MOHAMED OOMER MOHAMED NOORULLAH Vs. S M NOORUDIN

JUDGEMENT

(1.) This is an appeal which arises out of an order made by the Register of Trade Marks. The respondent applied for registration of his trade mark on 21-8-1942. The application was advertised on 1-10-1945, and the appellant filed his notice of opposition on 23-3-1946. The respondent submitted his reply on 13-7-1946. On 5-12-1947, the appellant filed affidavits in which he referred to a certain panchnama dated 19-10-1947. The case of the appellant was that his father was the proprietor of the trade mark which the respondent was seeking to register, and that by this document of 1937 his father had given leave and licence to the respondent to use the trade mark and the trade mark was to be used by the respondent only so long as the leave and licence had not been revoked. An affidavit was made by the respondant in reply to the affidavit of the appellant, but no reference was made in this affidavit to the panchnama relied upon by the appellant in his affidavit. At the hearing before the Registrar, the respondent challenged the panchnama as a forgery. He contended that it did not bear his signature. The learned Registrar came to the conclusion that the panchnama was a genuine document, but he held that the provision of the panchnama militated against public policy inasmuch as the appellant's father permitted the respondent to use the trade mark for an indefinite period and acquire a reputation in the market, and then permitted the appellant's father to revoke the licence at any time he so desired. The view he took was that, if the revocation was within a reasonable time, the position might be different, but, as Mohamed Oomer, Mohamed Noorullah vs. S.M. Noorudin (13.08.1951 - BOMHC) Page 2 of 9 the position stood, it was against public policy. He, therefore, held that, notwithstanding the proof of the panchnama, as the respondent had proved user of his trade mark in certain districts in the State of Madras, he therefor ordered registration of the mark limited to certain districts. From this order of the Registrar the appellant appealed to the High Court. That appeal came before Coyajee J. and the appeal was dismissed on the ground that it was barred by limitation. The respondent also appealed from the order of the Registrar. That appeal came before Shah J. To that appeal the appellant crossobjected. Shah J. set aside the order of the Registrar in so far as it limited the registration of the trade mark to the two districts specified in the order, and he called upon the Registrar to proceed to hear the petition according to law and decide the question as to whether the petitioner was entitled to obtain registration of the mark without any limitation. He also held that the cross objections of the appellant did not lie inasmuch as the appeal preferred by him had been dismissed by Coyajee J. The reason which led the learned Judge to remand the petition to the Registrar was that an opportunity was denied to the respondent to prove that the panchnama was not a genuins document; and the learned Judge also says in his judgment that an application for adjournment was made by the respondent in order to lead evidence with regard to the authenticity of the document and that application for adjournment was refused.

(2.) Now with regard to this application for adjournment we find that, in the grounds of appeal before the learned Judge below, it is now-where mentioned that the application for adjournment was made in order to enable she respondent to establish that the document under consideration was a forgery. As a matter of fact, the grounds refer only to one application for adjournment, which was to enable the respondent to produce his books of account from Trichinopoly to prove continuous user of the said mark since 1923. We have been told at the bar that an application for adjournment was made to the Registrar in order to enable the respondent to lead evidence as to the genuineness of the punchnama. But there is no record of any such application in the notes of the Registrar. It is unnecessary to consider this question further, because, in our opinion, the learned Registrar did allow certain evidence to be led with regard to the proof of the document. The grievance of the respondent now is that he was not allowed to lead all the evidence and there is some more evidence available which he wants to adduce before the Registrar. The learned Judge, with respect to him, is not also wholly justified in the view that he took that the Registrar came to the conclusion that the panchnama was proved because no objection to the document was taken by the respondent in his affidavit. The learned Judge seems to have been under the impression that the Registrar merely went on the pleadings and raised a presumption against the respondent and came to the conclusion that the document was proved because the respondent had failed to take any objection to the document when it was disclosed in the affidavit of the appellant. This is not wholly borne out by the judgment of the Registrar, because, although the Registrar does say "I do not think it would be fair to the opponent if I were to allow the applicant at the hearing to deny having signed the panchnama, as the issue was not raised in any part of his defence", still he does go on, in fact, to consider the evidence which was actually led as to the signing of this document There, fore, although this particular fact might have weighed with the Registrar, it was not the only Mohamed Oomer, Mohamed Noorullah vs. S.M. Noorudin (13.08.1951 - BOMHC) Page 3 of 9 fact on which his judgment was based. But, as I said before, the position is that the respondent has further evidence to lead which he has not led before the Registrar; and we do not think, taking everything into consideration, that it would be proper for as, sitting in appeal, to interfere with the order of remand made by the learned Judge, as in doing so he has exercised his discretion.

(3.) But there is one rather important matter of procedure to which I should like to refer. It is clear under the Trade Marks Act that the Registrar is given the power to decide any matter that comes before him on affidavit, Section 70, Sub-clause. (b) provides that evidence shall be given by affidavit, provided that the Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit. Therefore, the scheme of the Act is that ordinarily all disputed questions of fact should be disposed of by affidavit. But there may be cases where it would be impossible to decide disputed facts on affidavit, in which case discretion is vested in the Registrar to take oral evidence either in lieu of or in addition to evidence by affidavit. Now the position under the rules framed under the Trade Marks act is that, after the notice of opposition is given, evidence in support of opposition is given by the person opposing the registration, and this evidence it given by affidavit and the affidavit should set out the evidence on which the opponent intends to rely. Thereafter, evidence in support of the application is given by the applicant, and that too is given by affidavit further right is given to the opponent to give evidence in reply, but that can only be done by leave of the Registrar; and Rule 36 provides that no further evidence is permissible although the Registrar may, at any time if he thinks fit, give leave either to the applicant or to the opponent to lead evidence on such terms as to costs or otherwise as ho may think fit. Now, the expression used in Rule 34 is "evidence in support of application" is rather equivocal. It has been suggested by Mr. Desai that under this rule the only evidence the applicant is called upon to adduce is evidence in support of his own application. The evidence does not refer to evidence in rebuttal of the evidence submitted by the opponent in support of his opposition. It is impossible to accept that contention, because evidence in rebuttal of the case of the opposition is also evidence in support of the application. And if all matters are to be ordinarily disposed of by affidavit, it would be incumbent upon the applicant, in dealing with the evidence in support of the opposition, to rebut any case that might have been set up by the opponent. Therefore, in this case, when the panchnama was relied upon by the opponent in his affidavit, it was incumbent upon the applicant to deal with that document. The learned Judge points out that there was some discrepancy as to the date of the document as mentioned in the affidavit and the actual date of the document which was proved before the Registrar. But apart from this discrepancy, the affidavit of the opponent does set out the terms of the document and its effect, and it is undoubtedly significant that the applicant did not in any way deal with that document. He challenged the document for the first time when the matter came before the Registrar and then the Registrar decided that evidence should be led. All the evidence with regard to this document in the first instance should have been by affidavit and if the case of the applicant was that he had never put his signature to any such Mohamed Oomer, Mohamed Noorullah vs. S.M. Noorudin (13.08.1951 - BOMHC) Page 4 of 9 document and that, if his signature had appeared on any such document, it was a forgery, he should have set out that case in his affidavit in support of his application. Therefore, we cannot say that the Registrar was entirely in error when he attached considerable importance to the fact that the applicant did not denied his signature in the affidavit which had been filed before the hearing took place before the Registrar. But the learned Judge is right when he says that, when the document was of such great importance, the applicant should not have been denied the opportunity of leading all the evidence he wanted to in order to establish that the document was a forgery. It would be taking too technical a view of the rules to have tied the application down to his admission in the affidavits that the document was not a forgery or that the document was a genuine one and that too not an express admission but merely a constructive admission inasmuch as he had not expressly denied the genuineness of any such document.