SINGER MANUFACTURING CO Vs. REGISITRAR OF TRADE MARKS

JUDGEMENT

(1.) THIS is an appeal from the decision and order of the Deputy Registrar of Trade Marks, Calcutta dated October 23, 1962. The appellant is the Singer Manufacturing Company. The decision of the Deputy Registrar of Trade Marks is that designation of goods in Application No. 170032 for registration of a trademark consisting of a label containing the word 'sagar' in the form of Class 7 in respect of Sewing Machines and parts thereof be limited to sewing machines sold complete on July 11, 1955 Attorneys for the respondents made an application for registration of the Trade Mark Sagar in Class 7 in respect of Sewing Machines as appearing at page 1 of the Paper Book in the name of Vidya Sagar Trading as Paul Brothers, whose trade or business is at 83, Lower Chitpur Road, Calcutta-7 by whom the said mark is used and who claims to be the proprietor thereof. The application was filed cm July 19, 1955. On October 14, 1955 the Registrar of Trade Marks, Bombay wrote to the said applicant's Attorneys that they should file an affidavit from the applicant as to the acquired distinctiveness in respect of the word 'sagar' which is surname as well as a personal flame. On March 1, 1956 the affidavit was affirmed by Vidya Sagar along with exhibits Nos. 1 to 154. On February 19, 1957 the Singer Manufacturing Company delivered the grounds of opposition. On September 27, 1957 Vidya sagar affirmed another affidavit stating the grounds for the application. In that affidavit the grounds of opposition on behalf of the Singer Manufacturing Company were dealt with. On November 20, 1961 the Singer Manufacturing company delivered further grounds of opposition. On 27 January, 1962 Paul Brothers filed another counterstatement.

(2.) AFFIDAVIT evidence was relied on by both parties at the hearing before the Deputy Registrar. The evidence in support of the application consisted of the affidavit of Vidya Sagar affirmed on August 17, 1959 with Exhibits Al to A115, B1 to B5 and Cl to C4 which are to be found at page 74 following of the Paper Book. The other affidavits in support of the application are to be found at page 82 following of the Paper Book. The affidavit evidence in support of the opposition consisted of the affidavit of Joseph Thompson and Exhibits a, B, C, D and E sworn on May 16, 1958 which are to be found at page 44 following and the other affidavits in support thereof are to be found at page 53 following of the Paper Book. There is further affidavit of Joseph Thompson sworn on December 19, 1959 which is to be found at page 167 of the Paper Book.

(3.) THE decision and order of the Deputy Registrar is impeached by Counsel for the appellation on three grounds. First, that the word 'sagar' is a proper name and as such it cannot be registered without evidence of distinctiveness and that there is no distinctiveness in the word 'sagar' which is said by the appellant to be a proper name; secondly, that there is confusion between the name 'sagar' and the name of the appellant 'singer' thirdly, that the order should not have been made because the respondents are guilty of inaccurate statements. Under section 9 of the Trade and Merchandise Marks Act, 1958 a trade mark shall not be registered in Part A of the register unless it contains or consists of at least one of the essential particulars mentioned in sub-clauses thereof. Sub-clause (d) is as follows one or more words having no direct reference to the character or quality of the goods and not being according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India. Sub-clauses (a), (b), (c) and (e) of section 9 are not material for the purposes of the present appeal. Under sub-section (2) of section 9 it is stated that a name, signature or ward, other than such as fall within the descriptions in clauses (a), (b), (c) and (d) of sub-section (1) shall not be registerable in Part A of the register except upon evidence of its distinistiveness. In sub-section (3) of section 9 it is stated that for the purposes of this Act, the expression 'distinctive' in relation to the goods in respect of which a trade mark is proposed to be registered, means adapted to distinguish goods with which the proprietor of 'the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration. In sub-section (5) of section. 9 it is stated that in determining whether a trade mark is distinctive or is capable of distinguishing as aforesaid, the tribunal may have regard to the extent to which (a) Trade Mark is inherently distinctive or is inherently capable of distinguishing as aforesaid; and (b) by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish or is in fact capable of distinguishing as aforesaid. Counsel on behalf of the appellant contended that a word which is a surname according to its ordinary signification does not qualify for registration in Part A of the register. Under section 9 (1) (d) surnames or proper names may be registered if distinctiveness is sufficiently established. The considerations chiefly influencing the tribunal in such a case are, first, length, extent and nature of the user secondly, rarity of the name; thirdly, the nature of the trade; fourthly, the custom of the trade as to the common use of surnames to distinguish goods. Counsel for the appellant relied on the Statement of Law in Kerly on Trade Marks, Eighth Edition at page 113 which is based on the decision by the Registrar in (1) Swallow Raincoats Ltd's application, reported in. (1947) 64 R. P. C. 92. Two propositions are laid down in Swallow case. First, where the word 'propounded' for registration has no signification other than as a surname (words such as 'dabner' and 'crossing-ham' may be cited as examples), Registrar considers that he is prohibited from registering the mark in Part A of the register except upon proof of its distinctiveness, though the may register it in Part B of the register without such proof where he is satisfied that the surname is one that is very rare, secondly, where the word 'propounded' is found to occur very rarely as a surname and obviously is an overwhelmingly commoner and better-known meaning otherwise than as a surname (e. g. , words such as 'coup' or 'cheer'), the Registrar would be prepared to regard the surname signification as a non-ordinary one, to recognise that the word falls within the terms of paragraph (d) of section 9 (1) and (as he may do in such a case without offending the provisions of paragraph (e)) to register the mark in Part A of the register without requiring any further evidence of its distinctiveness; or if the word were a less rare surname (and yet not in any sense a common surname), and had an overwhelmingly commoner and better-known meaning otherwise than as a surname (eg. , words such as 'jury' or 'bugler), the Registrar would, in the absence of evidence of distinctiveness, refuse registration in Part A, but would allow registration in Part B of the register. Counsel for the appellant relied on the decision in re: (2) H. S. Burford and Co. Ltd. 's application, reported in 1919 (2) Ch. 28 and on the observations appearing at page 39 of the report that although the name Burford could not be described as quite uncommon it was nevertheless not a common name and no single person of that name was engaged in manufacturing motor cars or any parts of motor cars Counsel for the appellant also relied on the decision (3) Teofani and. Co. v. A. Teofani, reported in 1913 (2) Ch. 545 and on the observations appearing at page 567 of the report that the surname in that case was register able by reason of distinctiveness as also by reason of long use. Counsel for the appellant relied on the Burford and Teofani cases in support of two propositions that rarity of name might become distinctive in the trade and that one of the ingredients of distinctiveness would be the length of user and counsel contended that in the present case the name 'sagar' was common and there was no evidence of long user or of user to amount to distinctiveness. Counsel for the appellant also relied on the decision in (4) R. J. Lea Ltd. reported in 1912 (2) Ch. 32 and the decision of the Court of Appeal in the same case reported in 1913 (1) Ch. 446. In Lea's case it was found that the mere surname of an individual, although it may be adapted to distinguish the goods of all the persons taken collectively, who bear that surname from the goods of other persons bearing a different surname, was not adapted to distinguish the goods of a particular applicant, even though his surname was an uncommon one, from those of other persons within the meaning of that expression in the Trade Marks Act, 1905 and was therefore not to be registered. On appeal it was held by the Court of Appeal consisting of Farwell, L. J. , Buckley, L. J. , and Hamilton, L. J. , that on the evidence in that case the word "boardman's" was not adapted to distinguish the goods of the applicant from those of other dealers in tobacco and was therefore not register able as a distinctive mark. Farwell, L. J. , said "it is plain to my mind that the name of a company, individual or firm by itself is not, prima facie and without more, distinctive nor is a geographical name or surname; and if there is nothing more 1 think it would be wrong for the Board of Trade or Court to allow such to be registered. Hamilton, L. J. said the Act says "adapted to distinguish", the mere proof or admission that a mark does in fact distinguish does not facto compel the judge to deem that mark to be distinctive. It must be further adapted to distinguish which brings within the purview of this distinction the wider field of the interest of strangers and of the public. "