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Civil Appeal No. 43‑D of 1966, decided on 17th June 1969.

(On appeal from the judgment and order of the High Court of East Pakistan, Dacca, dated the 3rd May 1963, in Trade Mark Appeal No. 3 of 1960).

Art. 58 (3)‑Special leave to appeal in matter of registration of trade mark‑Granted by Supreme Court to consider pleas (i) that evidence produced by respondent contained discrepancies not noticed by Courts below and (ii) that in absence of any sale by respondent since 1949 possibility of confusion and deception' contemplated in S. 8, Trade Marks Act. (V of 1940) did not exist.

‑Accounts‑Entries in books of account kept in regular course of business ‑ Mere production of such ace, ant books‑Does not constitute evidence of transaction and accounts recorded therein.

S. 67‑Copies of judgments of foreign Courts‑Such documents not bearing certificate of genuineness and accuracy by a representative of Government of Pakistan Held, inadmissible in evidence of facts recited therein.

S. 67‑Copies of documents other than judicial record‑Cannot be received in evidence without proof of signature and handwriting of persons alleged to have signed or written them.

S. 8‑Goods of opposite-party not available in market for last 17 years‑Likelihood of deception' or confusion' contemplated in S. 8 (a) dogs not, in circumstances, exist‑Mere use of mark from an earlier date‑ Cannot satisfy requirement of S. 8‑Appellant, held, entitled to registration of his trade mark.

In re: Helena Rubinstein Ltd.'s Application 1960 R P C 229 ref.

In re : Notox Ltd.'s Application (1931) 48 R P C 168; Impex Electrical Limited v. Weinbaun (1927) 44 R P C 405 and S. M. Tauf iq and others v. National Biscuit Company, New York P L D 1962 Kar. 355 distinguished.

Asrarul Hossain, Senior Advocate Supreme Court (Rafiqul Haq and B. N. Chowdhury, Advocates Supreme Court with him) instructed by Abdur Rab‑II, Attorney for Appellant.

Abu Backkar, Senior Attorney Supreme Court of Pakist4a for Respondent No. 1.

Respondent No. 2 : Ex parte.

Pates of hearing: 16th and 17th June 1969,

‑This is an appeal by special leave from the judgment and order dated the 3rd May 1963, of the High Court of East Pakistan in Trade Mark Appeal No. 3 of 1960 affirm ing the order dated the 3rd May 1960, of the Deputy Registrar of Trade Marks, Chittagong, made in Application No. 21188 of Ghulam Haider Khan, Proprietor of Messrs Bengal Friends & Co. appellant herein.

On 30th December 1953, the appellant made an application before the Deputy Registrar, Trade Marks, Chittagong, being Application No. 2 t 188 for registration of his trade mark consisting of the device of a ship in respect of the coaltar in class 19 stating that the said mark is being used by him for a long time.

During the pendency of the said application the respondent No. 1 Mr. Gour Benode Saba trading under the style of "Messrs Gour Benode Saba & Co." of Canal Street, Calcutta, filed an application on 11th April 1956, numbered as 24461 for registration of similar trade mark consisting of the device of a ship in respect of coaltar in class 19 claiming user since 1936.

Thereafter, the Registrar of Trade Marks, Karachi, issued order for advertisement of the appellant's Application No. 21188 under the provisions of section 15(1) of the Trade Marks Act, 1940, with intimation to the respondent to enable him to oppose the appellant's mark, if he so desired and, accordingly, the appli cation was advertised in Trade Mark's Journal No. 78, Volume R of July 1957.

On 15th October 1957, the respondent No. 1 entered opposition to the registration of the appellant's trade mark on the grounds, inter alia that since 1936 he has been manufacturing and trading in coaltar under the name and style of "Gourbenode Saba & Co." of Canal Street, Calcutta, throughout India including the territories now constituting Pakistan using the trade mark consisting of the device of a ship with the inscription "Jahaj Marka Al‑Katra" and since 1936 he has been continuously using the said trade mark in respect of coaltar manufactured by him as a distinctive mark of his India and the territories now constituting Pakistan his mark had become intimately associated in the minds of the public and the traders with his products, that he got his mark registered in 1937 with the Sub‑Registrar of Assurance, Calcutta, under the Indian Registra tion Act, 1908, and thereafter he applied in 1953 for registration of his mark in the Indian Trade Marks Registry under the Trade Marks Act, 1940, and got the registration in the year 1956; that the appellant taking advantage of the ban on export of coaltar to Pakistan from India started manufacturing coaltar from 1952 under a mark which is a colourable imitation of his mark with the object of dishonestly reaping the benefit of the reputation which the respondent's product had acquired under the trade mark.

The case of the appellant inter alia was that he had been manufacturing and selling coaltar bearing the disputed trade mark continuously since 1937 and as a result of extensive advertisement his product now commands a very good sale in the market. His further contention was that he was the first person to adopt the device of a ship as a trade mark in respect of coaltar ; that the claim of respondent No.‑ 1 that he has been continuously using the trade. mark consisting of the device of a ship since 1936 or near about the time with regard to his coaltar was not true ; that the allegations that taking undue advantage of the ban on export of coaltar to Pakistan by Government of India since 1952 he has been manufacturing and marketing coaltar with the object of reaping the benefit of the mark of respondent No. 1 dishonestly was false ; that there was restric tion of import of coaltar to Pakistan from 14th August 1948, to December 1951, and thereafter export of coaltar from India to Pakistan was banned by Government of India and the said ban was in force even on the date the appellant filed the affidavit in 1958, and, thereafter, the claim of respondent No. 1 regarding continuous and regular sale of his coaltar in Pakistan was not tenable ; and that there was no bona fide intention .on the part of respondent No. 1 to use his mark in Pakistan.

The respondent No. 1 in support of his contention filed three affidavits‑two of them were sworn by himself and the other was sworn by one Ananda Mohan Roy of Dacca. The respondent No. 1 also filed a declaration of ownership dated 25th March 1937, Exh. G.B. (1), judgment in Criminal Revision Case No. 886 of 1941 of the Calcutta High Court, Exh. G.B. 2 (1), an entry from the Register of the Chief Presidency Magistrate, Calcutta, Exh. G.B. 2 (2), to show that there was a criminal case between respondent No. 1 and one Sitaram and two others for infringe ment of trade mark, typed copy of petition of complaint, in the aforesaid criminal case, Exh. G.B. (2), a table consisting of 17 sheets, Exh. G.B. 3 series containing the names of consignees to whom coaltar was booked by him since 1942 till 1957‑58 and also the names of the steamer stations from which and to which the consignments were booked. The said table consisting of 17 sheets purported to have been prepared from five registers which were filed during the hearing of the case before the Deputy Registrar, but were not marked as exhibits in the case, applica tions for export of coaltar to Pakistan in 1948‑Exh. G.B. 6 series, Licenses for export of coaltar paint to East Pakistan granted by the Government of India In 1950‑51‑Exh. G.B. 7 series and two telegrams of the year 1952 by his customers in East Pakistan Exh. G.B. 9 series.

The appellant in support of his claim filed an affidavit and also produced documentary evidence consisting of cash books, ledgers and cash memo books of the years 1343 B.S. to 1346 B S., corresponding to 1937 to 1940, Exh. A series, letters written by dealers making enquiries regarding coaltar bearing the device of a ship trade mark, Exh. D series. The appellant also filed cash memo books for the period from 1948 onwards, Exh. J series, showing the sale of coaltar by the appellant during the period certain copies of newspapers showing the advertisements made by the appellant regarding his mark in respect of .his coaltar, Exn. B series, bills showing the costs incurred by the appellant for such advertisements, Exh. C series and sales statements for the year 1957‑58, Exh. L series, and Mohajerin certificate dated 4‑11‑1948, Exh. 'E'.

The Deputy Registrar of Trade Marks by his order dated 3‑5‑1960 refused registration of the appellant's mark holding, inter alia. that from the evidence produced by the respondent No. 1 it has been established that the respondent No. 1 had adapted the mark containing the device of a ship in 1937 and hoe had been manufacturing and selling coaltar under the mark on a large scale continuously since then in Bengal and Assam, specially, in the riverine districts now constituting East Pakistan and he continued to export coaltar to East Pakistan in substantial quantities after Pakistan came into existence after obtaining Export Licence therefor till 1952 when a ban on import of coaltar into Pakistan was imposed and as such he had sufficiently discharged the onus which lay upon him of establishing the reputation of his mark; that the appellant had no user of the mark before Partition in the territory now constituting East Pakistan and that the appellant had been using the mark of the respondent No. 1 since 1948 or thereabout with slight modification in order to reap the benefit of good reputation which the said mark enjoyed in East Pakistan long before Partition.

Against the aforesaid order of the Deputy Registrar of Trade Marks dated the 3r‑i May 1960, refusing registration of the appellant's mark the appellant preferred an appeal to the High Court of East Pakistan being Trade Mark Appeal No. 3 of 1960.

The appeal was dismissed by a Division Bench of the High Court consisting of the Chief Justice and Mr. Justice M. R. Khan by their order dated the 3rd May 1963, with costs holding that the question of onus was a divided one, the initial onus lay on the respondent to prove that there was existence of goods or goods of the same description under trade mark similar or almost similar with which or with reference to which there was a likelihood of deception or confusion and if the said preliminary onus was discharged then the onus was shifted on the applicant to show that on account of some reasons or other there was no chance of deception or confusion. The learned Judges further held that popularization of the mark by advertisement could not be the criterion for registration of the mark, and that it had been established that the respondent had been using his mark in East Pakistan for a long time and the user of the mark by the appellant was of recent years and that granting of the registration of the appellant's mark was likely to deceive or cause confusion under section 8 of the Trade Marks Act. Lastly, it was found that there was no material to come to a conclusion that the respondent had no bona fide intention to use his trade mark in East Pakistan.

Leave to appeal was granted on the 6th of August 1963, to consider the peas that the evidence produced by the respondent contained discrepancies not noticed in the Courts below and the as there was no sale by the respondent since 1949 the possibility of 'confusion' and deception' contemplated in section 8 of the Trade Marks Act did not exist.

We have examined the evidence relied upon by the Deputy Registrar in support of his conclusions that respondent No. I had discharged the onus of establishing the reputation of his mark and found that it was neither properly brought on the record nor was its authenticity free from doubt. There are also material discrepancies in the evidence not noticed by the Courts below. An objection was taken before the High Court about the admissibility of the evidence on behalf of the appellant, but the learned Judges rejected it on the view that being related to mode of proof, it ought to have been raised before the Deputy Registrar.

Mr. Israrul Hossain pointed out that 17 sheets Exh. G.B. 3 series containing the names of the consignees between 1942‑58 and the names of the steamer stations to which the goods were booked were not true copies of the entries in the original registers. The entries were also‑not made contemporaneously with the tran sactions in the account books as indicated by the incorrect choronological order in which the entries appear in the original register. Also there are entries of sales in East Pakistan during 1952‑58 when there was admittedly a total ban by the Government of India on export of coaltar to East Pakistan. No export permits were produced covering the alleged sales for this period, nor was any supporting evidence brought on record, such as, cash books, cash memos., shipping documents showing the actual booking to the consignees entered in Exh. G.B. 3 series.

The account books mentioned in the affidavit of the respondent are also of scrappy nature, for instance, sales spreading over a period of ten years are entered in a register containing 40 leaves which is not in consonance with the normal method of accounting. The appellant contested the correctness of the entries in G.B. 3 series and our attention was drawn in this respect to the two affidavits filed by the respondent and the affidavit of Armand Mohan Roy. In paragraph 15 of the affidavit sworn by the respondent before a Magistrate on 25‑8‑1958 it is stated

"He (appellant) adopted my mark purposely with an intention to divert trade and customers sometimes during 1952 to 1958 when there was a total ban for export of coaltar from India."

Again in the affidavit 'sworn by the respondent on 17‑1‑1959 before a Magistrate in Calcutta it is said in para. 5

" ..I say that the applicant never sold Jahaj Marka Alkatra in Pakistan or at nine other places prior to the periods; of restriction".

In the affidavit sworn by Anand Mohan Roy on 21‑4‑1959 before a local Magistrate at Dacca it is stated in paras. 4 and 5:

"4. That due to partial restrictions during the years 1949 to 1952, 1 received supply of "Jahaj Marka Alkatra" of the above concern from India scantily and irregularly.

5. That in the years 1952 to 1955 on account of total restric tion I did not receive any supply of coaltar from the said Gour Benode Saba & Company."

Yet in the seventeen sheets G.B. 3 series sales to customers in Fast Pakistan are recorded during the period 1952 to 1955 which are not covered by the export licences Exhs. G.B. 7 (1), G.B. 7(2), and G.B. 7 (3). Thus, there was intrinsic evidence of the falsity of the entries of sale of goods in East Pakistan mentioned in Exh. G.B. 3 series.

Besides the authenticity of the account books relied upon by the respondent that were not properly brought on record as evidence of the transactions mentioned therein. The learned Chief Justice in the High Court ruled out the objection raised by the appellant on the view that it related to mode of proof of the entries in the account books and was not raised before the Deputy Registrar of Trade Marks. It was omitted from considera tion that under section 34 of the Evidence Act entries in books of account regularly kept in the course of business are only declared to be relevant whenever they refer to a matter into which the Court has to enquire. But this does not dispense with the requirement of section 67, that if a document is alleged to have been written by any person, the signature or the hand writing of so much of the document as is alleged to be in that person's handwriting must be proved to be in his handwriting. Mere production of account books kept in regular course of business, therefore, does not constitute evidence of entries contained therein. The Legislature has made an exception in this behalf in the Bankers' Books Evidence Act. Section 4 provides as follows:

"Subject to the provisions of this Act, a certified copy of any entry in a banker's book shall in all legal proceedings be received as prima facie evidence of the existence of such entry, and shall be admitted as evidence of the matters, transactions and accounts therein recorded in every case where, and to the same extent as, the original entry itself is now by law admissible, but not further or otherwise."

In the absence of such a provision in the Evidence Act regarding entries in books of account kept in regular course of business 8 the mere production of the account books does not constitute evidence of the transaction and accounts therein recorded. Mr. Israrul Hossain further pointed out that the account books containing Exh. G.B. 3 series were not even exhibited by the Deputy Registrar. In the affidavit of the respondent sworn on the 25th August 1958, in paragraph the genuineness of the records, Exhs. G.B. 1 to G.B. 10, is affirmed, but this bald statement did not constitute proof of the entries in these series unless they were in his handwriting and he swore to the correctness of the transactions mentioned therein. The documents Exhs. G. B. 3 series relied upon by the respondent No. 1 in support of his claim that since 1937 he had been selling on large scale in Bengal and Assam including the riverine districts now constitut ing East Pakistan coaltar bearing trade mark "Jahaj Marka Al‑katra" with a device of a ship were in this view wrongly treated as evidence by the Courts below.

The above criticism of, Exh. G.B. 3 series and the supporting account books apply to the remaining series of documents produced by the respondent. Exh. G. B. (1) is copy of a judgment in Criminal Revision Case No. 886 of 1941 of the Calcutta High Court ; Exh. G.B. (2) is copy of the complaint filed in that case by respondent No. 1 in the Court of the Additional Chief Presidency Magistrate, Calcutta, under sections 482, 483, 485 and 486, 1. P. C., against Sitaram and others for infringement of trade mark. Exh. G.B. 2 (2) is an extract from the Registrar of Miscellaneous Cases maintained in the Court of the Third Presidency Magistrate, Calcutta, pertaining to the said criminal complaint. These copies, however, do not bear certificate of genuineness and accuracy by a representative of the Government of Pakistan in India as required by section 86 of the Evidence Act. Consequently they were inadmissible as evidence of the c facts recited therein. Copies of application for export of coaltar to East Pakistan in 1948 and licenses for export purporting to have been granted by the Government of India as well as two telegrams received by respondent No. 1 from some customers in East Pakistan, Exh. G.B. (6), Exh. G.B. (7) and Exh. G.B. (9) series stand at a still lower footing as they are not copies of any judicial record and could not be received in evidence without proof of signature and handwriting of persons alleged to D have signed or written them as required by section 6 7 of the Evidence Act.

Lastly, there is the letter dated 'the 15th July 1955, Exh. G.B. 5(3) written by one Suresh Chandra Podder. It was produced to show that the goods of respondent No. 1 were being sold in East Pakistan in the year 1955. On the contrary the letter gives away the whole case of the respondent that his mark had established a reputation in East Pakistan by sales on a large scale of goods since 1937. The concluding paragraph of the letter is to the following effect

"No body can expect such behaviour from you from the nature of the consignment that has reached at Khulna, it is beyond imagination. The parties would not have suffered such a heavy loss if you would have paid a little attention towards the weightage of the consignments so despatched. Besides one or two tins not a single tin had been sold. We informed you in all its particular details now do the needful."

In this context Mr. Israrul Hossain produced a chart prepared from the account books of respondent No. 1 which is quite i4formative. The highest sale of 9111 tins of Jahaj Marka Al‑katra in undivided India was in 1942, In the succeeding years the sales decreased as follows:

As the trade mark of respondent No. 1 was not registered he could successfully oppose the application moved by the appellant for registration of his mark only by showing that it was likely to deceive or to cause confusion or otherwise be disentitled to protection in a Court of justice as laid down in clause (a) of section 8. Such a conclusion could be reached only if respondent No. 1 bad succeeded in establishing the reputation of his mark to the extent that the user of a similar trade mark by the appellant was likely to deceive an unwary customer. Even an averment of passing off was not made in the objection petition or the affidavits filed in support thereof by the respondent No. 1.

Thus even if the documentary evidence and the affidavits filed by respondent No. 1 were legally admissible, they did not lend to the findings recorded by the Deputy Registrar and affirmed on appeal by the High Court. Respondent No. 1 himself did not base his opposition on the use of his mark earlier than the appellant, but maintained that by long and continuous user throughout India and the territories now constituting Pakistan, his mark bad become intimately associated in the minds of the public and the traders with his products and that the user of a similar mark by the appellant was likely to deceive and confuse in the minds of the customers his goods with the goods of the appellant.

It has been noticed that the supplies made by respondent No. 1 to East Pakistan since 1948 were scanty and stopped altogether in 1952. Consequently when the appellant applied for registration of his mark in 1953 the goods of respondent No. 1 were not available in the market. In the circumstances them was no likelihood of deception' or confusion' as contemplated in section 8(a). But the Courts below upheld the opposition by respondent No. 1 merely on .the basis of his use from an earlier date of the mark with the device of a ship than on the volume of goods sold by him in East Pakistan for a number of years before the appellant approached the Deputy Registrar for registration of his mark. If mere use from an earlier date alone were to satisfy the requirements of section 8, then no one need have his mark registered under the Trade Marks Act at all.

Another relevant circumstance in favour of allowing the appeal is that for the last seventeen years respondent No. 1 has sold no goods in East Pakistan. In re : Helena, Rubinstein Ltd.'s application (1963 R P C 229) for the registration of a trade mark Lloyd‑Jacob, J., allowed registration of a similar trade mark inter alia for the reason of time interval between the date of application and the hearing of the opposition. In setting aside the order of the Assistant Controller who had refused registration it was observed by the learned Judge:

"in the present case; the time interval between the date of application for this trade mark and the date of hearing of the opposition has allowed a period of upwards of two year wherein the goods of both parties have been sold side by side in the same shops under their respective marks, and a number of declarants have stated their experience of such trading. They all declare that their assistants and their customers have found no difficulty arising from this conjoint use. Such practical experience is a more reliable guide than the anticipatory fear of the Opponents' declarants."

In the present case the goods of the appellant alone were in market for quite some time when he applied for registration of his trade mark on 30th December 1953, and sixteen years have passed since then. Mr. Israrul Hossain also relied on the following decisions for the proposition that the applicant's right to registration is not affected by the opponent's user abroad. In re : an application by Notox Ltd., ((1931) 48 R P C 168) for a Trade Mark Impex Electrical Limited v. Weibbum ((1927) 44 R P C 405) and S. M. Taufiq and others v. National Biscuit Company, New York (P L D 1962 Kar. 355). The principle enunciated in these judgments has, however, no application to the present case as the opposition by respondent No. 1 was not based on the reputation of his mark in India or elsewhere, but in the territories constituting East Pakistan.

Thus from all points of view, there was no substance in the opposition by the respondent No. 1 and the appellant was entitled to the registration of his mark. The appeal is, accordingly, allowed, but in the circumstances, we do not burden respondent No. 1 with the costs of these proceedings.

S. Q. Appeal allowed

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