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TMI Blog1970 (3) TMI 160X X X X Extracts X X X X X X X X Extracts X X X X ..... the National Bell Co. Ltd. claimed to be manufacturing bells with numerals '33', '50', '51' and '40' inscribed on them since 1957, and the other M/s Gupta Industrial Corporation since 1947 with numerals, '20', '50' and '60' inscribed on cycle bells manufactured by it. The two applications for rectification arose out of suits filed in the District Court, Lucknow by the respondent-company against the two appellant companies on the ground of infringement of its said registered trade marks, the numeral '50' and the figure 'Fifty'. On April 24, 1961 the District Court stayed the said suits at the instance of the appellant companies giving them time for filing the said rectification applications in the High Court. The grounds alleged in the applications were (1) that the numeral '50' and the word 'Fifty' were common to the trade at the time of the original registration and were therefore not distinctive of the bells manufactured by the respondent- company, Sup. CI- 6 (2)that many other manufacturers in the market were using the numeral '50' and the word 'Fifty' on or in relation to cycle bells, and therefore, the distinctiveness of the said marks in relation to the bells manufactured b ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he held that there was no evidence that it was used by other parties either prior to or after the registration thereof by the respondent-company and in that view declined to rectify or expunge the trade mark 'Fifty' as seven years had already elapsed by the time the rectification proceedings were launched and could not, therefore, be challenged on the ground of absence of distinctiveness as laid down in s. 32. The learned Single Judge, on the basis of his aforesaid conclusions, cancelled the trade mark- No. 161543, i.e., of the numeral '50'. In the appeals filed against the said judgment the Division Bench of the High Court held (1) that though the use of the numeral '50' in relation to cycle bells dated back at least 30 years as in the case of Lucas and certain other foreign concerns, the imports of such goods stopped from ;about 1952, though some bells were being sold till 1958 presumably from the remaining previous stock, (2) that the numeral '50' in connection with those foreign made bells was never intended as a trade mark but was used only as an indication of the type or quality, and (3) that statements Exs. R-2, R-3 and R-4 produced by the respondent-company showed that sa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he appellant companies out of which these rectification proceedings arose. The Division Bench held that though there was some evidence of the use of the numeral '50' by certain other concerns after 1953, no importance could be attached to such breaches as there, was hardly any evidence as to when the infringers started manufacturing and the extent of their manufacture and sales, and that the correct principle applicable in such cases was that a few unchallenged, scattered infringements by a number of traders did not render a registered trade mark common. As regards the earlier use of the word 'Fifty' and the numeral '50' by Lucas and other foreign concerns, the Division Bench held that they were not the registered trade marks of those companies and that those concerns had used those marks as merely type marks. Though the idea of using '50' and 'Fifty' was not the original idea of the respondent-company when it obtained registration in 1953, the foreign concerns had ceased importing the goods and though sales of those bells continued until 1958, such sales were from the stock still remaining unsold. Such sales could not he in any appreciable bulk. Even if the idea of using, the two ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y the respondent-company of the marks of Lucas and other concerns, and therefore, the marks could not be said to be disentitled to protection by a court, (3) that the marks had not lost their distinctiveness at the date of these proceedings under s. 56, and (4) that the Letter Patent Bench was, therefore, justified in dismissing these proceedings by the appellant-companies. A mark under s. 2(j) includes a word, letter or numeral or any combination there-of. A trade mark, as difined in S. 2(v) means in relation to Chapter X (i.e. for offences and penalties provided in that chapter) a registered trade mark or a mark used in relation to the 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 as proprietor to use the mark, and in relation to the other provisions of the Act a mark used or proposed to be used in relation to the 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 and includes a certification trade mark registered as such under the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... where such rebuttal is possible, i.e., where seven years have not elapsed, and it is shown that the mark in question was not registerable under s. 9 as no evidence of distinctiveness was submitted to the Registrar, the registration would not be invalid if it is proved that the trade mark had been so used by the registered proprietor or his predecessor-in-interest as to have become distinctive at the date of registration. Sec. 32, with which we are immediately concerned, reads as follows : "Subject to the provisions of section 35 and section 46, in all legal proceedings relating to a trade mark registered in Part A of the register (including applications under section 56), the original registration of the trade mark shall, after the expiration of seven years from the date of such registration, be taken to be valid in all respects unless it is proved- (a) that the original registration was obtained by fraud; or (b) that the trade mark was registered in contravention of the provisions of section 11 or offends against the provisions of that section on the date of commencement of the proceedings; or (c) that the trade mark was not, at the commencement of the proceedings, distincti ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n. Therefore, a person can apply for cancellation on the ground that the trade mark in question was not at the date of the commencement of the proceedings distinctive in the sense of s. 9(3). The burden of proof, however, in such a case is, as aforesaid, on the applicant applying under s. 56. The contention was that numerals, such as '50', are prima facie not considered distinctive and to be, registerable there must be evidence of extensive use. The contention was sought to be fortified by showing that contrary to the practice in England, rules 139 and 140 of the Rules of 1959 permit numerals to be registered as trade marks only in the case of textile goods. But that is permitted on account of a long standing practice in that particular trade of using numerals with a view to distinguish goods of a particular manufacturer or a particular type or quality. It will, however, be noticed that although in the 8th edition of Kerly on Trade Marks, page 135, it was stated that numerals are considered to be prima facie not distinctive and registerable only upon proof of their extensive use, the 9th edition of the same work does not reproduce that passage. On the contrary, at p. 284, the lear ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... cls. (b) and (c) in s. 32, (1) that these marks were registered in contravention of S. 11, or that they offended against the provisions of that section on the date of the commencement of these proceedings, and (2) that they were not distinctive at the date of the commencement of these proceedings. S.11, as already noticed,, does not, as s. 9 does, lay down the requisites for registration, but lays down prohibition against certain marks from being registered. Cls. (b), (c) and (d) of s. 1 1 obviously do not apply in the present case but reliance was placed on cls. (a) and (e), i.e., that the use of these trade marks would be likely to deceive or cause confusion and that they were such that they were otherwise disentitled to protection in a court. The burden of proof being on the appellant companies, the question is : has that burden been satisfactorily discharged ? The evidence relied on by them was that of dealers in cycle spare parts including bells, certain price-lists produced through them and the two representatives of the two appellant companies. That evidence, no doubt, shows, (1) that for a number of years prior to 1952 bells manufactured by Lucas and certain other foreign ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Asia bells", and in some cases "Asia 50". As against the voluminous sales by the respondent- company shown by the statements filed by it for the years 1949-50 to 1961-62, there was no such corresponding evidence,- indicating the sales of other bells with numerals, such as "50" inscribed on them from which any likelihood of confusion or deception could be deduced. Regarding deception, there was indeed no evidence whatsoever in that regard. There was no question of piracy also on the part of the respondent company as argued by counsel as there was nothing to show that Lucas or any other foreign concerns used this numeral except for distinguishing one type of bell from another manufactured by them. In our view, cl. (a) of s. 11, therefore, is clearly not attracted. The next question is whether the trade mark "50" or "Fifty" is one which would otherwise be disentitled to protection in a court as laid down in cl. (e) of s. 1 1 so as to attract cl. (b) of s. 32. While construing cl. (e) of S. II, it is necessary to repeat that it deals with prohibition and not with requisites of registration. Therefore, although a mark cannot be registered, for instance, because it is not distinctive, a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... or the essentials of a trade mark. S. 9 laid down what a registerable trade mark must contain and unless it contained one or the other requisites there set out, it was not re- gisterable and it was only registerable trade marks which were entitled to registration. But even if a mark were to fall within, S. 9, that alone was not necessarily sufficient to entitle it to registration because it might offend against s. 11. S. 11, being a qualification of s. 9 and being a provision laying down a prohibition', it did not contemplate any enquiry on the question whether the, trade mark complied with one or the other requisites enumerated in s. 9, e.g., whether it had the quality of being distinctive or not. Dealing with s. 41, he observed that it formed a new departure in dealing with trade marks and differed widely from the earlier Acts. The present section expressly enacted that the original registration shall, after a lapse of seven years, be taken to 'be valid in all respects, that is to say, whether the mark originally consisted of or contained one or the other essential proofs or not, that cannot be enquired into after the lapse of seven years. It had to be taken to be valid in all re ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , by the goods not being capable of being distinguished as the goods of such a proprietor or by extensive piracy so that the marks become publici juris. The principle underlying cl. (c) of s. 32 is that the property in a trade mark exists so long as it continues to be distinctive of the goods of the registered proprietor in the eyes of the public or a section of the public. If the proprietor is not in a position to use the mark to distinguish his goods from those of others or has abandoned it or the mark has become so common in the market that it has ceased to connect him with his goods, there would hardly be any justification in retaining it on the register. The progressive increase in the sales of 'Asia Fifty' and 'Asia 50' bells from 1949-50 and onwards together with the evidence of witnesses examined by the respondent company shows that the said trade marks distinguished the goods of the respondent company from those of other manufacturers in the field. Under s. 32 (c) the marks have to be distinctive at the commencement of the proceedings. Prima facie, the expression "commencement of the proceedings" would mean the commencement of proceedings in which the question as to the co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nt of trade marks or letting infringements go unchallenged or misleading the other manufacturers that the respondent company would not interfere it they were to use the same marks. Rights in a mark can, of course, be abandoned by its owner but so long as he remains the registered proprietor of the mark and carried on the business to which the mark is attached, a plea of abandonment is difficult to sustain. It would, however, be a different matter if it is shown that there, were repeated, undisturbed infringements. The evider in the present case does not show that there were repeated breaches which went unchallenged though known to the proprietor. Mere neglect to proceed does not necessarily constitute abandonment if it is in respect of infringements which are not sufficient to affect the distinctiveness of the mark even if the proprietor is aware of them. (see Re. Farina(1) (1879) 27 W.R. 456.) Where neglect to challenge infringements is alleged, the character and extent of the trade of the infringers and their position have to be reckoned in considering whether the registered proprietor is barred by such neglect. [see Rowland v. Mitchell(2) (1897) 14 R.P.C. 37) ]. The plea of comm ..... X X X X Extracts X X X X X X X X Extracts X X X X
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