S.Ranganathan - (1.) THOUGH this appeal, under section 109(2) of the Trade & Merchandise Marks Act, (43 of 1958) the Act., in short, appears to involve basically only a simple question of fact, on which the Registrar of Trade Marks has reached a conclusion adverse to the appellants, a plethora of decision reported in the English Series of "Reports of Patents, Design and Trade Marks Cases" have been cited by both sides and it, is therefore, perhaps better to start with a brief survey of the relevant provisions of the Act.
(2.) A "Trade mark" side S. 2 (v) (ii) means "that is, a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof-see S.2 (j)-"used or proposed to be used in relation to goods for the purpose of indicating or as to indicate a connection in the course of trade between the goods and some person having the right either as proprietor or registered user, to use the mark whether with or without any indication of the identity of that person. "It is" a visual symbol, the form of a brand, a device or a label applied to articles of commerce with a view to indicate, to the purchasing public, that they are the goods manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt in by other persons". Unlike in the case of Patents, designs and copyrights, this symbol may be very ordinary and commonplace thing and need not be the result or indication of inventive skill or intellectual labour. Still, subject to certain conditions, the owner of the mark acquires a right to the exclusive use of that symbol in relation to the particular goods in respect of which it is registered or used. The Trade Marks Act, 1940, enacted in India, was almost a replica of the U.K. Trade Marks Act, 1938. After independence, the Government of India appointed a Trade Marks Enquiry Committee whose report disclosed a strong divergence of opinion on all-important matters amongst its members. The government then requested Justice Rajagopala Ayyangar to undertake a comprehensive review of the whole matter and the present Act is the outcome of the labour of this Committee. It is a comprehensive piece of legislation providing "for the registration and better protection of trade marks and for the prevention of the use of fraudulent marks on merchandise." Some of the provisions of the Act which are relevant to the points as in this case may now be referred to. The Act envisages the appointment of a Registrar of Trade Marks (S.4) and the maintenance of register, containing all details of all registered trade marks and comprising of two parts, A & B (S9). A trade mark may be registered in respect of any or all of the goods comprised in a prescribed class of goods (S.8). Section 11 prohibits the registration of certain marks on ground of public policy and S. 12 prohibits the registration of certain marks on ground of public policy and S. 12 prohibits the registration of a trade mark identical with or deceptively similar to a trade mark already registered in respect of the same goods or description of goods. However, under sub-section (3) of S. 12, " in case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper to do so, he may permit the registration to more than one proprietor of trade mark which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose." Sections 1 to 16 lay down certain rules regarding registration which are not relevant for or present purposes. Section 17 enables a registration subject to a disclaimer. It enacts; "If a trade mark- contains any part- (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or contains any matter which is common to the trade or is common to the trade or is otherwise of a non-distinctive character; The Tribunal in deciding whether the trade mark shall be entered or shall remain on the register, may require, as a condition of its being on the register, that the proprietor shall either disclaim any right to the exclusive use of which the Tribunal holds him not to be entitled, to make such other disclaimer as the Tribunal may consider necessary for the purpose of defining the rights of the proprietor under the registration; Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made." Chapter III of the Act lays down the procedure for and duration of registration. It is sufficient to note here that any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, may apply in writing to the Registrar for its registration in part A of the Register. The Registrar may refuse the application, or may accept it absolutely or subject to such amendments as modifications, conditions and limitations as he may think fit (S. 18). An acceptance can also be withdrawn by the Registrar (S.19). If an application is accepted, the Application and the terms of acceptance are advertised in some cases, even before acceptance, the Registrar may cause the application to be advertised (S. 20). Any persons opposing the registration should file their objections within the prescribed time; and the Registrar, after giving the applicant an opportunity to file a counter- statement, allowing the parties to lead evidence and hearing the parties, will decide "whether and subject to what conditions and limitations, if any, the registration is to be permitted (S. 21). Where an application is not opposed within the prescribed period or the opposition is decided in favour of the applicant, the Registrar shall register the trade mark "as of the date of the making the said application" which shall be deemed to be the date of the registration and issue a certificate of registration under his seal (S.23). The registration of a trade mark is for a period of seven years but may be renewed from time to time in accordance with the provisions of section 25. The registration of the trade mark gives the registered proprietors the exclusive rights to use the trade mark in relation to the goods concerned and also enables him to obtain relief in respect of the infringement of the said trade mark in accordance with the provisions of the Act (Sections 27 and 28). In all legal proceedings relating to a trade mark registered in Part A, the original registration of the trade mark shall, after the expiration of seven years from the date of such registration, be valid in all respects unless it is proved: that the original registration was obtained by fraud; or that the trade mark was registered in contravention of the provisions of sec. 11 or offends against the provisions of that section on the date of commencement of the proceedings, or that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietors" (S.32).Section 46 enables any person aggrieved to move an application seeking the removal of any registered trade mark from the register or, at least the imposition of certain limitations in regard to its user on the grounds of non-use of the trade mark during the specified period. We are concerned in this case with a proceeding for the rectification and correction of the register dealt with in Chapter VII of the Act. Section 56, insofar as is relevant for the present purpose, enacts as follows: "56 Power to cancel or vary registration and to rectify the register. (1) On application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the Tribunal may make such order as it may think fit for canceling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto. (2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar and the Tribunal may make such order for making, expunging or varying the entry as it may think fit. (3) The Tribunal may in any proceedings under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the Register. In the context of the above statutory provisions, the dispute of the present case arises on the following facts. The goods we are concerned with in the appeal are washing soaps. Some how many soap manufacturers appear to have taken a fancy to a trade name comprising of a number (2, 3, 5 and 7) attached to the word "Bhai". It has been brought to my notice that there had been application for the registration of the following trade mark in respect of washing soaps: Application No.DateName of Applicant Trade Mark (1) 166,73020.11.54Do Bhai Soap WorksDo-Bhai (2) 232,33515.11.68Uttam Chemical Udyog5-Bhai (3) 287,43917.4.73Sugar Soap Factory3-Bhai (4) 301,79628.12.74Rishi Soap WorksBahi-Bhai (5) 305,77924.5.75Uttam Chemical UdyogBhai-Bhai (6) 307,73614.8.75-do-5 Bhai The first two had been accepted and registered and the others have been advertised before acceptance under the proviso to Sec. 20 (1) of the Act. We are concerned with the record of these which was got registered by the appellants on 15.11.68 and would have fallen for renewal on the expiry of the seven years period in November, 1975. That registration would then also have attained the conclusiveness of validity envisaged by S. 32 of the Act. On 28.4.1975, the respondent Rishi Lal Gupta, proprietor of Rishi Soap works, filed before the Registrar an application for rectification of the register under S. 56 of the Act in regard to the above trade mark. At this stage, it may be mentioned that, against the above entry there had been recorded a disclaimer use of the numeral '5'.The respondent now sought either that the entry relating to registered trade mark No. 252, 235 should be expunged from the register or that against it should be entered a disclaimer also on the expression BHAI. His grounds for seeking the rectification were as under: - He had been carrying on business as a manufacturer and merchant of washing soap under the trade mark 'Bhai Bhai' and had applied for registration thereof as early as 28-12-1974 but the appellant's trade mark was cited as one of the confusing mark standing in the way of his application being accepted. That the word (BHAI) was (public) (juris) in the washing soap trade due to its common use therein. Since the appellants had obtained its registration without disclosing this fact to the Registrar, the registration had been obtained by fraud and contrary to the provisions of the Act. In support of the Application for rectification the respondent relied on the following evidence: - (a) (i) Affidavit of Girraj Kishore, General merchant at Hasanpur Gurgaon that he had been selling washing soap manufactured by different manufacturers under the Trade Mark "3 Bhai", 2 Bhai", "5Bhai", "6 Bhai" and "Bhai-Bhai". Photostat copies of three bills dated August, 1972, Dec. 73 and Apl. 76 showing the purchase by him of small quantities of 6-Bhai and 3-Bhai soaps were filed alongwith the affidavit. (ii) Affidavit of Ram Avtar, Kirana merchant at Ballabgarh, that he had been selling washing soaps of various brands such as "Bhai-Bhai", "5 Bhai", "7Bhai", "Padam Soap" and with numerals 5 and 75, Photostat copies of bills of Dec. 74, Nov. 75, June 74 and Nov. 75 were filed with this affidavit. (iii) Affidavit of another Ram Avtar, general merchant of Ballabgarh to a like effect referring to sales of brands such as "3-Bhai", "2-Bhai, "5-Bhai," "Bhai-Bhai" accompanied by photo state of bills of May 76, Jan. 76, Feb. 73, Mar. 73, Nov. 71, August 75 and Apl. 76. (iv) Affidavit of Suresh Kumar, a kirana merchant of Sona to the effect that he had marketed washing soaps of brand "A-1 Bhai", the instance of a sale as per bill dated 28-12-1974, being enclosed. (v) Affidavit of Trilok Chand, a general merchant of Sowna, that he had been dealing, inter alia, in washing soap of brand name "A-1 Bahi" supported by a bill dated June, 75. (vi) Affidavit of Satish Kumar, a general merchant at Sohna to the like effect, supported by a bill of 1973: (vii) Affidavit of Rishi Lal Gupta, the respondent, explains that the trade mark "Bhai- Bhai" under which he marketed the washing soaps manufactured by him since 1.6.1973 was based on the portraits of his two sons and that this trade mark had been recognized by the public as the goods manufactured by his firm. The approximate annual turnover of these goods stated to be: YearTurnover Rs. 1,500-00 28,000-00 2,76,726.46 He has applied for registration of this trade mark under No. 301, 796 by application dated 28-12-1974. He claims that the word "Bhai" is common to the trade of washing soap and several persons/firms had been using the said word, as shown by the affidavits of these manufacturers which were also filed. The affidavit then proceeded to refer to a litigation (mentioned below) and to reply to the appellant's counter- statement in details. (b) In addition to the above affidavit, the respondent also relied on the following circumstances. The appellants had filed a civil suit in the District Court at Gurgaon against seven defendants, Sood Soap Works, Sagar Soap Factory (New Delhi and Faridabad), Krishna Soap Manufacturing Works, Khanna Soap Mills, Wadhwa General Stores and Ajai Chemicals of Delhi, Faridabad, Palwal and Ballabgarh. He case set out in the plaint was that defendants 1, 2, 3, 4, 5, 6, and 7 had recently started manufacturing washing soap under the trade names "2-Bhai", "3-Bhai" "4- Bhai" and "6-Bhai" respectively and that the plaintiff, on account of such nafarious activities of the defendants, had suffered and will suffer damages and irreparable injury to their reputation as the defendants were putting up efforts to flood the markets with superior washing soaps bearing the impugned trade marks. It was therefore prayed that a perpetual injunction should be issued restraining the defendants from manufacturing or trading in these brands of soap and thus infringing the plaintiff's trade mark. In the written statement in the said suit filed on behalf of the defendants, it was pointed out that the defendants were separate and unconnected persons and one suit against all of them was not maintainable. It was also claimed- "The trade mark 252,835, is not valid trade-mark. Its registration is bad in law. The word "Bhai" is common to the trade of washing soap. There are number of manufacturers who are using the word "Bhai" with soap prefix earlier to the plaintiffs. The plaintiff committed fraud in appropriating the word "Bhai" to themselves and getting the same registered at No. 166, 716. The defendants have decided to get the trade mark 252, 835 rectified." It was claimed that defendant I had been using the trade mark 2-Bhai since December, 1966 (no. 166, 716) defendant 2 had been using the mark 3-Bhai since Dec. 1968 (applied for registration under No. 266, 689 substituted by 287, 439); defendants 4 had been using the trade mark "4-Bhai" for the past 8 months; and defendants 5 had been using the "6-Bhai" mark for the last 3 years. It was claimed that the turnover of these brands had been very huge. The suit had been dismissed on 18.11.1972 against defendants 1 to 6 on the application of the plaintiff seeking the strike off their names accepting the defendants' plea of misjoinder. The plaintiff's application for leave to file fresh suits against the six-defendants was rejected on 13.2.1973. (c) Further, it was pointed out on behalf of the defendant that the trade mark "2- Bhai" had been registered and application had been made on several dates for the registration of the trade marks Nos. 287439, 305779, 316854 and 313850 in respect On the other hand, the appellant put in the following evidence. (i) Affidavit by Lachman Dass, partner of appellant firm to the effect that the firm has been manufacturing and marketing washing soap of brand name "5 Bhai" since 1967 and this trade mark had been duly registered after production of evidence in support thereof, copies enclosed. The marketing was originally done thereby M/s. Subhash Chander Vinod Kumar of Ballabgarh, who functioned as sole distributors for Haryana) by an agreement dated 23-8-1975. M/s. Hitkari Sabun Udyog of Faridabad had been appointed as registered user and had applied for registration in that capacity. The sales of the appellant of this brand of soap increased from Rs. 30,000/- in 1967-68 to about Rs. 24.80 lakhs in 1974-75 and about Rs. 14,00 lakhs between 1-4-76 to 30-9-76, thanks to the efforts taken and moneys spent for popularising the brand name. The firm had filed application before the Registrar (a)for a change in address and (b) for incorporating certain changes in the above trade mark and had also been using the trade mark in different designs and get-ups. The firm had filed a suit for infringement of trade mark and passing off against the applicants in 1975. This was pending adjudication, the respondent having obtained the stay of trial of the suit u/s 111 of the Act. The affidavit proceeded to deal with Rishi Lal Gupta's application for rectification and affidavits in support thereof. It calls on the applicant to prove the sales claimed by them strictly in terms of law and states that the appellant would crave leave to inspect the account books of the application in order to verify the correctness of the sales claimed. (b) Two affidavits of Vinod Kumar, partner of the sole distributor firm to the like effect, giving details of the sales of "5-Bhai" brand made by them, and the purchases effected by them from Hitkaris after they were appointed registered users. 15 bills in support dated 1971 to 1975 were enclosed. (c) An affidavit of Som Prakash, partner of Hitkaris covering the same ground and enclosing the bills showing their sales to the firm of sole distributors. (d) 32 affidavits in Hindi from various dealers to the effect that they have been marketing "5-Bahi" soap since 1971 in large quantities and that the brand has proved very popular some of these gives figures of sales of "5-Bhai" soaps by them; and (e) An affidavit of an artist that the block and design for the soap label "5-Bhai" was prepared by him in 1967. The Registrar heard the counsel for the parties at length. At the hearing both counsel agreed that the sole question to be decided in the case was, as to whether on 28-4-1975, the word 'Bhai' had become public juris in the washing soap trade due to its common use. At the outset, the Registrar made it clear that, while the statements in the plaint in the suit filed in 1972 by the appellant would be relevant and admissible, they would not be regarded as conclusive. He also over ruled a technical objection raised to the admissibility of 30 affidavits filed on behalf of the appellants. He also agreed with the appellants that the mere fact that the trade mark "2-Bhai" had been registered earlier or that subsequent applications had been filed for registration of similar trade marks could not prove the use of such trade marks. Examining the evidence placed before him, the Registrar found that the respondent had discharged the onus of proving using of our trade marks, A. One Bhai, 3-Bhai, 6-Bhai and Bhai-Bhai and concluded that the expression 'Bhai' had become public juris in the washing soap trade as on 28-4-1975. He pointed out that the impugned trade mark despite the disclaimer attached to the numeral 5, possessed a the faith of his mistaken belief. Thirdly, the defendant, the possessor of the legal right, must know of the existence of his own right which is inconsistent with the right claimed by the plaintiff. If he does not know of it his he is in the same position as the plaintiff and the doctrine of acquiescence is founded upon conduct with a knowledge of your legal rights. Fourthly, the defendant, the possessor of the legal right, must know of the plaintiff's mistaken belief of his rights. If he does not, there is nothing which calls upon him to assert his own rights. Lastly, the defendant, the possessor of the legal right, must have encouraged the plaintiff in his expenditure of money or in the other acts which he has done, either directly or by abstaining from assenting his legal right.' In reading that passage, it is perhaps necessary to note (because it makes it at first sight a little more difficult to follow) that the positions of plaintiff and defendant as they are usually met with are there transposed........ "That statement of the law has been quoted many times and has, I think been followed. Lloyd Jacob. J. referred to the case of Proctor v. Bennis (1887) 4 R.P.C. 333, which was a case in this Court and in which Fry L. J. (as he then was) was a member of the court of appeal. I confess that I have found some difficulty....to make up my mind and express a view whether all the five requisites which Fry-J stated in the case of Willmot v. Barber must be present in every case in which it is said that the plaintiff will be deprived of his right to succeed in an action on the ground of acquiescence. All cases (and this is a tribute useful observation to repeat) must be read in the light of the fact of the particular cases". After making a reference to Lord Russel's speech in Canadian Pacific Railway Co. v. The King (1931) A. C. 44 that the doctrine of acquiescence is also sometimes alluded to as the doctrine of acceptable estoppel, the master of the Rolls said; "I think, upon analysis, that (the appellants) argument must, in the end of all, come to this that the owner of a registered trade mark who for substantial period of time had laid by and not asserted his rights has lost those rights, notwithstanding that they are rights conferred upon him by statute. I think, so to hold, at any rate in a case where the length of time involved is no greater than in this case, would be to introduce a wholly novel-nay, revolutionary-doctrine, and I think also that it would be contrary to the principles laid down by the decided case. Indeed (counsel for appellants) himself admitted that mere delay, without more, can be no bar to the exercise by the owner of a registered trade mark of his statutory right." After referring to Fulwood v. Fulwodd (1887) 9 Ch. D. 176 and Vidalodyes v. Levrnstein (1912) 29 RPC 245 where the proprietors had laid by for as long a period as ten years and discussing the facts of the case, the Master of the Rolls concluded. "Quite true, the plaintiff did lay by, did forbear for a substantial time for attempting to asset their rights, knowing (as I think they undoubtedly did) what the defendants were about, but that, in my judgement is all." and agreed with the trial Judge in rejecting the defence of acquiescence. To turn to the Indian decision, in chronological order, first comes Devidass & Co. v. Abboyee Chetty & Co. (AIR 1941 Madras 31) strongly relied on by Shri Anoop Singh Devidas & Co. filed a suit for a declaration that they were entilted to the exclusive use of a certain trade mark and for a perpetual injunction restraining the defendants from using a similar mark. The defence was three fold: (a) concurrent user by the defendants: (b) acquiescence, by the plaintiffs (c) abandonment by the plaintiffs. On the plea of acquiescence, both the trial judge and the appellate court found in favour of the defendants on the basis of ample material which it is unnecessary to set out here. It is enough to set out the reference to this principle, enunciated by Fry. J. in Wilmot v. Barber (1880-15 Ch. D 496) having been applied in the trade mark cases of Rowland v. Michell (1896-13 R.P.C. 464) on on the respondent to prove this. At one time, in England, there was a "three-mark" rule which came to the rescue of such claimants. A mark was deemed to have become public juris if three instances of its user by other in the trade could be proved. See Venkateswaran on Trade Mark 91968) p. 266. But this 'numerical" proof is possible no longer. As pointed out by Kerly (10th Edn. Para 16.46)" names which once carried a distinctive reference to a particular trader, may in consequence of successful piracies.........or for other reason lose it and fall into common use and become public juris" The claimant is such cases has, to let in evidence to show, in the words of Mellish L. J. in the Bureka case (1872-L.R. 7 ch. A 611) that the mark has come into such universal use that nobody can be deceived by the use of it and that nobody can be induced from the use of it to believe that they are buying the goods of the original owner of the mark. The respondent has sought to prove this in two ways (i) by showing that, in the washing soap trade, subsequent to the appellant's registration, a number of traders have been marketing their goods under marks which include a use of the word "Bhai". (ii) by showing that such user had been known to and acquiesced in by the appellant as seen by his conduct in not pursuing the litigation instituted by him at one stage. On the first aspect, the respondent let in two types of evidence. One was to show that the trade mark "Do Bhai" had already been registered and that applications had been made by other manufacturers also to have labels including the word 'Bhai' registered. The Registrar has rightly held that this would not be a tall helpful and that the mere existence of an application for registration would be no evidence of user at all. Shri Anoop Singh also referred to the applications made by the appellants for other trade marks which though including the word "5-Bhai" represented modification thereof and suggested that this showed that the appellants themselves have not stuck to the registered mark. But, as pointed out by Shri Anand rightly, it is not the case that the appellant had discontinued the use of the registered trade mark. The mere fact they applied for registration of other marks as well cannot be evidence of non-user of abandonment or loss of distinctiveness of the registered trade mark. This set of circumstances does not therefore help the respondent. The second type of evidence led by the respondent was, however, more direct and to the point. He has been able to show that a number of dealers in the trade had been marketing washing soaps, from 1971 onwards, in various brand names including the word "Bhai". As pointed out by the Registrar, these relate to the mark "A-1 Bhai", Three Bhai" and "Six Bhai" besides the respondent's mark "Bhai-Bhai". Apart from this, the respondent has also shown that in 1972, the appellant had filed a suit against seven parties for infringement. According to the plaint filed in the suit, these persons had started manufacturing and flooding the market with goods bearing the trade "2-Bhai", "3-Bhai", 4-Bhai" and "6-Bhai" to the deteriment of the plaintiff. If other words, to the knowledge of the appellant, several other persons were manufacturing and selling soaps using the word "Bhai" in their marks. The Registrar has left this altogether out of account towards the end of his order though, in an earlier part of the order, he pointed out that the admission was admissible though not conclusive. I am inclined to accept the contention of Shri Anoop Singh that this admission and stand taken by the appellants as plaintiffs in the suit of 1972 is certainly relevant. The Registrar has left this out of account on the ground that the onus is on the respondent. But, in discharging this onus, it is certainly open to the respondent to point out and rely on an admission made by the appellant and, on the fact that the considered it worthwhile to file suit for infringement against seven traders for using the impugned word in the trade. Faced with this admission, it was for the appellants to have displaced the effect thereof by proving that those;