TMI Blog1965 (8) TMI 79X X X X Extracts X X X X X X X X Extracts X X X X ..... fusion in the trade. The opponents further contended that in any event the registration should be refused in the exercise of the discretion available in law whether the mark should be refused or not. On the 20th November 1958, the applicant filed his counterstatement. In the counterstatment, the applicant contended that there would be no confusion as the class of goods in which the mark would be registered would be different from the class of goods in respect of which the opponents were using the mark. The applicant further stated that the mark Caltex had since long been registered in Switzerland in the name of M/s. Degoumois and Co. for goods in class 14, and that the applicant had first adopted, introduced and used the mark on his goods in India since 1955. 3. After certain affidavits were filed by the parties, the matter of the said opposition reached hearing before the Deputy Registrar on 23rd October 1959. At that hearing, the applicant's counsel raised a preliminary objection to the admissibility of the copies of certain affidavits which had been attached to other affidavits. The objection was upheld. As a consequence thereof, the Deputy Registrar allowed the opponen ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ied for by the applicant was an Importer's mark, and that the applicant was the owner thereof by selection in so far as India was concerned. He further held that the competing marks were identical but the competing goods were entirely different in character. He further held that there was no connection in the course of the trade between the competing goods as they were never sold at the same shop. He further held that the trade channels through which the respective goods passed were entirely different, and that, as a matter of fact, the opponents' goods were exclusively available only at their own service stations or agencies where even similar goods of another trader were not permitted to be sold, much less the goods of others of a different character as those of the applicant in respect of which the mark was applied for a registration. He held that the reputation of the opponents was only in respect of the goods for which their marks were being used. He held that, therefore, despite the reputation of the opponents' mark, the use of the applicant's mark would not be likely to deceive within the meaning of Section 11 of the Trade and Merchandise Marks Act, 1958 (her ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... own right of the mark in India in respect of the watches? (5) Whether the applicant is entitled to the mark as an Importer's Mark? 8. In our opinion, the fourth and fifth points of Mr. Bhabha really concern one topic, namely, whether the applicant is the proprietor of the mark. We will, therefore, deal with that as but one point? and will consider it first and the other three points afterwards. 9. Before proceeding to consider these contentions, however, we will first examine whether the opponents were entitled to maintain their opposition. There is evidence on record, and it is not disputed that the opponents are the registered proprietors of five marks as follows: (1) Under Registration No. 10754, of the word Caltex in respect of all goods in class 4. (2) Under Registration No.10786, of the mark consisting of the word Caltex superimposed on a red coloured star, in respect of all goods under class 4. (3) Under Registration No. 10787, of the mark consisting of the words Caltex superimposed on a red coloured star, in respect of all goods under class 19. (4) Under Registration No. 151261, of the mark consisting of a label with the word Caltex , in resp ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n dated 14th August 1956, the exact date thereof has not been brought on the record. It is, however, clear that the opponents did not apply for defensive registration in respect of class 14, in respect of which class the applicant has made the said application for registration. On these facts, there is no doubt that the opponents were qualified to maintain their said opposition and as a matter of fact, the applicant has not even contended to the contrary. Before proceeding to discuss the contentions on the law on the subject, it is more convenient to refer to the facts in the evidence in this case. 10. The application, although it is filed on 14th August 1956, actually bears the date 30th July 1956. The applicant has stated that he was the proprietor of the mark, because it was in use since one and a half year. According to the applicant, therefore, he had been using the mark since about February 1955. The applicant filed his affidavit dated 18th April 1957 in support of his application. He has stated in the affidavit that he was importing various articles including watches, and was manufacturing presentation articles. He has further stated that he adopted the trade mark Caltex ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e nature of invoices, between the five of them , they show sales in the aggregate of 215 watches with the mark Caltex . The memos being by way of invoices do not show by themselves that the watches where infact delivered and paid for. What has been annexed to the affadivit are copies of the memos and not the original memos. The originals of course, would be with the parties to whom they were sent. Mr. Rage, the learned Counsel for the opponent's, sought to cast doubt as to the genuinensess and veracity of the copies which have been annexed. In our opinion however the opponents applied for permission to cross-examine Lalwani. The Deputy Registrar granted it. On that day, Lalwani was not available in Bombay. The opponents thereupon choose to omit to cross-examine him. The case before the Deputy Registrar was not to finish on that day. It is nobody's case that after granting permission to cross examine the Deputy Registrar would have made it infructuous by refusing to adjourn the matter for sufficient time enable Lalwani to come to Bombay for being cross-examined. Having had a proper opportunity to cross-examine Lalwani on these copies of memos, but not having availed themsel ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e applicant has alleged user since 1955, but that the opponents did not admit the same and put the applicant to the strict proof thereof. It is the applicant's contention that the applicant's proprietorship of the mark Caltex in respect of class 14 was not disputed by the opponents before the Registrar. It is, however, pertinent to note that in the very first document, namely, the grounds of opposition, the opponents have stated that they do not admit the allegation about the applicant's user since 1955 and put him to the strict proof thereof. The opponents did, therefore, make it clear that the opponents wanted the applicant to prove his allegation about his user since 1955. In his application, the sole ground on which the applicant claimed proprietorship was by reason of such user. Challenge to such user, therefore, amounted to a challenge to the applicant's proprietorship. 13. Applicant Lalwani filed his counter statement to the notice of opposition, which is dated 20th November 1958. In the counter statement, he has stated that the marks claimed by the opponents were registered in classes 4 and 19, which were altogether a different class than class 14, in r ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... contains the following passage: It appears that the first consignment of watches that the respondent received from the Swiss Manufacturers was covered by an invoice dated 3rd June 1955. Under that invoice as many as 1400 watches were imported by the respondent. Only 100 watches out of them however bore the trade mark Caltex . In this consignment of 1400 watches 200 watches bore the mark Linda and the invoice shows that no particular mark was embossed upon the remaining 1100 watches. The respondent then appears to have p1aced a further order on 21st November 1955 for 300 pieces out of which only l00 pieces were required to be under the mark Caltex . In course of the arguments I enquired of the learned counsel for the respondent as to the number of watches which the respondent had imported from the Swiss Manufacturers between 3rd June 1955 and 14th August 1956 on which date the application for registration of the mark was made and was informed that the total number of watches imported by the respondent from the Swiss Manufacturers were 2771 out of which 200 watches bore the mark Linda and 200 watches bore the mark Caltex . I was further told by the learned counsel for the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ver, chose to give it. It is as to facts, in the sense that it is not as to law. Information so collected amounts to an admission in so far as it goes against the interest of the applicant. It must, therefore, legitimately form part of the record of this case in so far as it contains statements as to facts. It cannot go unnoticed that the objection is to the method, but not to the accuracy either of what was furnished to counsel by way of instructions or even as to what the counsel stated to the Court. If the information or its recording as contained in the Judgment had happened to be in any way inaccurate, one would have found at least a statement in the grounds of appeal or even across the Bar in the arguments before us to that effect. There is no such statement. Mr. Bhabha did argue that the watches with the Caltex mark imported by the applicant into India were more than 200 as mentioned in the above passage from the judgment. That was, however, an argument based on the documents already on the record. It was not stated as on a basis that books of account or other documents of the applicant had been checked up, and that it revealed that the true position was in any way differe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sh Acts enabled registration of a new mark not till then used with the like consequences which a distinctive mark had prior to the passing of the Acts. The effect of the relevant provision of the English Acts was that registration of a trade mark would be deemed to be equivalent to public user of such mark. Prior to the Acts, one could become a proprietor of a trade mark only by user, but after the passing of the Act of 1875, one could become a proprietor either by user or by registering the mark even prior to its user. He could do the latter after complying with the other requirements of the Act, including the filing of a declaration of his intention to use such mark. See observations of Llyod Jacob J. in 1956 RPC 1. In the matter of Vitamins Ltd's Application for Trade Mark at p.12, and particularly the following: A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be acquired, but in all cases it is necessary that the person putting forward the application should be in possession of some proprietary right which, if questioned, can be substantiated . Law in India under our present Act ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in his own right, and by reason of such user he acquired the proprietorship. The Present dispute as to the ownership of the trade mark is not a dispute between the foreign manufacturer and owner of the trade mark viz. Degoumois and Co. on the one hand, and the applicant, an Indian Importer, on the other. In this case there is no competition as to ownership between the two of them. In any event, in view of the said declaration of Degoumois, it is clear that Degoumois does not and cannot claim any ownership in himself in that trade mark in respect of Watches in India. If the applicant, therefore, establishes his user in India, he can be said to be the proprietor of the trade mark in India in respect of the goods which he claims. 35. The evidence, however, in this respect is not very satisfactory. The shortcomings in the different pieces of evidence have been noticed earlier when we referred to each of them. There is no satisfactory evidence that any watches were in fact imported into India by the applicant under any of the said three orders. The evidence however, can lead to an inference that very probably some watches were in fact imported. Even on that assumption there could be ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hat mark being used as a trade mark i.e. used by the trader in his business upon or in connection with his goods and it is not necessary to prove either the length of the user or the extent of the trade. It may be noted that the word 'Monarch' in this case, as conceded by the counsel at the Bar, is a distinctive mark and, therefore, it follows that if it is shown that this mark was used by the petitioner corporation as a trade mark in this country upon or in connection with its food products even for once prior to the use of that mark by the respondent company in 1951, and if there is no evidence to show that this mark was abandoned by it, it would be entitled under S. 18 of the Act to apply for registration of that mark as its trade mark and also to oppose an application made by any other trader for the purpose of registering that mark in his name. He has further held that if it is shown that the distinctive mark was used by a trader as a trade mark upon or in connection with his products even for once prior to the use of that mark by another trader, and if there is no evidence to show that this mark was abandoned by him, he would be entitled under Section 18 of the Ac ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tiff's user of the trade mark was illegal or otherwise than an exclusive user. 38. A person may become a proprietor of a trade mark in diverse ways. The particular mode of acquisition of proprietorship relied upon by the applicant in this case is of his user for the first time in India in connection with watches and allied goods mentioned by him of the mark Caltex , which at the material time was a foreign mark belonging to Degoumois Co. of Switzerland and used by them in respect of watches in Switzerland. Before the Deputy Registrar and before Mr. Justice Shah, proprietorship was claimed on the basis that the applicant was entitled to it as an importer's mark. Several authorities were cited and were considered and principles deduced and relied upon in that behalf. In our opinion, it is not necessary in this case to go into details about facts in the various decided cases dealing with importer's marks. In many of those cases, the dispute was between a foreign trader using a foreign mark in a foreign country on goods which were subsequently imported by Indian importers and sold by them in this country under that very mark. In short it was a competition between a f ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... fusion ansing in the mind of the public. It is now well settled that whether there is a likelihood of deception or confusion arising is a matter for decision by the Court, and that no witness is entitled to say whether the mark is likely to deceive or to cause confusion. For exampIe see Parker-Knoll Ltd. v. Knoll International Ltd., 1962 RPC 265 at pp.273, 274 (HL). It is therefore clear that evidence by a witness that it is likely that purchasers of the goods will be deceived is inadmissible, but the evidence which would be admissible would be of a witness who is accustomed to buy in question, and he can say that he himself would be deceived. 41. In this case the two marks are identical. Therefore, there is no question of any confusion arising because of any similarity between the rival marks. It is the finding of the Deputy Registrar and also of the learned Judge that there is no connection between the two marks in the course of trade or by reason of there being any common trade channels. That finding has not been challenged before us. The only ground urged by Mr. Rege in support of the contention that there was likelihood of deception and confusion, was that there is a dang ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hat company along with John Griffiths Cycle Corporation started advertising Kodak cycles . The Eastman Company commenced an action against them for preventing the use by them of the mark Kodak . Evidence was led in that case which showed a close connection between the bicycles and the photographic trades. It was held in that case that no intelligible reason had been suggested why the defendants took the term Kodak to be applied to their cycles, or registered that word as a Trade Mark, or used it as the title of the company, except for the purpose of connecting themselves in some way with the plaintiff company and its business, and that was their real and sole object. It was further held that the defendants' action in adopting the mark 'Kodak' and giving the name to the new Corporation was really to try and get a monopoly of the word Kodak as connected with cycles, and that they wanted to use the word Kodak and acquire a monopoly of it, as applied to cycles, in the hope and intention of, in some shape or other, identifying their company with the plaintiff company whose Kodaks were so well known in the market to cause the public to suppose either that the defen ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s confined to the same or similar classes of goods. He argued that the principle of causing confusion would not be applicable when it was alleged that advantage was sought to be taken of the reputation of the opponents generally, and not in respect of the reputation in respect of the actual user in connection with a particular class of goods. In our opinion, it is not necessary to go in detail into the aspect of comparisons and distinctions as pointed out by Mr Bhabha. One must never forget that what Section 11(a) requires to be decided is whether the mark sought to be registered is likely to deceive or cause confusion. That likelihood must vary on the facts of each case. Human conduct is varied and complex. The importance of a particular fact or facts may vary in the perspective of the totality of the facts of each case. The importance of a particular fact may increase or diminish when considered in combination with different sets of facts. What has to be decided in a case is whether on the totality of the facts of that case, it is likely that there would be deception or confusion. It would, therefore, be totally misleading to rely only on some individual fact or facts from a deci ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... re. But they are watches. They can be cheap watches. The potential market for them is, therefore, similar to that of the existing market of the opponents, in the sense that the goods of both the parties are not special goods. They are goods which would be purchased by the common man. Now, so far as the word Caltex is concerned, it is common to the opponent's mark as also to the opponents' name. To mention the mark Caltex is also to mention the name of the owner. The mark is unlike the Lion or the Stag mark where there would be no direct connection between the mark and the name of its owner. The opponents are a large company known by many as having large resources, and therefore, capable of starting any new industry or trade. Because of that reason, there is a greater probability of the public believing that any goods with the mark Caltex on them would be the goods of the opponents. This is, in our opinion, sufficiently established by the 36 affidavits referred to above. The deponents of these 36 affidavits are from different parts of India, and from different vocations. In this connection, it may be stated that one of the deponents, Pujara, in his cross-examination, ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... esitate to hold that the use of that mark is likely to deceive or cause confusion. In this connection, the following passage from the judgment in Edward Hack's case, (1942) 58 RPC 91, occurring at p, 106 is relevant: I think that a large number of persons if they heard of a laxative called 'Black Magic' or saw advertisements of a laxative called 'Black Magic' would be likely to think that that laxative was made by the same firm who made the Black Magic chocolates . On the facts of this case, we have no hesitation in holding that a large number of persons, if they see or hear about the mark Caltex in connection with watches, would be led to think that the watches were in some way connected with the opponents, or they would at least wonder whether they were in any way connected with the opponents. Persons seeing the mark attached to watches, which is a new class of goods, would assume, or are most likely to assume, that they originated from the proprietor of the mark, namely, the opponents. 50. We are, therefore, of the opinion that if the application for registration is granted and the mark is used in connection with the goods in respect of which th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t is made in Kerly in relation to Section 11 of the English Act, which is, for this purpose, in pari materia with clause (e) of Section 11 of our Act. One of the cases relied upon by Kerly in support of that statement is that of Hassan El-Madi's application for trade mark, 71 RPC 281. In construing the provision of the English Act, Lloyd Jacob J. observed in that case at p.295: In my judgment, the reference in Section 11 to disentitlement to protection in a Court of Justice is to be related to something inherent in the mark applied for. That to me would follow from the fact that the phrase is qualified by by reason of its being likely to deceive or cause confusion or otherwise , and the fact that it introduces as proper for consideration any matter arising out of the form and nature of the mark applied for which could properly be objected to as unsuitable for inclusion in the Register. In our opinion, the prohibition contained in clause (e) of Section 11 must, therefore, be restricted to some illegality inherent in the mark itself and not de hors the mark itself. Mr. Rege's contention cannot be considered under the provisions of Section 11(e). The question then ari ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he discretion has been vested in the Registrar under Section 18(4), for protection of the interests of the general public. In this connection the judgment in Midland Counties Dairy Ltd. v. Midland Dairies Ltd., (1943) 65 RPC 435, may be referred to. In that case, no fraud was alleged, and as a matter of fact the chief witness for the plaintiff disclaimed any allegation of fraud. It was argued that in these circumstances the Court should exclude all considerations of fraud from its mind. It was held. In my opinion the Court is not bound by the form of the pleadings, or by disclaimer on the plaintiff's behalf, to shut its eyes to a case of fraud if convinced that one exists. It is clear that the discretion has been vested under Section 18(4) so that the tribunal can satisfy its conscience and satisfy itself that that registration of the mark would not operate as a fraud on the general public. In our opinion, therefore, it is open to Mr. Rege to urge this contention. Even if he did not urge it, it is our duty to see that what has been alleged by Mr. Rege against the applicant does not exist in the way of the application being registered. 53 and 54. (After discussing evidence ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in character. It is clear that the Deputy Registrar has taken into account two factors for deciding that he could not exercise his discretion against the applicant. 57. Taking the second factor first, he felt that his exercise of discretion adversely to the applicant would in effect, amount to giving a monopoly to the opponents in the word Caltex irrespective of any good whatsoever. The use of the words in the present case suggests that he was limiting his statement that any exercise of discretion adversely to the applicant would in effect amount to giving a monopoly to the opponents to this particular case only, and that he was not stating it by way of a general proposition applicable to all cases. Therefore, this statement must be considered in that restricted sense. In our opinion, read in that restricted sense it is difficult to understand its meaning. How could the exercise of the discretion against the applicant result in the creation of a monopoly in the opponents in the word Caltex in respect of every conceivable kind of goods? The exercise of his discretion against registration would disentitle obly the applicant to use the mark Caltex. But that would not ..... X X X X Extracts X X X X X X X X Extracts X X X X
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