Full Judgment Text
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PETITIONER:
NATIONAL SEWING THREAD CO. LTD.
Vs.
RESPONDENT:
JAMES CHADWICK & BROS. LTD.(J.& P. COATS LTD., Assignee)REG
DATE OF JUDGMENT:
07/05/1953
BENCH:
MAHAJAN, MEHR CHAND
BENCH:
MAHAJAN, MEHR CHAND
BOSE, VIVIAN
JAGANNADHADAS, B.
CITATION:
1953 AIR 357 1953 SCR 1028
CITATOR INFO :
APL 1956 SC 202 (8)
E 1965 SC1442 (6)
R 1968 SC 384 (4,5)
RF 1986 SC1272 (88,89,94,95)
RF 1987 SC2323 (10)
R 1989 SC2113 (31)
ACT:
Trade Marks Act, 1940, ss. 8, 76-Application for
registration of trade mark -Dismissal by Registrar -Appeal
to High Court . Judgment of Single Judge --Whether
appealable to Division Bench Letters Patent (Bombay) cl.15-
Government of India Act, 1915, s. 108-Constitution of India,
1950, s. 225-Power of Registrar to reject application if
mark is likely to deceive or cause confusion Decision in
passing off action, whether conclusive.
HEADNOTE:
Section 76(l) of the Trade Marks Act, 1940, provides that
an appeal shall lie from any decision of the Registrar under
the Act or the rules made thereunder, to the High Court
having jurisdiction, but the Act did not make any provision
with regard to the procedure to be followed by the High
Court in the appeal or as to whether the order of the High
Court was appealable: Held that the High Court had to
exercise its appellate jurisdiction under s. 76 of the Act
in the same manner as it exercised its other appellate
jurisdiction, and when such jurisdiction was exercised by a
Single Judge, his judgment was appealable under el. 15 of
the Letters Patent.
National Telephone Co. v. Postmaster General ([1913] A.C.
546),R. M. A. R. A. Adaikappa Chettiar v. Ra.
chandrasekhara Thevar (74 I.A. 264), Secretary of State v.
Chellikani Rama Rao
(I...L.R. 39 Mad. 617) referred to.
The power conferred by s. 108 of the Government of India
Act, 1915, on the High Courts, of making rules for the
exercise of their jurisdiction by Single Judges or by
Division Courts could be exercised not only in respect to
such jurisdiction
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as the High Courts possessed when the Act of 1915 came into’
force; but also in respects of jurisdictions I conferred on
the High Court by subsequent legislation, e.g., s, 76 of the
Trade Marks Act.
Under the rules (if construction enunciated in s. 8 of the
General Clauses Act and s. 38 of the Interpretation Act,
which are of general application, the reference to s.108 of
the Government of India Act, 1915, in el. 15 of the Letters
Patent should, after the enactment of the Constitution of
1950, be read as reference to the corresponding provisions
of art. 225 of the Constitution.
The ambit of the power conferred on the High Courts by a.108
of the Government of India Act, 1915, is not limited by
s.106(l) of the said Act or by el. 16 of the Letters Patent
of the Calcutta High Court.
Indian Electric Works v. Registrar of Trade Marks (A.I.R.
1947 Cal. 49) overruled.
Secretary of State v. Mask & Co. (67 I.A. 222) and the Gur-
dwara Case (63 I.A. 180) distinguished.
The respondents, a company registered in England, manu-
factured sewing thread with the device of an Eagle with
outspread wings known as the "Eagle Mark" as their trade
mark, and since 1896 this thread was being sold in the
Indian markets on an extensive scale. The appellants, a
company registered in India, began in 1940 to sell sewing
thread with the device of a bird resembling an eagle with
wings fully spread out with the words "Eagle Brand" as their
mark. On the objection of the respondents the appellants
subsequently changed the name to "Vulture Brand" without
changing the mark in other respects. The respondents
instituted an action against the appellants for passing off,
but that was dismissed. The appellats subsequently applied
for registration of their trade mark but their application
was disraissed by the Registrar on-the ground that the
appellants’ mark so nearly resembled the respondents’ mark
as to be likely to deceive the public and cause confusion.
This order was reversed by a Single Judge of the High Court
of Bombay but restored on appeal by a Division Bench:
Held (i) that the judgment of the Division Bench upholding
the order of the Registrar rejecting the application, on the
ground that the mark was likely to deceive and cause
confusion, was right;
(ii) that the considerations relevant in a passing off
action are somewhat different from those which are relevant
in an application for registration of a trade mark under the
Trade Marks Act, and the earlier judgment of the High Court
in the action for passing off was not conclusive on the
matter.
JUDGMENT:
CIVIL APPELLATE JURISDICTION: Civil Appeal No. 135 of 1952.
Appeal from the Judgment and Order dated the 19th March,
1951, of the High Court of Judicature at
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Bombay in Appeal No. 95 of 1950 arising from the Order dated
the 28th August, 1950, of the said High Court exercising its
Ordinary Original Civil Jurisdiction in Civil Miscellaneous
No. 2 of 1950.
Bishan Narain (Sri Narain Andley with him) for the
appellants.
M. C. Setalvad, Attorney-General for India, and C. K.
Daphtary, Solicitor-General for India (J. B. Dadachanji,
with them) for the respondents.
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Registrar of Trade Marks in person.
1953. May 7. The Judgment of the Court was delivered by
MAHAJAN J.-This is an appeal on a certificate under section
109(c), Civil Procedure Code, from the judgment of the High
Court of Judicature at Bombay reversing the judgment of Mr.
Justice S. C. Shah in Civil Miscellaneous No. 2 of 1950 and
restoring the order of the Registrar of Trade Marks refusing
to register the appellants’ trade mark.
The two questions that were canvassed before us and that
fall for our determination are (1) whether the judgment of
Mr. Justice Shah was subject to appeal under clause 15 of
the Letters Patent of the Bombay High Court and (2) whether
Mr. Justice Shah was right in interfering with the
discretion exercised by the Registrar in refusing
registration of the appellants’ mark.
The relevant facts shortly stated are these. The appellants
are a limited liability company incorporated under the
Indian Companies Act, 1913, having their registered office
at Chidambaram, South Arcot District, in the Province of
Madras and carrying on the business of manufacturing cotton
sewing thread. The respondents are also a limited liability
company registered under the English Companies Act. They
have their registered office at Eagley Mills, Bolton,
(England) where they manufacture ’sewing thread. One of the
trade marks used by them on such thread consists of the
device of an Eagle with
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outspread wings known as "Eagle Mark". This mark was first
advertised in the Calcutta Exchange Gazette of 5th June,
1896. Since then sewing thread bearing this mark is being
regularly imported into and sold in the Indian markets on an
extensive scale.
Round about the year 1940 the appellants started selling
cotton sewing thread under a mark consisting of the device
of a bird with wings fully spread out perched on a cylinder
of cotton sewing thread, with the words " Eagle Brand " and
the -name of the appellant company printed on the mark. The
respondents objected to the mark, upon which the appellants
substituted the words " Vulture Brand " in the place of the
words " Eagle Brand". Thereafter in the year 1942 the
appellants applied to the Registrar of Trade Marks, Bombay,
for registration of their amended mark as a trade mark, in
class 23, in respect of cotton sewing thread claiming that
the mark had been in use by them since the year 1939.
Though on the objection of the respondents the appellants
had named the Eagle in their mark a " Vulture " in every
other respect the mark remained unchanged. The respondents
to redress their grievance started a passing off action in
the District Court of South Arcot against the appellants.
That action failed on the ground that the evidence offered
on their behalf was meagre and they failed in proving that
there was any probability of purchasers exercising ordinary
caution being deceived in buying the defendants’ goods under
the impression that they were the plaintiff’s goods. The
result was that the grievance of the respondents remained
unredressed.
As above stated, in 1942, the appellants made an application
to the Registrar of Trade Marks at Bombay for the
registration of their mark "Vulture Brand " under the Trade
Marks Act, 1940. The respondents gave notice of their
opposition to that application under section 15(2), Rule 30,
of the Trade Marks Act, 1940. By his order dated 2nd
September, 1949, the Registrar of Trade Marks allowed the
respondents’ opposition and rejected the application
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made by the appellants. He came to the conclusion that the
appellants’ mark so nearly resembled the mark of the
respondents as to be likely to deceive or cause confusion.
He further held that to describe the mark of the appellants
as " Vulture Brand" when the device was that of an eagle was
misleading and liable to cause confusion. The appellants
preferred an appeal against the order of the Registrar to
the High Court of Bombay as permitted by the provisions of
section 76 of the Trade Marks Act. Mr. Justice Shah allowed
the appeal, set aside the order of the Registrar and
directed the Registrar to register the mark of the
appellants as a trade mark. From the judgment of Mr.
Justice Shah an appeal was preferred by the respondents
under clause 15 of the Letters Patent of the Bombay High
Court. The appeal was allowed and the order of the
Registrar was restored with costs throughout. Hence this
appeal.
In our judgment both the questions canvassed in this appeal
admit of an easy answer in spite of a number of hurdles and
difficulties suggested during the arguments. It is not
disputed that the decision of Mr. Justice, Shah does
constitute a judgment within the meaning of clause 15 of the
Letters Patent. That being so his judgment was subject to
appeal under that clause, the material part of which
relevant to this enquiry is:-
" And We do further ordain that an appeal shall lie to the
said High Court of Judicature at Bombay from the judgment of
one Judge of the said High Court or one Judge of any
Division Court, pursuant to section 108 of the Government of
India Act."
It was said that the provisions of this clause could not be
attracted to an appeal preferred to the High Court under
section 76 of the Trade Marks Act and further that the
clause would have no application in a case, where the
judgment could not be said to have been delivered pursuant
to section 108 of the Government of India Act, 1915. Both
these objections in our opinion are not well-founded.
Section 76 (1) provides:
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"Save as otherwise expressly provided in the Act an appeal
shall lie, within the period prescribed by the Central
Government, from any decision of the Registrar under this
Act or the rules made thereunder to the High Court having
the jurisdiction."
The Trade Marks Act does not provide or lay down%’ any
procedure for the future conduct or career of that appeal in
the High Court, indeed section 77 of the Act provides that
the High Court can if it likes make rules in the matter.
Obviously after the appeal had reached the High Court it has
to be determined according to the rules of practice and
procedure of that Court and in accordance with the
provisions of the charter under which that Court is
constituted and which confers on it power in respect to the
method and manner of exercising that jurisdiction. The rule
is well settled that when a statute directs that an appeal
shall lie to a Court already established, then that appeal
must be regulated by the practice and procedure of that
Court. This rule was very succinctly stated by Viscount
Haldane L.C. in National Telephone Co., Ltd. v. Postmaster-
General in these terms:-
"When a question is stated to be referred to an established
Court without more, it, in my opinion, imports that the
ordinary incidents of the procedure of that Court are to
attach, and also that any general right of appeal from its
decision likewise attaches."
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The same view was expressed by their Lordships of the Privy
Council in R.M.A.R.A. Adaikappa Chettiar v. Ra.
Chandrasekhara Thevar (2), wherein it was said:-
"Where a legal right is in dispute and the ordinary Courts
of the country are seized of such dispute the Courts are
governed by the ordinary rules of procedure, applicable
thereto and an appeal lies if authorised by such rules,
notwithstanding that the legal right claimed arises under a
special statute which does not, in terms confer a right of
appeal."
(1) [19I3] A.C. 546. 134
(2) (1947) 74 I,A. 264,
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Again in Secretary of State for India v. Chellikani Rama Rao
(1), when dealing with the case under the Madras Forest Act
their Lordships observed as follows:--
"It was contended on behalf of the appellant that all
further proceedings in Courts in India or by way of appeal
were incompetent, these being excluded by the terms of the
statute just quoted. In their Lordships’ opinion this
objection is not well-founded. Their view is that when
proceedings of this character reach the District Court, that
Court is appealed to as one of the ordinary Courts of the
country, with regard to whose procedure, orders, and decrees
the ordinary rules of the Civil Procedure Code apply."
Though the facts of the cases laying down the above rule
were not exactly similar to the facts of the present case,
the principle enunciated therein is one of general
application and has an apposite application to the facts and
circumstances of the present case. Section 76 of the Trade
Marks Act confers a right of appeal to the High Court and
says nothing more about it. That being so, the High Court
being seized as such of the appellate jurisdiction conferred
by section 76 it has to exercise that jurisdiction in the
same manner as it exercises its other appellate jurisdiction
and when such jurisdiction is exercised by a single Judge,
his judgment becomes subject to appeal under clause 15 of
the Letters Patent there being nothing to the contrary in
the Trade Marks Act.
The objection that Mr. Justice Shah’s judgment having been
delivered on an appeal under section 76 of the Trade Marks
Act could not be said to have been delivered pursuant to
section 108 of the Government of India Act is also without
force and seems to have been based on a very narrow and
limited construction of that section and on an erroneous
view of its true intent and purpose. Section 108 of the
Government of India Act, 1915, provides :-
" Each High Court may by its own rules provide as it thinks
fit for the exercise, by one or more Judges, or by division
courts constituted by two or more Judges
(1) (1916) I.L.R. 39 Mad. 617.
1035
of the High Court, of the original and appellate juris-
diction vested in the Court."
The section is an enabling enactment and confers power on
the High Courts of making rules for the exercise of their
jurisdiction by single Judges or by division courts. The
power conferred by the section is not circumscribed in any
manner whatever and the nature of the power is such that it
had, to be conferred by the use of words of the widest
amplitude. There could be no particular purpose or object
while conferring the power in limiting it qua the
jurisdiction already possessed by the High Court, when in
the other provisions of the Government of India Act it was
contemplated that the existing jurisdiction was subject to
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the legislative power of the Governor-General and the
jurisdiction conferred on the High Court was liable to be
enlarged, modified and curtailed by the Legislature from
time to time. It is thus difficult to accept the argument
that the power vested in the High Court under subsection (1)
of section 108 was a limited one, and could only be
exercised in respect to such jurisdiction as the High Court
possessed on the date when the Act of 1915 came into force.
The words of the sub-section "vested in the court" cannot be
read as meaning "now vested in the court". It is a well-
known rule of construction that when a power is conferred by
a statute that power may be exercised from time to time when
occasion arises unless a contrary intention appears. This
rule has been given statutory recognition in section 32 of
the Interpretation Act. The purpose of the reference to
section 108 in clause 15 of the Letters Patent was to incor-
porate that power in the charter of the Court itself, and
not to make it moribund at that stage and make it rigid and
inflexible. We are therefore of the opinion that section
108 of the Government of India Act, 1915, conferred power on
the High Court which that Court could exercise from time to
time with reference to its jurisdiction whether existing at
the coming into force of the Government of India Act, 1915,
or whether conferred on it by any subsequent legislation.
1036
It was argued that simultaneously with the repeal of section
108 of the Government of India Act, 1915, and of the
enactment of its provisions in section 223 of the Government
of India Act of 1935 and later on :in article 225 of the
Constitution of India, there had not been any corresponding
amendment of clause 15 of the Letters Patent and the
reference to section 108 in clause 15 of the Letters Patent
could not therefore be taken as relating to these
provisions, and, that being so, the High Court had no power
to make rules in 1940 when the Trade Marks Act was enacted
under the repealed section and the decision of Mr. Justice
Shah therefore could not be said to have been given pursuant
to section 108. This objection also in our opinion is not
well-founded as it overlooks the fact that the power that
was conferred on the High Court by section 108 still
subsists, and it has not been affected in any manner
whatever either by the Government of India Act, 1935, or by
the new Constitution. On the other hand it has been kept
alive and reaffirmed with great vigour by these statutes.
The High Courts still enjoy the same unfettered power as
they enjoyed under section 108 of the Government of India.
Act, 1915, of making rules and providing whether an appeal
has to be heard by one Judge or more Judges or by Division
Courts consisting of two or more Judges of the High Court.
It is immaterial by what label or nomenclature that power is
described in the different statutes or in the Letters
Patent. The power is there and continues to be there and
can be exercised in the same manner as it could be exercised
when it was originally conferred. As a matter of history
the power was not conferred for the first time by section
108 of the Government of India Act, 1915. It had already
been conferred by section 13 of the Indian High Courts Act
of 1861. We are further of the opinion that the High Court
was right in the’ view that reference in clause 15 to
section 108 should be read as a reference to the
corresponding provisions of the 1935 Act and the
Constitution. The canon of construction of statutes
enunciated in section 38 of the
1037
Interpretation Act and reiterated with some modifications in
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section 8 of the General Clauses Act is one of general
application where statutes or Acts have to be construed and
there is no reasonable ground for holding that that rule of
construction should not be applied in construing the
charters of the different High Courts. These charters were
granted under statutory powers and are subject to the
legislative power of the Indian Legislature. Assuming
however, but not conceding, that strictly speaking the
provisions of the Interpretation Act and the General Clauses
Act do not for any reason apply, we see no justification for
holding that the principles of construction enunciated in
those provisions have no application for construing these
charters. For the reasons given above we hold that the High
Court was perfectly justified in overruling the preliminary
objection and in holding that an appeal was competent from
the judgment of Mr. Justice Shah under clause 15 of the
Letters Patent.
Reliance was Placed by the appellants in the High Court and
before us on the decision of the High Court of Judicature of
Calcutta in Indian Electric Works v. Registrar of Trade,
Marks(1) wherein a contrary view was expressed.
After a full consideration of the very elaborate and
exhaustive judgment delivered in that case by both the
learned Judges of the Bench that heard the appeal and with
great respect we think that that case was wrongly decided
and the decision is based on too narrow and restricted a
construction of section 108 of the Government of India Act,
1915, and that in that decision full effect has not been
given to the true intent and purpose of clause 44 of the
Letters Patent.
Both the learned Judges there took the view that the
authority given by section 108(l) of the 1915 statute to
make rules for the exercise by one or more Judges of the
Court’s appellate jurisdiction was limited to the
jurisdiction then vested in the Court by section
(1) A.I.R. 1947 Cal. 49.
1O38
106 (1) of the Act and by clause 16 of the Letters Patent.
It was held that such rules thus could not relate to
jurisdiction conferred by an Act passed after the
commencement of the 1915 statute nor to an appeal heard by
the Court pursuant to such an Act, since the jurisdiction to
hear such appeal having been conferred by the particular Act
could not be said to have been conferred upon, or vested in,
the Court by section 106(1) and by clause 16 of the Letters
Patent. This argument suffers from a two-fold defect. In
the first place it does not take into consideration the
other provisions of the Government of India Act, 1915,
particularly the provision contained in sections 65 and 72.
By section 65(1) of the Government of India Act, 1915, the
Governor-General in Legislative Council was given power to
make las for all persons, for all courts, and for all places
and things, within British India. By section 72 he was also
given power for promulgating ordinances in cases of
emergency. By the Charter Act of 1915 therefore the High
Court possessed all the jurisdiction that it had at the
commencement of the Act and could also exercise all such
jurisdiction that would be conferred upon it from time to
time by the Legislative power conferred by that Act.
Reference to the provisions of section 9 of the Indian High
Courts Act of 1861 which section 106 (1) of the Government
of India Act, 1915, replaced makes this proposition quite
clear. In express terms section 9 made the jurisdiction of
the High Courts subject to the legislative powers of the
Governor-General in Legislative Council. Section 106 only
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conferred on the High Court " jurisdiction -and power to
make rules for regulating the practice of the court, as were
vested in them by Letters Patent, and subject to the
provisions of any such Letters Patent, all such
jurisdiction, powers and authority as were vested in those
courts at the commencement of the Act. " The words "
subject to the legislative powers of the Governor-General "
used in section 9 of the Charter Act of 1861 were omitted
from the section, because of the wide power conferred on the
Governor-General by section 65 of the Government of India
Act, 1915. The
1039
jurisdiction conferred on the High Courts from the very
inception was all the time liable to and subject to
alteration by appropriate legislation. It is therefore not
right to say that section 108 (1) of the Government of India
Act, 1915, empowered the High Courts to make rules only
concerning the jurisdiction that those courts exercised when
that Act was passed; on the other hand power was also
conferred on them to make rules in respect of all
jurisdiction then enjoyed or with which they may be vested
hereafter.
Clause 16 of the Letters Patent on which reliance was placed
by the learned Judges of the Calcutta Court is in these
terms:-
" The High Court shall be a Court of appeal from the civil
Courts of Bengal and from all other Courts subject to its
superintendence and shall exercise appellate jurisdiction in
such cases as are subject to appeal to the said High Court
by virtue of any laws or regulations now in force."
This clause is also subject to the legislative power of the
appropriate Legislature as provided in clause 44 of the
Letters Patent. This clause is in these terms:
" The provisions of the Letters Patent are subject to the
legislative powers of the Governor-General in Legislative
Council."
That being so the last words of the clause " now in force "
on which emphasis was placed in the Calcutta judgment lose
all their importance, and do not materially affect the
point. The true intent and purpose of clause 44 of the
Letters Patent was to supplement the provisions of clause 16
and other clauses of the Letters Patent. By force of this
clause appellate jurisdiction conferred by fresh legislation
on the High Courts stands included within the appellate
jurisdiction of the court conferred by the Letters Patent.
A reference to clause 15 of the Letters Patent of 1861,
which clause 16 replaced, fully supports this view. This
clause included a provision to the following effect :-
" or shall become subject to appeal to the said High Court
by virtue of such laws and regulations
1040
relating to Civil Procedure as shall be hereafter made, by
the Governor in Council,"
in addition to the words " laws or regulations now in
force". The words above cited wore omitted from clause 16
of the later charter and only the words "laws or regulations
now in force" were retained, because these words were
incorporated in the Letters Patent and were made of general
application as governing all the provisions thereof by a
separate clause. The Judges who gave the Calcutta decision
on the other hand inferred from this change that the
appellate jurisdiction of the High Court as specified in
clause 16 was confined only to the jurisdiction to hear
appeals from the the civil Courts mentioned in that clause
and appeals under Acts passed and regulations in force up to
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the year 1865. In our opinion the learned Judges were in
error in thinking that the appellate jurisdiction possessed
by the High Court under the Letters Patent of 1865 was
narrower than the jurisdiction it possessed under clause 15
of the Letters Patent of 1861. Whatever jurisdiction had
been conferred on the High Court by clause 15 of the Letters
Patent of 1861 was incorporated in the Letters Patent of
1865 (as amended) and in the same measure and to the same
extent by the provisions of clauses 16 and 44 of that
charter.
We are further of the opinion that the Calcutta decision is
also erroneous when it expresses the view that the range and
ambit of the power conferred on the High Court by section
108 of the Government of India Act of 1915 was limited by
the provision of section 106 (1) of the Act or by the
provisions of clause 16 of the Letters Patent. There is no
justification for placing such a construction on the plain
and unambiguous words of that section. Section 108 is an
enactment by itself and is unrestricted in its scope, and
covers a much wider field than is covered by section 106 of
the Government of India Act. The only association it has
with section 106 is that in sequence it follows that sec-
tion. It confers a power on the High Court to make rules in
respect not only of the jurisdiction that it
1041
enjoyed in 1915 but it also conferred power on it to make
rules in respect of jurisdiction which may hereafter be
conferred on it by the enactments enacted by the Governor-
General in Legislative Council.
On the line of thought adopted in the Calcutta decision the
learned Judges were forced to the conclusion which seems
somewhat strange that the jurisdiction conferred by the
Letters Patent on the Calcutta High Court is much more
limited and restricted than has been conferred on some of
the new High Courts in India by their Letters Patent.
Illustratively, Clause I I of the Letters Patent of Patna
High Court issued in 1916 provides as follows:-
" And We do further ordain that, the High Court of
Judicature at Patna shall be a Court of Appeal from the
Civil Courts of the Province of Bihar and Orissa and from
all other Courts subject to its superintendence, and shall
exercise appellate jurisdiction in such cases as were,
immediately before the date of the publication of these
presents, subject to appeal to the High Court of Judicature
at Fort William in Bengal by virtue of any law then in
force, or as may after that date be declared subject to
appeal to the High Court of Judicature at Patna by any law
made by competent legislative authority for India
The Letters Patent of the Labore High Court, the High Court
of Rangoon and the Letters Patent of the Nagpur High Court
also contain identical clauses. It is clear from these
clauses that in respect of cases subject to appeal to these
High Courts the civil appellate jurisdiction is flexible and
elastic. Mr. Justice Das in the Calcutta decision under
discussion took the view that omission of the words
underlined in clause 11 from clause 16 of the Letters Patent
of the Calcutta High Court made the civil appellate
jurisdiction of that court under clause 16 as rigidly fixed,
and that it could be exercised only over courts and only in
respect of cases mentioned therein. When the attention of
the learned Judge was. drawn to the provisions of clause. 44
of the Letters Patent he
1042
was constrained to say that inflexibility bad to a great
extent been modified by preserving the powers of Indian
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Legislative authority in section 9 of the High Courts Act,
by the amended clause 44 of the Letters Patent and by
section 223 of the. 1935 Act. The learned Judge however
felt that there was still a difference of a vital character
between the Letters Patent of the Calcutta High Court and of
the newly constituted High Courts inasmuch as cases subsequ-
ently declared by any Indian enactment to be subject to
appeal to the Calcutta High Court could not strictly
speaking come within its appellate jurisdiction under clause
16 although the High Court exercised appellate jurisdiction
over these. We have not been able to appreciate this
distinction and it seems to us it is based on some
misapprehension as to the true intendment of clause 44 of
the Letters Patent. The purpose and intent of clause 44 of
the Letters Patent was to declare that in addition to the
jurisdiction conferred by clause 16 it would also exercise
the appellate jurisdiction which from time to time would be
conferred on it by subsequent enactments. It is
inconceivable that larger appellate jurisdiction and greater
powers in the matter of making rules would have been
conferred upon the newly constituted High Courts than upon
the High Court of Calcutta. The words "pursuant to section
108 of the Government of India Act 1915" occurring in clause
15 of the Letters Patent do not in any way restrict the
scope of the right of appeal conferred by that clause to
appeals that come to the High Court under its appellate
jurisdiction under clause 16 of the Letters Patent only. On
the other hand we think that these rules have application to
all appellate jurisdiction exercised by that court whether
existing or conferred upon it by subsequent legislation.
The learned Judges in the Calcutta case negatived the
applicability of the principle enunciated in 1913 Appeal
Cases 546 and applied by the Privy Council in several cases
to the matter before them, on the following reasoning set
out by Mr. Justice Das:--
1043
"The incidents and powers attached to the Registrar as a
tribunal fall far short of those which were attached, to the
tribunal in the Gurdwara case (1) and to which Sir George
Rankin particularly and pointedly referred Having regard to
the plain language of clause 16, and in the absence therein
of like words which appeal in the concluding portions of the
correspond clauses of the Letters Patent of the other High
Court to which I have already referred and which make their
appellate jurisdiction flexible and elastic it is impossible
to hold that section 76 of the Trade Marks Act has merely
extended the appellate jurisdiction of this Court under
clause 16 by the addition of a new subject-matter of appeal
so as to attract the general principle enunciated in 1913
Appeal Cases 546 ......... The truth is that the Trade Marks
Act has created new rights, e.g., a right to get a trade
mark registered and has given certain new advantages con-
sequent upon such registration. It has created new
Tribunals for its own purposes and it has conferred a new
appellate jurisdiction on this Court. It has authorized
this Court to make rules regulating the conduct and
procedure of the proceedings under the Act before it. This
Court has framed separate set of rules accordingly. This
very fact makes it impossible to attract the ordinary rules
of procedure regarding appeals in this Court and indicates
that an appeal under section 76 of the Act involves the
exercise of a new appellate jurisdiction regulated by new
rules".
This reasoning in our opinion is faulty on a number of
grounds. The first error lies in the assumption that the
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Gurdwara Act did not create new rights and did not create
new appellate jurisdiction in the High Court which it did
not possess before. The Gurdwara Act created peculiar
rights in religious bodies and negatived the civil rights of
large bodies of Mahants and other persons. Stick rights
were unknown before in civil law. The High Court as an
established court of record was constituted a court of
appeal from the decisions of the Gurdwara Tribunal. The
principle enunciated in 1913 Appeal Cases 546 was applied by
(1) 63 I.A. 180.
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Sir George Rankin to appeals heard by the High Court under
its newly created appellate jurisdiction, and we speak with
great respect, in our opinion, very correctly. We have not
been able to appreciate the special peculiarities of the
rights created by the Trade Marks Act which place the
appellate jurisdiction conferred on the High Court by
section 76 on a different level from the jurisdiction
created by the special provisions of the Gurdwara Act. The
rights created by the Trade Marks Act are civil rights for
the protection of persons carrying on trade under marks
which have acquired reputation. The statute creates the
Registrar a tribunal for safeguarding these rights and for
giving effect to the rights created by the Act, and the High
Court as such without more has been given appellate
jurisdiction over the decisions of this tribunal. It is not
easy to understand on what grounds it can be said that the
High Court while exercising this appellate jurisdiction has
to exercise it in a manner different from its other
appellate jurisdiction. It seems to us that this is merely
an addition of a new subject matter of appeal to the
appellate jurisdiction already exercised by the High Court.
The second error lies in the assumption that the
appellate jurisdiction exercised by the High Court of
Calcutta is much more limited than that possessed by the
other High Courts. The matter has been discussed at length
in an earlier part of this judgment.
We have also not been able to appreciate the emphasis laid
to negative the applicability of clause 15 of the Letters
Patent by reference to the provisions of section 77 of the
Act. The provisions of that section are merely enabling
provisions and, as already pointed out, it is open to the
High Court to make use of them or not as it likes. There is
nothing in the provisions of that section which debars the
High Court from hearing appeals under section 76 of the
Trade Marks Act according to the rules under which all other
appeals are heard, or from framing rules for the exercise of
that jurisdiction under section 108 of the Government of
India Act, 1915, for hearing those
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appeals by single judges or by division benches. Even if
section 77 had not been enacted it could not be said that
the High Court would then have no power to make rules for
the hearing of appeals under section 76. There are a number
of legislative enactments which have conferred appellate
jurisdiction on the High Court without more and the High
Court exercises appellate jurisdiction conferred by these
enactments by framing its own rules under the powers it
already possesses under its different charters and under the
various statutes which have conferred power on it.
It was suggested that the reasoning of the High Court is
supported by the rule laid down in Secretary of State v.
Mask and Co.(1). In our opinion that rule has neither any
relevancy in this case nor is it in any manner in conflict
with the rule laid down in 1913 Appeal Cases 546 or in the
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later Privy Council decisions above referred to. There, by
section 188 of the Sea Customs Act the jurisdiction of the
civil courts was excluded, and an order made by the
Collector on an appeal from an order of the Assistant
Collector was made final. A suit was filed to challenge the
order of the Collector on the ground that the finality
declared by section 188 was no bar to such a suit in a civil
court. That contention was negatived on the ground that
when a liability not existing in common law is created by a
statute which at the same time gives a special and
particular remedy for enforcing it, with respect to that
class it has always been held that the party must adopt the
form of remedy given by the statute. The Trade Marks Act
has not created any special forum for the hearing of an
appeal as had been created by the Sea Customs Act. On the
other hand, the Trade Marks Act has conferred appellate
jurisdiction on an established court of law. Further, the
Sea Customs Act had made the order of the Collector passed
on an appeal final. There is no such provision in the Trade
Marks Act. It has only declared that an appeal shall lie to
the High Court from the order of the Registrar and has said
nothing more about it. Clearly, therefore, to this case the
rule
(1) 67 I.A. 222.
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enunciated in 1913 Appeal Cases 546 had application, and the
rule stated in Mask’s case (1) had no bearing on this
point.
As regards the merits of the case, we are in entire
agreement with the decision of the High Court and with the
reasons given in that decision. The relevant part of
section 8 of the Trade Marks Act is in these terms:
"No trade mark nor part of a trade mark shall be
registered which consists of, or contains, any scandalous
design, or any matter the use of which would by reason of
its being likely to deceive or to cause confusion or
otherwise, be disentitled to protection in a court of
justice".
Under this section an application made to register a
trade mark which is likely to deceive or to cause confusion
has to be refused notwithstanding the fact that the mark
might have no identity or close resemblance with any other
trade mark. The Registrar has to come to a conclusion on
this point independently of making any comparison of the
mark with any other registered trade mark. What the
Registrar has to see is whether looking at the circumstances
of the case a particular trade mark is likely to deceive or
to cause confusion.
The principles of law applicable to such cases are well-
settled. The burden of proving that the trade mark which a
person seeks to register is not likely to deceive or to
cause confusion is upon the applicant. It is for him to
satisfy the Registrar that his trade mark does not fall
within the prohibition of section 8 and therefore it should
be registered. Moreover, in deciding whether a particular
trade mark is likely to deceive or cause confusion that duty
is not discharged by arriving at the result by merely
comparing it with the trade mark which is already registered
and whose proprietor is offering opposition to the
registration of the mark. The real question to decide in
such cases is to see as to how a purchaser, who must be
looked upon as an average man of ordinary intelligence,
would react to a
(1) 67 I.A. 222.
1047
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particular trade mark, what association he would form by
looking at the trade mark, and in what respect he would
connect the trademark with the goods which* he would be
purchasing.
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 clear to us that the bird in the appellants’ trade mark
is likely to be mistaken by an average man of ordinary
intelligence as an Eagle and if he asked for Egg‘e goods and
he got goods bearing this trade mark of the appellants it is
not likely that he would reject them by saying that this
cannot be an Eagle. Two years prior to the application for
registration, the respondents described this particular bird
an Eagle and called their brand Eagle Brand, The same bird
was later on described by them a vulture and the explanation
offered was that they so described owing to an honest and
bona fide mistake. We have no hesitation in holding that
the appellants’ camouflaging an Eagle into a vulture by
calling it such is likely to cause confusion. Whatever else
may be said about the bird in the appellants’ trade mark, it
certainly does not represent a vulture or look like a
vulture of any form or shape. What has been named by the
plaintiffs as a vulture is really an eagle seated in a
different posture. That being so, the High Court was
perfectly right in the view that Mr. Justice Shah was in
error in interfering with the discretion possessed and
exercised by the Registrar, and that the appellants had
failed to discharge the onus that rested heavily on them to
prove that the trade mark which they wanted the Registrar
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to register was not likely to deceive or cause confusion.
The learned counsel for the appellants contended that the
question whether his clients’ trade mark was likely to
deceive or cause confusion had been ’Concluded by the
earlier judgment of the Madras High Court in the passing off
action and already referred to in an early part of the
judgment. 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.
For the reasons given above we are of the opinion that this
appeal must fail and we accordingly dismiss it with costs.
Appeal dismissed.
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Agent for the appellants: R. A. Govind.
Agent for the respondents: Rajinder Narain.
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