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Issues: (i) Whether the registered marks were liable to be removed from the register on the ground of non-use under section 46 of the Trade and Merchandise Marks Act, 1958, and whether the applicant had shown the requisite locus and absence of bona fide use. (ii) Whether the applications for registration of the device and word marks could be allowed, having regard to proprietorship, bona fide intention to use, prior use, and the effect of the consent order.
Issue (i): Whether the registered marks were liable to be removed from the register on the ground of non-use under section 46 of the Trade and Merchandise Marks Act, 1958, and whether the applicant had shown the requisite locus and absence of bona fide use.
Analysis: For removal under section 46, the applicant must establish that it is a person aggrieved, that there has been continuous non-use for the statutory period, and that the non-use is not protected by special circumstances in the trade. In a non-use case, locus is not to be approached with the same breadth as in rectification for an erroneous entry. The expression "use" is not confined to physical sale on the goods; by reason of section 2(2)(b) and section 48(2), permitted use through a registered user is deemed to be use by the proprietor. The record showed continuing negotiations for a registered user arrangement during the relevant period and no intention to abandon the marks. The Court also held that import restrictions and market conditions affecting foreign manufacturers could amount to special circumstances in the trade, and that economic impracticability was not excluded from that concept.
Conclusion: The requirements for rectification on the ground of non-use were not satisfied, and removal of the marks was not justified.
Issue (ii): Whether the applications for registration of the device and word marks could be allowed, having regard to proprietorship, bona fide intention to use, prior use, and the effect of the consent order.
Analysis: An application for registration under section 18 must be independently tested on the applicant's own title and bona fide intention to use. The Court found that Hardie had first devised and used the marks and device, and that Addisons had used them only under the collaboration and registered user arrangements. The aborted assignment did not establish title in Addisons, nor did the consent order amount to proof of bona fide user or bona fide intention to use the device as claimed in the applications. In the absence of a plea or proof of bona fide concurrent user under section 12, and given the continuing prior rights of Hardie, the applications for registration could not be sustained.
Conclusion: The applications for registration were not maintainable and the orders allowing registration were liable to be set aside.
Final Conclusion: The challenge to rectification failed and the challenges to the registration orders also succeeded, with the result that the impugned decisions were set aside and the marks remained protected as registered in Hardie's name.
Ratio Decidendi: In proceedings for removal of a registered trade mark on the ground of non-use, permitted use by a registered user counts as use by the proprietor, absence of intent to abandon is a complete answer, and trade restrictions or comparable commercial conditions may constitute special circumstances in the trade; separate applications for registration must independently satisfy proprietorship and bona fide intention to use, failing which registration cannot be granted.
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