1961 (4) TMI 131 - HC - Indian Laws

Summary

Issues Involved:
1. Proprietorship of the mark "Monarch".
2. Likelihood of deception or confusion under Section 11(a) of the Trade and Merchandise Marks Act, 1958.
3. Bona fide adoption and use of the mark by the respondent company.
4. Whether the respondent company was entitled to apply for registration of the mark.
5. Whether the mark "Monarch" should be refused registration under Section 11(e) of the Act.
6. Discretion of the Registrar under Section 18 of the Act.
7. Concurrent registration under Section 12(3) of the Act.

Detailed Analysis:

1. Proprietorship of the Mark "Monarch":
The petitioner corporation claimed proprietorship of the mark "Monarch" based on its prior use and registration in various countries, including the United States, Great Britain, and Canada. The evidence showed that the petitioner had imported products bearing the mark "Monarch" into India as early as 1935, with subsequent imports between 1947-1950 and 1955-1957. The court held that the petitioner corporation was the first to introduce and use the mark "Monarch" in connection with its food products in India and thus was entitled to claim proprietorship of the mark.

2. Likelihood of Deception or Confusion:
The petitioner corporation contended that the use of the mark "Monarch" by the respondent company would likely deceive or cause confusion among the public. The court agreed with the Joint Registrar of Trade Marks that the evidence did not establish the necessary degree of reputation of the mark "Monarch" in India to support this contention. The imports and sales of the petitioner corporation's products were limited to Bombay, and there was no evidence of sales in other parts of the country.

3. Bona Fide Adoption and Use of the Mark by the Respondent Company:
The respondent company claimed to have adopted the mark "Monarch" in 1951. The court found that the respondent company's evidence, particularly the testimony of Mr. Audsley, was not convincing. The court noted inconsistencies in Mr. Audsley's testimony and found that the respondent company had likely copied the petitioner corporation's mark and shield device used on its tomato preparations. The court held that the respondent company did not adopt the mark "Monarch" bona fide.

4. Entitlement to Apply for Registration:
The respondent company described itself as the sole distributor on the labels of its products, with Kipre and Co. Private Ltd. shown as the manufacturer. The court held that the respondent company could not be considered the proprietor of the mark "Monarch" based on the label as it stood at the date of the application. The court found that the respondent company did not use the mark as a proprietor and thus was not entitled to apply for its registration.

5. Refusal of Registration under Section 11(e):
The court found that the respondent company had copied the petitioner corporation's mark "Monarch" and the shield device. The court held that the respondent company's mark was disentitled to protection under Section 11(e) of the Act and should not be registered.

6. Discretion of the Registrar under Section 18:
The court held that the Joint Registrar of Trade Marks had erred in his approach by not properly considering the requirements of Section 18 of the Act. The court found that the respondent company was not entitled to make the application for registration as it was not the proprietor of the mark "Monarch" and had not used it as such.

7. Concurrent Registration under Section 12(3):
The court declined to exercise its discretion under Section 12(3) of the Act to allow concurrent registration of the mark "Monarch" in favor of both the petitioner corporation and the respondent company. The court found that the respondent company had not adopted the mark innocently and was not entitled to concurrent registration.

Conclusion:
The petition was allowed, and the order passed by the Joint Registrar of Trade Marks directing the respondent company's applications for registration of the mark "Monarch" to proceed to registration was set aside. The respondent company was ordered to pay the costs of the petitioner corporation and the Registrar of Trade Marks.