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TMI Blog1970 (3) TMI 160X X X X Extracts X X X X X X X X Extracts X X X X ..... 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. - C.A. 1952 OF 1966 - - - Dated:- 18-3-1970 - J.M. SHELAT, AND C.A. VAIDYIALINGAM, JJ JUDGMENT These two appeals, under certificate, are directed against the common judgment and order of the High Court of Punjab, dated February 25, 1965, passed in four Letters Patent appeals filed by the two appellant-companies and the respondent company against the judgment and order of a learned Single Judge of the High Court. The said appeals were the outcome of two applications filed in the High Court under s. 111 of the Trade and Merchandise Marks Act; XLIII of 1958 (referred to hereinafter as the Act) for rectification of the register in respect of two registered Trade Marks, Nos. 161543 and 161544, registered on November 20, 1953 in respect of cycle bells manufactured by the respondent company. Re ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hem in the market and continued to be sold right upto 1952 when import of foreign manufactured cycle bells was prohibited, and that despite such prohibition those cycle bells were being sold in the market as late as 1958, presumably from old stocks still lingering in the market, though not from any new imported stock. The learned Single Judge also found that there was no evidence of the original registration having been fraudulently obtained by the respondent-company, that there was no averment by the appellant companies that Lucas or any other concern had obtained registration of any mark either of the numeral '50' or the figure 'Fifty', and that therefore, cl. (a) of S. 32 did not apply. He further found that cl. (b) of S. 32 also did not apply. He held, however, that the trade mark, namely, the numeral '50' was not at the commencement of the proceedings distinctive of the goods of the respondent company as (a) numerals are prima facie not distinctive except in the case of textile goods as recognised by Part HI of the Trade and Merchandise Marks Rules, 1959, and (b) that the numeral '50' was being commonly used by several dealers and manufacturers subsequent to the registration t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... om those suits, that therefore, the situation in respect of s. 32(c) had to be assessed in the light of the state of affairs existing in 1959. According to the Division Bench, the earliest use of the-mark '50' by any concern other than Lucas and other foreign manufacturers was in 1953 by M/s Indian Union Manufacturers Ltd. The respondent-company, however, had filed a suit against that company in 1954 which resulted in a compromise dated February 5, 1955 whereunder the said company recognised the exclusive right of the respondent-company to the use of the word% 'Fifty', 'Thirty' and the numerals '50' and '30', while the respondent-company recognised the right of the said company to the exclusive use of the words and numerals 'Thirty one', 'Forty one' and 'Fifty one' and '31', '41' and '51', that the respondent-company had also in 1956 similarly taken action against K. R. Berry Co. of Jullundur for use by that company of the mark 'Five 50'. The suit, however, had to be withdrawn in 1958 on account of lack of jurisdiction of the Banaras court where it was filed that though no fresh suit was filed against that company, the respondent-company had opposed an application by that company ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rdingly, the Division Bench allowed the. respondent-company's appeals and set aside the order of the learned Single Judge cancelling the registration of its trade mark No. 161543 in respect of the numeral '50' and dismissed the appeals of the appellant companies. Mr. S. T. Desai for the appellant companies contended that the two trade marks in question were liable to cancellation on the grounds that (1) they were common and not distinctive at the date of their registration, and therefore, ought never to have been registered, (2) that in any event, the numeral '50' is prima facie not distinctive unless shown to be of such extensive use as to make it distinctive, (3) that there was clear evidence that the respondent-company had imitated the use of these marks by Lucas and other manufacturers, and that therefore, these marks would be disentitled to protection in a court of law, and (4) that the said marks were not, at the commencement of the proceedings distinctive, that is, adapted to distinguish the goods of the respondent-company. Mr. Agarwala, on the other hand,, argued that, (1) the two marks having been registered in 1953 and seven years since then having elapsed at the commence ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hing the goods. S. 1 1 prohibits certain trade marks from being registered. These are marks the use of which would be likely to deceive or cause confusion, or the use of which would be contrary to any law or which comprises or contains scandalous or obscene matters or any matter likely to hurt the religious susceptibilities of any class or section of the citizens, or "(e) which would otherwise be disentitled to protection in a court". On registration of a trade mark, the registered proprietor gets under s. 28 the exclusive right to the use of such trade marks in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of any infringement of such trade mark. Under s. 31, registration is prima facie evidence of its validity. The object of the section is obviously to facilitate proof of title by a plaintiff suing for infringement of his trade mark. He has only to produce the certificate of registra- tion of his trade mark and that would be prima facie evidence of his title. Such registration is prima facie evidence also in rectification applications under s. 56, which means that the onus of proof is on the person making such application. B ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... acts which are post-registration facts, existing at the date of the commencement of the proceedings. If the trade mark at such date is not distinctive in relation to the goods of the registered proprietor, the rule as to conclusiveness enunciated in s. 32 again would not apply. It would seem that the word 'distinctive' in cl. (c) is presumably used in the same sense in which it is defined in s. 9(3), as the definition of that expression therein commences with the words "for the purposes of this Act" and not the words "for the purposes of this section," the intention of the legislature, thus, being to give uniform meaning to that expression all throughout the Act. S. 56 deals with the power to cancel or vary registration and to rectify the register. Sub-s. 2 thereof confers a right to any person "aggrieved" by an entry made in the register without sufficient cause or by an entry wrongly remaining in the register to apply to the tribunal for expunging or varying such an entry. The expression "aggrieved person" has received liberal construction from the courts and includes a person who has, before registration, used the trade mark in question as also a person against whom an infringem ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... egistration of a trade mark, after expiry of seven years from the date of its registration shall be taken to be valid in all respects in all legal proceedings including those under s. 56, except in the three categories of cases mentioned therein. It follows, therefore, that no objection that the trade mark in question was not distinctive and therefore was not registerable under s. 9 can be entertained if such an objection is raised after seven years have lapsed since the date of its registration as in the present came, nor can an objection be entertained that no proof of distinctiveness was adduced or insisted upon at the time of the original registration. This is clear also from the fact that the three exceptions set out in s. 32 against conclusiveness as to the validity of the registration relate to, (1) fraud, (2) contravention of s. 11, and (3) absence of distinctiveness at the commencement of the proceedings in question and not at the time of registration. 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, wer ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ', that the indication, on the contrary, was that those concerns used the different nume- rals, '30', '61', '50' etc. for distinguishing one type of bell from the other manufactured by them; and (3) that about a year prior to the registration of the trade marks in question in 1953 foreign bells were prohibited from being imported. Obviously, therefore, the evidence as to purchases and sales by the dealers examined by the appellant companies related to bells which had remained unsold from out of the stock earlier imported. As regards the bells called "Gupta 50" said to have been manufactured by one of the appellant companies since 1947, no evidence was led to show either the extent of manufacture or sale between 1947 and 1953 or thereafter from which the High Court could be asked to draw any inference as to the likelihood of deception or confusion. Though there was some evidence that foreign made bells Such as Lucas "30", "50" and "61" were being sold as late as 1958, such sales must have been few and far between as they could only be from the remaining stock out of the earlier imports. Such sales could hardly be considered as evidence showing a,likelihood of confusion or deception ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... laudatory adjective in on use. It was proved that for many years it had been the practice of regiments to have their crests stamped on their mess cigrettes which were known as "Regimental Cigarettes". The appellant company, on the other hand, contended that under s. 41 of the Trade Marks Act, 1905 (equivalent to s. 32 of our Act) their trade mark could not be expunged and that s. 1 1 (equivalent also to our s. 11 ) read in conjunction with s. 41 was not relevant to the question whether or not a trade mark was registerable. The Trial Court held against the appellant company stating that if the appellant company's contention was correct, the combined effect of ss. 1 1 and 41 would be to perpetuate as distinctive a trade mark that was incapable of being distinctive and that such a contention was erroneous. On appeal, the Court of Appeal reversed the judgment and held that s. 11 was a qualification of s. 9, that ss. 1 1 and 41 must be construed together, that the more fact that a mark did not comply with the requisites of s. 9 (i.e. not being distinctive and therefore not registerable) did not bring it within s. II, that the marks did not offend against s. 11 and that under s. 41 thei ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lf of the appellant companies is, therefore, not correct. The true construction of cl. (e) is that even assuming that the trade marks in question were not distinctive and for that reason not registerable as not falling within s. 9, that fact by itself would not mean that they became disentitled to the protection in a court. That being the true import of s. 1 1 (e), the rule as to conclusiveness of the validity of registration embodied in s. 32 applies even to those cases where if full facts had been ascertained at the time of the registration that registration would not have been allowed provided of course that it does not offend against the provisions of s.11, i.e., by there being a likelihood of deception or confusion or its bring contrary to any law or containing obscene matter etc. or which would otherwise, i.e., in addition to the matters in cls.(a) to (d) in s. 1 1 be disentitled to protection in a court. Conse quently, the appellant companies cannot bring their case for cancellation of the trade marks in question under cl. (b) of s. 32. There then remains the question whether cl. (c) of s. 32 applies, i.e., that the trade marks were not at the commencement of the proceedin ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... maintain its right in them. The evidence shows that when the respondent company found in 1954 that M/s Indian Union Manufacturers Ltd., Calcutta had been inscribing the word 'Fifty' on its bells, it at once filed an infringement action. The action ended in a compromise by which the said company acknowledged the respondent company's rights in its trade marks of 'Fifty' and '50'. Again, when the attention of the respondent company was drawn to an advertisement "Five 50", it addressed a notice to the manufacturers of those- bells. The case of the respondent company was that Gupta Industrial Corporation started using the word 'Fifty' on its bells in 1958 and not in 1948 as contended by Mr. Desai. In the absence of any evidence as to the extent of manufacture and sale of those bells it would not be possible to say with any certainty that the respondent company did not come to know about it till 1958, and therefore, presumed that Gupta Corporation had started using the word 'Fifty' on its bells in that year. According To the appellant National Bell Co., it went into production only in 1957 and in 1959 the respondent company commenced action against it. A similar notice of infringement fo ..... X X X X Extracts X X X X X X X X Extracts X X X X
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