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1985 (9) TMI 340
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....e first instance and still in dispute on appeal was and is not less than Rs.20,000 and that as the judgment in appeal was one of affirmance, the appeal involves a substantial question of law, and (ii) that the case was a fit one for appeal to the Supreme Court. The High Court obserbed: The appeal raises a question of great importance in Trade Marks Law, that is to say whether a proprietor of a trade mark who intends to use it solely by a registered- user is entitled to registration of his trade mark, under Sec. 18 of the Trade Mark Act, or to put it differently, do the words 'proposed to be used by him' in Sec. 18 mean 'proposed to be used by the proprietor, his agents and servant' only.... The case also involves the question of construction of sub- section (2) of Sec. 48 and consideration of the effect of that sub-section on sub-section (1) of sec. 18 of the Trade and Merchandise harks Act, 1958. The questions so posed by the High Court resolve themselves into the following two questions : (1) Whether a proprietor of a trade mark who intends to use it solely by a registered user is entitled to registration of high trade mark under section 18 of the Trade and Merchandise Mark....
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....uently thereto between 1957 to 1961 in about 39 other foreign countries. These countries included Great Britain, Ireland, Belgium, Denmark, France, Holland and other countries in the Continent of Europe, Canada, Mexico, and several countries in south America, Asia and Africa. By an agreement signed on May 16, 1958, effective from November 1, 1957, the Appellant entered into a technical collaboration agreement with the Indian Company. The recitals of the said agreement are material and may be reproduced. They read as follows : WHEREAS, American Home Products Corporation directly or through its wholly owned subsidiaries is one of the leading American manufacturers of drugs, pharmaceuticals, biologicals, vaccines, antibiotics, nutritionals and medicinal preparations and conducts continuously active research in its various Laboratories for the discovery of new and improvement of existing therapeutic products, and WHEREAS, American Home Products Corporation prepared to provide Geoffrey Manners on the terms and conditions of this Agreement the formulae and manufacturing technology and other assistance essential for the efficient manufacture in India of various American home Prod....
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.... the methods being employed and the equipment being used for the Licensed Products. The Appellant further agreed to supply to the Indian company a written description of each process utilized for the production of Licensed Products including flowsheets of processes, necessary test methods and basic specifications for apparatus and equipment unitized in production and that thereafter the Appellant and the Indian Company should furnish each other with all significant information which either of them developed and was free to disclose concerning improvements in the processes and in the equipment, raw materials and intermediates used therein. It was further agreed that before making any offer to a third party or contracting any commitment with a third party for the purpose of manufacture and sale in India of any Whitehall Products, the Appellant would offer to the Indian Company, upon the thermic and conditions set out in the said agreement, the right to manufacture, sell and/or distribute such products in India. In the event of such offer being accepted by the Indian Company in respect of any Whitehall products such product would be deemed a Licensed Product for the purposes of the sa....
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....Indian Company manufactured and marketed the products covered thereunder and got itself registered as the registered user in respect of the trade marks relating to the said goods of which the Appellant was the registered proprietor. The correspondence on the record shows that on and from December 1957 it was decided that the Indian Company should introduce in the Indian market nine new products of the Appellant including 'DRISTAN' tablets. On August 18, 1958, the Appellant filed an application under section 14(1) of the Trade Marks Act, 1940 (Act No. V of 1940) in the prescribed form T-I for registration of the trade mark 'DRlSTAN' in class 5 (which includes pharmaceutical substances) as a medicinal preparation for treatment of respiratory ailments claiming to be the proprietor of the said mark by whom the said mark was proposed to be used. The said application was advertised as required by the Trade Marks Rules, 1942. No notice of opposition to the registration of the said trade mark was filet by anyone and the trade mark 'DRISTAN' was registered by the Registrar of Trade Marks, Bombay, as Trade Mark No 186511 in class 5 on June 8, 1959. With effect from November 25, 1959, the Tra....
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....pany's capital and whose products are manufactured and distributed by us in India. The Indian Company installed the said Stokes machine at its Ghatkopar factory on October 5, 1960 and also informed the appellant that as the said machine was installed, the Indian Company would be working on experimental batches of 'DRISTAN' tablets after completing a few formalities which the Governments It also wrote to the said Home Products International Limited requesting it for a sample of 200 gms of Phenindamine Tartarate U.S.P., one of the ingredients used in the manufacture of 'DRISTAN' tablets. The Indian Company also applied for an import licence for import of Phenylophrine Hydrocloride and Phenindamine Tartarate to the value of Rs. 6,000 and Rs. 12,000 c.i.f. Bombay respectively for the purpose of initial production of 'DRISTAN' tablets. The licence under the Industries (Development and Regulation) Act, 1951 was granted to the Indian Company on January 19, 1961, for the manufacture of 'DRISTAN' tablets to the extent of five lakh tablets per month. Two of the conditions of the said licence were that no royalty would be payable and that the product will be marketed with the trade mark al....
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....e upon the market any goods which do not attain to the standard of quality fixed by the American Company. 4. To ensure maintenance of standards, the Indian Company will submit to the American Company or to laboratories designated by the American Company for test purposes batch samples of the goods manufactured and also permit duly authorised representatives of the American Company to examine and inspect the Indian Company's installations and manufacturing processes and control methods used in the manufacture of the said goods on the premises of the Indian Company at any time. 5. The Indian Company convenants that it will not u e the said Trade hark in any manner whatsoever which may jeopardize the significance, distinctiveness or validity of the said Trade Mark and the Indian Company will take all steps within its power to protect and defend or assist in protecting defending the right of the American Company in and to the said Trade Mark. 6. All use of the said Trade lark by the Indian Company shall clearly show its ownership by the American Company and its ownership by the Indian Company only by permission of the American Company. The Indian Company therefore will apply a....
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....of the registered proprietor in the course of manufacture of the goods and only so long as the registered proprietor has a right to inspect, on the premises of the registered user, the goods, the installations, manufacturing processes and control methods used in the manufacture of the goods and is supplied on request with samples of the goods. In the said application it was stated that the proposed permitted use was without limit of period subject to the right of the registered proprietor, namely the Appellant, to apply for cancellation of the registered user forthwith after giving ninety days notice in writing to the Indian Company. The said application was accompanied by an affidavit of Kenneth A. Bonham, the executive Vice President of the Appellant, affirmed on October 18, 1961, that the trade mark 'DRISTAN' was not till then used in India. In view of the said rectification proceedings, the said application for registering the Indian Company as registered user of the trade mark 'DRISTAN' was not processed but kept pending until the final decision of the Rectification Application made by the First Respondent. On December 7, 1964, the Registrar of Trade Marks, Calcutta, dismis....
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....the goods is to be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods . Clauses (q), (r) and (s) of section 2(1 define the expressions registered proprietor , registered trade mark and registered user . They read as follows : "(q) 'registered proprietor', in relation to a trade mark, means the person for the time being entered in the register as proprietor of the trade mark; 'registered trade mark' means a trade mark which is actually on the register; (s) 'registered user' means a person who is for the time being registered as such under section 49 . Clause (x) of section 2(1) defines the expression tribunal as meaning the Registrar or, as the case may be, the High Court, before which the proceeding concerned is pending . The other definition which is relevant for our purpose is that of the expression permitted use contained in clause (m) of section 2(1). That definition is as follows : (m) 'permitted use', in relation to a registered trade mark, means the use of a trade mark - (i) by a registered user of the trade mark in relation to goods (a) with which he is connected in the course of trade; ....
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....tering it shall apply in writing to the Registrar in the prescribed manner, and subject to the provisions of this Act, the Registrar may refuse the application or may accept lt absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit- It is pertinent to note that both under section 141) of the 1940 Act and section 18(1) of the 1958 Act, an application for registration must be a person claiming to be the proprietor of a trade mark used or proposed to be used by him. Therefore, unless it is the case of an applicant for registration that he is the proprietor of a trade mark which has been used by him or which is proposed to be used by him, he is not entitled to registration. Admittedly, in this case the trade mark 'DRISTAN' was not at any time used by the Appellant in India at the date when it made its application for registration on August 18, 1958, nor did it claim in its application that the said trade mark had been 80 used by it. that was stated in the said application as that the said trade mark was proposed to be used by it. Once an application for registration is made a accepted by the registrar, the Registrar has to cau....
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....ht of action against any person for passing off goods as the goods of another person or the remedies in respect thereof is not affected by reason of the fact that his trade mark is an unregistered one. Under section 28(1) of the 1958 Act, subject to other provisions of the Act, the registration of a trade mark, if valid, gives to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of that a company is about to be formed and registered under the Companies Act, 1956, and that the applicant intends to assign the trade mark to- that company with a view to the use thereof in relation to those goods by the company. (2) The tribunal may, in a-case to which sub-section (1) applies, require the applicant to give security for the costs of any proceedings relative to any opposition or appeal, and in default of such security being duly given may treat the application an abandoned. (3) Where in a case to which sub-section (1) applies, a trade mark in respect of any goods is registered in the name of an applicant who relies on intention to assig....
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....thout any bonafide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of section 45 apply, by the company concerned, and that there ha, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or (b) that up to a date one month before the date of the application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being: Provided that, except where the applicant has been permitted under sub-section (3) of section 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period,....
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....een the parties complies with the conditions laid down in the rules for preventing trafficking in trade marks. (2) The permitted use of a trade mark shall be deemed to be use by the proprietor thereof, and shall be deemed not to be use by a person other than the proprietor, for the purposes of section 46 or for any other purpose for which such use is material under this Act or any other law. Section 49 prescribes the procedure for registration of a registered user and is in the following terms : 49. Application for registration as registered user.- (1) Where it is proposed that a person should be registered as a registered user of a trade mark, the registered proprietor and the proposed registered user shall jointly apply in writing to the Registrar in the prescribed manner, and every such application shall be accompanied by - (i) the agreement in writing or a duly authenticated copy thereof, entered into between the registered proprietor and the proposed registered user with respect to the permitted use of the trade mark; and (ii) an affidavit made by the registered proprietor or by some person authorised to the satisfaction of the Registrar to act on his behalf,- ....
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....stered users of the trade mark, if any. As we have seen, before a person can be registered as a registered user of a registered trade mark, the registered user's agreement between the parties is to comply with the conditions laid down in the Rules for preventing trafficking in trade marks. section 133 confers upon the Central Government, by notification published in THE Official Gazette and subject to the condition of previous publication" the power to make rules to carry out the purposes of the 1958 At. Under section 134, all rules so made are to be laid for not less than thirty days before each house of Parliament as soon as may be after they are made and are to be subject to such modification as Parliament may make in the session in which they are so laid or the session immediately following In exercise of this power the Central Government has made the Trade and Merchandise Marks Rules, 1959. Chapter V of these Rules consisting of Rules 82 to 93 relates to registered users. Under Rule 82, an application for registering a person as a register user is to be made in Form TM-28 jointly by the proposed registered user and the registered proprietor of the trade mark and is to be ac....
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....gard shall be had, besides the matters SEL out in Explanation I to the following further matter, namely, whether the registered proprietor has obtained assignment of other registered trade mark and if o, whether he has dealt with such other marks by way of assignment or registered user. Three grounds were taken in the First Respondents Application for Rectification. lt will facilitate an understanding of the controversy between the parties if we were to reproduce these grounds. They are : (i) 'That the said trade mark 'DRISTAN' is deceptively and confusingly similarity the mark 'BISTAN' Registered under No 122391 in class 5 (advertised in T.M. Journal No. 47) in the name of Messrs Prof. Gajjar's Standard Chemical Works Ltd., of Bombay. The said trade mark 'BISTAN' has been used and is being used by its said proprietors in respect of their medicinal preparation since several years pat. (ii) That the Registered Proprietor on the said trade mark 'DRISTAN' alleged in the said opposition No. Bom. 76 that the said trade mark 'DRUSTAN' is deceptively similarity the said trade mark 'TRISTINE' which the Applicants have lawfully been using since October 1960 in respect of their medicin....
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....f the proceedings, a carton of 'DRISTAN' tablets was filed along with an affidavit made on behalf of the First Respondent. The legend upon the said carton read as follows : MADE IN INDIA BY ; GEOFFREY MANNERS & CO. LIMITED, Magnet House, Doughall Road, Bombay for the Proprietors Whitehall Laboratories, New York, N.Y., U.S.A." The Registrar held that Whitehall Laboratories was not a separate legal entity and, therefore, the mark could not be registered in its name but only in the name of the Appellant of which it formed a par and accordingly the Registrar ordered the entry in the Register relating to the Trade Mark 'DRISTAN' to be varied by amending the registered proprietor's name to read as 'American Home Products Corporation ( a corporation organised under the laws of the State of Delaware, United States of America) trading as Whitehall Laboratories . In the appeal filed by the First Respondent against the order of the Registrar the learned single Judge held that at the date of the making of the application for registration the Appellant did not have a bona fide intention to use the trade mark 'DRISTAN', by itself. In coming to this conclusion the learned Single Judge relie....
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....om registering his mark if he intends to use it only through a registered user even when a user is available who is ready and willing to be registered on terms which are unexceptionable, is a situation fraught with three-quarters irony and the rest unconscious humour. It is not for the Courts of Law to provide relief where relief should be provided by the legislature by ignoring a conscious departure the statute has made, strain its construction and assume powers which ore properly belong to the legislature." (Emphasis supplied.) proper construction of the relevant sections of the 1958 Act shows that there is neither any cause for sardonic merriment nor any need to shed tears. The submissions made at the hearing of this Appeal by Mr. F.S. Nariman, learned counsel for the Appellant, may be thus summarized : 1. The leal fiction created by sub-section (2) of section 48 is, as expressly stated in that sub-section, for the purposes of section 46 or for any other purpose for which such use is material under the 195 Act or any other law. To confine this fiction to a case of an actual use of a trade mark by a registered user is to confine it only to use for the purposes of clause ....
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....posed to be used" cannot possibly mean proposed to be used by a proposed registered user 3. To permit a trade mark to be registered when the applicant himself does not propose to use it but proposes to use it through someone else who would subsequently be registered as a registered user would be to permit trafficking in trade marks which is contrary to the policy underlying the Trade Marks laws. 4. The only case in which the 1958 Act permits the registration of a trade mark when the applicant for registration does not intend to use it himself but intends to use in through another is the one set out in section 45, namely, where the Registrar is satisfied that a company is about to be formed and registered under the Companies Act, 1956, and the applicant intends to assign the trade mark to that company with a view to the use thereof by the Company. 5. The 1958 Act is, as the 1940 Act was, based upon the English Trade Marks Act , 1938, and the decision in the 'PUSSY GALORE' Trade Mark Case concludes this point against the Appellant. 6. The Shavaksha Committee Report and the Ayyangar Report show the legislative intent not to allow a proposed use by a proposed registered use....
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.... The first case is set out in clause (a of section 4(1) and the second in clause (b of that sub- section. There are two conditions to be satisfied before clause (a) can become applicable. These conditions are 1. that the trade mark was registered without any bona fide intention on the applicant for registration that it should be used in relation to those good `by him, and 2. that there has, in fact, been no bona fide use of that trade mark in relation to those good by any proprietor thereof or the time being to a date one month before the date of the application under section 46(1) The only exception to the first condition set out above is of a case to which the provisions of section 45 apply, that is, if the trade mark of which registration is sought is proposed to be used by a company which is about to be formed and registered under the Companies Act, 1956, and to which the applicant intends t() assign the trade mark. Both the conditions set out in clause (a) are cumulative and not disjunctive. Clause (a), therefore, will not apply where even though there had been no bona fide intention on the part of the applicant for registration to use the trade mark but, in fact, there ....
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....ne month after the expire of such period. the person seeking to have the trade mark removed from the Register has only to prove such continuous non-user and has not to prove the lack of a bona fide intention on the part of the registered proprietor to use the trade mark at the date of the application for registration. Where, however, the non-user is for a period of less than five years, the person seeking to remove the trade mark from the Register has not only to prove non-user for the requisite period but has also to prove that the applicant for registration of the trade mark had no bona fide intention to use the trade mark when the application for registration was made. The reason why the two conditions specified in clause (a) are made cumulative is obvious. As the definition of trade mark" contained in clause (v) of section 2(1) shows, a trade mark is a mark used or proposed to be used in relation to 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 to use the mark. It is, therefore, not necessary for the purpose of registering a trade mark that those goods should be in existence at ....
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....the Trade Marks Registration Act, 1875, which was soon replaced by more detailed and advanced legislation. When a person gets his trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark gives him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction, damages or an account of profits made by the other person. In such an action, the registration of a trade mark is prima facie evidence of its validity. After the expiry of seven years from the date of the registration a trade mark is to be valid in all respects except in the three cases set out in section 3. The proprietor of an unregistered trade mark whose mark is unauthorisedly used by another cannot, however, sue for the infringement of such trade mark. His only remedy lies in bringing a passing-off action, an inconvenient remedy as compared to an infringement action. In a passing-off acti....
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.... money out of it by selling to others the right to use it would be trafficking in that trade mar. In Re American Greetings Cor Application, [1983] 2 ALLEY. ALL E.K. 609, 619, Dillon, L. J., said in the Court of Appeal : "Trafficking in a trade mark has from the outset been one of the cardinal sins of trade mark law. but there is no statutory definition of trafficking, and one may suspect that, as with usury in the middle Ages, though it is known to be a deadly sin, it has become less and less clear, as economic circumstances have developed, what the sin actually comprehends. Trafficking must involve trading in or dealing with the trade mark for money's worth, but it is not all dealing with a trade mark or money that is objectionable,, since it has always been accepted that it is permissible o sell trade mark together with the goodwill of the business in the course of which the trade Mark has teen used. (Emphasise supplied.) In the same case, Lord Brightman in the house of Lords, [1984] 1 All E.K.. 426,433, summed up the position in law thus: ....
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....tion which will fall to be determined is whether this intention was an intention on the part of the Appellant to use the said trade mark itself or to use it through a registered user and if he intention was to use it through a registered user, whether clause (a) of section 46(1) would be attracted. The third question will be whether such intention on the part of the Appellant was a bona fide one. Intention is a state of mind. No person can make out the state of mind of another person. None the less courts are often called upon for various purposes to determine the state of a person's mind. The Courts can only do so by deducting the existence of a particular state of mind from the facts of a case section 14 of the Indian Evidence Act, 187, provides as follows: "14. Facts Showing existence of state of mind, or of body or bodily feeling.- Facts showing the existence of any state of mind, such as intention, knowledge, good faith, negligence, rashness, ill-will or good-will towards any particular person, or showing the existence of any state of body or bodily feeling, are relevant, when the existence of an....
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....s thus admissible to prove intention under s. 14 Evidence Act.' (Emphasis supplied.) Dr. Gauri Shankar then submitted that in any event facts subsequent to the date of the First Respondent's Application for Rectification, namely, April 1, 1961, could not be looked at by the Court. We are equally unable to agree. As we nave pointed out earlier, where a trade mark has been registered on the round that the applicant for registration proposes to use such trade mark, a trade rival in order to cause vexation and harassment to the registered proprietor can file his application immediately after the expiry of one month from the date of the order registering the trade mark. As pointed out by us, where a trade mark is proposed co be used, the manufacture and marketing of goods in relation to which such trade mark is proposed to be used SL of necessity case time; and not to look at events subsequent to the date of the Application for Rectification would result in great injustice It was next submitted by Dr. Gauri Shankar that for the purpose of ascertaining the intention of the Appellant, the Court cannot look at the technical collaboration agreement and the registered user agreement in....
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.... the trade mark 'DRISTAN REGISTERED i the United States of America and in several other countries. technical collaboration between the Appellant and the Indian. Company commenced from November 1, 1957, and an agreement in that behalf was signed on May 16, 1958. In pursuance of the said collaboration agreement the Indian Company manufactured and marketed several products of the Appellant. The Appellant got registered its trade marks in respect of such products and the Indian Company was registered as the registered user in respect of such trademarks. As early as December 1957, it was decided that the Indian Company should introduce in the Indian market nine new products of the Appellant including 'DRISTAN' tablets. On August 18, 1958, the Appellant filed an application for registration of the trade mark 'DRISTAN' and the said trade mark was duly registered on June 8, 1959. Dr. Gauri shankar, however, submitted that the collaboration agreement was irrelevant because 'DRISTAN' tablets were not mentioned in Schedule A to the sail agreement, and, therefore, the intention to introduce 'DRISTAN' tablets in the Indian market and the facts relating thereto did not have anything to do with t....
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...., it applied to the Central Government under section 11 of the Industries (Development and Regulation) Act, 1551, for a licence to manufacture 'DRISTAN' tablets which was granted to it. It also applied for and obtained a licence to import certain ingredients used in the manufacture of 'DRISTAN' tablets and imported such ingredients. It further applied for and obtained from the Director, Drugs Control Administration, State of Maharashtra, permission to manufacture 'DRISTAN' tablets. The Appellant also filed a notice of opposition to the First Respondent's Application for registration of their mark 'TRISTINE'. During the third period, namely, the period subsequent to the First Respondent's Application for Rectification, that is, subsequent to April 10, 1961, on October 18, 1961, the said registered user agreement was entered into between the Appellant and the Indian Company. On October 22, 1961, the 'DRISTAN' tablets were first marketed in India by the Indian Company. On March 6, 1962, the Appellant and the Indian Company jointly made an application to register the Indian Company as a registered user of the trade mark 'DRISTAN'. The facts set out above clearly show that each of....
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....Appellant it is not open to Counsel to submit that the proposed use by the Appellant could also have been by exporting 'DRISTAN' tablets to India. The Appellant's application for registration of the trade mark 'DRISTAN' was made under section 14(1) of the 1940 Act and was registered under that Act. Under the said section 14(1), only a person claiming to be the proprietor of a trade mark "use or proposed to be used by him" could apply for registration of that trade mark. The provisions of section 18(1) of the 1958 Act are identical. This brings us to the crucial question whether the words "proposed to be used by him" would include "proposed to be used through a registered proprietor". In other words, the question is whether a proposed user by a registered user of a trade mark can be equated with a proposed user by the proprietor of the trade mark. On behalf of the Appellant it was submitted by Mr. Nariman that the two phrases "proposed to be used by him" ant "proposed to be used by a registered user" must be equated by reason of the statutory legal fiction created by section 48(2) of the 1958 Act which corresponds to section 39(2) of the 1940 Act. According to Mr. Nariman, unl....
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.... made under the 1958 Act. If the 1940 Act did not contain a legal fiction similar to that enacted in section 48(2) of the 1958 Act, the Appellant's case would fall to the ground because then at the date of its application for registration of the said trade mark, its intention would be not to use it itself but to use it through another. The 1940 Act, however, also made provisions with respect to registered users and created a similar legal fiction in section 39(2) of the Act. Section 39 of the 1940 Act provided as follows : "39. Registered users.- (1) A person other that the proprietor of a trade mark may be registered as a registered user thereof in respect of all or any of the goods in respect of which it is registered (otherwise than as a defensive trade mark) and either with or without conditions or restrictions. (2) The permitted use of a trade mark shall be deemed to be use by the proprietor thereof, and shall be deemed not to be use by a person other than the proprietor, for any purpose for which such use is material under this Act or any other law. "The only difference between section 39(2) of the 1940 Act and section 48(2) of the 1958 Act is that while under sectio....
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....n the same way. In celebrated passage Lord Asquith of Bishopstone in East End Dwellings Co. Ld. v. Finsbury Borough Council (1952) A.C. 109, said (at page 132) : " If you are bidden to treat an imaginary state of affairs as real, you must surely, unless prohibited from, doing so, also imagine as real the consequences and incidents which, if the putative state of affairs had in fact existed, must invitably have flowed from or accompanied it. In the State of Bombay v. Pandurang Vinayak Chaphalkar and Others [1953] S.C.R.773, this Court held (at page 132) while approving the above passage of Lord-Asquith : "When a statute enacts that something shall be deemed to have been done, which in fact and truth was not done, the court is entitled and bound to ascertain for what purposes and between what persons the statutory fiction is to be resorted to and full effect must be given to the statutory fiction and it should be carried to its logic conclusion." The purposes for which the said fiction has been enacted are set out in section 48(2). These purposes are the purposes of section 46 or for any other purpose f....
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....oduced a system of official approval for licences to use a trade mark Particularly by providing for registering a Person other than the proprietor of the trade mark as the registered user of the trade mark. It will be useful to set out the provisions cf the English Act of 1938 relating to registered users in order to Focus our attention on the differences between the English Act and the 1958 Act with respect to registered users. Sub-sections (1), (2) and (4) to (2) of section 28 provide as follows : "28. "Registered users.- (1) Subject to the provisions of this section, a person other than the proprietor of a trade nark mark may be registered as a registered user thereof in respect of all or any of the goods in respect of which it is registered (otherwise than as a defensive trade mark) and either with or without conditions or restrictions. The use of a trade mark by a registered user thereof in relation to goods with which he is connected in the course of trade and in respect of which for the time being the trade mark remains registered and he is registered as a registered user, being use such as to comply with any conditions or restrictions to which his registration i....
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....oing provisions of his section if it appears to him that the grant thereof would tend to facilitate trafficking in a trade mark. Sub-section (1) and (2) of section 29 provide as follows : "29. Proposed use of trade mark by corporation to be constituted. etc. (1) No application for the registration of a trade mark in respect of any goods shall be refused, nor shall permission for such registration be withheld, on the ground only that it appears that the applicant does not use or propose to use the trade mark, (a) if the tribunal is satisfied that a body corporate is about to be constituted, and that the applicant intends to assign the trade mark to the corporation with a view to the use thereof in relation to those goods by the corporation; or (b) if the application is accompanied by an application for the registration of a person as a registered user of the trade mark, and the tribunal is satisfied that the proprietor intends it to be used by that person in relation to those goods and the tribunal is also satisfied that person will be registered as a registered user thereof immediately after the registration of the trade mark. (2) The provisions of section twenty-six of th....
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....in section 29(1)(b). Mr. Bevan stated that it was a convenient commercial practice to operate through registered users but the latter might not be agreeable so to act Until the mark was registered. He submitted that the requirements of the Act as to intention to use are satisfied in these conditions." The Registrar took the view that the English Act of 1938 required that, to qualify as an applicant, the proprietor of the mark must either possess the intention to use the mark himself at the time of application or have applied under the conditions of clause (a) or clause (b) of section 25(1). The Registrar accordingly refused the application. The applicant appealed to the Board of Trade and the appeal was heard by G.W. Tookey, Esq., Q.C., who dismissed the appeal'. The relevant passages from the judgment of the Board of Irade are as follows (at pages 269 and 27C) : " Having carefully considered the relevant sections of the Act, I conclude that the Registrar's decision is right. In My view, section 17 has the limited meaning attributed to it by the Registrar. There is no difficulty about the case o....
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....ish decisions in which judgments were delivered by judges held in high repute can be referred to as they are decisions of courts of a country from which Indian Jurisprudence and a large part of our law is derived, for they are authorities of high persuasive value to which the court may legitimately turn. for assistance; but whether the rule laid down in any of these cases can be applied by our courts must, however, be judged in the context of our own laws and legal procedure and the practical realities of litigation in our country. The relevant provisions relating to registered users in the English Act and in the 1958 Act are materially different. The English Act creates two legal fictions. The first is contained in section 28(2) which relates to the permitted use of a trade mark. That fiction 18 for the purpose of section 26 (which corresponds to section 46 of the 1958 Act) and for any other purpose for which such use 18 material under the English Act or at common law. The second is contained in section 29(2) and relates to intention on the part of an applicant for registration that a trade mark should be used by him. The second fiction is for the purposes of paragraph (a) of s....
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....ect to a registered user was to eliminate all possibility of trafficking in a trade mark by a person getting himself registered as the proprietor of a trade mark and thereafter going in search of some person who will use it as the registered user thereof. Assuming that the existence of the special fiction created by section 29(2) cuts down the full operation of the general fiction enacted in section 28(2), it does not follow that the absence of such special fiction in the 1958 Act will also cut down the operation of the fiction in section 48(2) in the same way by limiting it to the actual use of a trade mark only. As pointed out earlier, in the 1958 Act wherever the phrase "used by him" occurs the fiction will apply. In other words, the permitted use of a trade mark is, by the fiction enacted in section 48(2), equated with "use by the registered proprietor". Consequently wherever the word "use" occurs with all its permutations and commutations as for instance in phrases such as "proposed to be used by him" or 'intended to be used by him", the fiction will apply. At this stage, it is pertinent to note that form No. TM-2, which is the form prescribed for an application for registrati....
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....be taken into account- Under the 1958 Act an application for registering a registered user can only be made after a trade mark is registered. If an intended use by a person who will be registered user is not to be included in the legal fiction created by section 48(2) it would make that fiction operate within a very narrow compass and almost render the provisions relating to registered users meaningless. It is in very rare circumstances that a person will get a trade mark registered as proposed to be used By himself, use to no relation to the concerned goods, and thereafter permit it to be used by another as a registered user. It is also not open to everyone who want to register a trade mark to form a company to which after the trade mark is registered and the proposed company is incorporated, the trade mark will be assigned. These things are not practical realities and Parliament could not have intended such absurd results. The argument of Dr. Gauri Shankar that the Appellant should have got the trade mark registered with the intention that it will itself use the trade mark and in order to effectuate that intention the Appellant should have set up a factory and manufactured and....
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....uced in 1948, and an intention to take advantage of those provisions would, in my opinion, be a sufficient 'intention to use'." So far as the 'BOSTITCH' Trade Mark Case relied upon by the Registrar is concerned, it has no relevance to the question which we have to decide. It turned upon its own facts and what was held in that case was that the provisions of section 28 of the English Act are not mandatory but permissive. The high Court also took the assistance of the Shavaksha Committee Report and the Ayyangar Report to enable it to place the construction which it did upon section 48(2). When it was intended to revise the 1940 Act, the Government of India set up in 1953 that Trade Marks enquiry Committee under the Chairmanship of Mr. K.S. Shavaksha, the then, Registrar of Irade Marks. The Report of the Shavaksha Committee was made in 1954. The Government thereafter appointed Mr. Alagiriswami, who had acted as the Secretary of the Committee, as Special Officer to consider L the Shavaksha Committee Report, and he made his own recommendations. The Government, therefore, felt that the Shavaksha Committee Report and the recommendations made by the Special Officer should b....
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....stration a particular registered user in view, he cannot be said to have had a bona fide intention to use the trade mark and in such an event he cannot resist ar. application made under clause (a) of section 46(1) of the 1958 Act. Turning now to the present Appeal, the facts on the record show that only when it was decided to introduce 'DRISTAN' tablets in the Indian market through the Indian Company that the Appellant made its application to register the trade mark 'DRISTAN'. There was a close connection in the course of trade between the Appellant and the Indian Company. The Appellant owned 40 per cent of the shareholding in the Indian Company. It had entered into a technical collaboration agreement with the Indian Company which provided for strict quality control and for formulae and services to be provided by the Appellant. The manufacture, marketing and advertising of all products under the said agreement were to be under the control of the Appellant. There was no royalty payable by the Indian Company to the Appellant in respect of the use of the trade mark 'DRISTAN'. In the event of the collaboration agreement being terminated by reason of the happening of any of the events m....
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.......... whose address is (e) ......... who claim(s) to be the proprietor(s) thereof (and by whom the said mark is proposed to be used) (f) or (and by whom and his (their) predecessor(s) in title (g) the said mark has been continuously used since ..... 19..... ) in respect of the said goods(h)." The Appellant, therefore, cannot be said to have practised any deception in stating in its application that it intended to use the trade mark itself. In our opinion, it would be better if the Central Government were to amend Form TM-l to require the applicant to state whether he proposes to use the trade mark himself or through a registered proprietor and if so, to state the particulars of the proposed registered user. It was next sought to be argued by Dr. Gauri Shankar that the trade mark 'DRISTAN' was deceptively and confusingly similar to the trade mark 'BISTAN' of which the registered proprietor is M/s. Prof. Gajjar's Standard Chemical Works Ltd. This is not one of the questions upon which the certificate was granted by the High Court and it is not open to the First Respondent to take this point in this Appeal. In any event, this point too is without any substance. It was rejected by ....