9911796707
TMI Blog1965 (8) TMI 79X X X X Extracts X X X X X X X X Extracts X X X X ..... sed trade mark being identical with their own was likely to deceive or cause confusion 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ration and that he accepted the same, and was thereupon satisfied that the mark applied 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 deceiv ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he applicant's mark to be registered? (4) Whether the applicant is the proprietor in his 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 c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... have been disputed by the applicant. It may, however, be stated that the said application for Defensive Registration was made sometime after the applicant's said application 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... August 1956. That is the position in law, and that is common ground between the parties. The last four memos being after that date must, therefore, be ignored. The last five memos are between the dates 19th November 1955 and 18th May 1956. They are in the 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 Reg ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ms. We will revert to this memo later on in connection with the other evidence. 12. In their grounds of opposition, the opponents raised the point about likelihood of deception and confusion. They also contended that the Registrar should exercise his discretion against registering the application of the applicant. The grounds lastly stated that the 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, therefo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f United States, California and Texas. 15. The applicant thereafter filed his affidavit dated 22nd June 1959. The statements therein are not material. The opponents thereafter filed the affidavit of Bery dated 30th July 1959, in which he denied in so many words that the applicant was the proprietor of the trade mark "Caltex". 16. to 28. (After examining the documentary evidence his Lordship proceeded): 29. The judgment of Mr. Justice Shah 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 l ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ary instructions and for those giving instructions to gather inforrnation and give the necesary instructions. If inability to give replies had been stated in Court, it is possible that the learned Judge, if he thought fit, might have taken other steps to obtain the necessary material. The grievance against having obtained information across the Bar in this way has also been made in ground No. 9 in the memo of appeal. We do not think the grievance is justified. Counsel could have stated that he was not in a position to give the correct information. He, however, 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Marks law is based on the English Trade Marks law and the English Acts. The first Trade Marks Act in England was passed in 1875. Even prior thereto, it was firmly established in England that a trader acquired a right of property in a distinctive mark merely by using it upon or in connection with goods irrespective of the length of such user and the extent of his trade, and that he was entitled to protect such right of property by appropriate proceedings by way of injunction in a Court of law. Then came the English Trade Marks Act of 1875, which was substituted later by later Acts. The English 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 Ac ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ppen when a firm of great repute in India imports and sells goods, and the purchasing public attaches value to the reputation of the Indian Importer who selects to import the goods and not to the reputation of the manufacturer of the goods. 34. Now, it is common ground that the point as to proprietorship is to be decided as on 14th August 1958, being the date of the application. The applicant contends that he imported watches in his own right under contracts with Degoumois and Co. as between principal and principal. He thereafter sold those watches in India and thereby used the trade mark "Caltex" in India 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... strar found that the mark "Caltex" applied for by the applicant was an Importer's mark and that he was the owner thereof by selection in so far as this country was concerned. Justice Shah has stated in his Judgment that he was not inclined to agree with that finding of the Deputy Registrar. It is necessary to bear in mind certain principles concerning the point involved. Mr. Justice Shah, in his judgment in another case, being Consolidated Foods Corporation v. Brandon & Co. Pvt. Ltd., has held as follows: "....in case of a distinctive mark within the meaning of the Act, right to the exclusive use thereof can be acquired immediately on that 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , In the matter Isola Ltd., which also was relied upon by Mr. Rege. Mr. Bhabha cited in this connection 68 RPC l 78. In the matter of Gaines Animal Food Ltd.'s application. In our opinion, the decision in that case Is in no way useful to us and therefore, we do not refer to the same. 37. Another case relied upon in this connection was Ebrahim Currim v. Essa Abba Sait, (1901) ILR 24 Mad 163. In that case, the plaintiff had for many years imported into Bombay and Madras umbrellas bearing the "Stag" mark from a Glasgow Firm, where it was held "that the prior use in Scotland of the mark did not justify the Scotch firm and the defendant in claiming that the plaintiff'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 wa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rent in character, and as there was not only no connection in the course of trade between the competing goods, but also the fact that the competing goods were never sold at the same shop much less at the same counter, and as the trade channels through which the respective goods passed were entirely different, and as the reputation that the opponents' marks had acquired was only in respect of the goods for which their marks were in fact used, there was no tangible danger of any deception or confusion arising. The learned Judge held in the appeal against the order of the Deputy Registrar that this decision of the Deputy Registrar was quite right in law, and that there was no question of any confusion 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 inadmissib ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... arations were made by the same manufacturers, and others to wonder if this might be the case. 44. Another case relied upon by Mr. Rege was Eastman Photographic Materials Co. Ld. v. The John Griffiths Cycle Corporation Ld. and Kodak Cycle Co. Ld. (1898) 15 R. P. C. 105. In that case, the Eastman Company were manufacturing Kodak cameras, and also started manufacturing certain cameras specially adapted for being used on bicycles, which were known as "Bicyle Kodaks". The Eastman Company had invented the mark "Kodak" and were using it in respect of their goods. Another company, John Griffiths Cycle Corporation Ld., applied for registration of the word "Kodak" for cycles. They thereafter got registered a new company called "Kodak" Cycle Companv Ltd." That 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 sugges ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the principles governing this aspect of the case are well established, and it is not necessary to refer to any further authorities in support of those principles. 47. Mr. Bhaba took us through the judgments in the said three cases report ed in (1890) 7 R. P. C. 311; (1942) 58 R. P. C. 91 and (1898) 15 R. P. C. 105. He also invited our attention in detail to the facts in those cases, and the points of similarity and distinction between those cases and our case, and how, in the light of the comparisons and distinctions made by him, those principles should be applied to this case. He pointed out that in all those cases, there was a trade connection between the competing goods. He argued that, therefore, the principle of trading on another's reputation as a factor likely to cause deception or confusion would apply only when the user of both the marks was 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sales in 1956 exceeded ₹ 30 crores. Their publicity is wide spread and large. In 1956 they spent over a million rupees on advertisements. The goods in respect of which they use the trade mark "Caltex" are mainly petroleum, kerosene and lubricants like greases and oils etc. The goods in respect of which the applicant seeks registration are mainly watches. The class of goods in respect of which the applicant seeks registration is wider than watches and watches can be both costly and cheap. It cannot go without notice that the goods in respect of which the applicant in fact used the mark before he applied for registration were very cheap watches. The goods of the opponents are used by persons all over India, in cities and in villages, in different walks of life, rich or poor, literate or illiterate. The goods of the applicant are different in nature. 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" ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... g the selection. But, unfortunately for the applicant, it is also his evidence that Degoumois & Co, had other marks in respect of their watches. As a matter of fact, on the first order which the applicant placed with Degoumois & Co., which is dated 6th April 1955, the mark originally selected by him in respect of the categories of watches covered thereby was "Sandy"', which also was a mark of Degoumois & Co. He got the mark "Sandy" changed to "Caltex" only subsequently. Why he made the change has not been explained. It would be legitimate to infer that he selected the mark "Caltex" to take advantage of the reputation of that mark as used by the opponents in connection with their goods. The applicant's selection of the mark was made, to use the words of Lord Denning in 1962 RPC 265 (HL), with intention to deceive and cause confusion, and he must, therefore, be given credit for success in his intention, and we should not hesitate 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 relevan ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ccept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit." Both these provisions confer a discretion in accepting or refusing registration. It would be unreasonable to ascribe to the Legislature an intention to provide for such a discretion at two places in the same enactment, and that too without making any distinction as to the circumstances under which it can be exercised, or the objects for which it should be exercised . It leads to the conclusion that the Legislature intended to make a provision for the exercise of discretion but in different set of circumstances under clause (e) of Section 11 and under sub-section (4) of Section 18. In this connection, Mr. Bhabha invited our attention to the following statement in Kerly on Trade Marks, 8th Edition at page 167: "This section is directed to some positive objection to registration and not to mere lack of qualification. It contemplates some illegality inherent in the mark itself." The statement 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 th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . ln Para 15 of that affidavit, it is stated that any one in India using the trade mark "Caltex" as a trade mark on goods not of the manufacture of Caltex (India) Ltd would be using it merely for the purpose of deceiving the public into supposing that they are manufactured by Caltex (India) Ltd. This is a clear allcoation of dishonesty, and the plea was taken before the Deputy Registrar before the proceedings before him concluded. In any event, that plea was argued before the Deputy Reeistrar, and the Deputy Registrar has recorded a finding on that plea. It was also argued before Mr. Justice Shah, and he also has recorded his finding on that Plea. The applicant did not, at any stage, register any protest, and it is, therefore, not open to him now to resist this argument on the ground that it was not pleaded at all. But there is another ground to hold against this particular contention of the applicant. What Mr. Rege has urged is that the Registrar ought to have exercised his discretion against registering the application of the applicant. The discretion has been vested in the Registrar under Section 18(4), for protection of the interests of the general public. In this con ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... discretion to refuse or accept an application but then such discretion has to be reasonably and not capriciously exercised and myst be based upon judicial and legal principles. Having regard to the findings of fact arrived at by me in this case, namely, that the competing goods are entirely different in character and that the respective trade channels are entirely different and that despite the reputation acquired by the opponents' mark the applicant's mark will not reasonably be likely to deceive or cause confusion. I fail to see on what legal or judicial basis can I justifiably exercise the discretion adversely to the applicant. Moreover, in view of my aforesaid findings, any exercise of discretion adversely to the applicant in the present case would in effect amount to giving a monopoly to the opponents in goods whatsoever and that, would be throwing to the winds and doing violence to the basic principle of the Law if Trade Mark which permits the use and registration of the same mark by two different persons in respect of goods entirely different in character." It is clear that the Deputy Registrar has taken into account two factors for deciding that he could not e ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e other findings of facts, would make the exercise of his discretion against the applicant otherwise than on a legal or judicial basis. The findings of fact arrived at by him in connection with the proprietorship of the applicant and a question whether there was a tangible danger of deception or confusion arising, were arrived at by him for those purposes only. He had to reconsider those findings of fact, to the extent that they were relevant for the purpose of exercising discretion in conjunction with various other facts which were relevant for that purpose and which we have already pointed out when considering the two grounds urged by Mr. Rege in support of exercising the discreition against registering the applications. He has, therefore, failed to appreciate, that is, to take into consideration, all the relevant facts. A Court is therefore, entitled to interfere with such an exercise of discretion. The approach would have had to be different if the Deputy Registrar had considered the other questions of fact, weighed them and come to a conclustion that he ought to exercise the discretion against the applicant. In the latter event a Court could have interfered not merely because ..... X X X X Extracts X X X X X X X X Extracts X X X X
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