Bijayesh Mukherji, J. - (1.) This appeal by Caprihans (India) Private Limited (for short, "Caprihans" hereafter) under section 109, sub-section 2, of the Trade and Merchandise Marks Act 43 of 1958 (shortened hereafter into "the 1958 Act") from a decision bearing date December 20, 1965, of the Registrar of Trade Marks is put in two ways :
(2.) First, the trade mark, bearing number 153972 and consisting of the sole word "Formica", registered on May 13, 1952, by Formica Company, in Class 19* for non-metallic laminated materials for use in building and construction, be taken off the Register of Trade Marks kept at the Trades Mark Registry for two reasons. One. 'Formica' is compounded of two words "'For'" and "mica", meaning plainly enough : substitute of mica.** But it is in realm of admissions that "Formica" has no connexion whatever with mica, a mineral which does not enter into the manufacture of goods this mark represents. Ergo, the likelihood of deception and confusion,. within the meaning of section 8, clause (a), of the Trade Marks Act 5 of 1940 (for short, "the 1940 Act" hereafter), the then law, corresponding to section II, clause (a), of "the 1958 Act", has always been there. ("The 1958 Act" came into force on November 25, 1959). Two, the entry of "formica" has been made in the register without sufficient cause, within the meaning of section 46, sub-section 2 of "the 1940 Act", corresponding to section 56, sub-section 2 of "the 1958 Act".
(3.) Second, the impugned registration infracts section 39 of "the 1940 Act", corresponding to section 48 of "the 1958 Act", in that whereas in their application bearing date May 13, 1952, for registration, read with their letter dated September 13, 1952, the stance taken by the Formica Company is: "The Trade Mark "Formica" has been used by the Applicants (i.e. the Formica Company) in India since the year 1947", the stance taken during the carriage of the rectification proceedings at the instance of "Caprihans" is: "Between the years 1947 & 1957 'Formica' laminates manufactured in England were distributed in India by Thomas De La Rue and Company Limited."-- with whom a licence agreement was entered into in 1946: vide paragraph 5 (c) and (d) of the affidavit dated August 26, 1964, of Rankin, filed September 8, 1964, before the Registrar as evidence in support of registration which "Caprihans" was out to do away with, by their application bearing date June 13, 1964, for rectification of the register by removal of the trade mark "Formica" therefrom,--an application which was filed on June 17, 1963, and numbered as Rect. No. Cal.--48.;