 of the Government of India Act, 1935, and article 225 of the Constitution of India affected the High Court's power. The Court held that the power to make rules for appellate jurisdiction continued under these provisions.

The Court disagreed with the Calcutta High Court's decision in Indian Electric Works v. Registrar of Trade Marks, which had taken a narrower view of section 108. The Supreme Court concluded that the High Court's appellate jurisdiction under clause 15 of the Letters Patent included appeals under the Trade Marks Act and that the High Court was correct in overruling the preliminary objection regarding the appeal's competency.

2. Validity of Mr. Justice Shah's Interference:
The second issue was whether Mr. Justice Shah was right in interfering with the Registrar's discretion in refusing the registration of the appellants' trade mark. The Supreme Court agreed with the High Court's decision to restore the Registrar's order. The Court emphasized that under section 8 of the Trade Marks Act, a trade mark likely to deceive or cause confusion cannot be registered. The burden of proving that a trade mark is not likely to deceive or cause confusion lies with the applicant.

The Court noted that the appellants' trade mark, featuring a bird described as a "vulture" but resembling an eagle, was likely to deceive or cause confusion among average purchasers who might associate it with the respondents' well-known "Eagle" brand. The Court held that the appellants' attempt to rebrand the eagle as a vulture was misleading and likely to cause confusion. The Court distinguished the considerations in a passing off action from those in a trade mark registration application, noting that the onus in a passing off action is on the plaintiff to prove the likelihood of deception, whereas in a trade mark registration, the applicant must prove the absence of such likelihood.

The Supreme Court concluded that Mr. Justice Shah erred in interfering with the Registrar's discretion and that the appellants failed to discharge their burden of proof. Consequently, the appeal was dismissed with costs.

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