Das, J. - (1.) This is an appeal from the judgment and order pronounced on 23-8-1951 by a Division Bench of the High Court at Calcutta in Appeal No. 112 of 1950 reversing the decision of the Registrar of Trade Marks dated 24-3-1950 whereby he had rectified the register by inserting a disclaimer of the word "Shree" forming part of the respondent company's registered trade mark No. 3815.
(2.) The material facts are as follows:In the year 1897 one Durga Charan Rakhit (since deceased) adopted as his trade mark in respect of the ghee produced and marketed by him a device which, with some slight modification not materially altering its essential features, was, on the application of the respondent company, registered as its trade mark No. 3815. That mark was and is a device consisting of the word 'Shree" written on the top in bold Bengali character, having below it an ornamental figure with the word "Shree" written in the centre in small Deva Nagri character, the word "Trade" written in English in an inclined manner on the left hand side of the ornamental figure and the word "MARK" written in English in an inclined manner on the right hand side of the ornamental figure and the words "Shree Durga Charan Rakhit" written at the bottom in Bengali characters. The ornamental figure referred to above consists of a triangle over which is another inverted triangle and in the centre the word "Shree" in small Deva Nagri character as mentioned above, the whole of the said ornamental figure being enclosed in a circle outside which are twelve ornamental petals. In the affidavit affirmed by Malli Nath Rakhit, o a director of the respondent company and filed in these proceedings, this mark has throughout been referred to as "the said mark SREE". The said Durga Charan Rakhit having subsequently been adjudged insolvent all his properties including the goodwill of his ghee business and the said mark vested in the Official Assignee of Calcutta. On 15-1-1915 the goodwill of the said business including the said mark was sold by the Official Assignee by public auction and one Hem Dev Konch, a minor, was declared as the highest bidder and purchaser. A notice of the said sale was advertised in the Calcutta Exchange Gazette on 25-1-1915 by an attorney acting on behalf of the purchaser. On 27-1-1915 the said sale was confirmed by a Deed of assignment executed by the Official Assignee. On 22-8-1917 Haripriya Konch, the father and natural guardian of the minor purchaser, acting as such and on behalf of the minor, conveyed to one Ashok Chandra Rakhit, son of the said Durga Charan Rakhit the goodwill of the business including the right, title and interest in the said mark and the said Ashok Chandra Rakhit carried on the said business and marketed ghee under the said mark. On 15-9-1926 the said Ashok Chandra. Rakhit caused the fact of his ownership of the said mark to be advertised in the Calcutta Exchange Gazette and on 22-12-1926 caused to be registered with the Registrar of Assurances of Calcutta a declaration of his ownership of the said mark. In 1932 the respondent company was incorporated as a private limited company under the Indian Companies Act, 1913 and the said Ashok Chandra Rakhit assigned the goodwill of his said business and his right title and interest in the said mark to the respondent company. In 1933 the respondent company's said mark was registered in the Trade Mark Registry at Hong-Kong under the provisions of the Hong-Kong Trade Marks Ordinance, 1909 and the fact of such registration was published in the Straits Settlements Government Gazette. In 1934 two persons, Rajendra Prasad and Dilliram, were, on complaint made on behalf of the respondent company, convicted by the Chief Presidency Magistrate of Calcutta under S. 486, Penal Code, for infringing the said mark and such conviction was upheld by the Calcutta High Court. In 1935 one Chiranjilal Sharma was, on like complaint, convicted by the Chief Presidency Magistrate for infringement of the said mark. The volume of the respondent company's business in ghee done under the said mark is said to be considerable, the annual turnover varying from Rs. 10,00,000/- to Rs. 15,00,000/ -, and the annual cost of advertisement being anything between Rs. 10,000/and Rs. 39,000 /-. It is also said that the ghee marketed by the respondent company and its predecessors is well known by the said mark and is always asked for under the name "Shree".
(3.) The Indian Trade Marks Act, 1940 having been brought into force in 1942 the respondent company on 21-8-1942 filed an application for the registration of its said mark under the Act. By his letter dated 29-11-1943 the Registrar proposed that there should be a disclaimer of the word "Shree" The respondent company by its agents' letter dated 15-2-l944 intimated to the Registrar that it could not agree to the proposal as "the trade mark Shree is very important in the device" and "the ghee is commonly designated by the trade mark Shree". The respondent company also submitted an affidavit affirmed by one Bidyut Bikash Rakshit, a director of the respondent company, in support of its objection. The Registrar not having then pressed his proposal for disclaimer the respondent company's said mark was duly registered as trade mark No. 3815.;