9911796707
TMI Blog1961 (4) TMI 131X X X X Extracts X X X X X X X X Extracts X X X X ..... d vegetables; jellies and jams, preserves and pickles, " all being goods included in Class 29: Application No. 178158 was in respect of "sauces, spices, cury powders, papads (being cereal preparations) and condiments" and Application No. 178159 was in respect of "syrups (not included in other classes ) and other preparations for making beverages; and other non-alcoholic drinks:" These applications were advertised as accepted for registration in the Trade Mark Journal No. 199 dated 16th September , 1957. (3) The petitioner corporation filed separate notices of opposition to each of these applications, being opposition Nos. 3959, 3958 and 3960 respectively. The grounds of opposition set out in those notices were the same and they were as follows: "a) That by reason of the use of the word "Monarch" by the opponents (the petitioners) prior to 1951, the use of the said was likely to deceive or cause confusion, and, therefore, its registration would be contrary to the provisions of Section II (a) of the Trade and Merchandise Marks Act, 1958: b) That the adoption and use of proposed mark by the respondents was not bona fide. c) That the responde ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... st this order that the petitioner corporation has filed the present petition by way of appeal to this Court. Before setting out contentions raised on behalf of the petitioner corporation at the hearing of this petition, it is necessary to relate briefly the circumstances which led to the present proceedings. (7) It appears that some time in 1852 the petitioner corporation's predecessors-in-title adopted the word "Monarch" as their trade mark in respect of canned, bottled and packaged food products and marketed their products under that trade mark ever since that date continuously and extensively. It further appears that the trade mark "Monarch" has been registered in the name of the petitioner corporation and its associates in about 20 countries of the world including the United States of America, Great Britain and Canada in respect of, inter alia, canned, bottled and packaged food products. The petitioner corporation contended that the trade mark "Monarch" was thus exclusively associated by the trade and the public world over with the goods emanating from itself. Besides, it was the case of the petitioner corporation that its food products under ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 18 of the Trade and Merchandise Marks Act, 1958, the Registrar should have, in exercise of his discretion, refused to order registration of that mark in favour of, and in the name of, the respondent company. It is true that this contention was not raised before the Joint Registrar of Trade Marks. That the respondent company was not the proprietor of the mark "Monarch" was urged by the petitioner corporation before the Joint Registrar of trade Marks, not because the petitioner corporation had already been the proprietor of that mark in this country by reason of imports of its products long prior to 1951, but in view of the fact that the name of Messrs. Kipre and Co. Private Limited appeared on the labels affixed on the products marketed by the respondent company suggesting that Messrs. Kipre and Co. Private Limited. were the proprietors of the mark and not the respondent company. This contention was also raised by Mr. Shavaksha before me and I will deal with it as well in course of my judgment, but so far as the first contention raised by Mr. Shavaksha is concerned, although it was not taken before the Joint Registrar of Trade Marks, that such a contention could be raised ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... before and after the second world war. Imports after the second world war were resumed some time in 1947 until about 1950 when restriction were reimposed. Although imports virtually stopped for some years after 1950, the goods of the opponents (petitioner corporation) bearing the trade mark "Monarch" which were already imported between 1947 and 1950 continued to be in the market till long thereafter. It was possibly for these goods to remain in the market so long, as the quality of these goods remain unaffected for a number of years." Mr. Shavaksha also invited my attention to the evidence of this Rustom in course of which the witness produced an invoice book in which details of the original invoices were entered and showed entries under the date 1st July 1947 giving the particulars of the invoice relating to foodstuffs bearing the mark "Monarch". The witness also produced his bank pass book in which under date 28th July 1947 an amount of ₹ 4328/- being the rupee equivalent of 1895 dollars which was the value of the aforesaid goods as well as some other goods, was shown to have been paid, Mr. S.B. Shah, the learned counsel for the respondent company, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and marked Ex.A is a photo copy of an invoice dated 30-7-1949 and Ex. B the original bill of lading in respect of certain consignments of "Monarch" food-stuff's imported through my firm into India." The invoice which was annexed to the affidavit shows that the goods mentioned therein bearing the mark "Monarch" were sold by Reid Murdoch of Chicago to Amersia Associates, Inc. of California as agents for Messrs. S.C.Cambatta and Co. The value of the goods shown in the invoice is 479 dollars 50 cents exclusive of costs of wood boxes and straping, ocean freight and other charges. The Bill of Lading is also annexed to the affidavit and it shows Messrs. Reid Murdoch as the shippers and "order of Reid Murdoch" as the consignee. It also shows that Arrival Notice was to be addressed to Amersia Assoc. C/o S.C.Cambatta and Co. Cambatta Bldg., 42, Queen's Road, Fort Bombay India. In the column headed "leading marks and numbers" it is stated as follows : - "Amersia Assoc. to be held in bond c/o S.C.Cambata and Co. Bombay, India, Made in the U.S.A." Now, these were apparently the marks on the packages containing the goods and on t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s caterers, it is reasonable to hold that the several types of food products imported by that company were intended for sale to the members of the public and were in fact sold to them in due course of business. (13) Mr. Shavaksha then invited my attention to Mr. Birdi's affidavit for the purpose of showing a large amount of imports of the petitioner corporation's products in this country during the short period between 11th April, 1955 and 1st January, 1957 amounting to ...13,283,09 as against the respondent company's sales of its products amounting to ₹ 1,97,765/- between the period 30-6-52 and 31-12-56 and contended that on a proper analysis of the sales by the petitioner corporation and those by the respondent company and making allowance for the fact as admitted by Mr. Audsley that the sales by the respondent company also included the sales of products for and on behalf of Kipre and Co. Private Ltd., the petitioner corporation's reputation in the Indian market in respect of the goods manufactured by it and marketed under the mark "Monarch" was far greater than that in respect of was on the basis of this affidavit that Mr. Shavaksha contended tha ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ome of the provisions of the Trade and Merchandise Marks Act, 1958 bearing on the questions that I have to decide. The expressions "mark" is defined in clause (j) of Section 2 of the Act as including a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof. The expression 'trade mark" is defined in clause (v) of section 2 and it means: - (I) in relation to the other provisions of the Act, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark registered as such under the provisions of Chapter VIII. Then section 9 prescribes the kinds of trade marks which may be registered in Parts A and B of the register of trade marks which is provided for in section 6 of the Act. This section provides as follows:- "(I) A trade mark shall not be registered in Part A of the register unless it contains or consists of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... says:- "A mark - (a) the use of which would be likely to deceive or cause confusion; or (b) the use of which would be contrary to any law for the time being in force; or (c) which comprises or contains scandalous or obscene matter; or (d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or (e) which would otherwise be disentitled to protection in a court; shall not be registered as trade mark". It may be mentioned here that one of the contentions raised by Mr. Shavaksha, as stated in the earlier part of this judgment, falls under clause(a) of this section. There is another contention which Mr. Shavaksha has raised under clause(e) of this section which I will set out and deal with hereafter. The next important provision of the Act to be noted in connection with this case is contained in section 18 of the Act which deals with registration of trade marks. That section runs as follows: "(I) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed mann ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ed; but, having read carefully the decision of the Assistant Registrar in this case, I am satisfied that the case is one in which I ought to interfere." I respectfully agree with these observations of the learned Judge and it will be my care and anxiety to see that I do not interfere with the decision of the Joint Registrar of Trade Marks in this case except upon any such grounds as are mentioned by the learned Judge in the passage quoted above. (17) Now, coming to the contention proper raised by the counsel on either side, it may be observed, to start with, that trade mark cases used to arise quite often in the United Kingdom even before the Act of 1875 was passed. Those cases generally related to infringement of trade marks and passing off. In the absence of any statutory law prior to 1875, the principles governing infringement cases were laid down by the Courts of Chancery and it was on the basis of those principles that the statutes relating to trade marks were enacted by the British Parliament. In Bow v. Hart, (1905) I K.B. 592, Lord Justice Romer, while dealing with the question as to whether any new right of property was conferred by statute on the owner of a trade ma ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... be entitled to the rights which were in the first instance conferred upon him by the courts of Chancery and then by the Statute. While considering this question, I do not think that, but for the contention urged by Mr. Shah and Mr. Shastri, it should be really necessary to consider the question as to whether there can or there cannot be a property in a trade mark. In Collins and Co. vs. Brown, (1857) 3 K. and J. 423 (426), V.C., Page-Wood observed: "It is now settled law that there is no property whatever in a trade mark, but that a person may acquire a right of using a particular mark for articles which he has manufactured to the exclusion of everybody else." In Hall v. Barrows, (1862) 32 LJ Ch 548, however, Sir John Romilly expressed his opinion on this point as follows: "It is clear from a variety of decided cases, that a manufacturer, who has originally stamped his goods with a particular brand, has a property in his mark at law, and can sustain an action for damages for the use of it by another. It is also clear that Courts of Equity will restrain the use of it by another person." The opinion thus expressed by Sir John Romilly was consistently accepted ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ull, for, if the name of the manufacturer were a common one, it would be difficult for him to point out to the public what goods were or were not manufactured by him". Citing the above quotation from the judgment of Sir John Romily, Levinge, J. of the High Court of Fort William in Bengal in an action for infringement of a trade mark in Ewing and Co. v. Grant, Smith and Co., (1864) 2 Hyde's Rep 185, observed (at page 189) as follows : "I consider the law would recognize no property in the fanciful creation of a mark or ticket intended to be used as a trade mark, and not followed up a user; but that, after the use of an original mark on the manufacturer's goods in a market, no matter for how short a time, a property is acquired in the trade mark sufficient to disentitle any person to pirate it with impunity and this property would continue until it has been proved by evidence that the proprietor has abandoned it. Once having established by evidence a distinct and sole use of the mark, no one else has a right to put the same mark on his goods, and thus to represent them to have been manufactured by the person who originally used that petitioner mark." In this ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on of the phrase "a trade mark in use" before 1875. On the assumption that Nicholson and Sons Ltd., had failed to establish that the triangle mark had become known and recognized by the public concerned as a whole as being their trade mark. Lord Justice Lawrence after reviewing several authorities observed (at page 251 ) as follows : "Be that as it may, however, I am clearly of opinion that no evidence of recognition by the public is required in order to prove that a distinctive mark was in use as a trade mark before 1875. What is required for that purpose is proof that the mark before that date was in fact used as a trade mark, that is, was used by the trader in his business upon or in connection with his goods, and it is not necessary to prove either the length of the user or the extent of the trade. In other words, the character and not the length or extend words., the character and no the length or extent of user is the only thing that has to be established. ever since Lord Cottenham in Millington v. Fox, (1838) 3 M and Cr. 338, decided that fraud was not an essential ingredient in order to obtain an injunction to restrain infringement of a trade mark, it was re ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... be the proprietor thereof. According to him, a trade mark is a part and parcel of the goodwill of a trader which is generally built upon the reputation which the trade mark acquires by long user thereof in connection with or on the goods to which it is attached, and a trader can have a property in this goodwill, but not in any trade mark forming part thereof. In the alternative, it was contended by Mr. Shah that property in a trade-mark could be acquired only by such long user thereof as would associate it in the minds of the public with the goods of the person using it. In support of these contentions, Mr. Shah referred me to (1864) 4 De G.J. and Sm. 380 (384), to which I have already referred. The observations of Lord Chancellor Westbury in that case on which Mr. Shah relied and which I have quoted above, do not in my opinion, support either of the contentions raised by Mr. Shah, because, it has been clearly observed by the Lord Chancellor that he was not in that case driven to the necessity of determining when for the first time property might be said to be established in a trade mark. The Lord Chancellor described the essential ingredients for constituting an infringement of t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... authorities say property in the mark, name or get-up improperly used by the defendant. Others say, property in the business or goodwill likely to be injured by the misrepresentation. Lord Herchell in Reddaway v. Banham, 1896 AC 199 expressly dissents from the former view; and if the right invaded is a right of property at all, there are, I think, strong reasons for preferring the latter view. In the first place, cases of misrepresentation by the use of a mark, name, or get-up do not exhaust all possible cases of misrepresentation. If A says falsely, "These goods I am selling are B's goods." there is no mark, name or get-up infringed unless it be B's name, and if he falsely says, "These are B's goods of a particular quality," where the goods are in fact B's goods, there is no name that is infringed at all. Further, it is extremely difficult to see how a man can be said to have property in descriptive words such as "Camel Hair" in the case of (1896) AC 199 where every trader is entitled to use the words, provided only he uses them in such a way as not to be calculated to deceive even in the case of what are sometimes referred to as Commo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ght of property, and would grant an injunction for its protection quite irrespectively of the state of mind of the defendant. Common law hesitated as to the true ground of action for passing-off, and adopted the view that fraud was an essential ingredient of the tort. Eventually the equity view prevailed, and was, in the case of trade marks, endorsed by the legislature, which has, by a series of Acts,. culminating in the Trade Marks Act, 1938, established the principle of registration." In support of the statement "Eventually the equity view prevailed," the learned Author, cites the observation of Lord Cairns in Singer Machine Manufacturers v. Wilson, (1877) 3 AC 376 at p. 391 and those of Lord Parker in (1915) 84 LJ Ch 449 equivalent to (1915) 32 RPC 273, quoted above. Accordingly, in my opinion, the aforesaid observations of Lord Parker do not lend any support to the contention of Mr. Shah that the view held by the Courts in England, that there could be a property in a trade mark the infringement whereof gave rise to an action for injunction, had undergone a change, nor do they support his contention that right to the property in a trade mark could not be acquired ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... expresses itself thus: "Where each of several persons claims to be registered as proprietor of the same Trade Mark the Comptroller may refuse to register any of them until their rights have been determined according to law, and the Comptroller may himself submit or require the claimants to submit their rights to the Court." Now, the meaning of that Sections is, I think, clear in itself. Of course if one person wanted to register a Trade Mark who had been using it, and another, person came and said "I want to register it as well, but I have not been using it" that would be a clear case- it would show that there was a right in the one and not in the other. But in the case which I have mentioned, where more than one had in the past been using a Trade Mark, there were rules settled by decisions to this effect, that up to the number of three there would be registration of persons who had bona fide used the same mark, but if more than three applied and said they had used the mark, then the mark was really such common property in the trade that it was not registrable at all. The import of all this is, I think, that the true meaning of a Trade Mark is the association ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... large quantity that in the eye of the public the mark came to be associated with those goods. It may be observed that Mr. Shah did not rely upon these observations for the purpose of supporting his contention that there could never be a property in a trade mark, but to support his other contention that property in a trade mark could only be acquired after long user thereof. I am afraid, the aforesaid observations of the Lord President do not lend any support to the contention so boldly stated by Mr. Shah. It was only in connection with the question as to when a trade mark could be said to be common property so as to enable a person alleging the trade mark to be common property to contend that the mark which was registered should never have been registered, that the Lord President very rightly, with respect, explained what property in such a mark would mean. This is evident from the last part of the aforesaid observations of the Lord President in which he said that if a mark was allowed to be on the Register all the time that the mark in that case had been, it was not too much to say that it never ought to have been there. This onus could only be discharged by the evidence of severa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... subsequent statutes did nothing more than to embody the rights in relation to trade marks which were already laid down by the Courts of Equity. As a matter of fact, the statute enabled a person to have registered a mark not only which he had been using but also a mark which he proposed to use. The latter type of mark would evidently refer to a distinctive mark, a mark which does not directly describe the nature or quality of the goods to which it is attached. In cases of such marks, whereas the Courts of Equity did require some slight user before the proprietor thereof could institute an action for infringement thereof, the statute enabled the registration of such mark without any user at all, because such mark being distinctive per se it was not necessary for the person applying for its registration to show that mark had acquired a reputation in the market, so that it could be associated only with his goods and of nobody else. Even so far as this country is concerned, the Trade Marks Act of 1940 does not seem to have made any change in the legal rights of the owner of a trade mark as established by the Courts of Chancery in England. In In re Century Spinning and Manufacturing Co. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. As between two competitors who are each desirous of adopting such a mark, "it is, to use familiar language, entirely a question of who gets there first." Gaw Kan Lye v. Saw Kyone Saing, AIR 1939 Rang 343 (FB). Registration under the statute does not confer any new right to the mark claimed or any greater right than what already existed at common law and at equity without registration. It does, however, facilitate a remedy which may be enforced and obtained throughout the State and it established the record of facts affecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration. (28) Going back to t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nd evidence is shown to have extensive sales of its food products in many countries of the world under the mark "Monarch" which is also registered as a trade mark in several of these countries, did import its food products into this country under the mark "Monarch" for the first time in 1947 as deposed to by Rustom and evidenced by the entries in his invoice book and also in 1949 as stated by Cambatta in his affidavit and evidenced by the invoice and bill of lading produced by him. Admittedly, the respondent company had not used this mark "Monarch" at any time prior to the dates of these two consignments. Accordingly, I hold that the petitioner corporation was the first to introduce and use the mark "Monarch" in connection with and on its food products in this country and that, therefore, it was entitled to claim the mark "Monarch" as proprietor thereof. That these imports were not sporadic or experimental or casual is supported by the fact that after a lapse of about five years, further products were imported into this country bearing the mark "Monarch" right from April, 1955, atleast to the date of the application made b ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ers, its products had acquired sufficient reputation in the public in this country and that, therefore, the use of the mark by the respondent company was likely to deceive or cause confusion as contemplated by clause(a) of S.11 of the Act. Accordingly, he submitted that the mark "Monarch" should not be registered as a trade mark on the applications made by the respondent company. This question was raised and discussed before the Joint Registrar of Trade Mark who held that the evidence as had been adduced by the petitioner corporation was deficient and inadequate and mostly unreliable and did not establish the necessary degree of reputation of the mark "Monarch" in India on the relevant dates and that therefore, the objection raised by the petitioner corporation under Section 11(a) of the Act was not enable. I agree with the Joint Registrar of Trade Marks with his finding on this question as a whole even after taking into account the fairly large imports of the petitioner corporation food products into this country between 11th April 1955 and 31st January, 1957. As has been rightly pointed out by the Joint Registrar of Trade Marks, all these imports were made by ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t because in one such case the Joint Registrar of Trade Marks could find the imports of the petitioner corporation's food products not having been made strictly for commercial purposes, it is surprising that it should have led him to an inference that in imports of these products by other firms and companies mentioned in that list, were intended for private purposes of the members and staff of those firms and companies are known to be dealing in provision stores on a fairly large scale. Taking into account, however, the imports of the petitioner corporation's products made by the several firms and companies mentioned in that list, it is difficult to come to the conclusion that during the short period of such imports and with the limited sales of such products in this city, the petitioner corporation can be said to have acquired such a reputation among the members of the public with regard to its mark "Monarch" that that mark could be associated only with the food products of the petitioner corporation. For the purpose of S.11(a), it is necessary that the mark should have attained such reputation among the members of the public as would lead them to associate the m ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the registration thereof. According to this provision, not only a person should claim to be the proprietor of a trade mark but he should prove that he had used it as such proprietor on his goods. Then turning to the label as it stood at the date of the application, two names appeared on the label, one of Kipre and Co. and the other of the respondent company. If these two names had stood by themselves without any further description of either of them, it could be said that both Kipre and Co. and the respondent company were jointly the owners of the mark as well as the owners of the goods to which the label was affixed. But, that is not the case. The respondent company is described as the sole distributors on the label. The reasonable inference that could be drawn from this description surely is that the goods were the property of Kipre and Co. and so also the mark. If the respondent company was really the proprietor of the mark and also the owner of the goods one would expect some such words as "Manufactured by Kipre and Co. for Brandon and Co., Private Ltd." In the absence of any such words, a person buying any of these goods on reading the label would naturally believe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t to restrain an infringement if his name never appears on the goods and if nobody knows who is true owner of the mark or the true supplier of the goods. I do not suppose that one person in a hundred knows who is the owner of one of the well-known tobacco brands. If you asked them they would very often be quite astonished to hear that it was not (I will say) Wills' or Player's who owned the goods associated with those names. Therefore, the statement has to be taken with this enlarged meaning, that the phrase "into the belief that they are buying the plaintiff's goods" ought to be enlarged so as to mean "that they are buying the goods of some person, whether or not they know him, he being a person whose goods they are by virtue of manufacture, selection, certification, dealing with or offering for sale". so enlarged I think the test would be fairly satisfactory". Mr. Shah also invited my attention to J. Defries and Sons Ltd. ad Helios Mfg. Co. vs. Electric Ordnance Accessories Co. ltd. (1906) 23 R.P.C. 341. That also was a passing off action arising out of a trade name "Stewart Arc Lamps". The plaintiffs in that case were the American ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he products manufactured by Kipre and Co. Private Ltd,. It is true that Kipre and Co. have not come forward to claim any proprietary right in the trade mark. That however, in my opinion does not make any difference to the true position in law, because, after all it is the members of the public who are going to buy these goods and they are entitled to know from what has been stated on the label as to whose goods they are buying. They may not know the manufacturer personally. In this case, they may not have known any of the directors or managers of Kipre and Co. Private Ltd., yet they did know on account of the name of Kipre and Co., appearing on the label that under the mark "Monarch" they were buying Kipre and Co.'s goods and that the respondent company was only the sole distributor of those goods having no property of its own in the mark attached to them. It is thus difficult to conceive that at the date of the applications for registration of the mark, the respondent company could be said to have used the mark as proprietor on any of the goods which it was selling as sole distributors. If I am right in this conclusion, then the respondent company despite the agreeme ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sealed that it cannot be opened without destroying the licence number and the special identification mark of the manufacturer to be displayed on the top or neck of the bottle. The licence number of the manufacturer shall also be exhibited prominently on the side label on such bottle; (c) When a tin, barrel or other container is used in packing any fruit product, the licence number of the manufacturer shall either be exhibited prominently on the side label of such tin or be embossed prominently thereon".and thereafter he proceeded to say in the same paragraph as follows : "Thus, it will be seen on every container in which any food products are packed, the name and licence Number of the manufacturer had to be exhibited prominently. This explains why the name of Kipre and Co. and their licence number had to be printed on the labels". I am afraid, the Joint Registrar of Trade Marks was in error in saying that the name of the manufacturer was also to be exhibited on the container in which any food products were packed. All that clause (b) requires is that when a bottle is used in packing any fruit products, it shall be so sealed that it cannot be opened without destro ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Marks to the question was entirely erroneous. What he had really to consider under the provisions of section 18 was as to whether the respondent company who claimed to be the proprietor of the mark "Monarch" had at all itself used it as a mark on any of the products sold by it. This would apparently be a question of fact to be decided on a consideration of the use of the mark in question itself. As I have stated above, the label as it stood at the date of the application showed the names both of Kipre and Co. and the respondent company and the respondent company was described as the sole distributors. Prima facie, the mark could not belong to the respondent company and even if it did by virtue of the agreement Ex. F, it could not be said to have been used by it. Accordingly, in my opinion, the respondent company was not entitled to make the applications, as it has done, for the purpose of getting the mark "Monarch" registered in its name as proprietor thereof. (34) While dissenting from the Joint Registrar of Trade Marks on this question, I am conscious of the principles which I have already referred to as to jurisdiction of the Court of Appeal while dealing wi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... now about the petitioner corporation's mark "Monarch" at any time prior to 1951 when it decided to adopt the word "Monarch" for its own products. He urged that there were only two consignments of the petitioner corporation's products imported into this country which could be held to have been proved prior to 1951, that the consignments were very small in size and that, therefore, there was no possibility at all for the respondent company or any of its officers to have ever come to know about the adoption and use of the mark "Monarch" by the petitioner corporation on its goods in this country. The Joint Registrar of Trade Marks has dealt with this question in paragraphs 20 to 26 of his judgment. In paragraph 21 of his judgment he has stated as follows: - "Now, it is fairly clear from the evidence that prior to 1950, the opponents, mark had not become so widely well known or so popular as to be likely to be copied by others. Admittedly, there were no imports after 1950 (till about 1955), and, prior to 1950 the imports of the opponents' goods were neither considerable nor continuous. There were only a few sporadic imports and they were o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e opponents' mark, there were many devices other than a shield, and hence, it cannot be said that the device of a shield was the exclusive monopoly of the opponents." In conclusion, he stated in the same paragraph:- "On issue 2 I find that the applicants did not copy the opponents' mark and that they acted honestly and bona fide when, in 1950, they adopted the word "Monarch" as their mark for their goods." Before dealing with the cases which were cited by Mr. Shavaksha in course of his arguments in support of his contention that the respondent company having copied the petitioner corporation's mark "Monarch" should have been held disentitled to any protection in law, I must point out that the Joint Registrar of Trade Marks has failed to take into account while considering issue No. 2 before him a very important circumstance, namely, that the products of the petitioner corporation were being widely advertised in leading American Magazines such as "Life" and that although Mr. Audsley denied the allegation in the affidavit filed by him on behalf of the respondent company that they were so advertised, he did in his evidence adm ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... The American Corporation applied for registration of the mark "Pabalate" in January, 1952, but Vitamins Ltd. (who were proprietors of the mark "Paravel" opposed the application which was withdrawn on 28th November, 1952. Thereafter on 9th December , 1952, Vitamins Ltd, filed an application to register "Pabalate" as a mark for pharmaceutical substances. The application was opposed under section 11 of the American Corporation on the ground that they had registered that word in various countries and had advertised it extensively in Medical Journals which circulated in the United Kingdom. They also contended that the Registrar should refuse registration in the exercise of his discretion. At the hearing before the Assistant-Comptroller it appeared that only one copy of a paper showing the American Corporation's mark "Pabalate" had reached the United Kingdom prior to the date of the application. On these facts, the Assistant Comptroller held that the American Corporation's mark "Pabalte" had not acquired such reputation in the United Kingdom as would enable him to find in their favour under the provisions of the Act and that the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... en the subject matter of use in trade, that it is proposed to be used by the applicant and that the applicant is claiming to be the proprietor thereof." These observations make it clear that the case before the learned Judge was one in respect of a mark which was never used in the United Kingdom before and the applicant company had proposed to use it in respect of certain pharmaceutical substances. It is also clear that the American Corporation had not imported any of its products under the mark "Pabalate" into the United Kingdom until the date of the application made by the Vitamins Ltd. Only the copy of the paper showing the American Corporation's mark "Pabalate" had reached the United Kingdom prior to the date of the application. Dealing further with the question of discretion the learned Judge proceeded to observe (at page 12) as follows :- "A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be acquired, but in all cases it is necessary that the person putting forward the application should be in possession of some proprietary right which, if questioned, can ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he "Pabalate" and yet its right to the mark as a proprietor was recognised by the Court on the strength of the advertisement of that product under that in American Journals which had some little circulation in the United Kingdom, and secondly, that in relation to products in pharmaceutical fields, it is the duty of the Court to see the products of different origins are not allowed to be sold under the same name. In the present case, the facts are really stronger. Not only that the petitioner corporation's products are widely advertised in American Magazines of common interest, which have a fairly large circulation in this country, but even these products have been imported into this country though not quite continuously. There can, therefore, be no doubt that the petitioner corporation has a right to the use of the mark "Monarch" in preference to the respondent company which sought to introduce that mark for the first time in 1951. (38) The next question that might arise so far as the facts of this case are concerned, is as to whether food products could be placed in the same category as pharmaceutical products, so that such products of different origins sh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... dom, (2) that the applicants were engaged in trading deceptively in that they adopted as their name a name similar to that of an American corporation which had a trade mark in the United Kingdom in which the name "gaines" formed a prominent part and by applying for the mark "Gro-Pup" they were attempting wrongfully to acquire the benefit of the opponents' goodwill in their trade mark. It was held by the Assistant Comptroller that in view of the extremely small amounts of dog food imported into the United Kingdom under the mark "Gro-Pup" , the opponents had failed to establish that they had acquired a reputation under that mark such as would justify a conclusion advertising of the mark, "Gro-Pup" dog food in American Periodicals which had some circulation in the United Kingdom; (2) that the conduct of the applicants in relation to the adoption of the name "Gaines" together with their attempts to register in the United Kingdom the marks "Pard", "Rival" and "Gro-Pup" being marks already in use in America, in respect of dog food, was such that the Registrar felt constrained to refuse the registration of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rectification of the Register by expunging the Mark "Naturlizet" on the ground that their Mark "Naturalizer" was so well known at the date of A.S. Ltd.'s application for registration that confusion was likely to occur from the use of the word "Naturlizet" . It was further submitted that A.S. Ltd. had copied B.S.C. Inc.'s Mark and that the Registrar should therefore exercise his discretion by ordering that the Mark be expunged. It was held by the Assistant Comptroller (A) that there having been no sales in the United Kingdom of shoes under the mark "Naturalizer" , although advertisement of such shoes had appeared in papers circulating there and was known to certain persons resident there, there would have been no ground for rejecting the mark "Naturlizet" under Section 11; and (B) that there was nothing in the evidence to show that A.S. Ltd. had copied the mark "Naturalizer", and the application for rectification was therefore refused. On appeal, it was held by Wynn-Parry, J. (1) that the Assistant Comptroller's decision under head (A) was correct; but (2) the evidence, and the similarity of the words, showed t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e expected from the petitioner corporation, there was no initial presumption of dishonesty as regards any witness and that the respondent company, too, could not prove the negative, namely, that it did not act dishonestly. According to him the respondent company could, if at all, only give reasons why in 1950 it chose the mark in question. It seems to me that in making this comment the Joint Registrar of Trade Marks has not done proper justice to the decision which he was dealing with. I fail to see why if the Brown Shoe Company's case, 1959 RPC 29 on its facts was held to be a case of res ipsa loquitur, the present case should not be so held. The very similarity of the mark "Monarch" as well as the conduct of the respondent company in adopting the shield design which was already adopted and used by the petitioner corporation in respect of tomato preparations for its similar preparations, make it impossible to treat the case as one of coincidence and to take the view that in adopting the word "Monarch" as a trade mark and the shield device for its tomato preparations, the respondent company had no regard to the petitioner corporation's mark "Monarch ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... mited to the Crawford Market. Surely, in this city there is a large number of provision stores dealing in food products of different origins. Further, it is doubtful whether any enquiry was made in the Crawford Market, because, Saha and Co. have got a large provision store near the Crawford Market and if any enquiries were made with that firm, I am sure, the respondent company could have come to know that the petitioner corporation was already using that mark on its own products. These answers, to my mind, do not carry conviction and I am not prepared to believe that the respondent company had taken any care to enquire properly in the market as to whether the mark was ever being used by any of the traders in the market or any one else either in this country or elsewhere. (41) Coming to the question of the device of the shield, Mr. Shah, the learned counsel for the respondent company, contended that the respondent company itself was not responsible for adopting it to its goods, because, Mr. Audsley in his evidence, in answer to a question as to whether there was any particular reason why the shield device for the label was adopted, stated none whatsoever. The device might have been ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ly and that the respondent company cannot take shelter under the plea that it was designed by its artist without its instructions. In the first place, as I have already stated I refuse to believe that the artist should have on his own added anything to the mark without any specific instructions by the respondent company in that behalf. Even assuming, however, that the artist did it, it was not a mere matter of coincidence or accident that he adopted precisely the device which was being used by the petitioner corporation. Further , it is significant to note that the respondent company has not been able to show that the shield device was used by it on any of its products other than tomato Ketchup. Still further, the label which has been exhibited in this case along with the bottle of Tomato Ketchup shows horizontal lines in red corresponding to the lines which are found on the American Flag, suggesting that product contained in the bottle was of American origin. Besides, the word "Ketchup" seems to have been evolved from the word "Catsup" which has been used by the petitioner corporation in respect of its tomato preparations. All these similarities cannot possible ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... not accept this contention in view of my finding that the respondent company has been guilty of having copied the mark of the petitioner corporation. The discretion under the section referred to by the two counsel can only be exercised where two or more parties unknown to each other and unaware of the mark used by each other innocently adopt and use the same mark in respect of their respective goods of the same nature. In this case, however, as I have found that the petitioner corporation was already the sole proprietor of the mark "Monarch" in respect of its food products in several countries of the world and its products were widely advertised in various American Magazines having a large circulation in different parts of the world including this country and in view of the fact that the petitioner corporation could have without importing any of its food products into his country bearing that mark applied for registration of that mark as proprietor thereof., prior to 1951 before the respondent company started using that mark, it is difficult to hold that the respondent company had started using that mark quite innocently and without any knowledge on its part about the sam ..... X X X X Extracts X X X X X X X X Extracts X X X X
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