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TMI Blog1953 (5) TMI 13X X X X Extracts X X X X X X X X Extracts X X X X ..... pany incorporated under the Indian Companies Act, 1913, having their registered office at Chidambaram, South Arcot District, in the Province of Madras and carrying on the business of manufacturing cotton sewing thread. The respondents are also a limited liability company registered under the English Companies Act. They have their registered office at Eagley Mills, Bolton, (England) where they manufacture 'sewing thread. One of the trade marks used by them on such thread consists of the device of an Eagle with outspread wings known as "Eagle Mark". This mark was first advertised in the Calcutta Exchange Gazette of 5th June, 1896. Since then sewing thread bearing this mark is being regularly imported into and sold in the Indian markets on an extensive scale. Round about the year 1940 the appellants started selling cotton sewing thread under a mark consisting of the device of a bird with wings fully spread out perched on a cylinder of cotton sewing thread, with the words " Eagle Brand " and the -name of the appellant company printed on the mark. The respondents objected to the mark, upon which the appellants substituted the words " Vulture Brand " in the place of the words " Eagle Br ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hurdles and difficulties suggested during the arguments. It is not disputed that the decision of Mr. Justice, Shah does constitute a judgment within the meaning of clause 15 of the Letters Patent. That being so his judgment was subject to appeal under that clause, the material part of which relevant to this enquiry is:- "And We do further ordain that an appeal shall lie to the said High Court of Judicature at Bombay from the judgment of one Judge of the said High Court or one Judge of any Division Court, pursuant to section 108 of the Government of India Act." It was said that the provisions of this clause could not be attracted to an appeal preferred to the High Court under section 76 of the Trade Marks Act and further that the clause would have no application in a case, where the judgment could not be said to have been delivered pursuant to section 108 of the Government of India Act, 1915. Both these objections in our opinion are not well-founded. Section 76 (1) provides: "Save as otherwise expressly provided in the Act an appeal shall lie, within the period prescribed by the Central Government, from any decision of the Registrar under this Act or the rules made thereunder to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... pply." Though the facts of the cases laying down the above rule were not exactly similar to the facts of the present case, the principle enunciated therein is one of general application and has an apposite application to the facts and circumstances of the present case. Section 76 of the Trade Marks Act confers a right of appeal to the High Court and says nothing more about it. That being so, the High Court being seized as such of the appellate jurisdiction conferred by section 76 it has to exercise that jurisdiction in the same manner as it exercises its other appellate jurisdiction and when such jurisdiction is exercised by a single Judge, his judgment becomes subject to appeal under clause 15 of the Letters Patent there being nothing to the contrary in the Trade Marks Act. The objection that Mr. Justice Shah's judgment having been delivered on an appeal under section 76 of the Trade Marks Act could not be said to have been delivered pursuant to section 108 of the Government of India Act is also without force and seems to have been based on a very narrow and limited construction of that section and on an erroneous view of its true intent and purpose. Section 108 of the Government ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... India Act, 1915, and of the enactment of its provisions in section 223 of the Government of India Act of 1935 and later on :in article 225 of the Constitution of India, there had not been any corresponding amendment of clause 15 of the Letters Patent and the reference to section 108 in clause 15 of the Letters Patent could not therefore be taken as relating to these provisions, and, that being so, the High Court had no power to make rules in 1940 when the Trade Marks Act was enacted under the repealed section and the decision of Mr. Justice Shah therefore could not be said to have been given pursuant to section 108. This objection also in our opinion is not well-founded as it overlooks the fact that the power that was conferred on the High Court by section 108 still subsists, and it has not been affected in any manner whatever either by the Government of India Act, 1935, or by the new Constitution. On the other hand it has been kept alive and reaffirmed with great vigour by these statutes. The High Courts still enjoy the same unfettered power as they enjoyed under section 108 of the Government of India. Act, 1915, of making rules and providing whether an appeal has to be heard by ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f section 108 of the Government of India Act, 1915, and that in that decision full effect has not been given to the true intent and purpose of clause 44 of the Letters Patent. Both the learned Judges there took the view that the authority given by section 108(l) of the 1915 statute to make rules for the exercise by one or more Judges of the Court's appellate jurisdiction was limited to the jurisdiction then vested in the Court by section 106 (1) of the Act and by clause 16 of the Letters Patent. It was held that such rules thus could not relate to jurisdiction conferred by an Act passed after the commencement of the 1915 statute nor to an appeal heard by the Court pursuant to such an Act, since the jurisdiction to hear such appeal having been conferred by the particular Act could not be said to have been conferred upon, or vested in, the Court by section 106(1) and by clause 16 of the Letters Patent. This argument suffers from a two-fold defect. In the first place it does not take into consideration the other provisions of the Government of India Act, 1915, particularly the provision contained in sections 65 and 72. By section 65(1) of the Government of India Act, 1915, the Govern ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ct to the legislative power of the appropriate Legislature as provided in clause 44 of the Letters Patent. This clause is in these terms: " The provisions of the Letters Patent are subject to the legislative powers of the Governor-General in Legislative Council." That being so the last words of the clause " now in force " on which emphasis was placed in the Calcutta judgment lose all their importance, and do not materially affect the point. The true intent and purpose of clause 44 of the Letters Patent was to supplement the provisions of clause 16 and other clauses of the Letters Patent. By force of this clause appellate jurisdiction conferred by fresh legislation on the High Courts stands included within the appellate jurisdiction of the court conferred by the Letters Patent. A reference to clause 15 of the Letters Patent of 1861, which clause 16 replaced, fully supports this view. This clause included a provision to the following effect :- " or shall become subject to appeal to the said High Court by virtue of such laws and regulations relating to Civil Procedure as shall be hereafter made, by the Governor in Council," in addition to the words " laws or regulations now in force ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ed and restricted than has been conferred on some of the new High Courts in India by their Letters Patent. Illustratively, Clause I I of the Letters Patent of Patna High Court issued in 1916 provides as follows:- "And We do further ordain that, the High Court of Judicature at Patna shall be a Court of Appeal from the Civil Courts of the Province of Bihar and Orissa and from all other Courts subject to its superintendence, and shall exercise appellate jurisdiction in such cases as were, immediately before the date of the publication of these presents, subject to appeal to the High Court of Judicature at Fort William in Bengal by virtue of any law then in force, or as may after that date be declared subject to appeal to the High Court of Judicature at Patna by any law made by competent legislative authority for India The Letters Patent of the Labore High Court, the High Court of Rangoon and the Letters Patent of the Nagpur High Court also contain identical clauses. It is clear from these clauses that in respect of cases subject to appeal to these High Courts the civil appellate jurisdiction is flexible and elastic. Mr. Justice Das in the Calcutta decision under discussion took the v ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in several cases to the matter before them, on the following reasoning set out by Mr. Justice Das:-- "The incidents and powers attached to the Registrar as a tribunal fall far short of those which were attached, to the tribunal in the Gurdwara case (63 I.A. 180) and to which Sir George Rankin particularly and pointedly referred Having regard to the plain language of clause 16, and in the absence therein of like words which appeal in the concluding portions of the correspond clauses of the Letters Patent of the other High Court to which I have already referred and which make their appellate jurisdiction flexible and elastic it is impossible to hold that section 76 of the Trade Marks Act has merely extended the appellate jurisdiction of this Court under clause 16 by the addition of a new subject-matter of appeal so as to attract the general principle enunciated in 1913 Appeal Cases 546 ......... The truth is that the Trade Marks Act has created new rights, e.g., a right to get a trade mark registered and has given certain new advantages consequent upon such registration. It has created new Tribunals for its own purposes and it has conferred a new appellate jurisdiction on this Court ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... possessed by the other High Courts. The matter has been discussed at length in an earlier part of this judgment. We have also not been able to appreciate the emphasis laid to negative the applicability of clause 15 of the Letters Patent by reference to the provisions of section 77 of the Act. The provisions of that section are merely enabling provisions and, as already pointed out, it is open to the High Court to make use of them or not as it likes. There is nothing in the provisions of that section which debars the High Court from hearing appeals under section 76 of the Trade Marks Act according to the rules under which all other appeals are heard, or from framing rules for the exercise of that jurisdiction under section 108 of the Government of India Act, 1915, for hearing those appeals by single judges or by division benches. Even if section 77 had not been enacted it could not be said that the High Court would then have no power to make rules for the hearing of appeals under section 76. There are a number of legislative enactments which have conferred appellate jurisdiction on the High Court without more and the High Court exercises appellate jurisdiction conferred by these e ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ter a trade mark which is likely to deceive or to cause confusion has to be refused notwithstanding the fact that the mark might have no identity or close resemblance with any other trade mark. The Registrar has to come to a conclusion on this point independently of making any comparison of the mark with any other registered trade mark. What the Registrar has to see is whether looking at the circumstances of the case a particular trade mark is likely to deceive or to cause confusion. The principles of law applicable to such cases are wellsettled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of section 8 and therefore it should be registered. Moreover, in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to see as to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... clients' trade mark was likely to deceive or cause confusion had been 'Concluded by the earlier judgment of the Madras High Court in the passing off action and already referred to in an early part of the judgment. It is quite clear that the onus in a passing off action rests on the plaintiff to prove whether there is likelihood of the defendant's goods being passed off as the goods of the plaintiff. It was not denied that the general get up of the appellants' trade mark is different from the general get up of the respondents' trade mark. That being so, it was held by the Madras High Court in the passing off action that on the meager material placed on record by the plaintiffs they had failed to prove that the defendants' goods could be passed off as the goods of the plaintiffs. The considerations relevant in a passing off action are somewhat different than they are on an application made for registration of a mark under the Trade Marks Act and that being so the decision of the Madras High Court referred to above could not be considered as relevant on the questions that the Registrar had to decide under the provisions of the Act. For the reasons given above we are of the opinion t ..... X X X X Extracts X X X X X X X X Extracts X X X X
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