- (1.) This Appeal has been filed pursuant to a certificate granted by the Calcutta High Court against its judgment and order dated December 16, 1969, in Appeal No. 165 of 1968. The certificate has been given by the High Court under sub-clauses (a) and (c) of clause (1) of Article 133 prior to the substitution of that clause by a new clause (1) by the Constitution (Thirtieth Amendment) Act, 1972. The grounds on which the certificate has been given are (i) that the value of the subject-matter in dispute in the court of the first instance and still in dispute on appeal was and is not less that Rs. 20,000 and that as the judgment in appeal was one of affirmance, the appeal involves a substantial question of law, and (ii) that the case was a fit one for appeal to the Supreme Court. The High Court observed : "The appeal raises a question of great importance in Trade Marks Law, that is to say, whether a proprietor of a trade mark who intends to use it solely by a registered user is entitled to registration of his trade mark, under Sec. 18 of the Trade Marks Act, or to put it differently, do the words 'proposed to be used by him' in Sec. 18 mean 'proposed to be used by the proprietor, his agents and servants only..........The case also involves the question on construction of sub-section (2) of Sec. 48 and consideration of the effect of that sub-section on sub-section (1) of Sec. 18 of the Trade and Merchandise Marks Act, 1958." The questions so posed by the High Court, resolve themselves into the following two questions : (1) Whether a proprietor of a trade mark who intends to use it solely by a registered user is entitled to registration of his trade mark under section 18 of the Trade and Merchandise Marks Act, 1958 (2) Whether by reason of the provisions of sub-section (2) of section 48 of the Trade and Merchandise Marks Act, 1958, the words "proposed to be used by him" in sub-section (1) of section 18 of the said Act mean "proposed to be used by the proprietor, his agents and servants only" or do they also include a proposed user by someone who will get himself registered under section 48(1) of the said Act as a registered user The High Court has further observed : "The matter is of considerable importance to foreign proprietors of trade marks, to registered users of trade marks in general and to the Industry and Commerce at large."
(2.) Before embarking on a discussion of the above questions it will be convenient to relate first the facts which have given rise to this Appeal.
(3.) The Appellant, American Home Products Corporation, is a multi-national corporation incorporated under the laws of the State of Delaware in the United States of America. One of the activities of the Appellant is the manufacture and marketing of pharmaceutical products and drugs. The division of the Appellant which at all relevant times carried on and still carries on this activity is called the "Whitehall Laboratories". Geoffrey Manners and Co. Ltd. (hereinafter referred to as "the Indian Company") is a, company registered as a public limited company under the Indian Companies Act, 1913, and is a public company within the meaning of the Companies Act, 1956. Home Products International Limited is a wholly owned subsidiary of the Appellant and at all material times represented the Appellant in its dealings with foreign distributors, licencees and subsidiaries. In the present case the said Home Products International Limited had carried on correspondence on behalf of the Appellant with the Indian Company. International Chemical Company Limited is another wholly owned subsidiary of the Appellant. Some time prior to 1956, the Appellant acquired a substantial shareholding to the extent of 40 per cent in the Indian Company. In 1956 the Appellant introduced an anti-hystamin drug in the American market under the trade mark 'Dristan' for the treatment of respiratory ailments in the form of a decongestent tablet for symptomatic relief for cold and congestion. The Appellant got the trade mark 'Dristan' registered as a distinctive trade mark in the Trade Marks Register in the United States and subsequently thereto between 1957 to 1961 in about 39 other foreign countries. These countries included Great Britain, Ireland, Belgium Denmark, France, Holland and other countries in the Continent of Europe, Canada, Mexico, and several countries in South America, Asia and Africa.;