RAFIQ Vs. MODI SUGAR MILLS LIMITED

JUDGEMENT

(1.) This appeal by Mohd. Rafiq and Mohd. Shafiq is directed against the order of the learned Single Judge whereby an application filed by the appellants against Modi Sugar Mills Ltd. respondent under section 107 of the Trade and Merchandise Marks Act 1953 (Act No. 43 of 1959) (hereinafter referred to as "the Act") for rectification of register of trade marks was dismissed.

(2.) The registretion of trade mark "SUN" in respect of lanterns and globes for lamps was obtained with effect from' May 10, 1954 by Modi Supplies Corporation Limited in the name of Modi Lanterns Works, Modi Nagar. The respondent-Company was registered as the subsequent proprietor of that trade mark with effect from May 25, 1956. The registration was renewed for a period of seven years with effect from May 19, 1961. A suit was instituted on March 31, 1962 by the respondent-company against the appellants in the Court of District Judge, Delhi, for permanent injunction and rendition of accounts and damages on the allegation that the appellants had started manufacturing and selling lanterns under the trade mark "SUNSHINE" It was stated that the manufacture and sale of lanterns under the trade mark "SUNSHINE" constituted infringement of the respondent's wellknown trade mark and was an attempt to pass off goods. The mark adopted by the appellants was stated to be a colourable imitation of the respondent's registered trade mark. The appellants in their written sta.tement in that suit, inter alia, took the plea that the trade mark "SUN" could not be registered being not distinctive. It was also stated by appellants that they would initiate proceedings in the High Court for rectification of the register. Application under section 107 of the Act was thereafter filed by the appellants on September 24, 1963. According to the appellants, they in partnership with a third person, had been manufacturing laterns and lighting appliances under the trade name "SUNSHINE" for more than eleven years and the trade mark became distinctive of the goods of their firm by long usage. The validity of the registration of the trade mark "SUN" was challenged and it was stated that the said trade mark was liable to be taken off the register of trade marks. According to the appellants, the word "SUN" was descriptive of lanterns and lighting goods and could not be registered as a trade mark for such goods. It was added that "this word cannot be distinctive of the goods such as lanterns or other lighting appliances." Some other grounds were also taken but we are not now concerned with them.

(3.) The respondent-company in its reply stated that the trade mark "SUN" had been validly registered and that the petition for rectification of the register was liable to be dismissed. Following issue was framed in the case:-