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TMI Blog1985 (9) TMI 340X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 mentioned in the said agreement, amongst which events was the shareholding of the Appellant becoming less than 40 per cent, the Indian Company was to cease to be entitled to manufacture the tablets 'DRISTAN' or to use its formula or to use the trade mark 'DRISTAN'. There was here, therefore, no question of any trafficki ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and Merchandise Marks Act, 1958 ? (2) Whether by reason of the provisions of sub- section (2) of section 48 of the Trade and Merchandise marks Act, 1958, the words proposed to be used by him in sub-section (1) of section 18 of the said Act mean proposed to be used by the proprietor, his agents and servants only or do they also include a proposed user by someone who will get himself registered under section 48(1) of the said Act as a registered user? The High Court further observed : The matter is of considerable importance to foreign proprietors of trademarks, to registered users of trade marks in general and to the Industry and Commerce at large. Before embarking on a discussion of the above questions it will be convenient to relate first the facts which have given rise to this Appeal. The Appellant, American Home Products Corporation, is a multi-national corporation incorporated under the laws of the State of Delaware in the United States of America. One of the activities of the appellant is the manufacture and marketing of pharmaceutical products and drugs. The division of the Appellant which at all relevant times carried on and still carries on this activity is calle ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... can home Products Corporation products, and WHEREAS, Geoffrey Manners has access to and use of lands and buildings and has the experience, facilities, equipment and personnel needed or desired for successful production, sale and distribution of the aforementioned products in India. The said agreement related to two classes of products, namely, Whitehall Products and Whet Products . We are concerned in this Appeal with Whitehall Products. Me term "Whitehall Products' was defined in the said agreement as meaning all formulations owned by or whose sales are promoted under the direction of Whitehall Laboratories Division of American Home Products Corporation or International Chemical company Limited which are manufactured and sold under the name or trademarks of Whitehall Laboratories Division of American home Products Corporation or International Chemical Company Limited and packaged in form for sale and distribution by the trade to the ultimate costumer . The term "Licensed" Products was defined in the said agreement as meaning those Whitehall Products whose import, manufacture, sale or distribution in India by Geoffrey Manners are licensed under and pursuant to the terms of this ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s of the said agreement. During the period of the said agreements the Indian Company agreed not to manufacture, distribute of sell any new products whose production or sale would compete with the production and sale of the Licensed Products except with the prior consent thereto in writer obtained from the Appellant, and the Appellant granted to the Indian Company for the duration of the said agreement an exclusive and non- transferable license to make and sell the Licensed Products in India under the name or marks which for these purposes the Appellant would design or cause to be designed for such products. Clause (a) of Article IV of the said agreement inter alia provided that Rights of registered user will be extended to Geoffrey Markers in respect of each Licensed Product by the proprietor of such trade mark . Furthers under the said agreement the Appellant was to furnish to the Indian Company the manufacturing technology applicable to each Licensed Product and to provide reasonable engineering and technical assistance and instructions to those representatives of the Indian Company who were to direct or supervise the manufacture of such products and who would visit the Appellant ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 9, the Trade marks Act, 1940, was repealed and replaced by the Trade and Merchandise Marks Act, 1958 (Act No. 43 of 1958). Thereafter the Indian Company applied for and obtained a licence for the purchase of a Stokes Triple Layer Machine which could produce two-layered tablets, the intention being to use this machine for the purpose of manufacturing 'DRISTAN' tablets. The Indian Company intimated this fact to the Appellant asking it to supply urgently the manufacturing manual for 'DRISTAN' tablets. The Indian Company also wrote to the Appellant asking lt to supply free of cost three units (comprising twenty four tablets in all) of 'DRISTAN' tablets as samples. me MANUFACTURING manual as also the samples were duly sent by the Appellant to 1 the Indian Company. On May 31, 1960, Mac Laboratories Private Limited, the First Respondent in this Appeal, applied for registration of the trade mark 'TRISTINE' in class 5 in respect of its medicinal preparation for symptomatic treatment of respiratory airlines. On January 1, 1961, the Appellant filed a notice of opposition to the registration of the said mark 'TRISTINE' on re ground that it was deceptively similar to its trade mark 'DRISTAN ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rk already in use or without any trade mark . A further condition was that no special concession in regard to the import of basic raw materials and ingredients would be sought in relaxation of the general policy in force from time to time. On January 23, 1961, the Indian Company applied to the Director, Drugs control Administration, State of Maharashtra, for permission to manufacture 'DRISTAN' tablets. The said application was approved by the Drugs Controller on February 10, 1961. Meanwhile, on January 18, 1961, the Appellant had filed a notice of opposition to the application for registration of the mark 'TRISTINE'. As a counterblast to the said notice of opposition, the First Respondent on April 10, 1961, filed with the Registrar of Trade Marks, Calcutta, an application, being Application No. Cal-17, for rectifying the Register of Trade Marks by removing therefrom the Appellant's trade mark 'DRISTAN'. On May 5, 1961, the first Respondent applied for amendment of the said Recitification Application by substituting the paragraph containing the submissions in support of the grounds taken therein by a new paragraph. This application for amendment was allowed. On October 18, 1961, a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... anner as the American Company may from time to time direct and all labels, containers, packing, pamphlets, advertising and the like shall show the said Trade mark in manner, design and use as the American Company so directs and with the prior approval in writing of the American Company. 7. There is no royalty or other remuneration payable by the Indian Company to the American Company for the proposed permitted use of the said trade mark. The said agreement provided that in the event of any breach or default by the Indian Company of any of the conditions contained in the said agreement, the appellant would have the right to prohibit forthwith further use by the Indian Company of the trade mark 'DRISTAN'. The said agreement was to remain in force until determined by either party by ninety days' notice in writing and in the event of such termination the Indian Company was to discontinue all further use of the said trade mark and to deliver to the Appellant the manufacturing technology relating to the said tablets 'DRISTAN' including formulae, raw materials, finishing materials and packing materials supplied by or on behalf of the Appellant and to hold a the disposition of the Appe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ta high Court, being Appeal No.61 of 1965, making the Second Respondent before us the Registrar of Trade Marks, Calcutta, the Second Respondent thereto. A learned single Judge of the said high Court by his judgment delivered on May 10, 13 and 14, 1968, reported as Mac Laboratories private Ltd. v. American home Products Corporation and Anr. A.I.R. 1969 Cal. 342, allowed the said appeal with costs and set aside the order of the Registrar of Trade marks. Thereupon, the Appellant filed a further appeal, being Appeal No. 165 of 1968. A Division Bench of the said High Court by its judgment and order dated December 1, 1969, reported as American home products Corpn. v. Mac Laboratories Private Ltd. and Anr. (1970-71) 75 C.W.N. 118, S.C., L194 Fleet Street Reports 215, dismissed the said appeal with no order as to costs. It is against this judgment and order that the present Appeal by certificate has been filed . In order to appreciate what was held by the Registrar of Trade Marks and the learned Single Judge and the Division Bench of the Calcutta high Court and to test the correctness of the rival submissions advanced before us, it is now necessary to refer to the relevant statutory prov ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... red user; and (ii) which complies with any conditions or restrictions to which the registration of the trade mark is subject . Section 6 provides for the maintenance of a record called the Register of Trade Marks in which all registered trade marks are to be entered. Under section 71), the Register is to be divided into two parts called respectively Part A and Part . Under section 72), the register or Trade Marks existing at the commencement of the 1958 Act is to be incorporated with and to form part of Part A of the Register. The Appellant's trade mark 'DISTAN' leaving been registered under the 194 Act, it became part of Part A of the Register of Trade Marks under the 1958 Act. Under section 136(2), a registration made under the 1940 Act is, if in force at the commencement of the 1958 Act, to continue in force and have effect as if trade under the corresponding provision of the 1958 Act. Sub-section (1) of section 9 of the 1958 Act, which corresponds to sub-section (1) of section 6 of the 1940 Act sets out the requisites for registration cf a trade mark. Under it a trade mark is not to be registered in Part A of the Register unless it contains or consists of at least one of th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of opposition in writing to the registration of such mark. A copy of such notice of opposition is to be served upon the applicant. These provisions made in sections 20 and 21 of the 195 Act correspond to section 15 of the 1940 Act. Under section 23(1), if the application has not been opposed and the time for giving the notice of opposition has expired or if the application has been opposed and the opposition has been decided in favour of the applicant, the Registrar is "unless the Central Government otherwise directs to register the said trade mark in Part A or Part of the Register, as the case may be The trade mark when registered is to be registered as of the date of the making of the application for registration and such date is to be deemed to be the date of registration. A similar provisions existed in section 16 of the 1940 Act. to notice of opposition to the registration of the trade mark 'DRISTAN' was ever lodged by anyone, and accordingly it was ordered to be registered by the Registrar of Trade marks. In view of the provisions of section 16 of the 1940 Act, the said trade mark 'DRISTAN' was to be deemed for the purposes of the 1940 Act to be registered from the date of t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Registrar may, on application being made to him in the prescribed manner, allow, the company has been registered as the proprietor of the trade marks in respect of those goods, the registration shall ceased to have effect in respect thereof at the expiration of that period, and the Registrar shall amend the register accordingly. An important section for the purpose of the present Appeal is section 46 which provides for removal of a registered trade mark from the Register. The infringement of the trade mark in the manner provided by the 1958 Act. A similar provision was to be found in section 21(1) of the 1940 Act. Section 29 of the 1958 Act defines what constitutes infringement of a trade mark while section 30 sets out the acts which do not constitute an infringement of the right to the use of a registered trade mark. Under section 36, a registered proprietor of a trade mark has the power to assign the trade mark. Under section 37, a trade mark is assignable and transmissible whether with or without the goodwill of the business concerned and that in respect either of all the woods in respect of which the trade mark is registered or of some only of those goods. Under section 38, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... (3) An application shall not be entitled to rely for the purpose of clause (b) of sub-section (1) or for the purposes of sub-section (2) on any non- use of a trade mark which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates." The First Respondent's said application for rectification was made both under section 46 and 56 of the 1958 Act. Under section 56(2), any person aggrieved by any entry made in the Register of Trade Marks without sufficient cause or by any entry wrongly remaining on the Register may apply in the prescribed manner to a High Court or to the Registrar, and the tribunal may make such order for making, expunging or varying the entry as it A may think fit. Under section 56(4), this power can also be exercised by the High Court or the Registrar of its own motion after giving notice to the parties concerned and after giving them an opportunity of being heard. This power includes the power to cancel or vary the registration of a trade mark. Against such an order made by the Registrar rectifying, cancelling or removing a trade mar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ir relationship will confer and whether it is a term of their relationship that the proposed registered user shall be the sole registered user or that there shall be any other restriction as to persons for whose registration as registered users application may be made; (b) stating the goods in respect of which registration is proposed; (c) stating the conditions or restrictions, if any, proposed with respect to the characteristics of the GOODS to the mode or place of permitted use, or to any another matter; (d) stating whether the permitted use is to be for a period or without limit of period, and, if for a period, the duration thereof; and (iii) such further documents or other evidence as may be required by the Registrar or as may be prescribed. (2) When the requirements of sub-section (1) have been complied with to his satisfaction, the Registrar shall forward the application together with his report and all the relevant documents to the Central Government. (3) On receipt of an application under sub-section (2), The Central Government, having regard to all the circumstances of the case and to the interests of the general public, and the development of any industry, tr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... lowing terms : 85. Consideration by the Central Government.- The Central Government, on receipt of an application for registration as registered user forwarded to it by the Registrar under sub-section (2) of section 49, shall, if satisfied that the application and the accompanying documents comply with the provisions of the Act and the rules, consider whether the APPLIED cation should be allowed having regard to the matters specified in sub-section (3) of that section, and in doing so may take into account all or any of the following matters :- (1) whether the permitted use if allowed would contravene the policy of the Act which is to prevent trafficking in trademarks; (2) whether the registered proprietor has registered the trade mark without any bona fide intention to use it in relation to his goods in the course of trade or solely or mainly for the purpose of permitting others to use it under agreements for registered user; and (3) whether the registered proprietor has acquired title to the trade mark by assignment without any bona fide intention to use it in relation to his goods in the course of trade or solely or mainly for the purpose of permitting others to use it u ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on. The second ground mentioned above was taken in order make out that the First Respondent was a person aggrieved for the purposes of section 46 and 56(2) of the 195 Act. The Appellant had contested this position but this particular controversy does not survive for it is no more in dispute that the First Respondent was person aggrieved. The submission set out in the said Application for Rectification in support of the above three grounds were substituted by fresh submissions by an amendment as mentioned earlier. These submissions define the scope of the controversy between the parties. The submissions so substituted were (i) That the said trade mark 'DRISTAN' was not distinctive mark and nor was not regenerable trade mark under Sec.6 of the Trade marks Act, 1940 (corresponding to Section 9 of Act No. 40 of 1958), except upon evidence of its distinctiveness and no such evidence was submitted to the Registrar before registration. (ii) That the said trade mark was registered in contravention of Section 8 of the Trade Marks Act, 1940 (corresponding to Section 11 of the present Act, of 1958). (iii) That the said trade mark offends against the provisions of Section 11 of the Act. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 1955 (hereinafter referred to as the Ayyangar Report ). The learned Single Judge further held that the Appellant had not at any time used the said trade mark in relation to the goods in respect of which it was registered. According to the learned Single Judge, the legal fiction created by section 48(2) of the 1958 Act came into play only after a trade mark was registered and that an intention to use a trade mark through someone who would subsequently get himself registered as a registered user did not amount to an intention on the part of the applicant for registration to use the trade mark himself. The learned Single Judge held that to accept the Appellant's said contention would amount to permitting traffic hang in trade marks. In view of the conclusion he had reached, the learned Single Judge did not decide the question whether trade mark 'DRISTAN' was deceptively and confusingly similar to the trade mark 'BISTAN'. The learned Single Judge accordingly allowed the said appeal. In further appeal the Division Bench rejected the contention that the trade mark 'DRISTAN' was deceptively and confusingly similar to the trade mark 'BISTAN'. It, however, confirmed the judgment of the lea ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d to be used by a proposed registered user. 2. To register a trade mark which is proposed to be used by a registered user does not per se amount to trafficking in trademarks and whether it does so or not must depend upon the facts and circumstances of each case. 3. The reliance placed by the High Court, both by the learned single Judge and Division Bench upon the 'PUSSY GALORE' Trade Mark Case was unjustified and unwarranted inasmuch as the provisions of the English Act, namely, the Trade Marks Act, 1938, are radically different from those of the 1958 Act as also the 194 Act an, therefore, that case has no relevance so far as the construction of section 18(1) read with section 48(2) of the 1958 Act is concerned. 4. The reliance placed by the High Court (both by the learned single Judge and the Division Bench upon the Shavaksha Committee Report and the Ayyangar Report was equally misplaced as Parliament did not accept the recommendations with respect to registered users made in either of these reports. 5. The facts and circumstances of the case show that the appellant had at the date of the making of the application for registration a bona fide intention to use the trade mar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... for registration that it proposed to use the said trade mark itself and by not disclosing the fact that it proposed to use it through a proposed registered user. 9. The trade mark 'DRISTAN' was deceptively and confusingly similar to the trade mark 'BISTAN' and, therefore, it cannot be allowed to remain on the Register of Trade Marks. 10. To allow the trade mark 'DRISTAN' to remain on the Register of Trade Marks would be contrary to the policy of the Government of India. We will no test the correctness of these rival submissions. The first Respondent's Application for Rectification was stated to be made under section 46 and 56 of the 1958 Act and Rule 94 of the Trade and Merchandise Marks Rules, 1959. Rule 94 is irrelevant because it merely prescribes in which form an application for rectification of or for varying or expunging any entry in the Register of Trade Marks is to be made and by what documents such an application is to be accompanied. Under section 56 an entry wrongly remaining on the Register of Trade Marks is liable to be expunged therefrom. An entry relating to a mark the use of which would be likely to deceive or cause confusion, would be an entry wrongly remai ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on the part of the applicant for registration-to use the trade mark, in fact, there has 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 under section 46(1). Clause (b) of section 46(1) applies where for a continuous period of five years or longer from the date of the registration of the trade mark, there has been no bona fide use thereof in relation to those goods in respect of which it is registered by any proprietor thereof for the time being. An exception to clause (b) is created by section 46(3). Under section 46(3), the non-use of a trade mark, which is shown to have been due to special circumstances in the trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application under section 46(1) relates, will not amount to non-use for the purpose of clause (b). The distinction between clause (a) and clause (b) is that if the period specified in clause (b) has elapsed and during that A period there has been no bona fide use of the trade mark, the fact that the registered proprietor had a bona fide intenti ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... roposes to use in relation to those goods registered. In the present day world of commerce and industry, a manufacturing industry can neither be commenced nor established overnight. There are innumerable preparatory steps required to be taken and formalities to be complied with before the manufacture of goods can start and the manufactured goods marketed. The processes must of necessity take time. If the position were that the mere non-user of a trade mark for the period mentioned in clause (a) of section 46(1) would make a trade mark liable to be taken off the Register it would result in great hardship and cause a large number of trade marks to be removed from the Register, because the moment one month has elapsed after the registration of a trade mark has been ordered, a trade rival can make an application on the ground set out in clause (a) of section 461 claiming that there has been no bona fide use of the trade mark up to a date one month before the date of his application. It is in order to prevent such harassment and absured result that the two conditions specified in clause (a) have been made cumulative. The object underlying section 46(1) is to prevent trafficking in tra ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t the goods are the plaintiff's goods. In an infringement action, the plaintiff is not required to prove the reputation of his mark. Further, under section 37 a registered mark is assignable and transmissible either with or without goodwill of the business concerned while under section 38 an unregistered trade mark is not assignable or transmissible except in the three cases set out in section 3(2). As the registration of a trade mark confers such valuable rights upon the registered proprietor thereof, a person cannot be permitted to register a trade mark when he has not used it in relation o the goods in respect of which it is sought to be registered or does not intend to use it in relation to such goods. The reason for not permitting such trademarks to be registered was thus stated by Romer, J., in In re the Registered Trade-Marks of John Batt Co. and In re Carter's Application for a Trade-Mark:, (1898) 2 Ch. D. 432, 436, S.C. 15 R.P.C. 262, 266. " ...one cannot help seeing the evils that may result from allowing trade-marks to be registered broadcast, if I may use the expression, there being no real intention of using them, or only an intention possibly of using them in resp ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s have to grope for some means of delineating the forbidden territory, and h different modes of expression may help to indicate boundaries which are not and cannot be marked out with absolute precision. To my mind, trafficking in a trade mark context conveys the notion dealing in a trade mark primarily as, commodity in its won right and not primarily for the purpose of indentifying or promoting merchandise in which the proprietor of the nark is interested. if tiler is no real trade connection between the proprietor of the mark and the licensee or his goods, there is room for the conclusion that the grant of the licence is a trafficking in the ark. It is a question of fact and degree in ever case whether a sufficient trade connection exists. We have no hesitation in accepting the meaning given to the expression trafficking in a trade Dillon, LJ., and Lord Brightman. The intention to use a trade mark sought to be registered must be, therefore, genuine and real and as pointed out by J Tomlin, J., in In re ducker's Trade mark (1928) Ch. L 405, 409, the fact that the mark was as thought to be something which some day might be useful would not amount to any definite and precise inten ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t's intention was,. the Court can only look at events previous to the relevant date, namely, the date of the application for registration made by the Appellant, that is, August 18, 1958, and not to any events subsequent thereto. Whether subsequent events are relevant or not would depend upon the facts and circumstances of each case and the question at issue therein. In Srinivas Mall Bariroliya and Anr. v. Emperor, A.I.. 1947 P.C. 135, Appellant No. 1, a Salt Agent for the District Magistrate, was inter alia charged with having abetted Appellant No.2, who had been appointed by him, in selling salt to licensed retail dealers to whom allocations of specific quantities of salt had been made by the Central Government, on three specified dates at a price exceeding the maximum price which had been fixed by the District Magistrate. Appellant No.1 was convicted and sentenced to imprisonment under Rule 81(4) of the Defence of India Rules, 1939, relating to the control of prices. In addition to the evidence of the three dealers to whom the salt was sold, nine other dealers who had bought salt from appellant No.1 and had to deal with Appellant No.2 and had obtained salt from him at a price exc ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ts came not be produced before this Court. During the course of the hearing of the peal, w called upon learned Counsel for the Appellant to file before us copies of the application for registration of the trade mark `DRISTAN' and the application for registering the Indian Company as the registered user of the said trade mark. The original file relating to the trade mark `DRISTAN' was before the Registrar when he heard the First Respondent's Application for Rectification and also before the High Court when the matter was heard by the learned Single Judge and the Division Bench Copies, however, of the said two applications were not on the record, and we wanted to ascertain for ourselves what was stated in those applications. At that time learned Counsel for the first Respondent got up and requested Us that the Appellant should also be asked to produce copies of the said two agreements and accordingly we directed the Appellant to file copies of those two agreements also, which it did. It is because the intention of the Appellant at the date of filling the application registration is to be ascertained from the facts existing in this case that we have related them at some length in th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he said agreement does not mention 'DRlSTAN' tablets but the products set out in schedule A are not exhaustive of the Licensed Products to which the said collaboration agreement related and this is made clear by the rule of the word ``include'' with reference to the products identified in Schedule A. There is no dispute that 'DRISTAN' tablets are Whitehall Products. The division of the Appellant, which at all relevant times carried on and still carries on the activity of manufacturing and marketing pharmaceutical products, is called the Whitehall laboratories and it was for this reason that the Registrar ordered the entry relating to the trade mark 'DRISTAN' to be amended so as to show the Appellant trading as 'Whitehall Laboratories. The definition of "Licensed Products" in the said collaboration agreement comprehended not only the Whitehall Products set out in Schedule A to the collaboration agreement but also other products in respect of which the Indian Company would be licensed for import, manufacture, sale or distribution in India under the terms of the said agreement. The correspondence between the parties leaves no doubt that the manufacture and of the 'DRISTAN tablets by t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... unsel for the Appellant submitted that as the intention of the Appellant was to market 'DRISTAN' tablets in India, it could translate that intention into action either by getting it manufactured and marketed by a registered user in India or as exporting the tablets to India and if the import policy did not permit this to be done, it could export the tablets to India when the import policy was relaxed. This argument is contrary to the facts on the record and must be rejected. A person's intention is shown by the facts of a case and not by statements made at the Bar. The facts of this case clearly establish that the Appellant's intention in applying for registration of the trade mark 'DRISTAN' was to use it in relation to goods to be manufactured and marketed by the Indian Company and that for this purpose the Indian Company would get itself registered as the registered user of the said trade mark. Further, in the affidavit sworn on April 13, 1962, by S. Waldron, Vice-President of the Appellant, it is categorically stated as follows : "It was intended that the product bearing the 'DRISTAN' trade mark be introduced in India through Geoffrey Manners Co. Ltd. should be registered as r ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... user is not the same person as the proprietor of a registered trade mark for a registered user can only be some person other than the proprietor of the trade mark and that no registered user can come into being unless and until a trade mark has been registered and thereafter an application for registration as the registered user thereof has been made and granted. He also submitted that the legal fiction enacted in section 48(2) of the 1958 Act and section 39(2) of the 1940 Act cannot for this reason apply to the provisions of section 18(1) or to the first condition of clause (a) of section 46(1) of the 1958 Act and, therefore, the Appellant was not entitled to seek the protection of the said legal fiction. According to Dr. Gauri Shankar, if the proprietor of a trade mark intended to use it through another, he could only do it by having resort to section 45 of the 1958 Act, which corresponds to section 36 of the 1940 Act, by getting it registered for the purpose of assigning it to a company to be formed and registered under the Companies Act, 1956. In Dr. Gauri Shankar's submission the only three ways in which, therefore, the trade mark 'DRISTAN' could have been used in India were f ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... gistration that it (that is, the trade mark) should be used in relation to those goods by him" as also to "bona fide use of the trade mark in relation to those goods do any proprietor thereof for the time being." It cannot possibly be that when section 48(2) expressly provides that the permitted user of a trade mark by a registered user is to be deemed to be user by the proprietor of the trade mark for the purposes of section 46, the fiction is intended only to apply to the use of the trade mark referred to in the second condition of clause (a) of section 46(1) and not to the use of that trade mark referred to in the first condition of the said clause (a). Under section 18(1), an application for registration of a trade mark can only be made by a person who claims to be the proprietor of that trade mark. Therefore, the words "applicant for registration" in clause (a) Of section 46(1) would mean 'the person claiming to be the proprietor of the trade mark who is the applicant for registration of that trade mark". The first condition of clause (a) would, therefore, read "that the trade mark was registered without any bona fide intention on the part of the person claiming to be the prop ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ch fiction its full effect and carrying it to its logical conclusion, no other interpretation can be placed upon the relevant portions of section 18(1) and of clause (a) of section 46(1) than the one which we have given. In reaching the conclusion which they did, the learned Single Judge and the Division Bench of the High court relied heavily upon the PUSSY GALORE' Trade Mark Case. In order to understand what was held in that case it is necessary first to refer to some of the provisions of the English Trade Marks Act, 1938 (1 2 Geo. 6, c. 22), as the 1958 Act is based largely upon the provisions of the English Act though with certain important differences. Section 17(1) of the English Act sets out who can apply for registration of a trade mark and is in pari materia with section 18(1) of the 1958 Act. Under section 11(4), the refusal by a Registrar to register the trade mark is subject to appeal to the Board of Trade or to the court at the option of the applicant. If the appeal is to the court, there can be further appeal to the Court of Appeal and from there to the House of Lords, Section 2h provides for removal of a trade mark from the Register and is in pari materia with sec ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the proprietor, or by some person authorised to act on his behalf and approved by the Registrar- (a) giving particulars of the relationship, existing or proposed, between the proprietor and the proposed registered user, including particulars showing the degree of control by the proprietor over the permitted use which their relationship will confer and whether it is a term of their relationship that the proposed registered user shall be the sole registered user or that there shall be any other restriction as to persons for whose registration as registered users application may be made; (b) stating the goods in respect of which registration is proposed; (c) stating any conditions or restrictions proposed with respect to the characteristics of the goods, to the mode or place of permitted use, or to any other matter, and (d) stating whether the permitted use is to be for a period or without limit of period, and if for a period, the duration thereof; and with such further documents, information or evidence as may be required under the rules or by the Registrar. (5) When the requirements of the last foregoing subsection have been compled with, if the Registrar, after considering ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he very large and diverse range of goods covered by the several applications, the Registrar was not satisfied that the applicant company had itself the necessary intention to use the marks applied For. All the marks sought to be registered related to novels written by the late Ian Fleming. Thirty- nine of the said applications related to marks 'James Bond Secret Agent' and '007 Secret Agent', James Bond being the hero of those novels and '007' being his official code number. The remaining seven applications were in respect of the mark 'PUSSY GALORE'. Pussy Galore was a character featuring in Ian Fleming's novel 'Godfinger', being a female with Jew' unorthodox morals and a name which would appear to be an obscene pun in very questionable taste. The Registrar heard one of the said applications which related to the trade mark 'PUSSY GALORE'. The other relevant facts appear in the decision of the Registrar. The relevant passage is as follows (at page 266) : " The mark in suit and the others to which I have referred all contain references either directly or indirectly to the well-known fictional character James Bond and Mr. Bevan explained that the applicant company were ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... interpretation of section 17 and 29 as the applicants have contended. As above indicated, my view is that section 29 state the only case in which an intended use, ex hypothesi not a use by the applicant, can be regarded as justifying dispensation from the requirements of section 17. What happens after registration calls for different consideration both as regards the use of marks in accordance with the provision of the Act and as regards the consequences of use otherwise than in accordance with the provision of that Act." In our opinion, the High Court was unduly impressed by this case and unnecessarily attached great importance to it. The High Court justified its reliance upon that case by referring to the following passage from the judgment of this Court in The Registrar of Trade Marks v. Ashok chandra Rakhit Ltd. [1955] 2 S.C.R. 252. (at pages 259-60) : "As the law of Trade Marks adopted in our Act merely reproduces the English Law with only slight modifications, a reference to the judicial decisions on the corresponding section of the English Act is apposite and must be helpful." What the High Court overlooked was that in Ashok Chandra Rakhit's Case the section of the 1940 A ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... k can be accompanied by an application for the registration of a person as a registered user of that trade mark, and if the tribunal is satisfied that the proprietor of the trade mark intends lt to be used by that person in relation to those goods and is also satisfied that person will be registered as a registered user thereof after the registration of the trade mark, lt will not refuse to register the trade mark. The effect of section 29(1), therefore, is that an application for registering a person as a registered user can be made simultaneously with the application for registering the trade mark and if both are found to be satisfactory, the application for registration would be granted and immediately thereafter the registration of the registered user would be allowed. In such a case, the intention on the part of the applicant for registration that the trade mark should be used by the registered user thereof is to be deemed to be an intention to use that trade mark by the application for registration. This is a special provision applicable to a special case. The fiction created by section 29(2) is also made applicable to the case of a corporation about to be constituted to whic ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... thereof would tend to facilitate trafficking in a trade mark. This question is to be considered by the Registrar himself. The provisions of the 1958 Act were the same but the provisions or the 1958 Act are radically different. Under the 1958 . Act, though both the application for registration of a trade mark and the application for registration of a registered user are to be made to the Registrar, the Registrar has the power to grant the application for registration of the trade mark only. So far as the application for registering a person as a registered user is concerned, he has to forward it together with his report to the Central Government and it is for the Central Government to decide whether to permit such application to be granted or not. In order to decide this, the Central Government has to take into account the matters set out in sub-section (3) of section 49 and in rule 85 of the Trade Marks Rules, 1959. The matters to be considered by the Central Government include not only whether the permitted use, if allowed, would amount to trafficking in trademarks but also the interests of the general public and the development of any industry, trade or commerce in India. After t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... is the argument of Dr. Dr. Gauri Shankar that the Appellant ant the Indian Company should have jointly applied for registration of the trade mark 'DRISTAN'. The Appellant was already in collaboration with the Indian Company. There was no need for it to seek other collaborators to establish a new company. To assign the trade mark to the Indian Company or to make jointly with the Indian Company an application for registration of the trade mark 'DRISTAN' would be to destroy the appellant's proprietorship in that trade mark. It is well-known principle of interpretation of statutes that a construction should not be put upon a statutory provision which would lead to manifest absurdity or futility, palpable injustice, or absurd inconvenience or anomaly. (see: M. Pentiah and Ors. v. Muddala Veeramallappa and Ors. [1961] S.C.R. 295, 303. The Division Bench of the Calcutta High Court saw the absurdity, inconvenience and hardship resulting from the construction which was placed by it upon section 48(2), as is shown by the passages from its judgment reproduced earlier. It, however, forget the above principle of construction and failed to give to the legal fiction enacted by section 48(2) its f ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... trade for a period of at least two years before the date of the application for registration of a registered user. Parliament did not accept the recommendation made in either of these Reports. These Reports, therefore, cannot be referred to for ascertaining the intention of Parliament when enacting the relevant provisions of the 1958 Act. From what we have said above, we must not be understood to mean that a person, who does not intend to use a trade mark himself can get it registered and when faced with an application under clause (a) of section 46(1) to have that trade mark removed, turn round and say that he intended to use it through some person who was proposed to be got registered as a registered user. This would clearly amount to trafficking in a trade mark. 'PUSSY GALORE' Trade Mark Case could easily have been decided on the ground that the applications for registration made therein, if granted, would amount to trafficking in trade marks. This has been pointed out in Halsbury's Laws of England, Fourth Edition, Volume 48, in footnote 6 to paragraph 30 at page 25. In our opinion, to enable the proprietor of a trade mark who has got it registered on the ground that he int ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... date of the Application for Rectification. For this purpose, learned Counsel relied upon the samples sent by the Appellant to the Indian Company. In the view which we have taken that the two conditions of clause (a) of section 46(1) are cumulative and that the first condition has not been satisfied in this case, we find it unnecessary to consider this point. It was also submitted by Dr. Gauri Shankar, learned Counsel for the First Respondent that the Appellant was not entitled to retain the trade mark 'DRISTAN' on the register because it had obtained its registration by making a false statement in its application for registration inasmuch as it had not stated in the said application that the said trade mark was proposed to be used by a registered user but instead stated that it was to be used by the Appellant who claimed to be the proprietor thereof. This point was not raised at any time before the Registrar or the High Court and it is not open to the First Respondent to take this E point for the first time in this Appeal by certificate. Apart from that, there is no substance in this point. Form TM-l appended to the Trade and Merchandise Marks Rules, 1959, does not contain any colu ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he Register inasmuch as to allow it so to continue would be contrary to the policy of the Central Government with respect to brand names belonging to foreign companies and also because two of the ingredients used in the formula for the manufacture of 'DRISTAN' tablets were banned by the authorities. In support of this contention copies of some circulars and notifications were filed along with the written submissions. This point was not at any time taken before the Registrar or the High Court nor does the certificate granted by the High court cover it. It is not fair to produce copies of any circular or notification along with written submissions after oral arguments have closed because the other side has no opportunity to meet this case. For ought we know, after some ingredients in the composition of the 'DRISTAN' tablets were banned, the manufacturers may have changed the formula. We are not concerned in this Appeal with this question. The application for registering the Indian Company as the registered user of the said trade mark is still pending and when the Central Government comes to consider that application, it will decide the matter for itself. After all, the best guardian ..... X X X X Extracts X X X X X X X X Extracts X X X X
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