UMESH CHANDRA BANERJEE, J. - (1.) Both the English Act of 1938 (Trade Marks Act, 1938) and the Indian Act of 1958 (The Trade and Merchandise Marks Act, 1958) are in pari materia with each other in regard to the availability of a defence of special circumstances in the matter of an application for removal of a registered mark from the register of marks. For convenience's sake Ss. 26(1) and 26(3) of the English Act and Ss. 46(1)(b) and 46(3) of the Indian Act are set out hereunder. "26.(1) Subject to the provisions of the next succeeding Section, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application by any person aggrieved to the Court or, at the option of the applicant and subject to the provisions of Section fifty-four of this Act, to the Registrar, on the ground either- (a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him, and that there has in fact been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to the date one month before the date of the application; or (b) that up to the date one month before the date of the application a continuous period of five years or longer elapsed during which the trade mark was a registered trade mark and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being :- Provided that (except where the applicant has been permitted under Sub-Section.(2) of Section twelve of this Act to register an identical or nearly resembling trade mark in respect of the goods in question or where the tribunal is of opinion that he might properly be permitted so to register such a trade mark) the tribunal may refuse an application made under paragraph (a) or (b) of this Sub-Section in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered. (2) *********************************************************************************** (3) An applicant shall not be entitled to rely for the purposes of paragraph (b) of Sub-Section (1) or for the purposes of Sub-Section (2), of this Section on any non-use of a trade mark that is shown to have been due to special circumstances in the trade and not to any intention not to use or to abandon the trade mark in relation to the goods to which the application relates. "46. Removal from register and imposition of Limitations on ground of non-use (1). Subject to the provisions of Sec. 47, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved on the ground either - (a) that the trade mark was registered without any bona fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of Sec. 45 apply, by the company concerned, and that there has, in fact, been no bona fide use of the trade mark in relation to those goods by any proprietor thereof for the time being up to a date one month before the date of the application; or (b) that up to a date one month before the date of the application, a continuous period of five years or longer has elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor thereof for the time being; Provided that, except where the applicant has been permitted under Sub-Section (3) of Sec. 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the Tribunal is of opinion that he might properly be permitted so to register such a trade mark, the Tribunal may refuse an application under Cl. (a) or (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered. (2)************************************************************************************ (3) An applicant shall not be entitled to rely for the purpose of Cl. (b) of Sub-Section (1) or for the purpose of Sub-Section (2) on any nonuse of a trade mark which is shown to have been due to special circumstances in trade and not to any intention to abandon or not to use the trade mark in relation to the goods to which the application relates."
(2.) On perusal of the above-noted two statutory provisions therefor, it appears that the legislative intent in both the statutes are identical and to the effect that in the event of there being a non-user of a registered trade mark or in the event there is no bona fide user thereof by the proprietor for a period of 61 months, the proprietor cannot keep a mark duly registered in the register of marks excepting however, that in the event of there being any special circumstances existing, the proprietor of the marks will have a good defence in regard thereto.
(3.) The phrase "special circumstances in the trade" was considered in Manus v. Fullwood and Bland Ltd., (1949) 66 RPC 71, when Evershed L.J. delivered a judgment in which Lord Greens and Somervell L.J. concurred. At page 79 Evershed L.J. stated : "It is not in my view necessary that the special circumstances should be such as to afflict all traders equally or indeed to afflict all of them at all, It is important to my mind to note that the relevant phrase is used in contrast to that which immediately follows :- "and not to any intention not to use or to abandon the trademark'. In that context it seems to me (without attempting any precise definition) that the words must be taken to refer to circumstances which are 'special' in the sense of being peculiar or abnormal and which are experienced by persons engaged in a particular trade as the result of the working of some external forces as distinct from the voluntary acts of any individual trader. According to such a test no less than (in my view) the ordinary and common sense meaning of the words, the impact of war conditions making impracticable the ordinary usages of international trade would amount to special circumstances in the trade; and if the non-user of his mark by a particular trader was in fact due to the effect upon his business of those conditions, then he would in my view be within the protection of Sub-Section (3)." The relevant facts here are as follows : From 1935 until the outbreak of war, the Bali Company imported brassieres into the United Kingdom under its trade mark BALI. But then, as the result of the war or Government Orders, it stopped importing any of these goods. On 9/11/1959 those orders were withdrawn and the goods were put on open general licence, as the result of which they could from that date be imported without restriction. The Bali Company did not start importing those goods again until well after April, 1960. Thus for five years and one month before the date of this application for rectification on the 13/05/1960, no use was made of the registered trade mark BALI, and the case therefore falls under Section 26(1), as the result of which the trade mark may be taken off the register, unless there are "special circumstances" within Section 26(3). It is not disputed that the war and, apart from a token import scheme, the Government Orders which I have mentioned constituted "special circumstances.";