TMI Blog1955 (4) TMI 34X X X X Extracts X X X X X X X X Extracts X X X X ..... cised its discretion. The result, therefore, is that this appeal must be allowed - Civil Appeal No. 116 of 1953 - - - Dated:- 15-4-1955 - For the Appellant. : C. K. Daphtary, Solicitor-General for India (K. S. Shavakasha and R. H. Dhebar, with him) For the Respondent : S. C. Isaacs, (P. K. Ghosh, with him) JUDGMENT: DAS J.- This is an appeal from the judgment and order pronounced on the 23rd August 1951 by a Division Bench of the High Court at Calcutta in Appeal No. 112 of 1950 reversing the decision of the Registrar of Trade Marks dated the 24th March, 1950 whereby he had rectified the register by inserting a disclaimer of the word "Shree" forming part of the respondent company's registered trade mark No. 3815. The material facts are as follows: In the year 1897 one Durga Charan Rakhit (since deceased) adopted as his trade mark in respect of the ghee produced and marketed by him a device which, with some slight modification not materially altering its essential features, was, on the application of the respondent company, registered as its trade mark No. 3815. That mark was and is a device consisting of the word "Shree" written on the top in bold Bengali charact ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and the said Ashok Chandra Rakhit assigned the goodwill of his said business and his right, title and interest in the said mark to the respondent company. In 1933 the respondent company's said mark was registered in the Trade Mark Registry at HongKong under the provisions of, the Hong-Kong Trade Marks Ordinance, 1909 and the fact of such registration was published in the Straits Settlements Government Gazette. In 1934 two persons, Rajendra Prasad and Dilliram, were, on complaint, made on behalf of the respondent company, convicted by the Chief Presidency Magistrate of Calcutta under section 486, Indian Penal Code, for infringing the said mark and such conviction was upheld by the Calcutta High Court. In 1935 one Chiranjilal Sharma was, on like complaint, convicted by the Chief Presidency Magistrate for infringement of the said mark. The volume of the respondent company's business in ghee done under the said mark is said to be considerable, the annual turn over varying from Rs. 10,00,000/to Rs. 15,00,000/-, and the annual cost of advertisement being anything between Rs. 10,000/and Rs. 39,000/-. It is also said that the ghee marketed by the respondent company and its predecessors is ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he respondent company the Registrar came to the conclusion that the word "Shree" was not adapted to distinguish and, for reasons stated in his judgment delivered on the 24th March 1950, directed rectification of the register by inserting a disclaimer of the word "Shree" in the following terms: "Registration of this Trade Mark shall give no right to the exclusive use of the word 'Shree"'. Feeling aggrieved by the aforesaid decision the respondent company preferred an appeal to the High Court at Calcutta under section 76 of the Act. The High Court also took the view that "Shree" was a word which had numerous meanings and that it would be impossible for any trader to contend that he had an exclusive right to the use of 'Such a word. But the High Court went on to hold that there was no ground whatsoever for the order made by the Registrar as the respondent company had never claimed that it had any right to the exclusive use of the word "Shree". In the result, the High Court allowed the appeal and set aside the order of the Registrar rectifying the register. Being of the opinion that the point involved was a novel one in this country and was of importance and would affe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ined in the trade mark the Registrar became entitled, without anything more, to require a disclaimer of that part or matter. This extreme position, however, was not maintained in the end and it was conceded, as indeed it had to be, that the exercise of the power conferred on the Registrar by this section always remained a matter of discretion to be exercised, not capriciously or arbitrarily but, according to sound principles laid down for the exercise of all judicial discretion. (See the observations of Lord Halsbury, L. C., in Sharp v. Wakefield(L.R. 1891 A.C. 173 at p. 179). 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. Section 15 of the English Act of 1905 which later on was reproduced in section 14 of the English Act of 1938 and which corresponds to our section 13, was considered by the High Court in . England in In re Albert Baker Co.'s Application and In re Aerated Bread Company's Application (L.R. [1908] 2 Ch. 86; 25 R.P.C. 513) which is commonly called the A.B.C. case. In that case Eve, J. fou ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 1890]15 A.C. 252 at p. 263: 7 R.P.C. 311 at p. 318) namely, that in dealing with an appeal from the Registrar's decision under section 8 (2) of the English Act of 1919 the High Court is not fettered by reason of the Registrar on the hearing before him having exercised his discretion, apply to our High Court hearing appeals under section 76 of our Act from decisions of the Registrar given under section 13 of our Act and whether in that situation our High Court may exercise its own discretion just as it could if the proceedings had initially been taken before it. Assuming, but without deciding, that they do apply, it must, nevertheless, be remembered, adapting the language of Lord Macnaghten in Eno v. Dunn([1921] 38 R.P.C. 373 at p. 879) that it is the Registrar "to whom in the first instance is committed the discretionary power". If that authority has exercised his discretion in good faith and not in violation of any law such exercise of discretion should not be interfered -with by the High Court merely on the ground that, in the opinion of the High Court, it could have been exercised differently or even that the High Court would have exercised it differently, had the matter been br ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... se parts or matters would not be protected otherwise than under the Act. If the proprietor has acquired any right by long user of those parts or matters in connection with goods manufactured or sold by him or otherwise in relation to his trade, he may, on proof of the necessary facts, prevent an infringement of his rights by a passing off action or a prosecution under the Indian Penal Code. Disclaimer does not affect those rights in any way. Keeping, then, in view the meaning and scope of section 13 of our Trade Marks Act, 1940 and its underlying purpose as discussed above we proceed to consider whether in the circumstances of the present case the Registrar had exercised his discretion properly in inserting in the register a disclaimer of the word "Shree". It has not been disputed that the respondent company's registered trade mark No. 3815 is a distinctive device properly registrable under section 6 of the Act. It is also a fact that it contains, as its prominent part, the word "Shree" which is not separately registered as a trade mark in the name of the respondent company and, indeed, no application had been made by it for the separate registration of that word. There can, ther ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ed a name which could not be registered alone by him under section 9(5), without deciding whether that word was a matter of a distinctive or non-distinctive character, in pursuance of the inflexible practice that be had adopted, namely, of refusing registration in the absence of a disclaimer. This decision of the Registrar was overruled by Sargant, J. The learned Judge, on the materials before him, came to the conclusion that the word 'Tudor' was not common to the trade and that the word as it had been used by the applicants in relation to chocolates was not a matter of non-distinctive character and that it had denoted their goods. Consequently, the jurisdiction to impose a disclaimer did not arise under clause (b) of section 15 of the English Act of 1905. The jurisdiction, if at all, could, therefore, arise only under clause (a), namely, that the trade mark contained parts not separately registered by the proprietor as trademarks. Having come to the conclusion that the word 'Tudor' was a matter of distinctive character as it denoted the goods of the applicant's manufacture, the Court might have disposed of the case on the short ground that, on that finding, the applicant was entit ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... it and claimed that the said mark "Shree" was well known in the market and that its ghee was asked for and sold under the said mark "Shree". The two prosecutions launched by it and the other facts mentioned in the main affidavit and the two supporting affidavits of two retail dealers and summarised at the beginning of this judgment clearly indicate that it was claiming the right to the exclusive use of the word "Shree" and, indeed, in its agents' letter of the 15th February 1944 objecting to any disclaimer of that word, it was referred to "as trade mark Shree" and it was said to be "very important in the devise". In other words, they put forward the claim that "Shree" itself was also its trade, mark, apart from the device as a whole and that it was an important feature of its device. It is, therefore, not at all surprising that learned counsel appearing for the respondent company before the Registrar, when asked as to how his client could possibly be affected by disclaiming the word "Shree", said frankly that it was far easier to be successful in an infringement action than in a passing off action. This clearly indicated that the respondent company did not want any other merchant t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... any (supra) and finally in the Tudor case referred to above which was decided by Sargant, J. This circumstance, however, does not necessarily mean that in such a case disclaimer will always be unnecessary. It is significant that one of the facts which give rise to the jurisdiction of the tribunal to impose disclaimer is that the trade mark contains parts which are not separately registered. It is, therefore, clear that the section itself contemplates that there may be a disclaimer in respect of parts contained in a trade mark registered as a whole although the registration of the mark as a whole does not confer any statutory right with respect to that part. As we have already stated the possibility of the proprietor attempting to expand the operation of his trade mark cannot be ignored or overlooked. It is a thing which must be taken into consideration by the tribunal-be it the Registrar or the Court-in deciding upon the way it should exercise the discretionary power conferred on it. Reference has been made by the High Court to the observations of Eve, J. in the A.B.C. case referred to above and the question has been posed as to whether any good cause had been shown for the necessi ..... X X X X Extracts X X X X X X X X Extracts X X X X
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