Full Judgment Text
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PETITIONER:
NATIONAL BELL CO. & ANR.
Vs.
RESPONDENT:
METAL GOODS MFG. CO. (P) LTD. & ANR.
DATE OF JUDGMENT:
18/03/1970
BENCH:
SHELAT, J.M.
BENCH:
SHELAT, J.M.
VAIDYIALINGAM, C.A.
CITATION:
1971 AIR 898 1971 SCR (1) 70
1970 SCC (1) 665
CITATOR INFO :
RF 1981 SC1786 (139)
ACT:
Trade and Merchandise Marks Act (43 of 1958), ss. 9(3),
11(a) and (e), 32(b) and (c) and 56--’Distinctive’, meaning
of--Numeral as trade mark--’Aggrieved person, and ’without
sufficient cause’ in s. 56--Scope of--’Disentitled to
protection’, meaning of--Abandonment of right in trade mark,
when inferred--Rectification of register--Discretion of
Court.
HEADNOTE:
For a number of years prior to 1952 cycle bells manufactured
by Lucas And other foreign concerns bearing the numbers ’50’
and other numerals were in the Indian market. After 1952,
the import of foreign bells was prohibited, and though
foreign made bells with the numerals ’50’ were being sold as
late as 1958, the sales were from the stock remaining out of
the earlier imports and were few and far between. In 1953,
the respondent company got registered two trade marks in
respect of cycle bells being the numeral ’50’ and the figure
’Fifty’. The appellant companies were manufacturers and
also dealers in cycle bells and were selling their cycle
bells with the numeral ’50’ inscribed on them. The
respondent therefore, filed suits in 1959, against the
appellants, alleging infringement of its trade marks. In
1961, the appellants applied for stay of trial of the suits
and filed applications in the High Court for rectification
of the register by cancelling the trade marks of the
respondent under s. 56 of the Trade and Merchandise Marks
Act, 1958. A single Judge of the High Court, refused to
expunge the trade mark ’Fifty’ but ordered the cancellation
of the trade mark ’50’. In appeals to the Division Bench of
the High Court, the order cancelling the trade mark ’50’ was
set aside.
In appeals to this Court, it was contended that : (1) the
trade marks in question were common and not distinctive at
the date of their registration as required by s. 9(3), and
therefore, ought never to have been registered; (2) that the
numeral ’50’ is not distinctive; (3) that the use of the
trade mark was likely to deceive or cause confusion and
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hence the registration should be cancelled under s. 32(b)
and s. II (a); (4) that the respondent had imitated the use
of the marks by Lucas and other foreign concerns that
therefore they would be disentitled to protection under s.
11(e) and hence the registration should be cancelled under
s. 32(h); and (5) that the trade marks were not, at the
commencement of the proceedings, distinctive ’and hence
liable to be cancelled under s. 32(c).
HELD : (1) Under s. 32(b) and (c) the original registration
of the trade mark has, after the expiration of 7 years from
the date of registration to be taken to be valid in all
respects including in rectification applications under s. 56
unless it is proved : (1) the trade mark was registered in
contravention of the provisions of s. 11 or offends against
the provisions of that section on the date of the
commencement of the proceeding or (2) that the trade mark
was not, at the commencement of the proceedings distinctive
of the goods of the registered proprietor. Section 11(a)
prohibits the registration of trade mark which would be
likely to deceive or cause confusion, and s. 11(e) prohibits
the registration of trade marks if they were such that they
were otherwise disentitled to protection in a court.
Section
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56(2) confers a right on any person aggrieved by an entry
made in the register without sufficient cause or by an entry
wrongly remaining in the register, to apply for expunging or
varying such an entry. Since ’an aggrieved person’ includes
a person who has, before registration, used the trade mark,
and a person against whom an infringement action is taken,
and the words ’without sufficient cause’ relate to the time
of original registration,. the appellant could apply for
cancellation on the ground that the trade mark in question
was not distinctive within the meaning of s. 9(3).
But in view of the language of s. 32, no contention could be
raised in the present case, that the trade mark ’50’ and
’Fifty’ were not distinctive under s. 9(3), that is, adapted
to distinguish the cycle bells of the respondent, at the
date of registration, as, seven years had elapsed since the
date of the Registration. [78 D-F; 79 B-H]
Paine & Co. v. Doniells & Sons" Breweries Ltd. (1893) R.P.C.
217, 232, referred to.
(2) It is not an inflexible rule that except in the case of
textile goods. a mark consisting of a numeral is necessarily
not distinctive and is not registerable. [80 E]
Kerly on Trade Marks, 9th End. p. 284, and Reuiter v.
Hublens, (1954) Ch. 50, referred to.
(3) Section 32(b) relates to facts existing both at the time
of and after registration. If the mark at the time of
registration was likely to deceive or cause confusion or
would otherwise be disentitled to- protection of a court,
and therefore, was, under s. 11 (a) and (e) prohibited from
being registered, the rule as to conclusiveness of the
validity of the registration in s. 32 cannot be invoked and
that would also be so, if the trade mark at the date of
commencement of rectification proceedings was such as to
offend against the provisions of s. 11. [80F-H]
The sales of foreign bells with numeral ’50’ after 1953 were
’so few that they could hardly be considered as evidence for
showing a likelihood of confusion or deception. In fact the
purchasers used to call those bells, not by the numerals,
but by the manufacturers’ names. As regards bells said to
have been manufactured by one of the appellant companies
since 1947 and bearing the numeral ’50’, no evidence was led
to show either the extent of manufacture or sale between
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1947-1953 or thereafter from which the High Court could be
asked to draw any inference as to the likelihood of
deception or confusion. As against the voluminous sales of
the respondent for the years 1949-1962, there was no
corresponding evidence on behalf of the appellants
indicating sales of their bells with number ’50’ from which
any likelihood of confusion or deception could be deduced.
Therefore, s. 11(a) was not attracted.[816-C, G-H; 82 D-F]
(4) The true construction of s. 11(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 protection in a court. That is, although a
mark cannot be registered because it is not distinctive as
provided by s. 9, such a mark is not for that reason only
one, the registration of which is prohibited by s. 11,
because, the section lays down positive objection to
registration, and not mere lack of qualification, by using
the words disentitled to protection. Therefore, unless the
trade ’mark offends the provisions of s. II, that is,
offends any of the matters in cls. (a) to (d) of s. 11, or
is disentitled to protection in a court under s. 11(e), the
rule
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as to conclusiveness of the validity of registration
embodied in s. 32 -applies.
In the present case, in fact, there was no evidence of any,-
fraud having been committed by the respondent at the time of
the registration. There was neither averment by the
appellants nor evidence, that Lucas or any ,other foreign
concern had obtained registration of trade marks of ’50’ or
’Fifty’. ’nose concerns merely used various numerals for
distinguishing one type of bell from another manufactured by
them and there was no question of any piracy by the
respondent. The trade mark had also be,come distinctive
with respective to the respondent. [82 F-H; 84 D-F]
Imperial Tobacco Co. Ltd. v. De Pasquali & Co. 35 R.P.C.
186, referred to.
(5) The principle underlying s. 32(c) is that property in a
trade mark exists so long as it continues to be distinctive
of the goods of the registered proprietor in the eyes of the
public or a section of the public. If the proprietor is not
in a position to use the mark to distinguish his goods from
those of others or has abandoned it or the mark has become
so common in the market that it has ceased to connect him
with his goods then there would be no justification for
retaining the mark on the register. Under s. 32(c) the
marks have to be distinctive at the ’commencement of the
proceedings’, that is the proceedings in which the
conclusive character of the’ Registration arises.
Therefore, it may be the date when a suit for infringement
is filed by the proprietor of the trade mark or the date on
which the rectification proceedings ;ire filed as a result
of the suit. Rights in a trade mark could be abandoned by
the owner, but when such abandonment is sought to be
inferred from the proprietors neglect to challenge
infringement the character and extent of the trade of the
infringers and their position would have to be reckoned in
considering .whether the registered proprietor was barred by
such neglect [84 F-H; 85 A-C, D-E]
In the present case, the progressive increase of the sales
of the respondent’s bells from 1949 together with the
evidence of witnesses of the respondent shows that the said
trade marks distinguished the goods of the respondent from
those of other manufacturers. Also, whether the crucial
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date is taken as 1959 or 1961, the date of suit or the date
of rectification proceedings, the evidence on record
indicates that the trade marks were distinctive. The
respondent has all along been zealously trying to maintain
its right, against all infringements. There were no
repeated breaches which went unchallenged by the respondent
when known to the respondent. Mere neglect in a few cases
to proceed did not necessarily constitute abandonment,
because, it was in respect of infringements which were not
sufficient to affect the distinctiveness of the mark. There
was no .evidence to show that the use by others of the word
’Fifty’ or the numeral ’50’ was substantial and the plea
that there was common use of the trade marks must fail.
Therefore, it is impossible to sustain the contention
founded on s. 32(c). [86 A-E]
Re. Farina, (1879) 27 W.R. 456 and Rowland v. Mitchell,
(1897) 14 R.P.C. 37, applied.
(6) The power to rectify under s. 56 is discretionary and
when such .discretion was properly exercised, a court of
appeal would refuse to interfere. But, in the present case,
the single Judge did not appreciate the principles of ss.,
11 and 32, and hence, the Division Bench was justified in
setting aside his order. [86 F]
73
JUDGMENT:
CIVIL APPELLATE JURISDICTION: Civil Appeal Nos. 1952 and
1953 of 1966.
Appeals from the judgment and order dated February 25, 1965
of the Punjab High Court, Circuit Bench at Delhi in Letters
Patent Appeals Nos. 38-D and 42-D, and 39-D and 43-D of
1963.
S. T. Desai and Naunit Lal, for the appellants (in both the
appeals).
C. B. Agarwala, K. P. Gupta and R. C. Chadha, for respondent
No. 1 (in both the appeals).
The Judgment of the Court was delivered by
Shelat, J. 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. Registered Trade Mark No. 161543
was the numeral ’50’ and Trade Mark No. 161544 was the
figure ’Fifty’.
The two appellant companies carry on business in Kapurthala
in Punjab, one of them the National Bell Co. Ltd. claimed to
be manufacturing bells with numerals ’33’, ’50’, ’51’ and
’40’ inscribed on them since 1957, and the other M/s Gupta
Industrial Corporation since 1947 with numerals, ’20’, ’50’
and ’60’ inscribed on cycle bells manufactured by it. The
two applications for rectification arose out of suits filed
in the District Court, Lucknow by the respondent-company
against the two appellant companies on the ground of
infringement of its said registered trade marks, the numeral
’50’ and the figure ’Fifty’. On April 24, 1961 the District
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Court stayed the said suits at the instance of the appellant
companies giving them time for filing the said rectification
applications in the High Court.
The grounds alleged in the applications were (1) that the
numeral ’50’ and the word ’Fifty’ were common to the trade
at the time of the original registration and were therefore
not distinctive of the bells manufactured by the respondent-
company,
Sup. CI- 6
74
(2)that many other manufacturers in the market were using
the numeral ’50’ and the word ’Fifty’ on or in relation to
cycle bells, and therefore, the distinctiveness of the said
marks in relation to the bells manufactured by the
respondent-company, if any, had been lost, (3) that the
respondent-company did not get the registration of these
marks with any bona fide intention of using them in relation
to their cycle bells and that in fact there had been no bona
fide use of the said trade marks in relation to their goods
before the date of the applications. They also alleged that
the respondent-company had fraudulently declared at the time
of registration that they were the originators or
proprietors of the said two marks ’50’ and ’Fifty’. Both
sides led evidence, oral and documentary, the latter
including several price-lists from the possession of some of
the dealers in cycle spare parts.
The learned Single Judge, who in the first instance tried
the applications, found on a consideration of the evidence
that cycle bells with different numerals and in particular
the numeral ’50’ were being sold in the market before the
respondent-company put its cycle bells with the numeral ’50’
and the figure ’Fifty’ inscribed on them 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 thereof by the respondent-
company, and that therefore, the registered trade mark, the
numeral ’50’, was hit by cl. (c) of S. 32. So far as the
trade mark of the figure ’Fifty was concerned, he held that
there was no evidence that it was used by other parties
either prior to or after the registration thereof by the
respondent-company and in that view declined to rectify or
expunge the trade mark ’Fifty’ as seven years had already
elapsed by the time the rectification proceedings were
launched and could not, therefore, be challenged on the
ground of absence of distinctiveness as laid down in s. 32.
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The learned Single Judge, on the basis of his aforesaid
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conclusions, cancelled the trade mark- No. 161543, i.e., of
the numeral ’50’.
In the appeals filed against the said judgment the Division
Bench of the High Court held (1) that though the use of the
numeral ’50’ in relation to cycle bells dated back at least
30 years as in the case of Lucas and certain other foreign
concerns, the imports of such goods stopped from ;about
1952, though some bells were being sold till 1958 presumably
from the remaining previous stock, (2) that the numeral ’50’
in connection with those foreign made bells was never
intended as a trade mark but was used only as an indication
of the type or quality, and (3) that statements Exs. R-2,
R-3 and R-4 produced by the respondent-company showed that
sales of its bells with the trade marks ’50’ and ’Fifty’
inscribed on them had risen from the value of Rs. 19,644 in
1949-50 to Rs. 14.83 lacs in 1961-62. The Division Bench
agreed with the Trial Judge that cl. (a) of s. 32 did not
apply as there was no question of the original registration
having been fraudulently procured in 1953. It also held
that the trade marks in question could not be cancelled
merely on the ground that if their registration had been
opposed they would not have been registered, and that
therefore, the question for determination was whether it was
liable to cancellation in view of s. 32(c), which lays down
that the section would not apply in cases where the trade
mark in question was not distinctive at the commencement of
the proceedings. According to the Division Bench, the word
"commencement of proceedings" in cl. (c) of s. 32 meant the
commencement of the infringement suits filed by the
respondent-company as the proceedings for cancellation were
the off shoots arising from 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
76
filed against that company, the respondent-company had
opposed an application by that company for registration of
the mark ’Five Fifty’ before the Registrar and that
application was then pending in 1962, and lastly, that the
respondent-company had filed in 1959 the two suits against
the appellant companies out of which these rectification
proceedings arose. The Division Bench held that though
there was some evidence of the use of the numeral ’50’ by
certain other concerns after 1953, no importance could be
attached to such breaches as there, was hardly any evidence
as to when the infringers started manufacturing and the
extent of their manufacture and sales, and that the correct
principle applicable in such cases was that a few
unchallenged, scattered infringements by a number of traders
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did not render a registered trade mark common. As regards
the earlier use of the word ’Fifty’ and the numeral ’50’ by
Lucas and other foreign concerns, the Division Bench held
that they were not the registered trade marks of those
companies and that those concerns had used those marks as
merely type marks. Though the idea of using ’50’ and
’Fifty’ was not the original idea of the respondent-company
when it obtained registration in 1953, the foreign concerns
had ceased importing the goods and though sales of those
bells continued until 1958, such sales were from the stock
still remaining unsold. Such sales could not he in any
appreciable bulk. Even if the idea of using, the two marks
might have been conceived by the respondent-company from the
marks used by Lucas and other foreign concerns, there was no
question of any piracy or infringement of those marks as the
respondent-company was the first to convert what were
originally type marks into registered trade marks. Lastly,
it held that the statements of sales produced by the
respondent-company demonstrated that its sales had been
steadily increasing and that some concerns, finding the use
by the respondent-company of its marks ’50’ and ’Fifty’
highly successful, had sought in recent years to take
advantage of am popularity of the cycle bells of respondent-
company by imitating its marks. This fact, however,, could
not mean that either in 1959 when the respondent-company
filed the suits or in 1961 when rectification proceedings
commenced, the marks had ceased to be .distinctive in
relation to the goods of the respondent-company or were,
therefore, liable to cancellation under s. 56 by reason of
cl. (c) of s. 32. Accordingly, 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
77
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
commencement of these proceedings, the question whether they
were distinctive at the time of registration was not open to
dispute, (2) that that being so, there was no question of
any alleged piracy by the respondent-company of the marks of
Lucas and other concerns, and therefore, the marks could not
be said to be disentitled to protection by a court, (3) that
the marks had not lost their distinctiveness at the date of
these proceedings under s. 56, and (4) that the Letter
Patent Bench was, therefore, justified in dismissing these
proceedings by the appellant-companies.
A mark under s. 2(j) includes a word, letter or numeral or
any combination there-of. A trade mark, as difined in S.
2(v) means in relation to Chapter X (i.e. for offences and
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penalties provided in that chapter) a registered trade mark
or a mark used in relation to the 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
as proprietor to use the mark, and in relation to the other
provisions of the Act a mark used or proposed to be used in
relation to the 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 and includes a
certification trade mark registered as such under the
provisions of Chapter VIII. Under s. 9, a trade mark is not
registerable in Part A of the register unless it contains or
consists of at least one ,of the essential particulars
mentioned therein. One of these particulars in "any other
distinctive mark". Cl. (3) of S. 9 defines the expression
"distinctive" in relation to the goods in respect of which a
trade mark is proposed to be registered, as meaning "adapted
to distinguish goods with which the proprietor of the trade
mark is or may be connected in the course of trade from
goods in the case of which no such connection subsists
either generally or, where the trade mark is proposed to be
registered subject to limitations, in relation to use within
the "tent of the registration." In determining whether a
trade mark is distinctive, regard is to be had whether it is
inherently distinctive or is
78
inherently capable of distinguishing and by reason of its
use or any other circumstances it is in fact adapted to
distinguish or is capable of distinguishing 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. Being prima facie evidence, the evidence
afforded by the registration may be rebutted, but in view of
s. 32 that can be done if seven years have not elapsed since
the original registration. Even where such rebuttal is
possible, i.e., where seven years have not elapsed, and it
is shown that the mark in question was not registerable
under s. 9 as no evidence of distinctiveness was submitted
to the Registrar, the registration would not be invalid if
it is proved that the trade mark had been so used by the
registered proprietor or his predecessor-in-interest as to
have become distinctive at the date of registration.
Sec. 32, with which we are immediately concerned, reads as
follows :
"Subject to the provisions of section 35 and
section 46, in all legal proceedings relating
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to a trade mark registered in Part A of the
register (including applications under section
56), the original registration of the trade
mark shall, after the expiration of seven
years from the date of such registration, be
taken to be valid in all respects unless it is
proved-
(a) that the original registration was
obtained by fraud; or
(b) that the trade mark was registered in
contravention of the provisions of section 11
or offends
79
against the provisions of that section on the
date of commencement of the proceedings; or
(c) that the trade mark was not, at the
commencement of the proceedings, distinctive
of the goods of the registered proprietor."
We are not concerned with cl. (a) as no such case was even
averred in the applications as pointed out both by the Trial
Judge and the Division Bench. As regards cl. (b), it will
be at once noticed that the clause relates to facts existing
both at the time of and after registration. If a mark at
the time of registration was such that it was likely to
deceive or cause confusion or its use would be contrary to
any law or contained or consisted of scandalous or obscene
matters or matter likely to hurt religious susceptibilities
or which would otherwise be disentitled to protection of a
court, and therefore, was under s. 1 1 prohibited from being
registered, cl. (b) would apply, and the rule as to
conclusiveness of the validity of the registration cannot be
invoked. That would also be so, if the trade mark at the
date of the rectification proceedings was such as to offend
against the provisions of s. 11. But, unlike cl. (b), cl.
(c) relates to facts 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
infringement action is taken or threatened by the registered
proprietor of such a trade mark. The words "without
sufficient cause" in the section have clearly relation to
the time of the original registration. Therefore, a person
can apply for cancellation on the ground that the trade mark
in question was not at the date of the commencement of the
proceedings distinctive in the sense of s. 9(3). The burden
of proof, however, in such a case is, as aforesaid, on the
applicant applying under s. 5 6.
80
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The contention was that numerals, such as ’50’, are prima
facie not considered distinctive and to be, registerable
there must be evidence of extensive use. The contention was
sought to be fortified by showing that contrary to the
practice in England, rules 139 and 140 of the Rules of 1959
permit numerals to be registered as trade marks only in the
case of textile goods. But that is permitted on account of
a long standing practice in that particular trade of using
numerals with a view to distinguish goods of a particular
manufacturer or a particular type or quality. It will,
however, be noticed that although in the 8th edition of
Kerly on Trade Marks, page 135, it was stated that numerals
are considered to be prima facie not distinctive and
registerable only upon proof of their extensive use, the 9th
edition of the same work does not reproduce that passage.
On the contrary, at p. 284, the learned editor states that
numerals are capable of registration and that such marks
exist. For this change the learned editor relies, on the
registered trade mark, "4711" for eau-de-Cologne, which was
the subject-matter of dispute in Reuter v. Mutblens(1). In
that case, however, no contention was raised as to whether
the trade mark consisting of a numeral could be distinctive
or not and the court, therefore, was not called upon to
decide such a point. But the parties appear to have
proceeded on the assumption that the numeral "471 1 " was
validly registered as a trade mark for that particular brand
of eau-de-Cologne by reason of its having gained
distinctiveness by extensive use. It is, therefore, not an
inflexible rule and that was also conceded by Mr. Desai,
that a mark consisting of a numeral is necessarily not
distinctive and is not registerable, except only in the case
of textile goods, in spite of proof of extensive use.
S. 32 in clear terms provides that the original registration
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,
(1) [1954] Ch. 50.
81
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, were not registerable as
provided by s. 9 (cf. Paine & Co. v. Daniells & Sons’
Breweries Ltd.(1).
But the argument was that the appellant companies were en-
titled to show under cls. (b) and (c) in s. 32, (1) that
these marks were registered in contravention of S. 11, or
that they offended against the provisions of that section on
the date of the commencement of these proceedings, and (2)
that they were not distinctive at the date of the
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commencement of these proceedings.
S.11, as already noticed,, does not, as s. 9 does, lay down
the requisites for registration, but lays down prohibition
against certain marks from being registered. Cls. (b), (c)
and (d) of s. 1 1 obviously do not apply in the present case
but reliance was placed on cls. (a) and (e), i.e., that the
use of these trade marks would be likely to deceive or cause
confusion and that they were such that they were otherwise
disentitled to protection in a court. The burden of proof
being on the appellant companies, the question is : has that
burden been satisfactorily discharged ? The evidence relied
on by them was that of dealers in cycle spare parts
including bells, certain price-lists produced through them
and the two representatives of the two appellant companies.
That evidence, no doubt, shows, (1) that for a number of
years prior to 1952 bells manufactured by Lucas and certain
other foreign concerns with various numerals such as ’30’,
’50’ and 61’ inscribed either on the belts or on their
cartons were in the market, (2) that even after 1952 bells
with inscriptions thereon, such as "Berry 50", "National
50", manufactured by one of the appellant companies, "Five
50", "Padam 50", "Balco 50" etc. were sold in the market,
(3) that Gupta Industrial Corporation, one of the appellant
companies, claimed to have started the manufacture of bells
since 1947, calling them "Gupta 50" and the National Bell
Company likewise began to produce bells, calling them
"National 50" since 1957. But both the learned Single Judge
and the Division Bench clearly found, (1) that there was no
evidence of any fraud having been committed by the
respondent-company at the time of the registration; (2) that
there was no averment by the appellant companies, much less
any evidence, that Lucas or any other foreign concerns had
obtained registration of trade, marks either of the numeral
’50’ or the word ’Fifty’, 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
(1) [1893] R.P.C. 217, 232.
82
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 as
contemplated by s. 1 1 (a). In fact, the evidence was that
purchasers used to call those bells not by their numerals
but simply as Lucas’ bells and those manufactured by the
respondent company, as "Asia bells", and in some cases "Asia
50". As against the voluminous sales by the respondent-
company shown by the statements filed by it for the years
1949-50 to 1961-62, there was no such corresponding
evidence,- indicating the sales of other bells with
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numerals, such as "50" inscribed on them from which any
likelihood of confusion or deception could be deduced.
Regarding deception, there was indeed no evidence whatsoever
in that regard. There was no question of piracy also on the
part of the respondent company as argued by counsel as there
was nothing to show that Lucas or any other foreign concerns
used this numeral except for distinguishing one type of bell
from another manufactured by them. In our view, cl. (a) of
s. 11, therefore, is clearly not attracted.
The next question is whether the trade mark "50" or "Fifty"
is one which would otherwise be disentitled to protection in
a court as laid down in cl. (e) of s. 1 1 so as to attract
cl. (b) of s. 32. While construing cl. (e) of S. II, it is
necessary to repeat that it deals with prohibition and not
with requisites of registration. Therefore, although a mark
cannot be registered, for instance, because it is not
distinctive, as provided by S. 9, such a mark is not for
that reason only one the registration of which is prohibited
by s. 1 1. The section lays down positive objection to
registration and not to mere lack of qualification. This is
clear from cl. (e) of s. 11, which uses the expression
"disentitled to protection", and not the expression "not
entitled to protection". The former contemplates some
illegal or other disentitlement inherent in the mark itself.
(see Kerly, 9th ed. 344).
83
In Imperial Tobacco Co. Ltd. v. De Pasqualil & Co.(1) the
appellant company was the proprietor of two trade marks con-
sisting of "Regimental Cigarettes" and "Regimental Tobacco".
The company brought an action for infringement of its trade
marks and for passing off against the respondent who sold
cigarettes under the name of "Pasquali’s the Regiment" in
packets and boxes decorated with regimental crests. The
respondent moved to have the trade marks expunged contending
that the word "Regimental" was only a 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 their registration was valid. At page
203 of the Report,Swinfen Eady, M.R. observed that s. 11
contained a prohibition as to what it shall not be lawful to
register and it followed upon s. 9 which provided for the
essentials of a trade mark. S. 9 laid down what a
registerable trade mark must contain and unless it contained
one or the other requisites there set out, it was not re-
gisterable and it was only registerable trade marks which
were entitled to registration. But even if a mark were to
fall within, S. 9, that alone was not necessarily sufficient
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to entitle it to registration because it might offend
against s. 11. S. 11, being a qualification of s. 9 and
being a provision laying down a prohibition’, it did not
contemplate any enquiry on the question whether the, trade
mark complied with one or the other requisites enumerated in
s. 9, e.g., whether it had the quality of being distinctive
or not. Dealing with s. 41, he observed that it formed a
new departure in dealing with trade marks and differed
widely from the earlier Acts. The present section expressly
enacted that the original registration shall, after a lapse
of seven years, be taken to ’be valid in all respects, that
is to say, whether the mark originally consisted of or
(1) 35 R.P.C. 185.
84
contained one or the other essential proofs or not, that
cannot be enquired into after the lapse of seven years. It
had to be taken to be valid in all respects and what had to
be taken to be valid in all respects was the registration of
the trade mark unless it offended against the provisions of
s. 1 1. That section was a prohibitive section as to a
matter which was disentitled to protection in a court, that
is, it was intended to exclude from registration what would,
otherwise be included or covered under s. 9. It did not
extend to a mark disentitled to protection because
originally not containing one of the essential particulars.
It applied to a different set of circumstances such as that
its use was likely to deceive or confuse etc. The words
"disentitled to protection", he further observed, were not
equivalent to "not entitled to protection", which was the
expression used in the earlier Acts. In other words, they
did not mean that a trade mark was not entitled to
protection because it ought not originally to have been
registered as a valid trade mark falling within s. 9.
The construction of cl. (e) of s. 11 contended for on behalf
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 proceedings distinctive of the goods of
the respondent company. The distinctiveness of the trade
mark in relation to the goods of a registered proprietor of
such a trade mark may be lost in a variety of ways, e.g., by
the goods not being capable of being distinguished as the
goods of such a proprietor or by extensive piracy so that
the marks become publici juris. The principle underlying
cl. (c) of s. 32 is that the property in a trade mark exists
so long as it continues to be distinctive of the goods of
the registered proprietor in the eyes of the public or a
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section of the public. If the proprietor is not in a
position to use the mark to
85
distinguish his goods from those of others or has abandoned
it or the mark has become so common in the market that it
has ceased to connect him with his goods, there would hardly
be any justification in retaining it on the register. The
progressive increase in the sales of ’Asia Fifty’ and ’Asia
50’ bells from 1949-50 and onwards together with the
evidence of witnesses examined by the respondent company
shows that the said trade marks distinguished the goods of
the respondent company from those of other manufacturers in
the field. Under s. 32 (c) the marks have to be distinctive
at the commencement of the proceedings. Prima facie, the
expression "commencement of the proceedings" would mean the
commencement of proceedings in which the question as to the
conclusive character of the registration, as laid down in S.
32, arises. Such a question may arise in a suit for
infringement of the trade mark in which the registered
proprietor may rely on s. 32 to prove his title to the
registered trade mark as also in rectification proceedings
filed as a result of such a suit or otherwise, and the
period of seven years would have to be calculated according
to the particular proceedings in which the conclusive nature
of the validity of registration is relied on. In the
prevent case, whether the crucial date for the purpose of s.
32(c) is taken to be 1959 when the suits were filed or 1961
when the appellant companies took out the. rectification
proceedings it makes no difference as it is not possible
from the evidence on record to say that the trade marks in
question were not or had ceased to be distinctive. The
indication, on the contrary, is that they were distinctive.
That is to be found from the zeal with. which the respondent
company tried to 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
followed by a suit was also given to M/s Berry & Co., but
the suit became infructuous on account
86
of lack of the jurisdiction of the Court of Banaras where it
was filed. This evidence negatives any abandonment of trade
marks or letting infringements go unchallenged or misleading
the other manufacturers that the respondent company would
not interfere it they were to use the same marks. Rights in
a mark can, of course, be abandoned by its owner but so long
as he remains the registered proprietor of the mark and
carried on the business to which the mark is attached, a
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plea of abandonment is difficult to sustain. It would,
however, be a different matter if it is shown that there,
were repeated, undisturbed infringements. The evider in the
present case does not show that there were repeated breaches
which went unchallenged though known to the proprietor.
Mere neglect to proceed does not necessarily constitute
abandonment if it is in respect of infringements which are
not sufficient to affect the distinctiveness of the mark
even if the proprietor is aware of them. (see Re. Farina(1)
Where neglect to challenge infringements is alleged, the
character and extent of the trade of the infringers and
their position have to be reckoned in considering whether
the registered proprietor is barred by such neglect. [see
Rowland v. Mitchell(2) ]. The plea of common use must fail,
for, to establish it the use by other persons should be
substantial. Though evidence was produced by the appellant
companies to show that there were other bells in the market
with ’Fifty’ or ’50’ inscribed on them, no evidence was led
to show that the use of the word ’Fifty’ or the numeral ’50’
was substantial. In these circumstances, it is impossible
to sustain the contention founded on cl. (c) of S. 32.
Under s. 56, the 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.
In our view, the contentions urged on behalf of the
appellant companies cannot be sustained and consequently the
two appeals fail and are dismissed with costs. There will
be one hearing fee.
V.P.S. Appeals dismissed.
(1) (1879) 27 W.R. 456.
(2) (1897) 14 R.P.C. 37.
87