AI Drafter 
TaxTMI 
TaxTMI 
1961 (4) TMI 131
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....its and vegetables; jellies and jams, preserves and pickles, " all being goods included in Class 29: Application No. 178158 was in respect of "sauces, spices, cury powders, papads (being cereal preparations) and condiments" and Application No. 178159 was in respect of "syrups (not included in other classes ) and other preparations for making beverages; and other non-alcoholic drinks:" These applications were advertised as accepted for registration in the Trade Mark Journal No. 199 dated 16th September , 1957. (3) The petitioner corporation filed separate notices of opposition to each of these applications, being opposition Nos. 3959, 3958 and 3960 respectively. The grounds of opposition set out in those notices were the same and they were as follows: "a) That by reason of the use of the word "Monarch" by the opponents (the petitioners) prior to 1951, the use of the said was likely to deceive or cause confusion, and, therefore, its registration would be contrary to the provisions of Section II (a) of the Trade and Merchandise Marks Act, 1958: b) That the adoption and use of proposed mark by the respondents was not bona fide. c) That the respondents were not the proprieto....
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....tion has filed the present petition by way of appeal to this Court. Before setting out contentions raised on behalf of the petitioner corporation at the hearing of this petition, it is necessary to relate briefly the circumstances which led to the present proceedings. (7) It appears that some time in 1852 the petitioner corporation's predecessors-in-title adopted the word "Monarch" as their trade mark in respect of canned, bottled and packaged food products and marketed their products under that trade mark ever since that date continuously and extensively. It further appears that the trade mark "Monarch" has been registered in the name of the petitioner corporation and its associates in about 20 countries of the world including the United States of America, Great Britain and Canada in respect of, inter alia, canned, bottled and packaged food products. The petitioner corporation contended that the trade mark "Monarch" was thus exclusively associated by the trade and the public world over with the goods emanating from itself. Besides, it was the case of the petitioner corporation that its food products under that trade mark were being very widely and extensively advertised thr....
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....n favour of, and in the name of, the respondent company. It is true that this contention was not raised before the Joint Registrar of Trade Marks. That the respondent company was not the proprietor of the mark "Monarch" was urged by the petitioner corporation before the Joint Registrar of trade Marks, not because the petitioner corporation had already been the proprietor of that mark in this country by reason of imports of its products long prior to 1951, but in view of the fact that the name of Messrs. Kipre and Co. Private Limited appeared on the labels affixed on the products marketed by the respondent company suggesting that Messrs. Kipre and Co. Private Limited. were the proprietors of the mark and not the respondent company. This contention was also raised by Mr. Shavaksha before me and I will deal with it as well in course of my judgment, but so far as the first contention raised by Mr. Shavaksha is concerned, although it was not taken before the Joint Registrar of Trade Marks, that such a contention could be raised by the petitioner corporation for the first time in appeal before me under the provisions of the Trade and Merchandise Marks Act, 1958. Accordingly, I allowed Mr....
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....pponents (petitioner corporation) bearing the trade mark "Monarch" which were already imported between 1947 and 1950 continued to be in the market till long thereafter. It was possibly for these goods to remain in the market so long, as the quality of these goods remain unaffected for a number of years." Mr. Shavaksha also invited my attention to the evidence of this Rustom in course of which the witness produced an invoice book in which details of the original invoices were entered and showed entries under the date 1st July 1947 giving the particulars of the invoice relating to foodstuffs bearing the mark "Monarch". The witness also produced his bank pass book in which under date 28th July 1947 an amount of Rs. 4328/- being the rupee equivalent of 1895 dollars which was the value of the aforesaid goods as well as some other goods, was shown to have been paid, Mr. S.B. Shah, the learned counsel for the respondent company, however, pointed out that the food products shown in those entries were consigned, not by the petitioner corporation or any of its predecessors-in-title named in the affidavit of Mr.Stacey H. Gifford, but by the California Produce Company which did not seem to ....
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....ere sold by Reid Murdoch of Chicago to Amersia Associates, Inc. of California as agents for Messrs. S.C.Cambatta and Co. The value of the goods shown in the invoice is 479 dollars 50 cents exclusive of costs of wood boxes and straping, ocean freight and other charges. The Bill of Lading is also annexed to the affidavit and it shows Messrs. Reid Murdoch as the shippers and "order of Reid Murdoch" as the consignee. It also shows that Arrival Notice was to be addressed to Amersia Assoc. C/o S.C.Cambatta and Co. Cambatta Bldg., 42, Queen's Road, Fort Bombay India. In the column headed "leading marks and numbers" it is stated as follows : - "Amersia Assoc. to be held in bond c/o S.C.Cambata and Co. Bombay, India, Made in the U.S.A." Now, these were apparently the marks on the packages containing the goods and on the basis of this description of the marks and particulars, Mr. Shah. the learned counsel for the respondent company contended that the goods were to be held in bond, that accordingly, it could not be presumed that the gods were actually received by S.C. Cambatta and Co. and that there was no evidence to show that the goods covered by the invoice were at all put on the....
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....ing the short period between 11th April, 1955 and 1st January, 1957 amounting to ...13,283,09 as against the respondent company's sales of its products amounting to Rs. 1,97,765/- between the period 30-6-52 and 31-12-56 and contended that on a proper analysis of the sales by the petitioner corporation and those by the respondent company and making allowance for the fact as admitted by Mr. Audsley that the sales by the respondent company also included the sales of products for and on behalf of Kipre and Co. Private Ltd., the petitioner corporation's reputation in the Indian market in respect of the goods manufactured by it and marketed under the mark "Monarch" was far greater than that in respect of was on the basis of this affidavit that Mr. Shavaksha contended that apart from the petitioner corporation having been the first to introduce the mark "Monarch" into this country in respect of food products, the mark had acquired sufficient distinctiveness in respect to its food products so as to disentitle the respondent company to apply for registration of that mark in respect of the food products sold by it. (14) The first question which I have now to consider is as to whet....
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....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, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark registered as such under the provisions of Chapter VIII. Then section 9 prescribes the kinds of trade marks which may be registered in Parts A and B of the register of trade marks which is provided for in section 6 of the Act. This section provides as follows:- "(I) A trade mark shall not be registered in Part A of the register unless it contains or consists of at least one of the following essential particulars, namely : - (a) the name of a company, individual or firm represented in a special or particular manner; (b) the signature of the applicant for registration or some predecessor in his business; (c) one or more invented words; (d) one or more words having no direct reference to the character or quality of goods and not being, according to its ordinary signification, a geographical name or a surname or a person....
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.... It may be mentioned here that one of the contentions raised by Mr. Shavaksha, as stated in the earlier part of this judgment, falls under clause(a) of this section. There is another contention which Mr. Shavaksha has raised under clause(e) of this section which I will set out and deal with hereafter. The next important provision of the Act to be noted in connection with this case is contained in section 18 of the Act which deals with registration of trade marks. That section runs as follows: "(I) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark either in Part A or in Part B of the register." It is not necessary for the purpose of this case to set out the other provisions of this section. Provisions of section 27 of the Act, however, which are equally important, must also, be noted. It says : "(I) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark. (2) Nothing in this Act shall be deemed to affect r....
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....counsel on either side, it may be observed, to start with, that trade mark cases used to arise quite often in the United Kingdom even before the Act of 1875 was passed. Those cases generally related to infringement of trade marks and passing off. In the absence of any statutory law prior to 1875, the principles governing infringement cases were laid down by the Courts of Chancery and it was on the basis of those principles that the statutes relating to trade marks were enacted by the British Parliament. In Bow v. Hart, (1905) I K.B. 592, Lord Justice Romer, while dealing with the question as to whether any new right of property was conferred by statute on the owner of a trade mark, asked (at P.593) "Where does the Patents Designs and Trade Marks Act, 1883, confer any new right of property on the owner of a trade mark" ? and observed (at page 594) "The Act is a statutory recognition of the law, which had been previously laid down by the Courts of Chancery, but it provides a better method of procedure." (18) Twenty five years later, Clauson J. in Champagne Heidsieck Et. Cie. Monopole Societo Anonvme v. Buxton, (1930) 47 R.P.C. 28 in reference to an action for infringement of trade....
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....k, but that a person may acquire a right of using a particular mark for articles which he has manufactured to the exclusion of everybody else." In Hall v. Barrows, (1862) 32 LJ Ch 548, however, Sir John Romilly expressed his opinion on this point as follows: "It is clear from a variety of decided cases, that a manufacturer, who has originally stamped his goods with a particular brand, has a property in his mark at law, and can sustain an action for damages for the use of it by another. It is also clear that Courts of Equity will restrain the use of it by another person." The opinion thus expressed by Sir John Romilly was consistently accepted in later cases, the main reason for such acceptance being that Courts of Equity would grant an injunction only in cases of infringement of a right to property and that, therefore, it was necessary for such relief in case of an infringement of a trade-mark was regarded as a right of property in the trade mark. (20) Then dealing with the question as to how such a property in a trade mark could be acquired, Sir John Romily observed in the same case as follows : "It has sometimes been supposed, that a manufacturer can only acquire s....
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....ed to be used as a trade mark, and not followed up a user; but that, after the use of an original mark on the manufacturer's goods in a market, no matter for how short a time, a property is acquired in the trade mark sufficient to disentitle any person to pirate it with impunity and this property would continue until it has been proved by evidence that the proprietor has abandoned it. Once having established by evidence a distinct and sole use of the mark, no one else has a right to put the same mark on his goods, and thus to represent them to have been manufactured by the person who originally used that petitioner mark." In this view of the matter, the learned Judge on the facts of that case granted a perpetual injunction against the defendants to restrain the use of the plaintiff's trade mark. (21) In Mc.Andrew v. Bassett, (1864) 4 De G.J. and Sm. 380 (384) in answer to the argument that property in a trade mark must be regarded as the offspring of such an antecedent user as would be sufficient to have acquired for the article stamped with the trade mark general notoriety and reputation in the market, and that the property could not be held to exist until the fact o....
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....rpose is proof that the mark before that date was in fact used as a trade mark, that is, was used by the trader in his business upon or in connection with his goods, and it is not necessary to prove either the length of the user or the extent of the trade. In other words, the character and not the length or extend words., the character and no the length or extent of user is the only thing that has to be established. ever since Lord Cottenham in Millington v. Fox, (1838) 3 M and Cr. 338, decided that fraud was not an essential ingredient in order to obtain an injunction to restrain infringement of a trade mark, it was recognised by Courts of Equity that there was a right of property in a trade mark, and that such right did not depend on length of user or reputation in the market. Before the Act of 1875 it had been definitely established that the only essential quality for constituting property in a trade mark (unobjectionable in itself) was that it should have been used by the proprietor in his business upon or in connection with some vendible article." These observations of Lord Justice Lawrence as well as similar observations of Lord Justice Romen in the case cited above were appr....
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.... these contentions, Mr. Shah referred me to (1864) 4 De G.J. and Sm. 380 (384), to which I have already referred. The observations of Lord Chancellor Westbury in that case on which Mr. Shah relied and which I have quoted above, do not in my opinion, support either of the contentions raised by Mr. Shah, because, it has been clearly observed by the Lord Chancellor that he was not in that case driven to the necessity of determining when for the first time property might be said to be established in a trade mark. The Lord Chancellor described the essential ingredients for constituting an infringement of the right to the property in a trade mark and it was upon the basis of those ingredients present in that case that the appeal filed against the judgment of the learned Vice Chancellor was dismissed with costs. (24) Mr. Shah next relied upon certain observations of Lord Parker in A.G. Spalding and Bros, v. A.W. Gamage Ltd., (1915) 32 RPC 273. In that case, the plaintiffs who were manufacturers of footballs and other athletic goods sued the defendants for passing off certain of their old and discarded stock of footballs as and for their new and improved balls and it was held by the Hou....
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....s." there is no mark, name or get-up infringed unless it be B's name, and if he falsely says, "These are B's goods of a particular quality," where the goods are in fact B's goods, there is no name that is infringed at all. Further, it is extremely difficult to see how a man can be said to have property in descriptive words such as "Camel Hair" in the case of (1896) AC 199 where every trader is entitled to use the words, provided only he uses them in such a way as not to be calculated to deceive even in the case of what are sometimes referred to as Common Law Trade Marks the property, if any, of the so called owner is in its nature transitory, and only exists so long as the mark is distinctive of his goods in the eyes of public or a class of the public. Indeed, the necessity of proving this distinctiveness in each case as a step in the proof of the false representation relied on was one of the evils sought, to be remedied by the Trade Marks Act, 1875, which conferred a real right of property on the owner of a registered mark, I had to consider the matter in the case of Burberrys v. Cording and Co. Ltd., (1909) 26 RPC 693 and I came to the same conclusion." It will be ....
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....turers v. Wilson, (1877) 3 AC 376 at p. 391 and those of Lord Parker in (1915) 84 LJ Ch 449 equivalent to (1915) 32 RPC 273, quoted above. Accordingly, in my opinion, the aforesaid observations of Lord Parker do not lend any support to the contention of Mr. Shah that the view held by the Courts in England, that there could be a property in a trade mark the infringement whereof gave rise to an action for injunction, had undergone a change, nor do they support his contention that right to the property in a trade mark could not be acquired independently of the goodwill of the business. (25) Mr. Shah then invited my attention to Bood and Son v. Thom and Cameron Ltd., (1907) 24 RPC 697. In that case, the plaintiffs had filed an action for infringement of their trade mark consisting of a device representing "Cat and Barrel" for their gin. The defendants contended that the device was common in the trade long before its registration by the plaintiffs in 1879 and that the mark should therefore be expunged from the Register. It was held by the First Division of the Court of Session that if a trade mark had been registered and had remained many years on the register, the onus was on the pe....
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.... case which I have mentioned, where more than one had in the past been using a Trade Mark, there were rules settled by decisions to this effect, that up to the number of three there would be registration of persons who had bona fide used the same mark, but if more than three applied and said they had used the mark, then the mark was really such common property in the trade that it was not registrable at all. The import of all this is, I think, that the true meaning of a Trade Mark is the association of the mark with one person's goods. If you show that large number of people have all been using the same mark, then it becomes a practical impossibility to say that the mark was associated with any one person's goods. And accordingly, I think the matter is well settled that the registration of a mark, an old mark, may be given to persons not exceeding the number of three but that if more than three are shown to have used it, it is common property and cannot be registered at all." Having thus explained what was meant by the expression "common property" in a trade mark, the Lord President proceeded to consider the question as to what was meant by property in a mark in the stat....
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....egistered should never have been registered, that the Lord President very rightly, with respect, explained what property in such a mark would mean. This is evident from the last part of the aforesaid observations of the Lord President in which he said that if a mark was allowed to be on the Register all the time that the mark in that case had been, it was not too much to say that it never ought to have been there. This onus could only be discharged by the evidence of several traders who had sold the goods bearing the mark in question in considerable quantities so as to acquire reputation in the market that the goods bearing that mark were the goods of the traders using it. (27) At any rate, it must be remembered that in this case I am not dealing with a passing-off action or an action for infringement of a trade mark which is alleged to be common property. The case put up by the petitioner corporations that it was the first to use the mark "Monarch" in this country on its food products and that, in as much as the mark "Monarch" was admittedly a distinctive mark, it had acquired the right to get the mark registered in its name and also the right to oppose the application of any o....
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....per se it was not necessary for the person applying for its registration to show that mark had acquired a reputation in the market, so that it could be associated only with his goods and of nobody else. Even so far as this country is concerned, the Trade Marks Act of 1940 does not seem to have made any change in the legal rights of the owner of a trade mark as established by the Courts of Chancery in England. In In re Century Spinning and Manufacturing Co. Ltd., 49 Bom LR 52 : (AIR 1947 Bom 445), Chagla, J. (as he then was) observed in this connection (at page 59 of Bom LR : ( at p. 449 of AIR)) as follows : "The question is whether in India the Trade Marks Act of 1940 has made any change in the legal rights of the owner of a trade mark. To my mind it is clear that even prior to the passing of this Act the owner of a trade mark could maintain an action for the infringement of a trade mark and that action could only be maintained on the assumption that he was the owner of the trade mark and he had a proprietary right in the trade mark. Sub-clause (I) of Section 20 of the Trade Marks Act itself assumes and implies that such a right existed in the owner of a trade mark because it s....
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....may be enforced and obtained throughout the State and it established the record of facts affecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration. (28) Going back to the facts of this case, the Mark "Monarch" is undoubtedly an old one so far as the petitioner corporation is concerned, in as much as it has been using it on its food products for long many years and in several countries of the world. But so far as this country is concerned, it was a new one at the time when it first imported its products with that mark and being a distinctive (Per se) mark, it acquired a right to use it to the exclusion of all others, and became entitled to resist registration thereof by any one else. As a matter of fact, the petitioner corporation could have straightway applied for registration of the mark - without ever using it on its goods in this country under Section 14 of the Act of 1940 corresponding to Section 18 of the Ac....
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.... therefore, it was entitled to claim the mark "Monarch" as proprietor thereof. That these imports were not sporadic or experimental or casual is supported by the fact that after a lapse of about five years, further products were imported into this country bearing the mark "Monarch" right from April, 1955, atleast to the date of the application made by the respondent company for registration of the mark. These further imports do indicate that at the time when these products were imported in 1947 and 1949 the petitioner corporation did intend to continue the imports of its food products into this country subject, of course, to such restrictions as to imports as the Union Government imposed from time to time. This intention on the part of the petitioner corporation is further indicated by the fact that it has been continuously selling its products in different parts of the world even down to date and, but for the restrictions on imports of foreign food products imposed by the Union Government and the difficulties experienced by traders in getting licences from the Government for importing such products, the food products manufactured and marketed by the petitioner corporation could ve....
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....tion as a whole even after taking into account the fairly large imports of the petitioner corporation food products into this country between 11th April 1955 and 31st January, 1957. As has been rightly pointed out by the Joint Registrar of Trade Marks, all these imports were made by the traders in Bombay and there is no evidence that any of these products were sold in any other part of this country. I must, however, differ from the view expressed by the Joint Registrar of Trade Marks in his observation that all the items on the list of importers which was furnished on behalf of the petitioner corporation were merely private imports on the strength of individual licences granted to private parties and that the number of individuals and the value of the goods were also comparatively low. If one turns to the list which is marked as EX.I and annexed to the affidavit of Jamie Birdi, one finds several firms and companies having imported the petitioner corporation's food products during the said period, such as F.W. Pollack and Co., Grahams Trading co. Ltd., Importers and Exporters Ltd., D. H. Nasser and Co. Ltd., the Eastern Import and Export Co., Akbarally Ebrahimji, Bajaj Bros. Ltd....
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....arch" that that mark could be associated only with the food products of the petitioner corporation. For the purpose of S.11(a), it is necessary that the mark should have attained such reputation among the members of the public as would lead them to associate the mark only with the products of the petitioner corporation and of no one else. I am afraid, in spite of the fact that the sales by the respondent company of its products under the mark "Monarch" were not very much larger than the imports and sales in this country of the products of the petitioner corporation, it cannot be held that by allowing the mark "Monarch" to be registered as applied for by the respondent company, there would be any likelihood of deception or confusion in the minds of the public. Accordingly, I agree with the finding of the Joint Registrar of Trade Marks that the petitioner corporation could not resist the registration of the mark "Monarch" on the application of the respondent company under clause (a) of Section 11 of the Act. (30) It was next contended by Mr. Shavaksha that the respondent company had itself shown Kipra and Co. Private Ltd., as the proprietors of the mark on the labels bearing the m....
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....ds as "Manufactured by Kipre and Co. for Brandon and Co., Private Ltd." In the absence of any such words, a person buying any of these goods on reading the label would naturally believe that what he was buying was the property of Kipre and Co. which was selling its goods under the mark "Monarch". It is true, as contended by Mr. Shah, that even distributors and sellers may have marks of their own, but then, there are ways and ways of indicating on the label itself that the mark embodied therein is the mark belonging to such distributor or seller. Obviously, therefore, on the label as it stood, it could not be said that the respondent company was the proprietor of the mark "Monarch" nor could it be said that the mark was used by the respondent company as proprietor thereof. (31) It, however, contended by Mr. Shah that it was no concern of the public to know as to whether the mark belonged to Kipre and Co. or the respondent company. All that the public were entitled to know was the nature of the mark under which they were buying a particular article or product, and that even if ultimately it turned out that the mark really belonged not to the person whose name appeared on the label....
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.... also was a passing off action arising out of a trade name "Stewart Arc Lamps". The plaintiffs in that case were the American Manufacturers of, and their English agents for, the sale of electrical lamps and other accessories. In 1896 an English Syndicate called the "Stewart Electrical Syndicate Ltd." began to sell in England lamps made to their order by the American company, and sold by them under the name "Stewart Arc Lamps." In 1903 the Syndicate was wound up, and in 1904 the Receiver sold its goodwill and its rights to the use of the word "Stewart" in connection with the goods by auction to the defendants who continued the sale of the goods under the name. The plaintiffs having commenced to sell similar goods under the name "Stewart" sought an injunction to restrain the defendants from selling them under that name; the defendants thereupon counter claimed for similar relief. It was held that the word "Stewart" as associated with the goods in question was the sole property of the Syndicate and its successors the defendants and the plaintiff's action was accordingly dismissed, and an injunction granted to restrain the plaintiffs on the defendants' counterclaim. It would ap....
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....ompany despite the agreement between Kipre and Co. and itself of 1951 by which it was acknowledged that the mark "Monarch" belonged to the respondent company, did not use the mark "Monarch" as proprietor and that, therefore, it was not qualified to make an application under Section 18 of the Act for registration thereof. If such registration were to be allowed and the label showed the name of the respondent company alone printed on it, members of the public would certainly be in a state of confusion and would not be able to know as to whether they were really buying Kipre and Co.'s goods under the mark "Monarch" as they were doing in the past before the registration of the mark in the name of the respondent Company. In other words, the respondent company by adopting this mark to its goods after the registration in its favour would be able to present to the members of the public its own goods as the goods of Kipre and Co. In my opinion, such a state of things cannot be allowed in public interest and, therefore, the Joint Registrar of Trade Marks should have declined to allow the respondent company's applications to proceed to registration on this ground. (33) The Joint Re....
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....cial identification mark of the manufacturer to be displayed on the top or neck of the bottle and it further requires that the licence number of the manufacturer shall also be exhibited prominently on the side label on such bottle. In the present case we are concerned with side labels and all that is required to be printed on the side label according to this clause is the licence number of the manufacturer and nothing more. Even on the top or the neck of the bottle what is required to be displayed is the licence number and the special identification mark of the manufacturer and not his name. Even under clause (c) when a tin, barrel or other container is used in packing any fruit product, it is only the licence number of the manufacturer which is required to be exhibited prominently on the side label of such container or embossed prominently thereon. Nowhere have I been able to find the necessity of displaying the name of the manufacturer on any part of the bottle or the container in which any food products are packed. Obviously, therefore, the Joint Registrar of Trade Marks was in error in reading into these clauses the requirement as to the name of the manufacturer being exhibited....
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....t on any finding of fact that I am dissenting from the view expressed by the Joint Registrar of Trade Marks on this question. What I really find is that the Joint Registrar of Trade Marks has actually overlooked the requirements of Section 18 of the Act for the purpose of deciding as to whether the respondent company was or was not entitled to make an application for the registration of the mark "Monarch". In such cases, I have no doubt that the Court of Appeal has got jurisdictioin under the principles above stated to interfere with the finding of the Registrar of Trade Marks. (35) It may also be noted in this connection that it was admitted by Mr. Audsley on behalf of the respondent company that besides the goods manufactured by Kipre and Co. for itself, it was also selling the goods of Kipre and Co. on its behalf under the same label. In view of this fact, it is difficult to say that Kipre and Co. was not the proprietor of the mark which it had used upon its own products. In these circumstances, I hold that the respondent company is not, entitled to have the mark "Monarch" registered as proprietor thereof. (36) It was lastly contended by Mr. Shavaksha that the respondent c....
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....ts had copied the opponents' mark". Dealing with the contention raised on behalf of the petitioner corporation that it was a case of res ipsa loquitur, the Joint Registrar of Trade Marks in paragraph 24 of his judgment stated as follows : - "It was stated that, as in the case of the Brown Shoe Company's case, 1959 R.P.C. 29 at p.33, this is a case of res ipsa loquitur and that no evidence on such points could be expected from the opponents. But it should, at the same time, be remembered that there is no initial presumption of dishonesty as regards any witness; and that the applicants too, cannot prove the negative viz., that they did not act dishonestly. They can if at all, only give reasons why in 1950 they chose the mark in question. The word "Monarch" is not an invented word (as in the case cited above) and, being an ordinary dictionary word, denoting superiority of quality, there was nothing, strange or suspicious in the applicants having adopted it for their mark to denote the quality of their goods." Then referring to the evidence of Mr. Audsely on behalf of the respondent company, the Joint Registrar of Trade Marks in paragraph 25 of his judgment stated as foll....
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.... issues of the magazines such as "Life" in the years 1948 and 1949 and the Joint Registrar of Trade Marks seems to have failed to consider altogether as to whether, in view of the admission by Audsley in his evidence that he did read American magazines occasionally, he may not have in all probability come across during the years 1948-49 any magazines such as "Life", "Saturday Evening Post" and "Country Gentleman" which, one may say with confidence, have got a fairly large circulation in this country among the English-knowing people and which carry the advertisements of the petitioner corporation's food products, under the mark "Monarch" . It may be noted that in one of these advertisements a bottle of "Tomato Catsup" is shown with the mark "Monarch" included in a shield design. The Joint Registrar of Trade Marks in view of this particular advertisement as regards Tomato Catsup also failed to consider as to whether the shield device could not have caught the attention of Mr. Audsley which ultimately led him to adopt the design of the shield only for the preparation from tomato under the name "Tomato Ketchup" with the mark "Monarch" thereon. In view of these omissions on the part....
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.... J : "(I) That in the definition in Section 4 of the Merchandise Marks Act, 1887, the reference of trade marks "protected by law" meant only such trade marks as by the provision of section 103 of the Patents, Designs and Trade Marks Act, 1883, would have an existing right of priority for registration in the United kingdom., i.e., those marks in respect of which a period of six months from the first application for registration in a Convention country had not yet elapsed; 2) That as it has been shown that this was the case for the American Corporation's mark "Pabalate" the objection under this head failed. (3) That the letter from the American Corporation withdrawing their application for the registration withdrawing their application for the registration of the mark "Pabalate" did not amount to an abandonment of their rights in such mark; (4) That in the circumstances the claim made by the applicants in their application on Form T. M. 2 to be "proprietors" of the mark "Pabalate" was an improper claim; (5) That in the case of marks for medicinal products the public interest may require that articles of different origin should not be advertised and sold here and ab....
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....sh the right of a party to be entered upon the Register, does not of itself negative the proprietary right which that party had asserted by making his application nor does he necessarily deny such right by the withdrawal of the application. Accordingly, in the exercise of my discretion. I must consider whether or not, in making that claim to be the proprietors of this mark, the Respondents were in fact making a proper representation to the Trade Marks Registry." The learned Judge then proceeded to consider the second factor which he thought should be considered while exercising the discretionary jurisdiction and that, was, that the evidence disclosed that the mark had been used by the American Corporation upon and in relation to a remedy or an alleged remedy for arthritic conditions in human beings. He observed: "Having regard to the international character which medicine and the allied sciences have assumed and increasingly assumed over the last two decades, it seems to me that in exercising its discretion under the Act the public interest is not in any way imperilled. For my part I am not satisfied that, in allowing to be used by manufacturers in this country as a brand nam....
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....stances. Take, for instance, a food product consisting of a preparation from tomatoes. The quality of tomatoes available in this country may be either superior or inferior to but never identical with, the quality of tomatoes available in other countries of the world. Besides, the method of making such preparation and ingredients used therein may vary from country to country. Again, it is common knowledge that trade in canned food products has already assumed an international character and in our own country we have been coming across such products for past several decades, though on a smaller scale at present due to import restrictions, from countries like England, America, Canada, Australia and Holland. The canning industry in this country, though yet in its teens, has also been exporting its food products to some of the countries of the world. It would not, therefore, in my opinion, be right to allow in the interest of public similar kinds of food products having different origins to be advertised and sold in this country and abroad under the same name. From this point of view, in my opinion, Vitamins case, 1956 RPC I aptly therefore, I should in exercise of my discretion refuse ....
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....be noted that the mark "Gro-Pup" was not really a distinctive mark and had not acquired any reputation in the United Kingdom in reference to the food for dogs which was manufactured by the American company, yet the applicants were not allowed to get the mark "Gro-Pup" registered in their name in the United Kingdom on account of their conduct. In the light of the facts of this case, it may be observed that if food for dogs having different origins could not be in the discretion of the registering authority permitted to be marketed under the same mark, it will be perfectly reasonable to hold that food for human being having different origins cannot be allowed to be marketed under the same trade mark. (40) The last case on this question that was referred to by Mr.Shavaksha was 1959 RPC 29. This case was relied upon by Mr. Shavaksha to show that on the principles laid down therein I must hold on the facts of this case that the respondent company had in fact copied the petitioner corporation's mark "Monarch" and that, therefore, the respondent company was not entitled to any protection in law in regard to the mark sought to be registered by it. In that case in 1952 BSC Inc., a U.....
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....fused registration under Section 11(a) was rightly rejected. As regards the second question, however the learned Judge observed (at Page 33) as follows: "Here it is true two words are involved - "Naturalizer" and "Naturlizet". The Assistant Comptroller disposed of this part of the case by saying that on the question of discretion he found nothing in the evidence to establish that the respondents had copied the appellants' mark. With all respect to him., that can hardly be a satisfactory way of dealing with the problem. No evidence by the appellants on such a point could be expected. It must to my mind be a question of res ipsa loquitur or nothing. I find it impossible to treat the case as one of coincidence and to take the view that in evolving the word "Naturlizet" as a trade mark in relation to ladies' shoes the respondents had no regard to the appellants' mark "Naturalizer". In conclusion, the learned Judge observed (at page 34) as follows : "In those circumstances, and bearing in mind that the use of the two marks in relation to ladies' shoes would, by reason of their similarity, be liable to cause confusion, it appears to me to follow that the responde....
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....I do not now recollect whether the word "Monarch" was solely my suggestion or whether it was put into my mind by some of my subordinates." These answers clearly show that he was not very sure himself as to who had suggested the word "Monarch". At one place he said "I thought of many names and ultimately decided on "Monarch" and at another place he said "I do not now recollect whether the word "Monarch" was solely my suggestion or whether it was put into my mind by some of my subordinates." It may as well be in this state of his evidence that he had hit upon the word "Monarch" after reading the advertisements of the petitioner corporation's food products under the name "Monarch" in the American Magazines which he admitted he occasionally read. In answer to another question whether before actually using the mark he had made enquiries as to whether any other trader was using it, he said, "I only gave them general directions to make enquiry in the market. I did not direct any specific enquiries to be made of any particular trader. I directed them to make enquiries in the wholesale market also". When he was asked as to what he meant by "wholesale market" he replied by saying "By" wh....
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.... contended by the defendants that they were not responsible for that design in as much as it was prepared by well known and respectable firm of tin makers and printers called A.Lloyd and Sons, Dealing with this contention Danckwerts, J. observed (at page 89) as follows :- "It seems to me, therefore, that the similarity of the design is sufficient to be within the rules as regards passing-off actions. After all, if the defendants' artist, the artist employed by their factors, with or without direct instructions from them, it may be deliberately, or by accident so far as that is concerned, marks a copy of the plaintiffs' design it is not really open to the defendants to complain if confusion is said thereby to result, and it seems to me that, whilst I feel some suspicion of the evidence of the defendants' witnesses, even assuming that they were entirely bona fide this is a case in which the get-up was deliberately adopted by them." In the light of these observations, I have no hesitation in holding on the facts of this case that the shield device which was adopted by the respondent company along with the marks "Monarch" was copied from the shield device adopted and ....
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.... and 1949 which were produced as exhibits. He also failed to approach the case in a proper perspective in the light of the decision in 1959 RPC 29. Further, he failed to appreciate the implications of the evidence given by Mr. Audsley as regards the manner in which the word "Monarch" as well as the shield device came to be adopted by the respondent company came to be adopted by the respondent company in respect of its products. He also failed to appreciate that the respondent company could not escape the responsibility for adopting the shield device of the petitioner corporation merely because its artist, as alleged by it, had designed it without its instructions. In all these circumstances, I am, I think, sufficiently justified in interfering with the finding of the Joint Registrar of Trade Marks on this question as well. (42) Lastly, it was urged by Mr. Shah, the learned counsel for the respondent company, as also by Mr. Sastri learned counsel appearing for the Registrar of Trade Marks, that I should exercise my discretion under sub-section (3) of Section 12 of the Act and order concurrent registration of the word "Monarch" both in favour of the petitioner corporation as well ....