SCIENTIFIC SOAP WORKS Vs. DALSUKHBHAI MANGALDAS SHAH

JUDGEMENT

(1.) A rather important and interesting question relating to the law of trade marks arises on this appeal. The facts briefly are that the appellants' traae mark was registered on the 15th April 1944. It was a mars containing a Crane (bird) and the name 'bug Chhap' and the mark was used in connection with washing soap used by the appellants. On the 1st June 1951, the first respondent made an application for registration of a trade mark which was of a Duck and bearing the name 'batak Chhap'. On the 18th July 1951, the petitioners filed an infringement action against the first respondent before the District Court in connection with this mark and the appellants obtained an interim injunction. They also adopted criminal proceedings against the first respondent. It may be stated that the learned District Judge subsequently dissolved the interim injunction taking the view that there was no likelihood of deception comparing the two marks. On the 1st December 1951, the first respondent's mark was advertised and on the llth February 1952, the appellants filed a notice of opposition. On the 29th January 1953, the criminal case was compounded and there was also a consent decree taken in the Civil Court on the 15th April 1953, and by this consent decree the first respondent agreed to amend his mark by substituting another mark which appears at p. 10 of the paper book and which contains also a Duck but in a different posture and differently figured from the one for which he had applied for registration. On the 6th April 1953, the first respondent applied to the Registrar to amend his trade mark to bring it into conformity with the mark agreed to in the consent decree and which appears at p. 10. On the 18th May 1953, the Registrar gave notice to the appellants of this application far amendment and the appellants replied on the 8th September 1953, stating that they did not admit that the amended trade mark was dissimilar to their own trade mark and stating that they wanted to proceed with the opposition. At the hearing of the opposition the appellants were not present, their application for adjournment having been refused, and an ex parte order was passed by the Registrar on the 30th November 1954, ordering the registration of the trade mark of the first respondent as amended. The appellants appealed to this Court and Mr. Justice Coyajee dismissed the appeal and the appellants have now come in appeal to this Court.

(2.) MR. Shah who appears for the respondents has very carefully drawn our attention to various aspects of the matter and the various provisions contained in the Trade Marks Act and the rules made thereunder, and his contention is that in amending the application the Registrar exercised his jurisdiction under S. 14 (3) which provides:--"the Tribunal may at any time, whether before or after acceptance, correct any error in or in connection with the application, or may permit the applicant to amend his application upon such terms as it may think fit. " it is submitted by Mr. Shah that this sub-section gives the widest jurisdiction to the Registrar and this jurisdiction is tantamount to the Registrar allowing an amendment, whether before or after acceptance of the application, and also the jurisdiction to allow such amendment as he thinks proper.

(3.) NOW, before we can accept this submission of Mr. Shah we must look at some other provisions of the Act and the scheme underlying the Trade Marks Act. Section 14 (1) permits the Registrar to refuse an application or to accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit. Therefore, when an application for registration is presented, it is open to the Registrar to refuse it in limine, or he may accept it subject to amendments, modifications, conditions or limitations. But when he does accept it, then under Section 15 (1) it is obligatory upon the Registrar to advertise the application in the prescribed manner. He has a discretion to advertise it before its acceptance, but after acceptance it is not a question of his discretion but it is a mandatory provision of the statute that he shall advertise an application after its acceptance, and there is very good ground why the Legislature has made it obligatory upon the Registrar to advertise a trade mark after acceptance, because under Sub-section (2) of Section 15, any person may, within the prescribed time from the date of the advertisement of the application, give notice in writing in the prescribed manner to the Registrar of opposition to the registration. Therefore, the advertisement constitutes a notice to the public and under Section 15 (2) any member of the public is entitled to came in and oppose the application for registration. Therefore, what the Act provides is that no trade mark shall be registered unless the public has had notice of an application for the registration of that trade mark and unless the public had had an opportunity- to oppose that application. If we bear in mind the fact that the Register exists in the interest of the public and the whole object of the Trade Marks Act is to serve the public and to prevent the public from being deceived by an improper trade mark being put on the Register, then it would become apparent why it is so very necessary that every trade mark application should be advertised before the trade mark is registered.