LAKBIR SINGH v. BAKHAT SINGH — 1972 DIGILAW 278 (DEL)

M. R. A. ANSARI ( 1 ) SHRI Bakhat Singh and others, trading as Sardar Trading Company (hereinafter referred to as the respondents) applied to the Registrar of Trade Marks. Delhi, for the registration of a trade mark consisting essentially of the device of a tiger and the word tiger in English in class 25 in respect of shoulder pads. M/s. Fancy Shoulder Pad Makers (hereinafter referred to as the appellants) filed opposition to the said application. The opposition was based upon the ground that the appellants were the proprietors of a registered trade mark consisting of the device of a lion in class 25 in respect of shoulder pads in the Union Territory of Delhi and that the proposed trade mark of the respondents was deceptively similar to the registered trade mark of the appellants and that the adoption of the appellants trade mark by the respondents was dishonest. The Assistant Registrar while holding that the proposed trade mark of the respondents was likely to decieve the public into believing that the proposed trade mark of the respondents was the same as that of the appellants inasmuch as both the words lion and tiger were known in Urdu. Hindi and Punjabi as sher . but taking note othe fact that the appellants trade mark was registered only for the Union Territory of Delhi, rejected the objections of the appellants to the registration of the respondents trade mark for areas other than the Union Territory of Delhi and passed the following order: "i order that application No. 206506 goods shall proceed to registration subject to the following conditions (a) The specification of the goods shall be limited to shoulder Pad. but not for sale in the Union Territory of Delhi . (b) Registration of the trade mark shall give no right to the exclusive use of the expression fast to wash and dry clean . "the appellants have filed the present appeal against the said order of the learned Assistant Registrar. ( 2 ) BEFORE considering the respective contentions of the parties, I shall refer to the findings of the learned Assistant Registrar about which there is no dispute. "the appellants have filed the present appeal against the said order of the learned Assistant Registrar. ( 2 ) BEFORE considering the respective contentions of the parties, I shall refer to the findings of the learned Assistant Registrar about which there is no dispute. The learned Assistant Registrar has recorded the following findings: (I) The trade mark of the appellants was registered for sale in the Union Territory of Delhi only; (ii) Although the appellants claimed that their registered trade mark had by virtue of extensive use acquired reputation even outside the Union Territory of Delhi, there was no evidence in support of this claim; (iii) The proposed registered trade mark of the respondents was likely to deceive or cause confusion inasmuch as the word lion and the word tiger were both known in Hindi. Urdu and Punjabi as sher and (iv) The registration of the respondents trade mark was barred both by Section 11 as well as by Section 12 (1) of the Trade and Merchandise Marks Act 1958 so far as the Union Territory of Delhi was concerned. ( 3 ) THE learned Assistant Registrar has also given a finding that except for the fact that both the lion and tiger were known by the name of Sher in Hindi, Urdu and Punjabi, the two marks are not similar. This finding is challenged by the appellants. According to the appellants, even the device in the two marks is deceptively similar. I, therefore, compared the two marks both as they appeared in the Trade Marks Journal as well as they appeared on the labels affixed to the shoulder pads. Applying the principle laid down by the Bombay High Court in Ciba Ltd. Basle Switzerland v. M. Ramalingam. AIR 1958 Bom 56 . I am of the view that the two marks are deceptively similar although they might differ in some details. It may be stated that the tiger in the respondents proposed trade mark is not distinctive and may easily be mistaken for a lion. Therefore, the similarity between the two trade marks not only lies in the common word sher by which both the devices are known in vernacular languages but also by reason of the resemblance of the devices in the two trade marks. Therefore, the similarity between the two trade marks not only lies in the common word sher by which both the devices are known in vernacular languages but also by reason of the resemblance of the devices in the two trade marks. ( 4 ) IF the appellants trade mark had been registered for the whole of the country and not for the Union Territory of Delhi only. or if the appellants were able to prove that notwithstanding the registration of their trade mark for the Union Territory of Delhi it had been used even outside the Union Territory of Delhi, then there would be no difficulty in holding that the respondents proposed trade mark was debarred from registration both under Section 11 as well as under Section 12 (1) of the said Act. The question for consideration is whether the fact that the appellants trade mark is registered only for the Union Territory of Delhi makes any difference. ( 5 ) MR. Anoop Singh, learned counsel for the appellants, contends that once a trade mark is registered, then Section 12 (1) will operate as a bar for the registration of a similar trade mark even outside the Union Territory of Delhi. According to the learned counsel. Section 12 does not make any distinction between cases where a trade mark is registered in respect of the entire country and a trade mark registered in respect of a particular area or region and that the only exception to this rule is the one which is covered by sub-section (3) of Section 12 of the Act. In this connection. it is pointed t that the respondents do not seek to come within the scope of sub-section (3) inasmuch as they do not claim any honest concurrent use of their trade mark. I am unable to accept this contention for the reason that the words "a trade mark which is already registered" appearing in sub-section (1) of Section 12 of the Act must be read along with the provisions of Section 18. Sub-section (4) of Section 18 empowers the Registrar to accept an application "subject to such amendments, modifications, conditions or limitations, if any. as he may think fit". The registration referred to in sub-section (1) of Section 12 is the registration subject to the amendments, modifications, conditions or limitations imposed by the Registrar under sub-section (4) of Section 18. Sub-section (4) of Section 18 empowers the Registrar to accept an application "subject to such amendments, modifications, conditions or limitations, if any. as he may think fit". The registration referred to in sub-section (1) of Section 12 is the registration subject to the amendments, modifications, conditions or limitations imposed by the Registrar under sub-section (4) of Section 18. In the present case the appellants trade mark was registered subject to the limitation that it was to be used by the appellants for sale of the shoulder pads in the Union Territory of Delhi. Section 12 (I) would be a bar to the registration of the respondents trade mark for the Union Territory of Delhi but would not be a bar for the registration of the respondents trade mark outside the Union Territory of Delhi. ( 6 ) THE learned counsel for the appellants next contends that even if Section 12 (1) does not operate as a bar, Section 11 (a) of the Act would operate as a bar to the registration of the respondents trade mark even for areas outside the Union Territory of Delhi. The applicability of Section 11 (a) of the Act would certainly not depend upon the registration of the mark of the opponent. It will apply even if the mark of the opponent has not been registered provided it is proved that the use of the proposed trade mark was likely to deceive or cause confusion. In other words, it has to be proved that even though the opponent s trade mark has not been registered, it had actually been used and for that reason, the proposed trade mark waslikely to deceive or cause confusion. In this case. the learned Assistant Registrar has found that there is no evidence to prove that the appellants trade mark has been used outside the Union Territory of Delhi. Therefore, it would follow that outside the Union Territory of Delhi the use of the respondents proposed trade mark would not be likely to deceive or cause confusion. Hence. Section 11 (a) of the Act would not be a bar to the registration of the respondents trade mark outside the Union Territory of Delhi. ( 7 ) THE learned counsel for the appellants also sought to bring his case within clause (e) of Section 11 which reads as follows: "which would otherwise be disentitled to protection in a court. Section 11 (a) of the Act would not be a bar to the registration of the respondents trade mark outside the Union Territory of Delhi. ( 7 ) THE learned counsel for the appellants also sought to bring his case within clause (e) of Section 11 which reads as follows: "which would otherwise be disentitled to protection in a court. " But he was not able to substantiate his case under this clause and was not able to show how his case would come within the scope of this clause. " ( 8 ) THE final contention of the learned counsel for the appellants is that the adoption by the respondents of a trade mark which was deceptively similar to the registered trade mark of the appellants amounted to dishonest trade practice and for that reason, the learned Assistant Registrar should have exercised his discretion under Section 18 of the Act and refused registration to the respondents trade mark even for the Union Territory of Delhi Such a contention had been raised before the learned Assistant Registrar also, but it was not accepted. What appears to have weighed with the learned Assistant Registrar is that apart from the fact that both lion and tiger were known by the word Sher in some of the Indian languages, there was no other similarity between the two trade marks. I have already indicated that the learned Assistant Registrar was not right in his view that there was no other similarity between the two devices. Therefore, this is a case where there is similarity in the devices there is similarity in the other words used in the label, namely, "fast to wash and dry clean," and both the devices are commonly known in the Indian languages as Sher. All these circumstances cannot be a mere coincidence. The appellants trade mark was admittedly in use in the Union Territory of Delhi from the date of its registration in 1957 and the respondents must have been aware of this fact. The adoption of a similar trade mark by the respondents was obviously with a view to exploit the reputation which the appellants trade mark had already acquired. In the words of Mr. The adoption of a similar trade mark by the respondents was obviously with a view to exploit the reputation which the appellants trade mark had already acquired. In the words of Mr. Justice Kekewich in Munday v. Carey, (1905) 22 RPC 273, this is a rank case of dishonesty and the learned Assistant Registrar ought to have exercised his discretion under Section 18 of the Act and refused registration of the respondents proposed trade mark. I am conscious of the rule that an appellate Court should not ordinarily interfere with the discretion exercised by the Registrar under Section 18 of the Act. But in this case. the learned Assistant Registrar has declined to exercise his discretion against the respondents only because he was of the view that the respondents were not guilty of dishonest trade practice. This view of the learned Assistant Registrar is clearly wrong and, therefore, the discretion vested in him had been exercised on the basis of the wrong view. This is a fit case in my view where this Court should interfere with the discretion exercised by the learned Assistant Registrar. I hold that by reason of dishonest trade practice, the respondents are disentitled to the registration of their trade mark. The order of the learned Assistant Registrar is set aside and the appeal is allowed. There shall be no order as to costs.