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TMI Blog2002 (11) TMI 684X X X X Extracts X X X X X X X X Extracts X X X X ..... and fittings of automobiles. On 3rd November, 1978 an application was filed by the Appellant (3423688) for the registration of its word mark "Allied" in Class 12 before the Registrar of Trade Marks claiming that it had been using the mark from 1st June, 1968. On 27th February, 1980, an affidavit was filed on behalf of the Appellant before the Competent Officer to show that the mark had acquired distinctiveness and had become distinctive of the goods of the Appellant. The Registrar of Trade Marks ordered the mark of the Appellant to be registered on 27th February, 1980 and in view of the provisions of law, the registration would take effect from 3rd November, 1978 when the application was filed by the Appellant. The certificate of registration that has been granted to the Appellant on 25th May, 1985 records that "the Trade Mark Allied (word per se) is registered under No. 342368 in Part B of the Register as of the date 3rd November, 1978 in Class 12 in respect of parts of motor land vehicles" in the name of the Appellant. The Respondent applies for Rectification 3. On 31st December, 1985, the First Respondent filed an application for rectification of the mark on the grounds presc ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... bullet9 2.Ignition switch bullet9 3.Plug Cap9 4.Horn Dipper switch9 5.Light Changeover switch9 6.Lock Ignition switch9 7.Auto Voltage regulator9 8.Motor Starter Switch9 9.Relays9 10.Spark plug7 11.Plug connector9 12.Regulator for motor9 13.Brake light switch9 14.Dimmer switch9 15.Button (illuminating)11" One of the grounds for rectification that was urged before the Assistant Registrar by the Respondent was that the Appellant has procured the registration by fraudulent misrepresentation. That ground has been expressly negatived by the Assistant Registrar and there is no challenge to that finding. No cross-objection has been filed on behalf of the First Respondent, nor has the Learned Counsel for the First Respondent assailed that finding. The Assistant Registrar finds that "no doubt it is well settled that classification is a matter of convenience in administration, e.g., in facilitating the search which is to ascertain whether the application is objectionable under section 12(1)". However, having said that, the Assistant Registrar has held that the goods in respect of which the mark is registered are not "goods to which the registered trade mark is applied and used ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the name of the Second Respondent as the subsequent proprietor. The Second Respondent is the assignee of the mark and since it is interested in these proceedings, it has been brought on the record. The Issues 8. The only basis on which the application for rectification has been allowed in this case, therefore, is that the goods on which the mark has been used by the Appellant could not be classified under Class 12 and had been erroneously classified as such, while granting registration. Consequently, the Assistant Registrar has held that since the goods would not fall in Class 12, it could not be said that there was a bona fide intention on the part of the Appellant to use the mark in relation to those goods for which it was registered or that it had been used for a continuous period of five years and one month prior to the date of the application for rectification. The provisions of clauses (a) and (b) of sub-section (1) of section 46 have hence been invoked. Having regard to this finding, the question which arises before this Court in Appeal is whether the Assistant Registrar was correct in coming to the conclusion that the goods in respect of which the Appellant had sought reg ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he certificates of manufacturers of automobiles, of experts in the trade and price lists which showed that the goods sold are parts of vehicles; (v)The impugned order of the Assistant Registrar is not based upon the exercise of discretion but, upon an adjudication of rights. Therefore, the principle that the Appellate Court will not interfere in the exercise of discretion by the lower adjudicating authority will not apply in a case such as the present, where the order is based on an adjudication of rights; (vi)When the Registrar initially in the exercise of his powers under section 8 granted registration, there was sufficient material for him to come to the conclusion that the goods fell in Class 12. That decision is final under sub-section (2) of section 8 unless the Registrar has acted mechanically without any material or on a patently erroneous basis; (vii)The question of classification is required to be answered by considering (i) the nature of the goods and the purpose and function of the goods; (ii) the trade channel through which the goods are available; and (iii) the class of customers who purchase the goods. The Assistant Registrar mechanically followed the Internationa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of the Appellant properly fall for classification under Classes 7, 9 and 11 and not under Class 12; (vii)The importance of the practice of the Trade Marks Registry is recognised in section 112 of the Act. In determining the classification of goods in the Fourth Schedule, the test as to whether the goods are of the same description is not material or relevant because goods in the same class may not be of the same description and whereas goods of the same description often fall in different classes. Therefore, in the present case, the question is not whether the goods of the Appellant are of the same description as those in Class 12 but, whether the application that was filed by the Appellant was for goods which fell in class 12; (viii)There was no decision or finding recorded by the Registrar in respect of the classification of the Appellant's goods at the earlier stage and the Registrar was not called upon at that stage to adjudicate upon the class in which the goods fell. Since there was no specific decision, the earlier decision of the Registrar to register the goods cannot be conclusive or binding. 11. These submissions can now be considered. The Material produced in suppor ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... application for rectification and for a continuous period of five years prior thereto, there had been no bona fide use of the mark. The last two grounds were referable to Clauses (a) and (b) of sub-section (1) of section 46 of the Act. The same grounds were reiterated in the statement of case. 14. The Appellant filed a counter statement on 16th April, 1986 denying the allegations contained in the application of the First Respondent. The Appellant contended that it did not claim a monopoly in respect of parts of motor land vehicles but, a monopoly in the trade mark "Allied" in respect of motor land vehicles and that the registration which was granted to it was conclusive. 15. Evidence was adduced by the parties on their respective cases in the course of the enquiry into the application for rectification. The case of the First Respondent was that (i) it had been incorporated in 1931 and that the word "Allied" was a key part of its corporate name and (ii) it had used the mark "Allied" in the course of its business. The Respondent annexed correspondence for the years 1952 and 1958 in order to establish its use of the mark "Allied" and appended a statement of the sales of the Company ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ged (Exh. D-2); (v)A certificate of Messrs Electromobiles (India) Ltd., which was purchasing Stop Light Switches from the Appellant for the use of its mopeds. The certificate set out that these goods could not be used for any other purpose except as parts in their vehicles (Exh. D-3). Similar certificates were also issued by Ramon Engineering Ltd. and Atlas Auto Industries (Exhs. D-4 and D-5); (vi)A certificate dated 6th August, 1982 of the Head of the Mechanical Engineering Department of the Victoria Jubilee Technical Institute (VJTI) confirming that the switches produced by the Appellant such as the Horn dipper switch, Ignition switch and Headlight switch constituted special automobile parts operating at low voltage and that these could not be used on ordinary 200-240 volt mains (Exh. D-6); (vii)Invoices showing the actual sale of spare parts to automobile manufacturers including Bajaj Tempo Ltd., Enfield India Ltd., Escorts Ltd., GEC of India Limited, Pravin Auto Spares, Lucas Indian Services Ltd., Majestic Auto Ltd., Jayhind Industries Ltd., Madras Motors Ltd., Kinetic Engineering Ltd., Rallis India Ltd., Chamundi Mopeds Ltd. and other automotive manufacturers (Exhs. E-1 to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the Registrar by section 8 of the Trade and Merchandise Marks Act, 1958 which provides as follows: "8. Registration to be in respect of particular goods.-(1) A trade mark may be registered in respect of any or all of the goods comprised in a prescribed class of goods. (2) Any question arising as to the class within which any goods fall shall be determined by the Registrar whose decision in the matter shall be final." The rectification of the register was sought under section 56 of the Act and hence it would be convenient to make a reference to that provision. Section 56 of the Act provides as follows : "56. Power to cancel or vary registration and to rectify the register-(1) On application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remain ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ntention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of section 45 apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or (b)that up to a date one month before the date of application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being: Provided that, except where the applicant has been permitted under sub-section (3) of section 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark, the tribunal may refuse an application under clause (a) or clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... xclusion that these would be other than talking machines and wireless apparatus. Similarly, in class 16, the entry entitled "typewriters and office requisites" has been qualified by the words "other than furniture" and the entry "instructional and teaching material" by the words "other than apparatus". There is a specific entry for furniture viz., in class 20. Therefore, in certain cases the Fourth Schedule has adopted the device of exclusion. The impact of the exclusion is that articles which would ordinarily fall within that class, are specifically excluded there from. 24. A second device which is utilised in the Fourth Schedule is the device of inclusion. For instance, in class 4, the entry "fuel" is defined to include motor spirit and in class 9, which inter alia deals with scientific, nautical, surveying and electrical apparatus and instruments, it has been provided that this would include wireless apparatus and instruments. Similarly, in class 10, it has been specified that surgical, medical, dental and veterinary instruments and apparatus would include artificial limbs, eyes and teeth. Words of inclusion are sometimes used to indicate that goods which may not ordinarily fal ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... om a class. These cases therefore, pose no difficulty. Thus, for instance, in class 6, there is a specific exception of "driving chains for vehicles" from the entry "chains" and in class 7, the entry "motors" is qualified by the words "except for vehicles". Similarly, "machine couplings and beltings" are also qualified by the words "except for vehicles" in the same class. 28. The Assistant Registrar has come to the conclusion that the goods provided by the Appellant fall for classification in classes 7, 9 and 11. Hence, it would be convenient to refer to these entries in the Fourth Schedule. Class 7 of the Fourth Schedule is as follows: "7. Machines and machine tools; motors (except for vehicles); machine couplings and belting (except for vehicles); large size agricultural implements; incubators." Class 9 of the Fourth Schedule provides as follows: "Scientific, nautical, surveying and electrical apparatus and instruments (including wireless) photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision) life-saving and teaching apparatus and instruments; coin or counter-freed apparatus; talking machines; cash registers; calculating machines; fir ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... place that a part of an article or apparatus constitutes an article included in other class. In answering that question, the test, in my view, has to be the primary nature of the commodity or product. In considering the question of classification in a case such as the present, the decision-making authority has to assess whether it would be appropriate to classify the part of the article or apparatus with the final product of which it is a part or, more appropriately, with an article included in another class. In order to decide upon the latter course of action, the goods in question must constitute articles included in the other class. Whether in a case such as the present, the goods in question should be regarded as appropriately falling for classification in class 12 as parts of a vehicle or in class 7, 9 or 11 as machines, electrical apparatus or installations for lighting must, therefore, depend upon the primary nature of the goods themselves. This test was laid down in England in a decision in Byrd's case (supra), an application was made by Byrd and Company Ltd. for the rectification of the Register by removing two marks, "Tricosal" and "Tricosalicic". Both the marks were reg ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the goods has been adopted. 31. The primary nature of the goods in question is the guiding principle. If not a decisive test. The primary nature of the goods, however, cannot obviously be determined on the basis of a priori considerations. Byrd's case (supra) formulates the "primary nature of the goods" test but, does not really expound upon the manner in which the Registrar of Trade Marks or the Court will determine the primary nature. In assessing the primary nature of the goods, it would be necessary to have regard to (i) the nature or composition of the goods; (ii) the uses and functions of the goods; (iii) the trade channel where the goods are available and (iv) the class of customers which is comprehended in the class of purchasers of those goods. These considerations are but material circumstances because a business and practical sense has to be imported in determining the primary nature of the goods. Counsel for the Respondents urges that considerations as regards the nature and composition of the goods, their uses and the trade channel where they are available are alien to the question of classification and these considerations are relevant only on when a question arises ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... this was a diagnostic substance for carrying out tests on samples taken from the human body and fell for classification as a pharmaceutical substance. Section 46 33. Section 46 of the Act provides that a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on the ground that either (i) the mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of section 45 apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application or (ii) that up to a date one month before the date of application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor. Under the proviso to section 46, it has been laid down that except where the applicant has been permitted under sub-section (3) of sect ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... but also such other factors as the origin of the goods, their nature and the purposes or uses to which they are put. The decision of the Assistant Comptroller was endorsed in the judgment of Mr. Justice Lloyd-Jacob. An instructive decision of the House of Lords is in Daiquiri Rum Trade Mark [1969] RPC 600. Lord Wilberforce held that the expression "goods of the same description" which is used in sections 12 and 26 of the Trade Marks Act, 1938, must bear the same meaning throughout. In considering these words, the Learned Judge held thus : "The expression 'goods of the same description' is used elsewhere in the Trade Marks Act, 1938, in particular sections 12 and 26, and no reason appears why it should not bear the same meaning throughout. The words are not perhaps self explanatory. Taken by themselves, they would suggest that it is necessary to search for a description, by species, genus or wider category which would include all the goods in question. Taken in relation to the Act of 1938, they might suggest a grouping by reference to the classification of goods for trade mark purposes contained in the Third or Fourth Schedules to the Trade Marks Rules. But reference to the classif ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ons. The decision must reflect a sense of commercial and business reality and it is that which must be a guiding consideration. The tenability of the Impugned Order 36. The impugned order which has been passed in this case by the Registrar of Trade Marks is based entirely on the consideration that the Indian classification of goods and services classifies the goods in respect of which the mark was registered under classes 7, 9 and 11. The Assistant Registrar of Trade Marks acknowledged that "it is well settled that classification is a matter of convenience in administration". However, the Assistant Registrar was of the view that since the goods in respect of which the mark had been registered are listed in the Indian Classification of goods and in the International classification not in class 12 but, in classes 7, 9 and 11, the application for rectification had to be allowed. 37. The entire approach of the Registrar, to the problem at hand suffers from error. The well settled principle of law is that guidelines or classification lists published by the Trade Marks Registry containing an alphabetical list of goods and the classes to which they are assigned are administrative guide ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... al matter, regarded for the purposes of trade or the meaning of the words of the specification as a matter of ordinary language. In keeping with this approach, the test of whether particular goods fall within a specification of goods has been said to be a question for the consumer and not a matter to be determined by expert scientific evidence." [Emphasis supplied]. In a treatise entitled "Intellectual Property : Patents, Copyright, Trade Marks and Allied Rights" by W.R. Cornish (Third Edition, First Indian Reprint 2001), again, it has been emphasised that the division of the Trade Marks Register into various classes in accordance with the Nice International Arrangement is an administrative measure and that the Registrar has the final power to decide the class into which particular goods are to be placed : "The Trade Marks Register is divided into 42 classes, 34 for goods and 8 for services, in accordance with the Nice International Arrangement on the subject. This classification is an administrative measure, designed to aid the process of searching. An applicant needs to name all the goods and services for which he wants the registration from the outset, since no amendment is al ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... parts which are used in automobiles or vehicles and that they can be used only for that purpose. The evidence which has been produced by the Appellant on the record before the adjudicating authority below included price lists, certificates of trade bodies, of purchasers and of experts. Besides this, the Appellant produced invoices showing actual sales of parts by the Appellant to automotive manufacturers. If these spare parts purchased by automotive manufactures are thereupon utilised by them in the production of vehicles which they themselves manufacture and market under their own brand name, this does not detract from the case of the Appellant, but in fact goes to emphasise that the goods in question which are sold by the Appellant are manufactured for use specifically in vehicular models of specified manufacturers and that these goods cannot be used for any other purpose. The primary nature of the goods shows that these are parts of vehicles. That is their nature and composition. These goods are known to the trade as automobile parts. The evidence which was produced by the Appellant establishes that the trade channels where the goods are available consist of trade outlets where ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... by the Assistant Registrar for allowing the application of the First Respondent cannot sustain the impugned order. 43. In the circumstances, I am of the view that the Appellant is entitled to succeed. In that view of the matter, I am of the view that it is not necessary to consider the alternative argument which was urged on behalf of the Appellant that even if a case under clauses(a) and (b) of sub-section (1) of section 46 had been made out by the First Respondent, the Appellant would be entitled to the benefit of the proviso to section 46(1). The question as to whether a recourse to the proviso could be had would arise if the Respondents had established their case within the substantive part of sub-section (1) of section 46. In my view, the Respondents failed to establish a ground for removal from the Register within the meaning of sub-section (1) of section 46. Therefore, their application was liable to fail on that ground alone. 44. Before concluding the discussion, it would be necessary to record that the only ground which has been urged before this Court is the correctness of the finding that has been recorded by the Assistant Registrar of Trade Marks to the effect that th ..... X X X X Extracts X X X X X X X X Extracts X X X X
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