MAHOMED OOMER MAHOMED NOORULLA SAHIB Vs. S M NOORUDDIN

JUDGEMENT

(1.) THIS appeal is a continuation of a rather chequered and on the whole unfortunate litigation. As far back as 21-8-1942, the respondent made an application to the Registrar of Trade Marks for registration of his trade mark "hautin" which he wanted to use in connection with the sole of bidis. On 31-12-1948, the Registrar directed the registration of the trade mark, but limited it to Trichinopnly and Tanjore districts. The respondent instead of being content with that decision, committed the folly of appealing against that decision, and the appeal came before Snail, J. and that learned Judge on 4-9-1950, remand-ed the matter back to the Registrar and asked him to consider whether he should not register the respondent's trade mark without limitation. Against that decision the appellant, who has opposed the registration, came in appeal to this Court and the main ground of appeal was that Shah, J, had refused to deal with his cross-objections as in the opinion of the learned Judge the cross-objections were barred. This Court delivering its judgment on 13-9-1951 took the view that Shah, J. was in error in coming to the conclusion that the cross-objections of the appellant were not maintainable, but instead of sending the matter back to Shah, J. this Court sent the matter back to the Registrar and asked him to consider the whole matter 'de novo'.

(2.) NOW, throughout these proceedings a certain agreement, on which the appellant relied, had as--assumcd considerable importance. This was an agreement dated 7-11-1937, and the effect of this agreement was that the respondent had admitted the right and title of the appellant to this particular mark HAUTIN, had admitted the fact that he had wrongfully made use of this mark and agreed to confine the user of his 'bidis' with this mark to the city of Trichinopoly and even conceded the right to the appellant to withdraw this concession even as far as the city of Trichinopoly was concerned. The Registrar had held this agreement proved. When the matter came before us, the respondent contended that he had not been given an opportunity to lead evidence to satisfy the Registrar that the agreement was not a genuine agreement. Therefore, when we sent the matter back to the Registrar we directed him to take all the necessary evidence that might be led by the parties with regard to the genuineness of this agreement. The Registrar again came to the conclusion that the agreement was genuine, and basing his decision largely on this agreement he directed that the mark should be registered only for the city of Trichino-poly. The Registrar also came to the conclusion that if any higher Court were to take the view that the agreement was not genuine, then the respondent had established by evidence of user that he had a right to registration in eight districts, and the Registrar expressed his opinion that if the agreement was not held proved, he would have registered the trade mark in respect of the eight districts. Against this decision the respondent went in appeal to Tendolkar, I. and the appellant filed cross-objections and Tendolkar, J. remanded the matter back to the Registrar and the decision of Tendolkar, J. was substantially based on two grounds. The learned judge took the view that the Registrar had decided mainly on the question of the genuineness of the agreement. According to the learned judge what the Registrar should have considered was whether the trade mark was likely to deceive or cause confusion. That was the only circumstance the Registrar should have taken into consideration and therefore the learned Judge thought that the Registrar should reconsider the matter ignoring the existence of the agreement. It also appears that the Registrar in the course of his long judgment adverted to the fact that in the statement of the case submitted by the respondent along with his application he had referred to the extent of the sale of his 'bidis' and also the large amount that he had spent on advertisement and in giving the figures which he did he had grossly exaggerated both the extent of his sales and the amount spent by him on the advertisement, and the Registrar expressed the opinion that if he had followed the principles well established in English Courts he would have held that the respondent had mane himself disentitled to any registration by reason ol the false and extravagant statements that be made. Tendolkar, J. thought that there was no reason why this salutary principle should only be applied in England and not in India, and therefore he asked the Registrar to consider whether the respondent had disentitled himself to relief by reason of the gross exaggerations indulged in by him, accepting the principle of English law as applicable jn India. Against this order of Tendolkar, J. the appellant has come in appeal, and the question that we have to consider is whether Tendolkar, J. should have remanded the matter to the Registrar or should have disposed of the appeal preferred by the respondent and the cross-objections preferred by the appellant himself.

(3.) THE main question that we have to consider is whether the learned Judge was right in the view that he took that the Registrar was not entitled to take into consideration the agreement of 7-11-1937, at all, and Mr, Desai has strenuously argued that the view expressed by the learned Judge is the right view and the only possible view looking to the provisions of the Trade Marks Act.