ABDULLA KHAN Vs. BASALAT KHAR

JUDGEMENT

(1.) The only point, that falls for determination in this appeal against the order of Satyanarayana Raju, J. (as he then was) made on the application of Basalat Khan, which was under sections 46 and, 72 (a) of the Trade Marks Act (V of 1940), is whether the proper order in the case was to vary the er.try in the Trade Marks Register by declaring that the petitioner and the respondent are jointly entitled to the use of the trade mark in question, or to direct the cancellation of the said entry. The petitioner, B..salat Khan, had prayed for the latter but our learned brother had granted the former. Basalat Khan has preferred no appeal. Abdullah Khan has, however, come to this Court claiming that the trade mark as entered in the Trade Marks Register being exclusively his own on account of long user can neither be varied r.or cancelled. In the alternative he contends that if for any reason, it be held that he is not exclusively entitled thereto the only order in the case could be the cancellation of the trade mark. On this basis he challenges the correctness of the order varying the trade mark in question. The facts leading to the present controversy may be briefly stated: The appellant, Abdullah Khan, was the 2nd respondent in the original proceeding, the 1st respondent being the Registrar himself. Basalat Khar, the original petitioner, is his own nephew being the son of his elder sister. The mother of the petitioner (Basalat Khan) died when he was but a lad. He and his younger brother thereafter were taken to their maternal grand-father, Dawood Khan, the father of Abdullah Khan. All of them were Irving together in the same house. Shar Ali Khan., the father of the petitioner, was well placed in life being in possession of considerable property both movable and immovable.; He did not, however, lire long. He died leaving his two minor sons. On. his death, the Court of Wards took over the management of his property. The grandfather, Dawood Khan, was appointed guardian for the minor's person. He was but a retired head constable drawing monthly pension of about Rs. 5. On the petitioner's attainir.g majority, his share of property was released by the Court of Wards in about the year 1934. He continued to live in the same house at Kurnool (which was his) along with Dawood Khan's family members including Abdullah Khan. He lived there till about the year 1940 or 1941. These facts are undisputed a; .d have been so narrated even by R.W. 1, an M.L.A. and Municipal Chairman, Kurr.ool, examined by Abdullah Khan. Abdullah Khan had been for some time past getting bcedies rolled by hired labour and supplying them to factories. He was thus getting a commission of about Rs. 20 a day. According to R.W. 1 he worked in this capacity for a period of 7 or 8 years. After Basalat Khan attained majority, a beedi factory at Kurnool under the name of "Abdullah Khan Basalat Khan Beedi Factory"was started. The 2nd respondent contends that he was the sole proprietor of that beedi factory where beedies were originally scld in the market in the name of "Gulab Rani "and later on under the trade mark "Elephant Circus Jadi Bccdi "and the registration of the said trade mark was made with the Southern India Chamber of Commerce. The petitioner's contention, on the other hand, is that it was a joint venture wherein his monies provided the capital for the factory and Abdullah Khan as a working partner was looking after the entire business. The Beedi factory was in the joint names of Abdullah Khan add Basalat Khan and the trade mark as indicated by Exhibit A-57 with pictorial representation of two elephants on each side with flags in the trunks raised was registered at serial No. 2831, register No. 2856 at page 117 of the register. This business with this trade mark was carried on till 1940 when the petitioner moved to Alampur, the area included in the erstwhile Hyderabad State. He started his business independently using the same trade mark. There was no Trade Marks Act in force then in that area. However, registration of trade mark used to be done before the District Registrar of Hyderabad.

(2.) The petitioner made his application for such registration on 13th Azur 1351 fasli corresponding to 1941 and it was ultimately registered, the registered label being Exhibit A-72 which was identical with Exhibit A-57. In the deed of declaration, Exhibit A-71, that he filed, he said inter alia that he was the owr.er of the beedi factory with the trade mark known as Elephant Circus Beedi situate in Kurnool District, that the label to be pasted on the packets and. bundles of beedies which would be sold in the Nizam's Dominions were submitted for registration and that he was getting the name and trade mark duly registered so thf.t no other person may use the said name and. trade mark. Exhibit A-73, dattd 19th Isfardcr 1356 fash corresponding to 19th January, 1948 registered at the office of the District Registrar refers to the letters "E.C. J. B. " The trade mark so registered consists of a label which in common parlance is Ring label. In the centre of this label inside a circular border there is a device of an elephant in the conventional standing posture. On either side of the device there is a par.ll. The letters "E. C."are on the left panel and the letter 'J.B."on the right panel. This label was intended for packets and bundles of beedies which were sold in the Nizam's Dominions. Thus the trade mark that was adopted at Kurnool was registered for the, Nizam's Dominions as well, the beedi factory being at Alampur in the District- of Raichur, within the Nizam's Dominions. The petitioner carried on his business at Alampur upto the year 1948. After the advent of the Trade Marks Act of 1940 Abdullah Khan who was doing his business at Kurnool applied for registration of trade mark at Bombay and got registered two trade marks in his name. Exhibit B-38 evidences the registration of Trade Mark No. 110073 and Exhibit B-39 of Trade Mark No. 110074. The registration was effected on 11th May, 1945. The latter trade mark is in respect of beedies not for sale in Bombay State in class 34. Both the certificates were issued in the name of Abdullah Khan trading as "Elephant Circus Beedi Factory, Khadpura, Kurnool, Andhra State."In the middle of the label there are two elephants holding flags in their trunks. Below the words "Trade Mark are written, the words "Abdullah Khan Beedi factory."On both sides of the label the words "Elephant Circus Beedi"were written in six languages and the numerical 24 is given at the top on either side. The device of elephant admittedly is common to the trade. It is so stated in Exhibits B. 38 and B-39. The device in the label registered by Abdullah Khan under Exhibit B-39 is substantially the same as the device registered under the label with the Southern India Chamber of Commerce, Madras, as early as on 29th March, 1936. If at all there is any difference it is with regard to the numerical "25 "which in Exhibit A-57 appears at the top, whereas the numerical "24 "appears at two places on the left and right top corners of the label in Exhibit B-39. Further whereas the words "Abdullah Khan Basalat

(3.) Except for the change in the direction of the Elephant there was no change in the trade mark used by him. Here it is said that there were certain partners in his business. It is said that Abdullah Khan sent word to one of his partners Murlidhar Reddy to refrain from using the trade mark on pain of a civil suit. Some time thereafter the petitioner shifted his business to Gadwal. Abdullah Khan in his counter denied that the petitioner ever carried on business at any place including Alampur with the same trade mark. Later on, he however admitted that Basalat Khan carried on business at Alampur and used the trade mark device with his permission, He denied the business carried on at Gadwal was that of the petitioner. His Contention is that it was his own, that he himself had started a factory in the name of his son, Bayaseed Khan. According to him the petitioner after his return from Amarchinta stayed with him for some time. As he was in need of help and Abdullah Khan had then opened a beedi factory at Gadwal for his son Bayazeed Khan, he entrusted the petitioner with the management of the same. He appointed him on on a salary of Rs. 50 per mensem and bonus of 6 annas in a rupee in the net profits. The capital outlay was exclusively his own and Basalat Khan had no share in the investment. He took the building on rent, obtained the necessary licenses on behalf of his minor son Bayazeed Khan and carried on business on behalf of his son. He did not justify the confidence reposed in him. He fraudulently removed the manufactured beedies of a huge value and took away cash and account books of the beedi business. However on. discovery of this fraud Abdulla Khan dispensed with his services. This case of the appellant has been categorically denied by the petitioner who claims that the business there was exclusively his own. It was started with the help of his own capital and Abdulla Khan had nothing to do with it. On 2nd November, 1957, Abdulla Khan however gave notice (Exhibit B-43) to him (Basalat Khan) alleging that in the beedi factory at Gadwal started in the name of the minor son of Abdulla Khan, Bayazeed Khan by name, Basalat Khan working as a manager on a fixd salary with 6 annas share in the profits removed manufactured beedies of the value of Rs. 11,000 and had taken away cash of Rs. 621 and the account books of the beedi factory. It was further stated that he was given to understand that Basalat Khan intends to start a beedi trade at Gadwal infringing his registered trade mark. He called upon him to desist from attempting to infringe the trade mark of the appellant and also to surrender the beedies of the value of Rs. 11,000 and cash of Rs. 621. Thereafter on 25th November, 1957, he filed a suit O.S. No. 63/1/57 on the file of the Court of the Munsif-Magistrate, Gadwal against Basalat Khan for a permanent injunction restraining the defendant from interfering or meddling with the locks of the plaintiffs put to the plaint scheduled godown. and the beedi leaves stored therein and for directing the defendant by mandatory injunction to remove the locks put by him to the plaint scheduled godowns. Then again on 4th January, 1958, he filed O.S. No. 1/1/1958 on the file of the District Court for a permanent injunction restraining the defendant, his men and servants from using the label with the devise of an- elephant and trade mark "Elephant Circus Jadi Beedies "or "E.C.J.B. "with the device of an elephant and to direct the defendant to deliver ail the articles such as blocks, labels, etc., in his possession used by him in infringing; plaintiff's trademark. In that proceeding he filed an interlocutory ApplicationNo. 2/2/1958 for a temporary injunction restraining the petitioner from maufacturing and selling beedies bearing the trade name "Elephant Circus Jadi Beedies "or the trade mark "E.C.J.B."with the device of an elephant. An injunction was issued and this was made absolute. The Civil Misc. Appeal preferred to this Court is now pending. Then again on 11th April, 1958 another suit O.S. No. 3 of 1958 was instituted against Basalat Khan complaining that subsequent to the grant of temporary injunction in March, 1958, the petitioner started the manufacture and sale at Gadwal and. its neighbourhood of beedies with the mark "H.B.E.J.B."with the design of elephant in the centre which was not substantially different from the mark which the defendant was using on his wrappers and on individual beedies. He therefore prayed for a permanent injunction restraining the petitioner, his men and servants from using the mark with the device and design of an elephant inset between the letters "B.C."on the left and "J.B. "on the right of the device and design of an elephant and for other incidental reliefs.