NEKUMAR K PORWAL Vs. MOHANLAL HARGOVINDAS

JUDGEMENT

(1.) This is a petition by way of an appeal against the order passed by the Deputy Registrar of Trade Marks (Mr. M. L. Kapoor) on 8th July, 1960 to the effect that the Register of Trade Marks be rectified by deleting the word "Bull" from the caption "Bull Dog" appearing in Drvanagri characters in the Registered Proprietor's mark, in an application for rectification filed by the respondents herein on 21st November. 1956 in respect of trade mark No. 131148 originally registered in the name of Kesharimal Pyarehand Porwal trading as Pyarchand Kesharial Porwal, Kamptee, District Nagpur. but at present standing in the name of the petitioner. This application for rectification was based on the grounds, that the respondents were proprietors of registered trade marks Nos. 504 and 132940, that they were injured in their business and embarrassed by the registration of trade mark No. 131148, that the entry of Trade Mark No. 131148 in the Register had been made without sufficient cause, that the said entry wrongly remained on the Register, that the said trade mark was deceptive inasmuch as it bore the caption "Bull Dog" although the device contained therein was that of a lion and that the registration of the said Trade Mark No. 131148 offended against the provisions of Section 11 of the Trade and Merchandise Marks Act, 1958, and the relief that was claimed in the application was the removal of Trade Mark No. 131148 from the Register. In the statement ot case accompanying the application for rectification, it was stated that the respondents had actually opposed the registration of trade mark No. 131148 but "on account, of unavoidable circumstances the applicants (respondents) for rectification were unable to file evidence in support of the opposition and the opposition was consequently treated as abandoned and mark No. 131148 was registered."

(2.) The Petitioner by his counter-statement filed on 22nd February, 1957 resisted the respondents' application for rectification and alleged that his application for registration of his trade mark No. 131148 was actually opposed by the respondents, that he had filed his counter-statement in that opposition, that the respondents had failed, to lead evidence in support of their said opposition and had ultimately informed the Registrar that they did not desire to file any evidence, that subsequently, the respondents of their own accord had withdrawn their opposition and thereupon trade mark No. 131148 was duly registered, that the registered proprietor of that mark had been using the said mark ever since 1910 and had built up a vast trade and reputation and that his trade mart had been rightly registered. The petitioner denied that the device in his registered mark was not that of a "Bull Dog" or that it was a device of a lion and asserted that his trade mark did not offend against the provisions of Section 11 of the Trade and Merchandise Marks Act, 1958 as alleged. He also contended that the respondents had acquiesced in the registration and use of his mark and were accordingly estopped by their conduct from proceeding with their application for rectification.

(3.) In support of the application for rectification an affidavit dated 23rd May, 1957 of Desaibhai Laldas who happens to be the manager of the respondent firm was filed in course of which it was inter alia stated that the respondents were proprietors of trade marks Nos. 504 and 132940 both registered in Class 34 in respect of bidis, that trade mark No. 504 consisted of a label containing the device of a lion as its essential feature, that the respondents had been using their aforesaid marks for more than past 30 years and that the bidis of the respondent firm bearing their aforesaid marks were known as "Sher Chhap Bidis". In the said affidavit it was admitted that the respondents had opposed the registration of trade mark No. 131148 of the registered proprietor but that they were unable to file evidence in support of the opposition and consequently their opposition was treated as abandoned. Curiously enough, however, it was emphatically asserted in paragraph 8 of the said affidavit that the respondents had not withdrawn their opposition to the registration of trade mark No. 131148 which assertion was wholly untrue in view of the earlier statements to the contrary in the very same affidavit. It was further stated in that affidavit that the device appearing in the registered trade mark No. 131148 was not of a "Bull Dog" but was that of a lion and that consequently that trade mark was deceptive, and offended against the provisions of Section 11 of the Trade and Merchandise Marks Act, 1958, and was consequently disentitled to protection.