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Miscellaneous Appeal No. 38 of 1962, decided on 29th May 1963.

‑Notice in "prescribed manner"‑"Manner" does not necessarily mean form".

The King v. Lincolnshire Appeal Tribunal (1917) 1 K B 1 ref.

Suo motu notice under S. 46(4) by Registrar who himself had registered Trade Mark‑Burden on Registrar to prove that Trade Mark was not validly registered‑Phonetic similarity not noticed by Registrar at time of registering Trade Mark‑Holding of phonetic similarity subsequently to be transparent by Registrar, held, not adequate rebuttal of presumption under S. 23.

Nims : "Unfair Competition and Trade‑Marks", 2nd Vol., pp. 1048, 1047 & 1018 ref.

Test of deception for purpose of Trade Marks Act (V of 1940)‑Not what thoughtful persons would take it to be but how mind of common consumer is affected by impugned Mark‑Trade Marks Act (V of 1940).

I. Mahmood for Appellants.

Ramzan Khatri for Respondent.

Dates of hearing : 4th February, 4th March and 2nd and 3rd April 1963.

This is an appeal under section 76 of the Trade Marks Act, 1940, against the order of the Deputy Registrar of Trade Marks, dated the 26th of February 1962, by which he removed the mark "BENAVELL" which was registered under No. 23423.

2. The facts which form the background are that the appellant made an application for the registration of the above mentioned trade mark on the 7th of March 1955. It was examined by the same officer who has removed it on the 26th of February 1962. The trade mark was advertised in the Trade Marks Journal under section 15 of the Trade Marks Act, 1940, and there was no opposition to it. A certificate of registration was, therefore, issued on. the 15th of November 1958, and the date of registration was declared in the certificate, in terms of section 16 of the said Act, to be the 7th of March 1955. On the 5th of May 1961, the Registrar of Trade Marks caused a notice to be issued under section 46(4) of the said Act calling upon the appellant to show cause as to why the entry in the Register of the mark "BENAVELL" should not be removed and pointing out that the word "BENAVELL" was phonetically similar to the word "BENAULA", which means cotton seed and which is an important ingredient of edible oils. The notice further pointed out that the word "BENAVELL" had a direct reference to the character or quality of Ghee or edible oils and as such was likely to cause confusion and deception amongst the consumers and embarrassment to the traders who dealt in those goods. The mark was stated in the notice to have been registered without a sufficient cause and to have wrongly remained on the Register. Every effort was thus made to convey by the notice to the appellant that the mark was registered by error inasmuch as its marked phonetic similarity to "BENAULA", which is an important ingredient of edible oils, was not noticed and that the word was taken by mistake to have been truly invented. The appellant appeared in response to the notice before the Deputy Registrar and contested the legality of the proposed action, but the contentions of the appellant were overruled and the mark was removed from the Register, as stated above.

3. In order to appreciate the legal implications of the stand taken by the Registrar and the Deputy Registrar and of the contentions raised by the appellant, it is necessary to refer to sections 46, 23 and 24 of the Trade Marks Act, 1940. They are as follows :‑

Section 46."(1) On application in the prescribed manner by any person aggrieved to a High Court or to the Registrar, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention of, or failure to observe a condition entered on the register in relation thereto.

(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it may think fit.

(3) The tribunal may in any proceeding under this section decide any question that it may be necessary or expedient to decide in connection with the rectification of the register.

(4) A High Court or the Registrar, of its or his own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in subsection (1) or subsection (2).

(5) Any order of the Court rectifying the register shall direct that notice of the rectification shall be served upon the

Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly."

"In all legal proceedings relating to a trade mark registered under this Act, the fact that a person is registered as proprietor thereof shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof."

"In all legal proceedings relating to a registered trade mark, the original registration of the trade mark shall after the expiration of seven years from the date of such original registration be taken to be valid in all respects unless such registration was obtained by fraud, or unless the trade mark offends against the provisions of section 8."

4. The appellant had raised a few preliminary objections of a technical nature to the procedure adopted by the Registrar and the Deputy Registrar, and had also contended that the mark could not be removed on merits. The Deputy Registrar has overruled the technical objections and given reasons in a well written order in support of the removal of the mark from the Register. The reasons given by him in support of the removal can be summarised in his own words by reproducing a few sentences from his order, as follows :‑

"The Registrar's attention being drawn to this mark, he acted, as in duty bound, under the provisions of section 46(4), and took steps to correct the mistake by issuing a notice to rectify the Register.

The Registry is not infallible and it may occur sometimes that the thin veil of disguise hoodwinks the examiner concerned.

Though visually the similarity is not obvious, the phonetic likeness is transparent.

I hold accordingly that BENAVELL is .phonetically similar to Benaula and cannot be considered as invented word.

He (the Advocate) said that it (BENAVELL) is a compound of the first syllable BEN from Benaula and of AVELL which is the final syllable of VERAVELL the place in India from which the applicants (the present appellant) hail. Admittedly, this is a plausible explanation, but I cannot permit this elucida tion to overcome the objection that the word "BENAVELL" is phonetically similar to "BENAULA. . . . .. . .

The word BENAVELL varies very slightly from the originating word BENAULA and retains its phonetic similarity.

In view of my finding that it is not an invented word but phonetically similar to a descriptive word, I hold it is an entry made without sufficient cause.

I have also considered the balance of convenience, the purity of the Register and the interests of other traders."

5. In this appeal against the above order, learned counsel for the appellant has not repeated all of the preliminary technical objections which were taken before the Deputy Registrar and has mainly criticised his order on merits.

6. One preliminary objection of a technical nature was pressed before me to begin with. It was that in terms of sub section (4) of section 46, the Registrar could give "notice in the prescribed manner" only. The expression "prescribed manner" has also been used in subsection (1) of section 46 with reference to the applications of those who may be aggrieved by wrong entries in the Register, and the form of such applications has been prescribed in the Trade Marks Rules, 1942, but no form of the notice that is issuable under section 46 (4) has been prescribed therein. As the Registrar could give a notice, in terms of subsection (4) of section 46, in a prescribed form only, he was not competent, according to counsel, to take action under that subsection in the absence of such a form. It is not clear to me as to in what form this objection was raised before the Deputy Registrar, but he has met it in his order as follows :‑

"He (the Advocate) complained that section 46(4) states that the notice should be in prescribed form' but conceded that no form was in fact prescribed."

This answer to the objection that was raised before me is not satisfactory because what is said to have been conceded before the Deputy Registrar was pressed before me as the essence of the objection. I, therefore, requested Dr. Mahmood, who appeared before me on behalf of the appellant, to discuss the implications of the objection so that it would be clear as to whether as a result of the absence of a prescribed form' the Registrar was incompetent to act under section 46(4) or not. I granted him time for preparing himself to discuss this point of law, but he ultimately expressed his inability to support his contention by any precedent or by further discussing the principle of law. Feeling the pressure of my demand in this respect, he almost abandoned the objection.

7. But I was not satisfied with this situation, and have been able to find a relevant precedent in The King v. Lincolnshire Appeal Tribunal ((1917) 1 K B 1 at pp. 9, 10 and 14). The sole point for consideration in that case was as to whether an appeal, which was required by Regulation 19 in Part I, section 11 of the Schedule to the Military Service (Regulations) Order, 1916, to be delivered "in the prescribed form, in duplicate" was a condition precedent to the exercise of the right to appeal and of the exercise of jurisdiction by the Appeal Tribunal or not. The Appeal Tribunal for Lincolnshire had allowed that appeal without the prescribed form; therefore, rule nisi was issued calling upon the Tribunal to show cause why a writ of certiorari should not be issued to remove to the King's Bench Division of the High Court that order of the Tribunal. Lord Reading, C. J., and Avory and Low, JJ., heard the parties and discharged the rule. Lord Reading, C. J., pointed out that "compliance with every letter of the regulation could not be regarded as a condition precedent to the exercise of jurisdiction". The order was confirmed in appeal by Swinfen Eady and Bankes, L. J. J. and Lawrence, J. It was pointed out that the right of appeal was distinct from the manner in which the appeal was to be preferred. The intention of the regulation having been complied with, the requirement of the form was to be treated as directory only. Bankes, L. J. observed that‑‑

"there are a number of cases in the books where non compliance with regulations has deprived an Appellate Court of jurisdiction ; it will be sufficient to refer to Lockhart v. Mayor of St. Albans (1888) 21 Q B D 188. And there are cases in‑ which regulations have been held imperative as to part and directory as to part; of these an example is Hughes v. Wavertree Local Board 10 T L R 357. And there are many cases also in which they have been held to be directory only",

and proceeded to explain that absolute right to appeal having been conferred, it was plain "that the Legislature was there contemplating regulations which should be merely directory".

8. In the present case, jurisdiction is conferred by sub section (4) of section 46 on the High Court and the Registrar to give notice to the parties and after giving them an opportunity of being heard, to make any order referred to in subsection (1) or subsection (2). The nature of the order is thus controlled by the latter two subsections. The authority to give notice, there fore, and to make any order of the nature referred to in A subsections (1) and (2) is not wholly dependent on the form or manner in which the notice is to be given. As I use the word "manner" I find that the weakness of the argument advanced by Dr. Mahmood becomes further exposed, because he has been insisting on the prescribed "form", perhaps, unconsciously making a departure from the language of the provision in which the expression used is "giving notice in the prescribed manner", and not giving notice in the prescribed "form". The manner of giving notice has been prescribed in the rules. A form of application for purposes of subsection (1) has also been prescribed, but this has not been done in compliance with the language of the section, but it has been done in pursuance of rule 65 of the Trade Marks Rules, 1942.

9. The above discussion will show that the argument has proceeded before the Deputy Registrar as well as in this Court entirely on a mis‑apprehension.

10. On merits, Dr. Mahmood stood on strong ground. He contended that according to the Deputy Registrar himself there was no obvious visual similarity between BENAVELL and BENAULA, and that his entire emphasis has been on phonetic likeness. This likeness, which has been described in the order under appeal as "transparent", could not be as clear as that, because the same officer had registered the trade mark in spite of his wide experience and excellent knowledge of the law of Trade Marks. He was,, of course, fallible, but the error committed, if any, did not arise from any misrepresentation made on behalf of the appellant or fraud existing in the situation, but because the likeness was not striking enough to be noticed by him at the time of registration. He has stated in his order that the attention of the Registrar was drawn to the error, but the circumstances in which this was done have not been disclosed. An explanation can be that his attention was drawn to such likeness as exists between the words "BENAVELL" and "BENAULA" but by pondering over it he magnified it in his own mind and began to believe that it was transparently clear. This amounts to a mental prejudice, as has been explained in the following quotation given by Nims in the 2nd Volume of his book Unfair Competition and Trade Marks, at page 1048

"Evidence of deception is hard to deal with. Even where serious deception exists, it may be hard to prove. On the other hand, an honest prejudice easily makes deception imagin able where it does not exist."

Once attention was concentrated on the likeness of the word and prejudice was confirmed by concentration of thought on it, it was more and more difficult for the Deputy Registrar to be impressed by the dissimilarities of the two words. There is no evidence of deception and confusion between the two words and, in the language of Nims, at page 1047, of the said volume

"The absence of such evidence is often the occasion for fervid oratory . . .

The implication of this observation is not that evidence of deception and confusion is essential, but that where there is similarity as well as dissimilarity, the mind may travel in the direction of its inclination irrespective of the sufficiency of the cause which created the inclination. In this case, the same officer who registered the Trade Mark failing to notice any striking similarity, later on when his attention was drawn to the similarities only, thought that they were transparently clear.

11. There is authority in support of the view that he who has to judge should use his own eyes and ears, and that there is no better test than this. For instance Nims has given a quotation at page 1018 of his above‑mentioned volume from a judgment of Justice Field, which is as follows

"The judgment of the eye upon the two is more satisfactory then evidence from any other source as to the possibility of parties being misled so as to take one tobacco for the other ; and this judgment is against any such possibility. Seeing in such case is believing ; existing differences being at once perceived and remaining on the mind of the observer."

He has reproduced another observation by a Court, as follows :

"The eye, at a glance, takes in the whole of one exhibit and the whole of another ; and the comparison thus made of the two is the surest, and the only satisfactory way of satisfying the judgment as to the existence of the alleged deceptive imitation."

This method of judgment is, however, not flawless. One draw back of it is "honest prejudice", to which reference has been made above ; and the other is that it does not "represent business realities", because the ordinary consumer usually acts in his dealings without comparing two marks or two words. He is more urgently concerned with his immediate requirements than attentive to exercise his imagination with regard to what is not at once present before his eyes or to his mind. Even when he compares two Trade Marks, he often does so from memory and not by placing them side by side. I may state candidly that I was not at all impressed when I read the memorandum of appeal that there was any deceptive similarity between "BENAVELL" and "BENAULA", because I did not think at that time of the ingredients of edible oils, but I doubted my view when I read the order of the Deputy Registrar. I, therefore, conclude that the mind can very well be drawn towards the ingredients of edible oils if it is noticed that "BENAVELL" is a variation of "BENAULA", but unless these two thoughts come to the mind, the word "BENAVELL" itself does not strike to be deceptive or confusing. The right course of solving the problem of this hesitancy is to apply the well‑recognised principle that the test of deception for purposes of the Trade Marks Act is not what thoughtful people would take it to be, but how is the mind of the common consumer affected by a mark. In this respect it is important to note that the Trade Mark which has been removed was in use for about seven years, and not a complaint has been received, and no opposition was entered when it was advertised. There is no allegation that the Registrar's attention was drawn towards the possibility of deception by a consumer or a trader.

12. In the above circumstances, the argument of Dr. Mahmood that there is a presumption of validity in favour of this trade mark because of section 23 of the Act gains added weight. Under that section the registration of a Trade Mark is c prima facie evidence that it was validly registered. The burden of proof for rebutting that presumption is on those who question its validity. In this case, the burden has been on the Deputy Registrar himself. He has discharged it by pointing out phonetic similarity, while conceding that there was no obvious visual likeness. The fact that the similarity on which he has now relied was not initially noticed by him, is a proof against its obviousness. His view, therefore, that there is transparent phonetic similarity is not an adequate rebuttal of the statutory presumption. The weakness of the rebuttal becomes more clear when it is noticed that the trade mark has remained on the Register for about seven years and no consumer or trader thought of any deceptive similarity during this long period. If a few more days had been allowed to pass before the order of the Deputy Registrar, the mark would have become immune from criticism in terms of section 24 of the Act.

13. I am inclined, in view of the foregoing, to think that, although there is a phonetic similarity between "BENAVELL" and "BENAULA", it has not deceived anybody, not even the Deputy Registrar himself, until his mind was focused on the similarity obliterating from his view the consideration that the likelihood of deception and confusion was more imaginary and less realistic. I ascribe his present view to an honest prejudice, which should not be allowed to defeat the presumption of section 23 and to injure the immunity granted by section 24, which would have been complete after a week more. In these circumstances, there ought to have been much more than merely conceivable possibilities of deception and simply the inclination of thought that there is likelihood of deception, however, honest that thought may be, because the conception of possibility and the inclination of thought are not supported by a single instance of opposition or of actual deception and have been contradicted by the initial registration. In other words, I am inclined to accept this appeal, not because there is no force in the order of the Deputy Registrar, but because I do not find enough of substance in it to defeat the appeal.

14. The appeal is, therefore, accepted with no order as to costs and the order of the Deputy Registrar is set aside.

K. B. A.

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