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Trade Mark Appeal No. 3 of 1956, decided on 10th February 1958.
Question of resemblance and likelihood of deception‑Test to determine.
In deciding whether a particular trade mark is likely to deceive or cause confusion, it is not necessary to see if both the Trade Marks are absolutely identical. The question of resemblance and the likelihood of deception are to be considered by reference
not only to the whole mark, but also to its distinguishing or essential features if any. What the Court has to consider in such cases, is
(1) What are the essential and distinguishing features of the Trade Marks
(2) Whether they are used upon the same description of goods.
No man is entitled to represent his goods as being the goods of another man, and no man is permitted to use any mark, sign or, symbol, device or other means, whereby, without making a direct false representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer.
Where the‑marks are plainly calculated to lead to confusion and deception and the similarities are so close as to make it impossible to suppose that such marks were devised independently of each other, the Registrar would be justified in refusing to register a trade mark.
Discretion of Registrar should not be interfered unless Registrar's conclusion found absolutely wrong‑Delay by Trade Marks Department in disposing of application for registration deprecated.
The Registrar in coming to the conclusion whether a trade mark should or should not be registered, exercises the discretion vested in him by statute and the Court in appeal should always be extremely loath to interfere with that discretion. Such discretion should not be interfered with unless the Court comes to the conclusion that the Registrar in coming to the conclusion that he did was clearly wrong or patently in error.
A delay of seven years by the Trade Marks Department in disposing of an application for registration of trade marks was condemned by the High Court.
James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd., A I R 1951 Bom. 147 ; Saville Perfumery Ltd. v. June Perfect Ltd. and F. W. Woolworth an& Co. Ltd., (1941) 58 R P C 147 ; Singer Manufacturing Company v. Loog (1880) 18 C D 396 (412) and V. S. Subbiah Nadar, Administrator of the Estate of T. P. Sokkalal Ram Sait v. E. P. Kumaraval Nadar and others A I R 1946 P C 109 (112) followed.
James Crossley Eno. v. William George Dunn 1890 Appeal Cases 252 ref.
Asrarul Husain with Maksumul Hakim and K. Hossain for Appellant.
Jani Alam Assistant Government Pleader for Respondent No. 1.
S. R. Pal with A. Ahad and Syed Muhammad Hussain for Respondent No. 2.
‑This is an appeal from an order of the Deputy Registrar, Trade Marks, whereby he rejected the application of the appellant, M/S. Aluminium Products Ltd.; Chittagong (hereinafter referred to as Company), for registration of a Trade Mark.
2. On 9th November 1949, the said Company applied for registration of a Trade Mark adopted by them in respect of aluminium wares produced and marketed by them. A similar Trade Mark was already registered by M/S. Jewanlal (1929) Ltd., (hereinafter referred to as Jewanlal) and hence the Deputy Registrar came to the conclusion that the mark, which the petitioners sought to register, was likely to deceive and cause confusion and, therefore, he refused to register the proposed Trade Mark.
3. The Deputy Registrar has refused to register it under section 10 (1) of, the Trade Marks Act, 1940, which runs as follows
" Save as provided in subsection (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or which so nearly resembles such trade mark as to be likely to deceive or cause confusion."
4. Mr. Asrarul Hossain, the learned Counsel for the appellant, has contended that the Trade Mark of the Company is not identical with the Trade Mark of Jewanlal and hence the Deputy Registrar was not justified in refusing to register his client's Trade Mark.
5. Chagla, C. J. while considering section 10 (1) in the case of James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd. (A I R 1951 Bom. 147), observed as follows at page 152
" Now in deciding whether a particular trade mark is likely to deceive or cause confusion, it is not sufficient merely to compare it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the former trade mark. What is important is to find out what is the distinguishing or essential feature of the trade mark already registered and what is the main feature or the main idea underlying that trade mark, and if it is found that the trade mark whose registration is sought contains the same distinguish ing or essential feature or conveys the same idea, then ordinarily the Registrar would be right if he came to the conclusion that the trade mark should not be registered. The real question is as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would re‑act to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing. It is impossible to accept that a man looking at a trade mark would take in every single feature of the trade mark. The question would be, what would he normally retain in his mind after looking at the trade mark What would be the salient feature of the trade mark which in future would lead him to associate the particular goods with that trade mark"
6. In this connection, reference may also be made to the following observations of the Master of the Rolls in Saville Perfumery Ltd. v. June Perfect Ltd. and F. W. Woolworth & Co. Ltd. ((1941) 58 R P C 147).
" Now the question of resemblance and the likelihood of deception are to be considered by reference not only to the whole mark, but also to its distinguishing or essential features, if any."
The Master of the Rolls then says
" In such cases the mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection. Such a feature is referred to sometimes as the distinguishing feature, sometimes as the essential feature of the mark."
7. We respectfully agree with the above observations. It is, therefore, not necessary to see if both the Trade Marks are absolutely identical What we have to consider is
(1) What are the essential and distinguishing features of the 'Trade Marks
(2) Whether they are used upon the same description of goods
The two Trade Marks may be described as follows :‑
Proposed Trade Mark of the Company :‑
Contains a Crown inside a circle. There is a small crescent and a star on the top of the Crown, the words "Aluminium Products Ltd., Chittagong" are printed outside the circle and the said words are enclosed by another circle. Registered Trade Mark of Jewanlal :‑Consists of the device of a circle containing a drown. The words "Crown Brand Guaranteed Pure" are printed out side the circle and the said words are enclosed by another circle.
8. Both the Trade Marks are impressed on the same class of goods, namely, Aluminium utensils. Jewanlal's Trade Mark was registered in India in 1924. After partition, the said Trade Mark was registered in Pakistan under Section 5 (3) of the Trade Marks (Invalidation and Summary Registration) Act, XXXVII of 1950, and, on the expiry of its registration on 30th June 1951, it was renewed under proviso to section 6 for 25 years.
9. Looking at both the Trade Marks, one comes to the unhesitating conclusion that Crown is the dominant feature in both the Marks. That the parties also intended it to be so is apparent from the fact that Jewanlal printed the words "Crown Brand " round the Crown and the Company also described their utensils as "Crown Brand", as would appear from their letter heads. The Crown, therefore, seems to be the particular feature of the Trade Mark by which the goods are identified. Applying the test laid down in Saville Perfumery Ltd. and in the Bombay case, we find that it is the Crown in both the Marks which strikes the eye and fixes itself in the recollection. Furthermore, the two Trade Marks very much resemble in shape and in the position in which it is placed in the utensils. The goods manufactured by the Company and Jewanlal are of the same class and character. The cumulative effect of the similarity between the two Trade Marks may, therefore, lead any unwary customer to mistake the Company's goods as Jewanlal's goods.
10. The principle of law, which would govern such cases, has been stated by James, L. J., in Singer Manufacturing Company v. Loog ((1880) 18 C D 396 (412)), as follows
" . no man is entitled to represent his goods as being the goods of another man ; and no man is permitted to use any mark, sign or symbol, device or other means, whereby without making a direct false representation himself to a 6 purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer. That being, as it appears to me, a comprehensive statement of what the law is upon the question of trade‑mark or trade designation, I am of opinion that there is no such thing as a monopoly or a property in the nature of a copyright, or in the nature of a patent, in the use of any name. Whatever name is used to designate goods, anybody may use that name to designate goods ; always subject to this, that he must not, as I said, make directly, or through the medium of another person, a false representation that his goods are the goods of another person."
11. Applying the law as stated above to the proposed Trade Mark, it appears to us that they are bound to deceive the customers in believing that they are buying goods manufactured by Jewanlal. A similar question arose in connection with the similarities between the two rival marks and in that connection Sir John Beaumont, while delivering the opinion of the Judicial Committee, observed in the case of V. S. Subbiah Nadar, Administrator of the Estate of T. P. Sokkalal Ram Sait v. E. P. Kumaraval Nadar and others (A I R 1946 P C 109 (112)) as follows
" Their Lordships have no hesitation in holding that the general effect on the mind of anybody dealing in beedies would be to confuse the beedies sold under the marks and labels of the defendants with those sold under the plaintiff‑s trade‑mark, and both Courts in Ceylon appear to have been of that view. In their Lordships' opinion, the marks are plainly calculated to lead to confusion and deception and the similarities are so close as to make it impossible to suppose that such marks were devised independently of each other. In the absence of any evidence of a common origin, the conclusion must be that one party copied the mark of the other."
12. We have already pointed out the salient and distinguish ing features as well as the similarities of the two Trade Marks. We think that the above observations of the Privy Council are also fully applicable to this case. We therefore, cannot avoid the conclusion that the proposed Trade Mark is not only a colourable imitation of the registered Trade Mark of Jewanlal but is also calculated to deceive the customers. In these circumstances, the Deputy Registrar was justified in rejecting [his petition under section 19 (1) of the Trade Marks Act of 1940.
13. The learned Counsel for the appellant has next contended that the Registrar should have registered the Trade Mark under section 10 (2), of the Act which is as follows :‑
" In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose."
14. As this is not a case of honest concurrent use, the above subsection has no application here. In the particulars supplied by‑the Company along with his petition, item No. 4 is as follows
" Date of user, if any . . . . . . Nill."
Jewanlal got his Trade Mark registered in 1924. This application was made in 1949. Hence, no question of honest concurrent use arises in this case. Furthermore, in such matters, the Registrar has complete discretion. The House of Lords in the Case of James Crossley Eno. v. William George Dunn (1890 Appeal Cases 252), while dealing with the power of the Comptroller under sections 72 and 73 of the Patents, Designs, and Trade Marks Act, 1883, observed at page 261
" These sections prohibited the registration of a trade mark in certain specified cases : but there is no duty cast upon the Comptroller of registering every other trade‑mark that may be applied for. On the contrary, whilst he is in certain cases prohibited from registering, a discretion whether to register or not appears to me to be in all cases plainly conferred. Ofcourse, this discretion must be reasonably and not capriciously exercised ; but it is, in my opinion, a reasonable exercise of it to refuse registration when it is not clear that deception might not result from it."
Similarly, Chagla, C. J., observed in the case of James Chadwick and Bros. Ltd. v. The National Sewing Thread Co. Ltd.
" The Registrar, in coming to the conclusion whether a trade mark should or should not be registered, exercised the discretion vested in him by statute and the Court in appeal should always be extremely loath to interfere with that discretion. The authorities clearly lay down that discretion should not be interfered with unless the Court comes to the conclusion that the Registrar in coming to the conclusion he did was clearly wrong of patently in error."
In this case, we are satisfied that the Registrar has not used his discretion arbitrarily or capriciously.
15. In the result, this appeal must be dismissed.
16. We, however, refuse to give any costs to the respondent- Registrar of the Trade Marks, because his Deputy took nearly seven years to dispose of this simple application. We note with regret that this Department is not yet fully alive to its duties and responsibilities. Such a long delay is not only detrimental to the interests of the Company applying for .registration of the trade mark but also of the parties who opposed such registration. We can only hope that we shall not have occasion in future to comment on the working of this Department. A copy of our judgment may be sent to the Ministry dealing with this Department.
Z. A. S.
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