KANSHIRAM SURINDER KUMAR Vs. THAKURDAS DEOMAL ROHIRA

JUDGEMENT

(1.) THIS is an appeal filed under Sub -section (2) of Section 109 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as 'the Act') from a judgment of the Joint Registrar of Trade Marks dated July 29, 1969 allowing an application for rectification of the register of trade marks made by the present respondents under Section 56(2) of the Act. That application for rectification was made by the present respondents to the Registrar of Trade Marks, and not directly to this Court, as the case was not one which was governed by the provisions of Section 107 of the Act. The trade mark in question in these proceedings consists of the word 'Amar' in respect of textile piece goods which would fall under Class 24. The said mark was registered by the present petitioners in Part B of the Register under No. 212206B as of November 8, 1962. Registration was actually granted on March 25, 1964, but the same would, by virtue of the provisions of Section 23 of the Act, relate back to November 8, 1962 which was the date of the making of the application for registration before the Registrar by the present petitioners. On May 21, 1964, the present respondents applied for registration of the same word mark 'Amar' under No. 222437 in Part B of the Register in regard to textile goods comprised in Class 24, and on September 2, 1965, they filed Rectification Application No. BOM -124 before the Registrar for cancellation of the registration of the petitioners' said mark No. 212206B. That Rectification Application was granted by the Joint Registrar by his judgment and order dated July 29, 1969, and it is from that judgment and order that the present appeal has been filed in the usual form of a 'Miscellaneous Petition.'

(2.) THE case of the present petitioners is that one of their partners Arjandas was a partner in a firm named Radhakishan Kanshiram which was carrying on business in textile piece goods in Ahmedabad, and the said firm was using the trade mark 'Amar' for various textile piece goods; that the said firm of Radhakishan Kanshiram was dissolved 'in about the year 1955'; and that the present petitioner -firm, in which the said Arjandas became a partner, adopted the said trade mark in respect of textile piece goods from the year 1958, and as from that time onwards till July 20, 1966 sold goods bearing the said mark aggregating in value to a little over Rs. 53 lakhs. As against that, the case of the present respondents is that it is they who first adopted the said mark 'Amar' in respect of textile piece goods in the year 1955, and had during the period between the said year and July 6, 1965 sold goods bearing the said mark aggregating in value to over Rs. 63 lakhs. It is also the present respondents' case that they had actually sold from time to time goods bearing the said mark to the present petitioners themselves who, admittedly, were also doing business as commission agents at all material times. The present respondents' case is that the present petitioners had no right to register the said mark in their own name as they have done under No. 212206B, because they were not the proprietors of the said mark, and also because the registration of the present petitioners' said mark was likely to cause deception or confusion within the terms of Section 11(a) of the Act. According to the present respondents, they came to know of the user of the said mark by the present petitioners on their own goods only when the mills who were stamping the same on behalf of the present respondents received notices from the present petitioners objecting to their stamping the said mark for the present respondents.

(3.) BEFORE dealing with the merits of the controversy between the parties, I must refer to the relevant statutory provisions with which I am concerned in this case. Section 11(a) lays down that a mark the use of which would be 'likely to deceive or cause confusion' cannot be registered as a trade mark, and it is well -settled that before an objection under Clause (a) of Section 11 can be sustained by a party, it is necessary for him to establish reputation in the trade in connection with the trade mark, unless the trade mark is distinctive per se. Sub -section (1) of Section 12 lays down that, save as provided in Sub -section (3) thereof, no trade mark can be registered in respect of any goods or description of goods 'which is identical with or deceptively similar to' a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods. Sub -section (3) of that section, however, permits registration of the same trade mark to be granted in respect of the same goods or description of goods to more than one proprietor thereof in case of honest concurrent user of that mark by the parties concerned. As held by me in the case of In re R.T. Engineering etc Co. (1970) 73 Bom. L.R. 586, under Section 11(a) what is to be considered is the possibility of deception or confusion by considering actual user, whilst under Section 12(1), the Court has only to take into account notional fair user on the basis of the similarity of the two marks. Section 18 enacts that any person 'claiming to be the proprietor of a trade mark', Who is desirous of registering it, must apply in writing to the Registrar in the prescribed manner. It is not necessary to refer to the remaining part of that section. Section 56 of the Act, with which I am directly concerned in this case, inter alia, provides in Sub -section (2) thereof that any person aggrieved 'by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register,' can apply in the prescribed manner to the High Court or to the Registrar for expunging or varying that entry as may be thought proper. It is on an application made under this statutory provision that the Joint Registrar has, in the present case, ordered the register to be rectified by expunging therefrom the mark which the present petitioners had got registered under No. 212206B.