Bijayesh Mukherji, J.@mdashThis appeal by Caprihans (India) Private Limited (for short, "Caprihans" hereafter) u/s 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 : 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".
2. 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 (ie. 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.
3. Indeed, these are the only two points on which Mr. Shah has opened the appeal before me. But they are the bare bones of the contentions Mr. Shah has raised. He ramifies them, with clarity and lucidity, all his own, for which I am indebted to him. But it will hardly be necessary to notice all he says, in the view I take. More of which hereafter: paragraph 19 et seq and paragraph 48 infra.
4. The findings come to by the Registrar in his decision bearing date December 20, 1965, in so far as they are material now, may be summarised as under-
1. No evidence "Caprihans" lead in order to prove what meaning those people of average intelligence, who use "Formica" or come by such a name in the course of their doings day by day, commonly attach to the word, and whether or no the first impression of such ones is to regard spontaneously the goods, this mark "Formica" represents, as substitutes for mica.
2. The maxim res ipsa loquitur, cited on behalf of "Caprihans" is noticed, but apparently not thought much of.
3. In absence of any evidence as to what immediate reaction "Formica" will foster upon the ordinary public in general, the meaning of the word, "a dictionary word", is determined by reference to standard dictionaries in the manner following:
A. Entomological--A genus typical of Formicidae; the ant.
B. Electrical--A trade mark applied to a laminated phenolic insulating material.
C. Falconry--A kind of abscess, ulcer or excrescence occurring especially in a hawk''s bill or a dog''s ears.
4. Ergo, the conclusion that "Formica" will connote to the public the goods, in relation to which the word is used as a trade mark, being substitutes for mica, which admittedly they are not, cannot be justified; nor can the onus upon "Caprihans" of showing the contrary be said to have been discharged.
5. This is all that the Registrar finds on the first point on which the appeal has been opened before me, adding on another point taken before him: "that the mark ''Formica'' was not, at the commencement of these proceedings, distinctive of the Registered Proprietors'' goods"--"...............Shri Shah did not press it as he mainly relied on ground (i)." (Just the ground complaining of infraction of section 8, clause (a), of "the 1940 Act" and of sec. 11, clause (a), of "the 1958 Act": the ground of the likelihood of deception and confusion, as set out in paragraph 2 ante.)
Thus, having noted that Mr. Shah does not press before him the point on lack of distinctiveness, the Registrar concludes: "Nevertheless, 1 may state that ''Formica'' is a dictionary word and its meanings given in the dictionaries.....do not warrant the conclusion that on the date of these proceedings it was not distinctive of the goods of the Registered Proprietors."
6. On the second point, on which the instant appeal is rested, the Registrar notices the rival contentions of counsel for "Caprihans" and the registered proprietors, Mr. Shah and Mr. Ojha, and disposes of them as under: "however, since the matters urged by Shri Shah are not grounds taken in the application for rectification, I do not think it is proper for me to consider them at this stage. Confining myself, as I should, to the application for rectification, I am unable to accept the submission of Shri Shah that I should exercise my discretion against the Registered Proprietor."
7. Such being the findings of the Registrar, naturally he dismiss the application by "Caprihans" for rectification of the register by having the Trade Mark "Formica" expunged therefrom. Hence this appeal by "Caprihans.";
8. To such appeal, the Registrar of Trade Marks is one of the two respondents : the first one. But respondent or no respondent, u/s 112, sub-section 1 of "the 1958 Act",
The Registrar shall have the right to appear and be heard--
*****
*****
(b) in any appeal to the High Court from an order of the Registrar on an application for registration of a trade mark--(i) which is not opposed, and the application is either refused by the Registrar or is accepted by him subject to any amendments, modifications, conditions or limitations, or (ii) which has been opposed and the Registrar considers that his appearance is necessary in the public interest....
The case on hand, however, is not An application for registration of a trade mark. Such application was by the Formica Company on May 13, 1952, u/s 14, sub-section 1 of "the 1940 Act", corresponding to section 18, sub-section 1 of "the 1958 Act". The case on hand is an application bearing date June 13, 1963, and filed on June 1-7, 1963, for rectification of the register, by cancelling the registration of the trade mark "Formica", had with effect from May 13, 1952. Necessarily, therefore, it is an application u/s 56 of "the 1958 Act", read with rule 94 of the Trade and Merchandise Marks Rules 1959, made by the Central Government by virtue of its rulemaking powers u/s 133 of "the 1958 Act" and other enabling provisions. Thus, in an. appeal, the like of which I am seized of, the Registrar''s "right to appear and be heard", in terms of section 112, sub-section 1, clause (b), does not look so obvious. This is, however, subject to what section 112, sub-section 1 of "the 1958 Act" concludes with :
...and the Registrar shall appear in any case if so directed by the High Court." But the Registrar having been impleaded as a respondent from the very start, there was hardly any opportunity for the High Court to direct him to appear in terms of Section 112, though qua respondent a notice of appeal must have been served on him, and his appearance through counsel, as I see before me, seems to be ascribable to service of such notice. But should the Registrar be impleaded at all as a respondent to an appeal from his decision? The matter needs looking into a little. The "Rules under the Trade Marks Act, 1940", at page 358 of the Rules of this Court on the Original Side, volume 1, 5th edition, are no more. Rule 80, sub-rule (a), thereof, prescribed inter alia: "The Registrar of Trade Marks shall be made a respondent in such appeals." The old rules have since been replaced by a new set of rules made by this Court u/s 110 of "the 1958 Act". Such rules do not contain any provision, the like of which was there in old rule 80, sub-rule (a). On the contrary, Rule 11 of the new rules provides : "In all matters or proceedings mentioned in clauses (a) and (b) of Section 112 (sub-section 1) of the Act ("the 1958 Act"), notice shall be given to the Registrar. In any other matter or proceeding the Court may direct a notice to be issued to the Registrar". To provide so is not to provide that the Registrar shall be made a respondent to an appeal from his decision. More, the appeal on hand is not, and cannot be, one of the matters or proceedings mentioned in clause (b) of sub-section 1 of section 112, clause (a) whereof having no manner of application here. So, under the new rule, rule 11, no notice even has to be given to the Registrar, far from the Registrar being made a respondent. The '' residuary provision in the new rule, rule 11, is of course, there: "in any other matter or proceeding the Court may direct a notice to be issued to the Registrar." But this is simply a rehash of what section 112, sub-section 1, concludes with: "The Registrar shall appear in any case if so directed by the court." So, this brings me full-circle back to the point I have mentioned earlier: the Registrar having been made a respondent from the very beginning, this court had had no opportunity to direct him to appear in terms of section 112, sub-section 1, read with rule 11 of the rules made by the court u/s 110 of "the 1958 Act". Such then appears to be the position, unless I, a trio in the realm of trade mark law, have overlooked any material provision. The Registrar being made a respondent does not therefore, appear to be warranted by the statute and the statutory instrument. Yet, no matter how he appears the fact that such a one, having a great experience behind him, does appear, with a view to assisting the court, certainly not with a view to supporting his decision under appeal, is to be welcomed.
9. The other respondent--the second one--to this appeal is Formica International Limited. Here is a running history of devolutions from the Formica Company, on whose application bearing date May 13, 1952, "Formica" was put to registration as a trade mark, to Formica International Limited, proceeded against before the Registrar and also figuring as respondent in this appeal :
1. April 16, 1956..........American Cynamid Company (USA) registered as subsequent proprietor of the trade mark "Formica": vide the deed of assignment of even date.;
2. December 21, 1956----Formica Corporation- (USA) registered as such: vide the deed of assignment of even date.
3. September 19,1957.....Formica Limited (UK) of De La Rue House, 84186 Regent Street, London, registered as such : vide the deed of assignment of even date.
4. June 30, 1959 Pursuant to a request made on June 30, 1959, the name of the registered proprietors was changed from Formica Limited (UK) to Formica International Limited (UK), such change having been an accomplished fact by then, made as it was by "Special Resolution and with the Authority of the Board of Trade" on April 2, 1959 : vide the certificate of incorporation over the signature of the Assistant Registrar of Companies, UK, in the record of the Registrar on "Regd. Trade Mark No. 153972 under Rectn. No, Cal-48.
10. Such then is the history, in brief, of assignment one after another, of the trade mark "Formica", with good will, (i) by Formica Company to American Cynamid Company, (ii) by American Cynamid Company to Formica Corporation, and (iii) by Formica Corporation to Formica Limited, later changed to Formica International Limited,--facts which are plain to be seen from the true copy of the entries iii the register of trade marks on trade mark No. 153972, that is, "Formica", a copy which is certified by Deputy Registrar of Trade Marks A. B. Acharya, one who is authorized u/s 4, sub-section 2 of "the 1958 Act" to discharge this function of the Registrar. A copy as this is sealed as well with the seal of the Trade Mark Registry. So soon as all this is said, sucr entries become automatic evidence, under ''section 115 of "the 1958 Act", without further proof or production of. the original. It is, therefore, clear on the basis of these entries in the register of trade marks, the true copy of which, duly certified and sealed, has been produced before me,--and that apart, part.1 of the paper-book at pages 3-6 reproduces just these entries--, how Formica Company got themselves registered as proprietors of the trade mark "Formica" on May 13, 1952, and how Formica International Limited, now respondent, were proceeded against by "Caprihans" in June 1963 for rectification of the register by expunction of the aforesaid mark therefrom.
11. Suffice it now to be posted with this much of history of the trade mark "Formica". A little more remains to be noticed yet. See paragraph 45 infra. I pass that by for the time being. What however I cannot pass by, as statements of facts, are two other entries on "Formica" in the register, set out below, one after another:
I. Renewal.
"Registration renewed for a period of 15 years from (the) 13th May 1959".: vide also page 5 of the paper-book, part I.
Fifteen years from 1959 will be
1974.
II/ Date of registration of user.
"No. 153972 (i.e. "Formica")
|
Date of Registration of the user: Name, Address and Description. Period |
12th November, 1962. Formica India Limited. 9, Wallace Street, Fort, Bombay. Up to 11th November, 19(39 or till the Registered user. Agreement remains in force, whichever is earlier." :ibid. |
12. Apart from "Statement of Case" by "Caprihans" and "Counter-statement" by Formica International Limited, the registered proprietors of the trade mark "Formica", there are affidavits to and fro--
(The judgment then lists such affidavits and proceeds:)
13. It is hardly necessary to wade through all the allegations and counter allegations the deponents bandy with one another by such affidavits. But two important features must be noticed, if only to understand the reason of this trade mark litigation, as also the litigation itself on its great outlines.
14. One, on April 29, 1961, "Caprihans" put in an application, bearing No. 202142, for registration of their trade mark "Sunmica" in Class 19* for decorative laminated boards made of plastics for use in buildings or for decoration. On January 4, 1962, "Caprihans" put in another application, bearing No. 206617, for registration of "Sunmica" again as a trade mark in Class 20** for furniture made of plastics. Formica International Limited opposed both the applications, their opposition having been numbered Bom.-- 162 and Bom.--239. So they did on the foot of their own trade mark No. 153972, "Formica", to which, according to them, "Sunmica" "is similar of confusingly similar." "Caprihans", therefore, claim, and very rightly too, that they are, by virtue of an entry made in, and remaining on, the register, of "Formica", persons aggrieved, within the meaning of section 56, sub-section 2 of "the 1958 Act". Whether such entry has been made with or without sufficient cause: the second branch of Mr. Shah''s first contention--paragraph 2 ante: will be considered hereafter (paragraph 83 infra). The Registrar upholds this claim of "Caprihans" that they are "persons aggrieved" and that they have, therefore, locus standi to raise the rectification proceedings they did. So he'' does. on his own, and on the concession, counsel for Formica International Limited makes before him. Mr. Shankar Ghose, who appears for this respondent, Formica International Limited, and has assisted me with an address, as clear and lucid as Mr. Shah''s (for which I express my indebtedness to him also), does not assail this finding of the Registrar. Be that as it may, the reason of this trade mark litigation appears to lie here : "By opposition numbered Bom.--162 and Bom.--239, you stand against registration of our trade mark ''Sunmica'' in Classes 19 and 20. And we riposte by petitioning the Registrar to take your trade mark ''Formica'' in Class 19 off the register. Having been in the same trade you are, we have the right to riposte so."--a stance which appears to be quite in consonance with (i) In re: Powell''s Trade Mark, 1894 AC 8.
15. Two, whereas "Caprihans" want to bring home, by their affidavits. the fact that "Formica" is nothing but the compounding of two words: "For" and "mica", meaning what the two words just say: a. substitute for mica, which the goods, the trade mark "Formica" stands for, are not, and which, therefore, gives rise to the likelihood of deception and confusion; Formica" International Limited emphasize, by their affidavits, that "Formica", a single word, a "purely meaningless" word at that, at the time of its adoption (when it is coined for the first time) as much as today, does not mean, and has never meant, anything, save the commercial origin of the products marketed under such mark, and that there is not, therefore, the remotest likelihood of deception and confusion. Broadly speaking, the lie of the dispute is this, on the basis of pleadings and affidavit--evidence, the pleadings steering clear of the second point on which Mr. Shah has rested the appeal before me, (1) as correctly pointed out by tre Registrar in his decision (2) under appeal.
16. It is time now to examine the appeal on merits in the light of grounds on which it is rested. The first ground having been sub-divided into two, as noticed, (3) there arise really three points for determination : One, the likelihood of deception and confusion caused by the trade mark "Formica".
Two, entry of such trade mark in the register without sufficient cause. Three, a misstatement in the original application bearing date May 13, 1952, for registration of the trade mark "Formica": that Formica Company, the applicants, have been using it in India since 1947, though that is not so, Thomas De La Rue and ''Company, Ltd. having distributed in India "Formica" laminates manufactured in England, between 1947 and 1957.
17. Before proceeding further, it is necessary to call attention to two sections of "the 1958 Act", the first of which is section 136, sub-section 2. It bears, in so far as it is material here: "... registration... made... under the Trade Marks Act 1940 shall, if in force at the commencement of this Act, continue in force and have effect as if made... under the corresponding provision of this Act." ''
Registration of "Formica" was made u/s 14, sub-section 1 of "the 1940 Act" with effect from May 13, 1952. Such registration was in force on November 25, 1959, the date of commencement of "the 1958 Act". Indeed, registration as this having been renewed for a period of fifteen years from May 13, 1959*, it runs and shall continue to run until May 12, 1974, or thereabouts. In terms of section 136, sub-section 2, therefore, such registration does continue in force, and, what is more, shall have effect as if made under the corresponding provision of "the 1958 Act", to wit, section 18, subsection 4, read with sub-section 1. That being so, "the 1958 Act" governs this litigation--a conclusion which is, as indeed it has been, beyond controversy.
18. The other section of "the 1958 Act", which calls attention, is section 32. It bears, to quote only the portion material in the context of facts here: "......in all legal proceedings relating to a trade mark registered in Part A of the register (including applications u/s 56) the original registration of the trade mark shall, after the expiration of seven years from the date of such registration, be taken to be valid in all respects unless it is proved--(a) that the original registration was obtained by fraud, or (b) that the trade mark was registered in contravention of the provisions of section 11 or offends against the provisions of that section on the date of commencement of the proceedings; or (c) that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor". Now, translate the provisions of this section : section 32: to the facts that obtain in the appeal before me: One, "Caprihan''s" is an application u/s 56 for rectification of the register by expunction of the trade mark "Formica".
Two, an application as this bears date June 13, 1963, filed though it was four days later, to be exact, on June 17, 1963.
Three, such application by "Caprihans" do foster legal proceedings relating to the trade mark "Formica".
Four, the aforesaid trade mark was registered, with effect from May 13, 1952, in the register, which, in terms of sections 6 and 7, read with section 9, sub-sections 1, 2, 3 and 5, and section 136, sub-section 2 of "the 1958 Act" must be taken as Part A of the register. So many provisions lumped together perhaps look none too nice. Hence this little may be added. Part B of the register is new : section 7, sub-section 3. The register existing on November 25, 1959, the date of commencement of "the 1958 Act", had the trade mark "Formica" entered on it, effective right from May 13, 1952. So soon as "the 1958 Act" came into force, that is to say, on November 25, 1959, this "pre-1958 Act" register, with "Formica" on its pages, became incorporated with and formed part of Part A of the register, comprising all trade marks entered in this "pre-1958 Act" register, existing on November 25, 1959. "Formica" was one such trade mark entered so, with effect from May 13, 1952 and existing too on the aforesaid date. On top of all this, the legal fiction prescribed by section 136, sub-section 2, is there. By virtue thereof, registration of "Formica", made under "the 1940 ''Act` --registration which is in force at the commencement of "the 1958 Act"--shall continue in force and have effect as if made (though not actually made) under "the 1958 Act". You are thus bidden to treat an imaginary state of affairs, such as "Formica" having not in fact been registered under "the 1958 Act", as real, that is to say, that it was registered under "the 1958 Act". Once the command of this "deeming" provision is that, you must also imagine as real the consequences and incidents which, if the putative statement of affairs had in fact existed, must reasonably have flowed from it. Not that you can permit your imagination to boggle when it comes to inevitable corollaries of that state of affairs and one of the inevitable corollaries is that registration of "Formica", by such "deeming" provision, under "the 1953 Act", at once places it in Part A of the register, in terms of section 9, subsections 1, 2, 3 and 5. So, this ingredient of section 32 of "the 1958 Act", that "Formica" is a trade mark registered in Fart A of the register : is very much present here. It only remains for me to add that I have done no more than copied the language of Lord Asquith, with a little adaptation to suit the context here, in order to bring home the law that full effect should be given to a legal fiction provided for by a statute--language in which his Lordship expresses himself in (2) East End Dwellings Co. Ltd. v. Finsbury Borough Council, 1952 AC 109.
Five, seven years from May 13, 1952, the date of registration of "Formica", expired on May 13, 1959, "Capri-hans" having filed '' their application for rectification, to say so at the risk of repetition, on June 17, 1963--a little more than eleven years after "Formica''s" registration.
Ergo, the original registration of "Formica" shall be taken to be valid in all respects. The expression: "shall be taken to be valid in all respects": has an importance all its own. The original registration may not be valid, in fact and at law, in this respect or that. Yet it shall be taken to be valid in all respects. A legal fiction again by which you are bidden to treat it: the original registration of "Formica": to be valid, though it may not be in this respect or that. That is the unequivocal mandate of section 32 doing a duty which a_ statute of" repose does, quietening title to a trade mark, supplying deficiency of proof where time has obliterated the records of past transactions, aiding the proprietor who has been carrying on business with the trade mark attached to his goods, thereby earning considerable good will, over the years, and refusing to lend assistance to the sleepy who wake up after seven years, having lain by so long and in spite of, it may be taken for granted, advertisements having gone out at the '' appropriate time, inviting objections to the registration of trade marks. A mandate as this rests on good sense and the wholesome principle that law will not enforce stale claims suffered to lie dormant for a great length of time: so many as seven years about the title to a trade mark, in the business world, where things move speedily enough and seven years count so much.
19. But this mandate is subject to three exceptions prescribed by tips very section: section 32 and these three exceptions are dealt with in the succeeding five paragraphs.
20. First: prove fraud and get away from this provision of repose, the reason being that time alone is no answer to fraud that is at the root of the original registration and pollutes it.
21. Second: prove infraction of section 11 on the date of registration (here May 13, 1952) and before, the words in the first part of section 32, clause (b), being: "that the trade mark was registered in contravention of the provisions of section 11;"
prove in the alternative that the trade mark so registered (here "Formica") offends, as the words in the second part of section 32 are, against section 11 on the date of commencement of the proceedings (here the rectification proceedings by "Caprihans" on June 17, 1963). So, post-registration facts do come in here. The same principle is discernible in this second exception as in the first: that time is no answer to what the statute, by section 11, lays down as absolute prohibition. A mark falling under any one of the five classes : (a) to (e) of section 11: shall not be registered as a trade mark. That is the absolute prohibition.. So lapse of seven years and even more cannot matter. Tre reason appears to be plain. Time alone cannot avoid what the statute voids. But the scope of inquiry in the case on hand is not as large as that, embracing clauses (a) to (e) of section 11. How Mr. Shah rests the appeal has been noticed (5). The likelihood of deception and confusion is inherent in the very word "Formica", a compounding of "For" and "mica", the plain meaning of which is a substitute for mica, wrieh the goods this mark represents are not. That is the case made out by "Caprihans" in paragraph 8, clause (a), of their "Statement of Case" at page 20 of the paper-book : "8.....though the period of 7 years has elapsed from the. date of its registration yet it cannot be taken to be valid on account of the following grounds :--a. the trade mark was registered in contravention of the provision of" Section 11 and or offends against the provision of that section on the date of, commencement of the proceedings...."--just in line with the averment in the fourth paragraph of
"Caprihan''s" application for rectification: Rect. No. Cal.-48, where, glibly enough, clauses (a), (b) and'' (c) of section 11 of "the 1958 Act" are set out, but what is actually relied upon here and below is breach of clause (a) alone. So, the only clause that needs looking into is section 11''s clause (a), which bears:
11. A mark--
(a) the use of which would be likely to deceive or cause confusion;
*** ***shall not be registered as a trade mark.
Thus, in spite of the provision of repose, as section 32 of "the 1968 Act" is, victory is assured to "Caprihans" if they can show that the use of the trade mark "Formica" is "likely to deceive or- cause confusion", two dates being relevant on an issue as this, as Mr. Shah submits: (i) May 13, 1952, the date of original registration of "Formica", and (ii) June 17, 1963, the date when the application by "Caprihans" for rectification was filed in the registry. These two dates follow as a matter of course from the very words in section 32, clause (b), analysed earlier in this paragraph. Clause (b), as noticed opens: "that the trade mark was registered in contravention of the provisions of section 11". Such words at once take one back to May 13, 1952, the date of Formica Company''s application for re-gistration of "Formica", which is deemed to be the date of registration too, when registration is successful (as here). Registration, no matter that it is ordered and made later, as it has to be in the very nature of the thing,--sure enough the application will not be decided the very day it is made--, relates back to the date of the application for registration, by virtue of section 16, sub-section 1, of "the 1940 Act" providing inter alia : When an application for registration of a trade mark has been accepted and either has not been opposed..., or having been opposed, has been decided in favour of the applicant, the Registrar shall,...... register the said trade mark, and the trade mark, when registered, shall be registered as of the date of the making of the said application, and that date shall...... be deemed for the purposes, of this Act to be the date of registration."
By section 23, sub-section 1, of "the 1958 Act" such "deemed" date of re; gistration is provided too. So, on a bare reading of the statute, one date, relevant for the purpose of finding out the likelihood of deception and confusion, caused by the trade mark "Formica", Is May 13, 1952, the date of "Formica''s" original registration. That indeed Is plain. Still if any authority is needed, it is here : (3) Zenith Colour Trading Co. v. Taherally Esufally Rangwala, decided on July 25, 1955, and come into the reports in 1956, (1956) 58 BLR 912, a case Mr. Shankar Ghose refers me to. There Tendolkar J. holds, negativing the contention of Mr. Shah (whom I have the pleasure to hear in this appeal too), that the "deemed" date of registration, in terms of section 16, sub-section 1, not the actual date of registration, which "must of necessity be a subsequent date", is "the date of such original registration", within the meaning of section 24 of "the 1940 Act", corresponding to section 32 of "the 1958 Act".
22. On the second date, June 17, 1963, the day "Caprihans" filed their application in the registry for rectification, Mr. Shah wants to be considered as relevant, for the purpose of judging whether or no the likelihood of deception or confusion is there, the words section 32, clause (b), concludes with, appear to be no less clear: "that the trade mark... offends against the provisions of that section (section 11) on the date of commencement of the proceedings". The use of the verb "offends" in the present tense and of the words "on the date of commencement of the proceedings" leads to the ineluctable conclusion that, in the case on hand, June 17, 1963, the date when "Caprihans" filed their application for rectification in the registry--the date when rectification proceedings commenced by such application--must be taken into reckoning. More, it may well be that the trade mark was good, with no likelihood of deception or confusion at - the time it was registered. But with the passage of time it ceased to be so. If that, it has to come off the register, even after the expiration of seven years from the date of registration. That follows from the words: "....or offends against section 11 on the date of commencement of the proceedings". Though the point is so clear and free from doubt, Mr. Shah has been good enough to cite (4) In the matter of applications by Pan Press Publications, Ltd. for rectification of the register, (1948) 65 RPC 193, which raises a question of construction, not of the provision of repose in the British Act: section 13 of the Trade Marks Act 1938 (1 & 2 Geo. 6, c. 22), corresponding to section 32 of our "1958 Act", but of section 32 of the British Act, broadly speaking, corresponding to section 56 of our present Act. No question of repose can arise, because Pan Books, Ltd. had registered their trade marks on November 17, 1943, and Pan Press Publications, Ltd. applied for rectification on July 3, 1946 a period of less than three years even and necessarily lesser still than "the expiration of seven years", as provided for in section 13 of the British Act too, from the date of registration by Pan Books, Ltd. of their trade marks. But the question that does arise is interpretation of two expressions, "by any entry made in the register without sufficient cause" and "by any entry wrongly remaining on the register'''' in section 32, sub-section 1, of the British Act--expressions which have been copied, word for word, in our "1958 Act" and, confining myself to what is relevant for the case on hand, I notice, Wynn-Parry J. interprets the expressions thus :
1. ''The first material date is November 17, 1943, the date of registration, by Pan Books, Ltd., of their trade marks. It is for the., past, for the registration made already: as the words "by any entry made in the register___" go to show. Any likelihood of deception or confusion then ?
2. For the future, the Legislature has provided by the words: "by any entry wrongly remaining on the register". Whether an entry wrongly remains on the register or not has to be judged by taking into account the period between November 17, 1943, the date of registration of the impugned trade marks, and July 3, 1946, the dale of the applications for rectification, and that too by applying the test if the entry complained against remains on the register contrary to some section other than section 32 of the Trade Marks Act 1938.
23. I, therefore, accept Mr. Shah''s submission that, in judging the likelihood of deception and confusion, endangered, if that, by the trade mark "Formica", the two relevant dates to be remembered are May 13, 1952, and June 17, 1963.
24. The third exception to possessory title to a trade mark, duly registered, ripening into an absolute title, after the expiration of seven years from the date of original registration (May 13, 1952, here for "Formica") is, in the words of section 32 of "the 1958 Act": "(c) that the trade mark was not at the commencement of the proceedings, distinctive of the goods cf the registered proprietor."--a provision the like of which is not there in the corresponding section 24 of "the 1940 Act".
25. In sum, because "Caprihans'''' apply for rectification of the register by expunction of the trade mark "Formica", after the expiration of seven years from the date of "Formica''s" registration, in the context here, only three ways are open to them to get what they want:
I. Fraud vitiating the original registration of "Formica" on May 13, 1952.
II. Infraction of section 11, clause (a), of "the 1958 Act", that is to say, likelihood of deception or confusion by the use of the trade mark "Formica." either on May 13, 1952, when it went on the register, bringing of necessity facts which had existed before such date, or between May 13, 1952. and June 17, 1963, when "Caprihans", by their application u/s 56, subsection 2, of "the 1958 Act", read with rule 94 of the Trade and Merchandise Marks Rules 1959, commenced the present rectification proceedings.
III. Lack of distinctiveness of the goods of the registered proprietor of "Formica" on June 17, 1963.
26. All other ways are barred against "Caprihans" who can neither shake the title to the registered trade mark "Formica" nor disturb the register in the name of its purity, on any other ground. Such has been the submission of Mr. Shankar Ghose--a submission which, in my judgment, follows plainly enough from section 32 of "the 1958 Act". Nevertheless, in support of such submission, Mr. Ghose has been good enough to cite what has come to be known as the "Regimental" case: (5) Imperial Tobacco Company of Great Britain and Ireland v. Pasquali, 1918 2 Ch. 207: 35 RPC 185, the decision of which turns inter alia on certain sections of the United Kingdom Trade Marks Act 1905 (5 Edw. 7 Ch. 15). Those sections, in so far as they are material for the case on hand, and the corresponding sections of our "1958 Act", nothing only the gist thereof, and not reproducing their contents in full, are placed below alongside one another, to assist one''s convenience :
|
The United Kingdom Trade Marks Act 1905. |
Our "1958" Act. |
|
1. Section 9: Registraole trade marks. 2. Section 11: Restriction on registration. 3. Section 41: Registration to be conclusive after seven years. |
1. Section 9 : Requisite for registration. 2 Section 11 : Prohibition of registration of certain marks. 3. Section 32 : Registration to be conclusive as to validity after seven years. |
27 Now to the ratio of (5) the "Regimental" case, with the minimum of facts. The first mark, "Regimental cigarettes", was registered on October 27, 1885, and the second, "Regimental", on May 5, 1908. On April 26, 1917,-- long after the lapse of seven years from the registration of the first mark and after nearly two years more than seven years from the registration of the second mark--an application was made to remove the marks. Astbury J. does order both marks to be removed from the register. Because, at their respective dates of registration, they were common and ordinary descriptive expressions applicable to cigarettes as well as to many other goods, and no user has been shown or suggested which entitled either mark to be registered then, u/s 9. Ergo, they were disentitled to protection on the true construction of sections 41 and 11 read together. More, his Lordship holds, it is idle to contend that section 11 read in conjunction with section 41 has nothing to do with the question whether a mark is or is not registrable under sec. 9. If that is so, his Lordship continues, sec. 41 after the lapse of seven years, would perpetuate as distinctive a mark that never was, and is incapable of ever becoming, or on the facts has not become, such. That cannot, his Lordship concludes, be the combined effect of sections 11 and 41 at all, and the protection intended to be afforded to traders by section 41 does not contemplate any such extravagance. Before I come to the decision of the court of appeal, reversing this decision of Astbury J., it is well to notice that lack of distinctiveness is a ground open to an applicant for rectification, despite the lapse of seven years, u/s 32 of our "1958 Act". That is indeed the third exception* to this provision of repose under which the original registration shall be taken to be valid in all respects after the expiration of seven years from the date of such registration.
28. The judgment of the court of appeal--a judgment of reversal--lays down the law which may be put in the form of proposition set out below:
A. Section 11 is a prohibitive section putting a restriction on registration.
B. It excludes from registration what would otherwise be included in or covered by section 9 which prescribes what a registrable trade mark must contain or consist of.
C. Section 11 is, therefore, a qualification upon, or a proviso to, section 9.
D. Ergo, the mere fact that marks ought not to have been registered because they do not comply with the requisites of section 9, that is to say, impeachment of the original registration, is not sufficient and does not bring them within the provisions of section 11: just the opposite of what Astbury J. holds.
E. No fraud. No infraction of section 11. Hence, section 41 estops, after the lapse of seven years, any challenge of the two marks.
29. What goes in the preceding paragraph is but a summary of the separate judgments of Swinfen Eady M.R., Warrington L.J. and Duke L.J., and that too for the purpose of what is needed for the case on hand. But one or two excerpts from the judgment of Duke L.J. I cannot well go without, if only to show, in a language I am not capable of, that in order to bring home the charge of deception against a, trade mark, a plain statutory provision cannot be made to degenerate into a deception: ".....when I find that the proposed construction (1) of section 11 is such as to reduce the protection, which section 41 was intended evidently to give, to a mere absurdity and deception, I am greatly fortified in the view I take" as to what was in the mind of those who framed this Act".
Again, "....the true view is that the grounds on which section 11 is offended against are grounds which exclude further consideration of the questions dealt with by section 9 and matters of the general principles of law...."
30. So, that further "Caprihans" can go, and hot beyond May 13, 1952, is the date of the original registration of "Formica". June 17, 1963, is the date when "Caprihans" filed their application for rectification. May 13, 1952, to June 17, 1963, is more than seven years. Ergo, the original registration of "Formica" shall be taken to be valid in all respects, unless is proved
(i) fraud, or
(ii) infraction of section 11, or
(iii) lack of distinctiveness,
to put it shortly, the matter having been put in detail earlier (2). In the. name of infraction of sec. 11, it is not open to "Caprihans" to show infraction of section 9. It is not, because, in the words of Duke L.J., the grounds on which section 11 is offended against are grounds which exclude further consideration of the questions dealt with by section 9.
31. I, therefore, accept Mr. Shankar Ghose''s contention that (i) fraud, (ii) infraction of section 11, which again is narrowed down only to clause (a) thereof (3) likelihood of deception or confusion by the use of the mark "Formica", and (iii) lack of distinctiveness are the only three portals through which "Caprihans" can enter into the arena where "Formica" is, safely entrenched and assured of its validity in all respects, by virtue of section 32 of "the 1958 Act". Not that Mr. Shah contends anything to the contrary about section 32 or its predecessor: section 24 of "the 1940 Act". He too relies on the contravention of section 11, clause (a), of "the 1958 Act" corresponding to section 8, clause (a), of "the 1940 Act", as the passport for "Caprihans" to enter into where "Formica" is and to push it out from there. But he has a point about the (5) "Regimental" case where, he contends, registration was had under "the 1883 Act" of the United Kingdom--the Patents, Designs, and Trade Marks Act 1883 (46 & 47 Vict. Ch. 57), the 64th section of which, by sub-sec. 1, clause (c), did not define a distinctive mark, "the 1905 Act" of the United Kingdom (4) having defined it for the first time. Such contention merits three answers. One, factually it does not appear to be correct to state-- and so I say with great respect--that in the (5) "Regimental" case registration was had under "the 1883 Act". Let it be recalled two registrations there were, the first one ("Regimental cigarettes") on October 27, 1885, and the second one ("Regimental") on May 5, 1908. "The 1905 Act" came into operation on April 1, 1906: section 2. So, one mark was registered under "the 1883 Act" and the other under "the 1905 Act." Two, distinctiveness or lack of it presents no problem before me. u/s 41 of the British Act of 1905, two portals were open to an applicant for rectification, with a view to entering into the preserve where registered trade marks repose, assured of validity in all respects, after the lapse of seven years from the dates of their original registration. The two portals are: (i) fraud and (ii) infraction of section 11. Under our "1958 Act", which governs this litigation, the portals, in the same circumstances, are three: (i) fraud, (ii) infraction of section 11, and (iii) lack of distinctiveness. So the (5) "Regimental" case cannot be, and is not, relied upon, on the question of distinctiveness. Three, what it is relied upon is the ratio that the grounds en which section 11 is offended against are grounds which exclude further consideration of the questions dealt with by section 9 and matters of the general principles of law. Not that section 11 is an open-sesame with which the applicants for rectification, just as "Caprihans" are, can make all barriers fly open. I, therefore, reiterate my conclusion, this paragraph opens with, that "Caprihans" can enter into the preserve, where "Formica" reposes, to dislodge "Formica" therefrom only through three portals: (i) fraud, (ii) infraction of section 11, clause (a), and (iii) lack of distinctiveness at the relevant date.
32. The third portal is barred against "Caprihans". Indeed, they themselves have closed it through *their counsel, Mr. Shah, before the Registrar. Before me too, Mr. Shah does not press it, nothing to say of the fact that it is open to him either, to press in the court of appeal or a higher forum a plea not pressed, waived, or abandoned in the primary forum, as is the clear, definite and consistent law laid down throughout by a long line of cases, the following amongst which remain in my memory:
(6) Raja Bommadevara Venkata Narasimha Naidu v. Raja Bommadevara Bhasyakarlu Naidu, 1902 29 IA 76: 6 CWN 641: ILR 25 Madras 36, where the principal defendant''s contention that the Zemindary was impartible by family custom is abandoned by his vakil, after a certain amount of evidence has been recorded by the trial judge, and neither the High Court nor the Judicial Committee of the Privy Council, the Board consisting of Lord Davey, Lord Robertson and Sir Andrew Scoble, allows it to be re-agitated, a vakil''s general powers in the conduct of a suit including the abandonment of an issue which, in his discretion, he thinks it inadvisable to press;
(7) Vithaldas Kanjishet v. Secretary of State for India, 1902 ILR 26 Bom 410, where Chandavarkar J. does not allow the plaintiff, Jenkins'' C.J. agreeing, to raise the plea of the defendant Government having been estopped from denying the title of the plaintiff, because it was not raised in the courts below, not even In the memorandum of appeal in the High Court, and, therefore waived;
(8) Prasanna Kumar Roy Chowdhury v. Adya Sakti Dassi, AIR 1942 Calcutta 586, where Nasim Ali and Blank JJ. similarly do not allow the defendant landlord to raise in appeal the plea that the plaintiff is estopped from asserting her purchase of a raiyati holding with a fixed rent--a plea which was not pressed at the trial court;
(9)
(10) Premchand Manickchand v. Fort Gloster Jute Manufacturing Co., Ltd., 1959 64 CWN 103, where the ground that the contract for sale of jute was void, in contravention of the Forward Contracts (Regulation) Act 1952 as it was, and that the arbitration agreement contained in such contract was, therefore, void, is expressly abandoned in the lower court, but sought to be urged in appeal, --whereupon Chakravartti C.J. lays down the law as under, Lahiri J. (as he'' is then) agreeing: "It is quite true that a ground of law, particularly one which goes to the legal validity of the entire proceedings, can be taken for the first time at any stage, but, in my view, when a party has raised such a ground and then deliberately abandoned it, he cannot be allowed to raise it again before the court of appeal.
What indeed Mr. Shah makes a grievance of is that the Registrar has been "obsessed with distinctiveness" (to quote Mr. Shah''s words) in solution of a problem which admits of a two-fold approach: deceptiveness (which I denote by the symbol ''A'') and loss of distinctiveness (which I denote by the symbol ''B''). The Registrar, Mr. Shah contends, is on ''B''; he is not on A''. The, Registrar, Mr. Shah concludes, goes by ''B'', though "Caprihan''s" case is A''. That, I am afraid, does not appear to be the right way to look at'' the Registrar''s judgment. And I revert to it when I come to deal with the question of deceptiveness*. What I am on now is that "Formica''s" loss of distinctiveness is not pressed here and below. Necessarily, therefore, the third portal through which "Caprihans" could have entered into the preserve, where "Formica" has now been reposing, for the last seventeen years and a little more, assured of its validity in all respects, u/s 32 of "the 1958 Act", is barred against them.
33. So, is the first portal, through which "Caprihans" could make an entry, if "Formica" is where it is, because of fraud resorted to by Its proprietors at the time of the original registration. The language of section 32, clause (a), of "the 1958 Act" is: "that the original registration was obtained by fraud. "The key to its meaning lies in the language Itself. It is that fraud which is committed before registration. It is that fraud but for which registration would not have been made. Hence fraud, for the, purpose of section 32, clause (a), lies within that periphery, and not beyond.
34. But" what is fraud ? No doubt, the Contract Act 1872 by section 17 defines "fraud". But it is not a hard-and-fast definition, opening as it does: "''Fraud'' means and includes...." If the word "means" tends to make it a hard-and-fast definition, the word ''''includes" tends to make it just the opposite. As Lord Esher says in (11) In re: Agricultural Holdings (England) Act 1883: Gough v. Gough, 1891 2 QB 665 at page 674: "The definition says that ''landlord'' ''means'' (it does not say ''includes'') any person for the time being entitled to receive the rents and profits of any holding. I doubt whether the executors of a landlord would come within that definition. It is a hard and fast definition, and you cannot give any other meaning to the word ''landlord'' in the Act than that which is mentioned in the definition."
So, the definition of ''fraud'' in the Contract Act is not that rigid. And I pass it by. What I go by instead is so general and broad a definition of fraud, as given by Sadasiva Aiyar J. in (12) Raja Rajeswar Dorai, Rajah of Ramnad v. A. L. A. R. R. M. Arunachellam Chettiar, 1915 ILR 38 Mad 321 at page 344: AIR 1916 Mad 350 at page 361--"Courts have always refused to define fraud exhaustively, as it is as hydra-headed as the devices of human ingenuity. Every unfair means used to obtain an unconscionable advantage over another is spoken of as ''fraud''."
Coming to the realm of trade mark law, in (13) Bentley Motors (1931), Ltd. v. Lagonda, Ltd., 1947 64 RPC 33, Roxburgh J. sees in conjunction the words "obtained by fraud" in section 13 of the Trades Mark 1938, just the words in the corresponding section 32, clause (a), of our. "1958 Act", and holds that "a claimant who sets out to say that registration was obtained by fraud must allege some actual deception by word or deed, or some omission by word or deed."
35. Two things are thus cleared up. One is the meaning of fraud in the expression: "obtained by fraud". The other is the spacing or timing of fraud for the purpose of section 32, clause (a), of "the 1958 Act".
36. I now turn to the pleadings, only to find that "Caprihans" have not put forward anything, either in their application for rectification or in their "Statement of Case", charging the pro-prietors of the registered trade mark "Formica" with any unfair means to obtain unconscionable advantage over another, with actual deception by word or deed, or some omission by word or deed. In sum, "Caprihans" have not charged their adversary with dishonesty. Nor have they set out any particulars of fraud or dishonesty in their pleading, as they should have done on the principle of Order 6, rule 4 of the Procedure Code, 5 of 1908. On this consideration alone, "Caprihan''s" application for rectification may well go down as incompetent pro tanto, as a similar application without particulars of fraud" does go down so before Kapur J. in (14) In the matter of Om Prakash Karam Chand, AIR 1956 Punjab 4, Mr. Shankar Ghose refers me to.
37. But it will not be right on my part to confine myself to "Caprihan''s" pleading and "Statement of Case" only. I have the complete freedom to look to, and draw upon, their adversary''s pleading and all the affidavit-evidence on record in order to satisfy myself whether fraud lurks here or not. Take the case of a suit tried in our courts. In striking issues for determination in a suit, is the court confined to pleadings only ? The court is not. As Order 14, rule 3, of the Procedure Code prescribes, the court can draw upon divers materials, such as (i) answers to interrogatories delivered in the suit, (ii) allegations made on oath by the parties, or by any person present on their behalf, or made by the pleaders of such parties, and (iii) the contents of documents produced by either party. The lis before the Registrar is as good as a suit. The only difference I see is that the Registrar has tried it upon affidavit-evidence instead of upon oral evidence. But he is as much competent to enter into oral evidence as a court is. Indeed, in the matter under appeal, the Registrar comments on absence of evidence "as to the meaning or significance commonly attached to the word ''Formica'' by those who use it or hear it in the course of their daily lives."
38. In support of the proposition I am going by: that I can look beyond "Caprihan''s" pleading and "Statement of Case", but not by travelling beyond the record, to satisfy myself whether fraud in fact exists or not, reference may be made to two decisions, one a non-trade-mark case and another a trade mark case. The non-trade-mark case, one under the Companies Act 1956, tried upon affidavit-evidence only (as here), is (15) Ramshankar Prosad v. Sindri Iron Foundry, 1965 70 CWN 520: AIR 1966 Calcutta 512, where G. K. Mitter J. holds : "Even if no strong case of oppression or mismanagement is made in the original petition, the court must guide itself by all the evidence before it including subsequent affidavits filling up what was originally lacking. It would not be right to measure the rights of the parties only in terms of the petition."--; a head-note though'' (in Calcutta Weekly Notes), it correctly summarises what his Lordship lays down in paragraphs 45 and 55 of the judgment. Having been a party to the decision, may I, without impropriety, refer to my view as well on a point as this : "A judge has the freedom to look to, and draw upon, materials other than those contained in the pleadings for fixation of issues when he tries a suit or sets down a petition for trial on evidence. He can do just the same when he proceeds to hear the petition upon affidavit-evidence."
The trade-mark case is (16) Midland Counties Dairy, Ltd. v. Midland Dairies, Ltd., 1948 65 RPC 429, the ratio decidendi of which, on the point I am on now, is summarised in paragraph 723 of Kerly''s Law of Trade Marks and Trade Names, ninth edition,* as under: "But the fact that that the plaintiffs have not pleaded fraud does not necessarily exclude the court from considering whether fraud in fact existed".
The passage from Harman J.''s judgment in the case under review now--the passage from which the above summary has been made--deserves to be reproduced in full, if I may say so, with great respect: "This is a case (a passing-off case) in which no fraud is alleged in the pleadings and in which the chief witness for the Plaintiffs disclaimed any intention of imputing dishonesty to Mr. Ambrose (of the defendant company), and it was pressed upon me that in those circumstances I must exclude all such considerations from my mind. In my opinion the Court is not bound by the form of the pleadings, or by disclaimer on the Plaintiffs'' behalf, to shut its eyes to a case of fraud if convinced that one exists. Fraud of course is not a necessary ingredient of the tort of passing-off, but is an important factor, for if the Court come to the conclusion that the Defendant was actuated in adopting the style complained of by the dishonest motive of filching some part of the plaintiffs'' reputation, then the Court will not be astute to find that the nefarious design has failed."
I am concerned with the ratio of the decision. And the ratio undoubtedly is that, in order to be satisfied whether fraud in fact exists or not, the court is not bound by the form of pleadings.
39. It is, therefore, within my competence to look beyond the pleadings, in search of fraud; but beyond the materials on record I cannot travel, I do what it is within my competence to do. Having done so, do I come by any material which smells fraud ? That is the point.
40. The only material I come across, on record, is what Mr. Shah terms as a misstatement, consisting of that averment of May 13, 1952, the date of original registration of "Formica", read with that of September 13, 1952, as noticed in paragraph 3 ante: "The trade mark ''Formica'' has been used by the Applicants (i.e. Formica Company) in India since the year 1947".
On a matter as this, two questions fall for determination. First : can this be regarded as a misstatement upon the whole of the materials I have had put before me ? Second: if it can be so regarded, does this amount to fraud, meaning some unfair means resorted to by the then proprietors to obtain an unconscionable advantage over another, meaning some actual deception by word or deed or some omission by word or deed ?
41. For determination of these two questions, the history of "Formica" has got to be known a little more than what has been set out in paragraphs 10 and 11 supra. And the relevant fact as to the statement that "Formica" has been used by Formica Company in India since 1947 has got to be cleared up too.
42. First, to the clearing up of the fact. The original application for registration of "Formica" in form TM-1 mentions the necessary particulars, including the name and address of the Formica Company, and concludes : "by whom (that is, the Formica-Company) the said trade-mark is (proposed to be used) (being used) and who claim to be proprietors thereof."
This is just what is in print. And nobody takes the trouble to score through v/hat is not needed. Result: the application becomes unmeaning to that extent. Is "the said trade-mark" proposed to be used by Formica Company, or is it being used ? Both the entries in print remain, and no meaning can be got out of them. Naturally, the registry wrote to Messrs. Remfry and Son, trade-mark attorneys for Formica Company, by its letter No. 0/3273/K.E. 1513, bearing date July 31, 1952: "Your clients should state whether the mark is proposed to be used or is being used and in the latter case your clients should state the period of user." Messrs Remfry and Sons replied by their letter dated September 13, 1952, and of course on behalf of Formica Company: "The Trade Mark Formica has been used by the Applicants in India since the year 1947."--a passage which is now stigmatised as a misstatement.
43. To get the little I have got above--and without this little what is now put forward as a misstatement is incapable of being understood--1 draw not from the paper-book where at page 2 the unmeaning entries : " (proposed to be used) (being used)" occur, with still another unmeaning one: "Vide letter dt. 30-9-52", adding to the confusion all the more. I draw instead from the record of the Registrar captioned : "Regd. Trade Mark No. 153972 under Rectn. No. Cal.-48". In that record I find Messrs. Remfry and Son''s letter dated September 13, 1952, to the Registrar wherefrom I have quoted the sentence more than once** --the sentence which "Caprihans" say is a misstatement. In that record I find too the original application bearing date May 13, 1952, by Formica Company for registration of "Formica" duly amended and thereby rid of its unmeaning portion, so that it now reads "by whom (that is, Formica Company) the said trade-mark is (being used) since 1947 and who claim to be the proprietors thereof."
44. So, what was insensible, going by the paper-book, has now been rendered sensible. This is how I clear up the relevant fact about the statement that "Formica" has been used by Formica Company in India since 1947--a statement which is condemned on behalf of "Caprihans" as a misstatement.
(The judgment then recites the history of "Formica" and proceeds:)
45. Such then is the history from 1913 to 1957, it being apparent, upon the history set out earlier (paragraph 10), that Formica Insulation Company, which got going from 1913, changed into Formica Company from before 1952, on the 13th May of which year, they applied for registration of "Formica" in Class 19. And in this lies the misstatement "Caprihans" complain of: "On May 13 and September 13, 1952, you stated, by you, i.e., Formica Company, ''Formica'' has been used in India since 1947". But a little more than twelve years later, to wit, on September 8, 1964, by Secretary-Director Rankin''s affidavit, you stated: "Between 1947 and 1957 ''Formica'' laminates manufactured in England were distributed in India by Thomas De La Rue & Co., Ltd."
46. Can a misstatement be spelt out in a big way from these two averments as "Caprihans" want it to be spelt out ? Let the following facts be remembered :
1. Formica Insulation Company, not Formica Company, entered into a licence agreement with Thomas De La Rue & Co., Ltd. in 1946.
2. Thomas De La Rue & Co. Ltd. is the parent company of Formica, International Ltd. (the second respondent).
3. Necessarily Formica International Ltd., or going by its earlier name, Formica Limited, is a subsidiary company of Thomas De La Rue C Co.: Ltd.
4. Formica Insulation Co. later became Formica Company.
47. If, in this background, Formica Company say: "We have been using ''Formica'' in India since 1947", and if Formica International Ltd. say years later: "Our parent company, Thomas De La Rue & Co., Ltd., by virtue of a licence agreement with Formica Insulation Co. the predecessor of Formica Co., did distribute'' in India between 1947 and 1957 ''Formica'' laminates manufactured in England, "is there (sic) of a contradiction here ? And if there is, is it not so superficial ? Your licensee''s use is your use too. He uses it by virtue of the licence you granted him of a trade mark unregistered in India. And when? In 1946. What then governs a matter as this is not the old common law under which the transfer of the indication of origin, namely, the trade mark simpliciter, without transfer of the origin itself, namely, the goodwill, is fraud upon the public, in that when so transferred, divorced from its place of origin, "in the hands of the transferee, it would indicate something different to what it indicated in the hands of the transferor". The symbol or label claimed as a trade mark is so constructed or worded as to make a distinct assertion that the goods this mark denotes are the goods of the proprietor of the mark. So, when only the mark is assigned, and not the origin, namely, the goods, goodwill and all, the mark, after such assignment, carries with it an assertion which is false. In sum, the trade mark and goodwill are one and indivisible. You cannot separate one from the other, transferring one and keeping the other. See, for example, (17) Pinto v. Badman, (1891) 8 RPC 181, the decision of the court of appeal (Lord Esher, M.R., Bowen and Fry L.JJ.) wherefrom I have taken what goes before. That is however under the common law into which the statute law makes an inroad on the recommendation of the Goschen Committee in England. Result: section 22 of the United Kingdom Trade Marks Act 1938; and, in the wake thereof, sections 29, 30 et seq. of our "1940 Act", making a trade mark, registered or unregistered, assignable or transmissible, with or without the good will of the business. Say, those sections of "the 1940 Act" are in breach here, as Mr. Shah contends specifically that section 39 thereof is in breach. This is the second way in which Mr. Shah puts the appeal before me (1). This is the third point that falls for determination (2). But such a point is not available to Mr. Shah, raised as it has been much more than seven years from the date of the original registration of "Formica". Section 32 of "the 1958 Act" again. The point Mr. Shah presses upon me is neither fraud, nor infraction of section 11, nor that abandoned plea, of lack of distinctiveness at the relevant date--the three portals through which alone "Caprihans" can come to shake the title of Formica International Limited to the trade mark "Formica". It is infraction of section 39 of "the 1910 Act", corresponding to section 48 of "the 1958 Act", as Mr. Shah contends. The provision of repose, as section 32 is, quietens title to the trade mark "Formica", such infraction notwithstanding. The only infraction that counts in the context of this case is infraction of section 11, clause (a), of "the 1958 Act" corresponding to part of section 8 of "the 1940 Act". But infraction of section 11, clause (a), is infraction of just that: section 11, clause (a). The grounds on which such infraction is rested are grounds which exclude further consideration of the questions dealt with by section 9 of "the 1958 Act" corresponding to section 6 of "the 1940 Act" and matters of the general principles of law (3). So, infraction of sees. 9 and 48 of "the 1958 Act" or of sections 6 and 39 of "the 1940 Act",--sections, on which it has been my privilege to hear a very interesting and illuminating address from Mr. Shah and Mr. Ghose--, must be put of the way. (Indeed, section 32 of "the 1958 Act", that section of repose, puts them away. And when the provision of repose does so, it means what it does, giving a complete and real protection to the registered trade mark, subject to three exceptions : (i) fraud., (ii) lack of distinctiveness and (iii) infraction of section 11. Not that all section 32 means to do is to give an illusory protection by enabling section 11 to be used as a key to open all other doors which are closed, such as violation of section 9, section 48 and so many other sections of "the 1958 Act". I shall not therefore enter into such matters, reducing a true statutory protection into a false one, and turning a provision of quiet into a provision of disquiet. This is why I have said earlier in the judgment (4), it will hardly be necessary for me to notice all Mr. Shah says. And he does say a lot about such violations which, by virtue of section 32, cannot disturb "Formica" now lying in repose and which are, therefore, outside my purview.
48. On a consideration as this, I say, the licensee''s use is the licensor''s use which time has now sanctified, no matter what attack it was vulnerable to inside of seven years from May 13, 1952, the date of "Formica''s" original registration.'' Saying so, I revert to the first question I have posed earlier (paragraph 41) : Can the difference sel out in the beginning of the preceding paragraph be regarded as a misstatement upon the whole of the materials 1 have had put before me ? And 1 answer: it is open to the gravest doubt if it can be so regarded. The question I am on now is the question of fraud, not the question of infraction of section 11, clause (a), of "the 1958 Act".
49. Say, it is a misstatement, as contended for, on behalf of "Caprihans". Weighed in scales of god, it is arguable, a little inexactitude is there. So what ? Can it be elevated to the height of fraud ? This is the second question I have posed: paragraph 41 again. What fraud means has been noticed : paragraph 35 ante. Upon the whole of the record it is impossible for me to say that, by making the statements Formica Co. did on May 13 and September 13, 1952, (paragraphs 43 and 44 ante), they resorted to any unfair means with a view to obtaining an unconscionable advantage over another or that they actually deceived anybody. Indeed, there is not even a soupscon of evidence to that end. It has been more or less in the nature of a domestic affair between Formica Company, whose mantle has now fallen upon Formica International Limited, the second respondent, and Thomas De La Rue & Co., Ltd., the parent company of Formica International Limited. So if anybody has reason to feel aggrieved by what Formica Company stated on May 13 and September 13, 1952, to obtain registration of "Formica", they are Thomas De La Rue & Co., Ltd. And as Mr. Shankar Ghose pertinently submits : "Who are ''Caprihans'' to fight their battle, the battle of Thomas De La Rue & Co., Ltd. ?" The finding must, therefore, be that no fraud exists here in fact. And the first portal provided for by section 32 of "the 1958 Act" is also barred against "Caprihans", as the third portal is (paragraph 33).
50. Thus, the only portal that remains is the second portal of likelihood of deception or confusion, not actual deception, nor actual confusion, but likelihood of either, as indeed is plain from the very language in section 11, clause (a) : "A mark--the use of which would be likely to deceive or cause confusion.........
* * *
* * *
shall not be registered as a trade mark" --an absolute prohibition, defiance of which section 32 does not naturally protect. Can "Caprihans" shake the title to "Formica" through this portal ? That is the only question now left for decision in this appeal.
51. I propose to deal with the question under the following heads :
1. Onus. (Dealt with in paragraphs 53-57.)
II. Standard of proof. (Dealt with in paragraphs 58-61.)
III. Evidence. (Dealt with in paragraphs'' 62-75.)
52. That the onus is upon "Caprihans", the applicants for rectification, to prove the likelihood of deception or confusion by the use of the trade mark "Formica" appears to be clear enough. Here is "the 1958 Act''s" section 31, which by sub-section 1, provides: "In all legal proceedings relating to a trade mark registered under this Act (including applications u/s 56) the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof". "Caprihan''s" is an application u/s 56, bearing date June 13, 1963, and lodged in the registry on June 17 following. Ergo, the original registration of "Formica" on May 13, 1952, a little more than eleven years earlier than the date of the application for rectification, shall be prima facie evidence of its validity. True it is that it is no more than prima facie evidence. Not that it is conclusive evidence. Still the burden is upon "Caprihans" to displace this prima facie evidence provided for by statute.
53. u/s 23 of "the 1940 Act", corresponding to section 31. subsection 1, of "the 1958 Act", the position is just so, even though the corresponding section on an application for rectification (section 46) is not specifically mentioned there. But that is of the least materiality. What is of the utmost materiality is that what is explicit in section 31, sub-section 1, of "the 1958 Act",--"including application u/s 56" within brackets--,is implicit in section 23 of "the 1940 Act", which bears : "23. In all legal proceedings relating to a registered trade mark, the fact that a person is registered as proprietor thereof shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof". Rectification proceedings are legal proceedings without doubt. So, registration shall be prima facie evidence of validity of tre trade mark, sought to be taken off the register. Necessarily, the burden is on "Caprihans" to show that "Formica" got into the register wrongly or is remaining on the register wrongly, because it is likely to deceive or cause confusion: the case to which they confine themselves in terms of section 11, clause (a), of "the 1958 Act."
54. The general law, namely, the Evidence Act, 1 of 1872, also confirms this position. Here are "Caprihans" who desire the Registrar and the court to give judgment as to their legal right to take "Formica" off the register, a right which is dependent on the existence of the fact that "Formica" is likely to deceive or cause confusion. "Caprihans" must prove this fact. Indeed, they are bound to. The burden of proof, therefore, lies on "Caprihans" : section 101 of the Evidence Act, laying down what is called the burden of proof on the pleadings. or say when the application for rectification comes to trial and hearing, neither "Caprihans" nor Formica International Limited give evidence. Who fail then? "Caprihans". Therefore, the burden of proof is on "Caprihans" : section 102 ibid-, laying down what is called the burden of adducing evidence. In describing so sections 101 and 102 of the Evidence Act, I do no more than go by (18)
55. The question of onus being so clear and resting indeed on first principles, I may as well go without authorities. All the same here are two, and in the realm of trade-mark law. One is (19) In re an application by George Angus & Co., Ltd. for rectification of the register of trade marks, 1943 60 RPC 29: the "Gaco" case. The Registrar refused the application for rectification by the owners of the trade mark "Gaco" registered in connexion with a trade in synthetic rubber goods The rectification they sought for was by removal from the register of the trade mark "Stayco" also about a trade in goods manufactured out of synthetic rubber. But there was no evidence to show how the trade in which "Gaco" was sold and in which "Stayco" was sold was carried on. In absence of such evidence it would be impossible for the court to determine whether or no the use of the two trade marks would be likely to lead to confusion. And it was so held, Bennett J. concluding:
The burden of satisfying the Court that the existence of the Respondent''s mark on the Register is likely to lead to confusion is upon the Appellants and in the absence of any evidence of the kind I have indicated, in my judgment they have wholly failed to put before the Court the material (and the only material) upon which the Court could come to a conclusion upon the point in issue.
The other authority is that high, the decision of the court of appeal presided over by Sir Raymond Evershed, M.R., and Denning and Jenkins L.JJ., in the "Aludrox" case, (20) Barker Stagg Limited''s Trade Mark, 1954 71 RPC 136. There, "the question at issue is really a single question, namely, whether the registration or continued registration of the Respondent''s mark (''Algelox'') will be likely to cause confusion with the mark (''Aludrox'') of the Appellants", to quote from the judgment of Evershed M.R., with whom the other two members of the court agreed. Of these two rival marks, "Aludrox" of the appellants and "Algelox" of the respondents, to return to the judgment of the Master of the Rolls :
the Respondents succeeded in obtaining registration of ''Algelox'' before the Appellants became aware of the invention and adoption of the name. The significance of that fact is that the onus of proof has thereby shifted-"
Conclusion: ''Mark on the register you want to take off the register ? The onus is then upon you to prove that the mark deserves to be taken off so.'' This is plain common sense too. I am on the register. Sure enough, it is not for me to prove that I should be where I am and that the entry in my favour is valid. Were I to prove so, why register? Registration becomes valueless then.
56. The conclusion I have, therefore, come to is that the onus is upon "Caprihans" to prove that "Formica", a trade mark which they are out to expunge, has been wrongly remaining on the register or got into the register wrongly too. But this statement on the law of onus needs a rider because of two considerations on which there can presumably be no room for two opinions. One, what must be in the forefront of my consideration, as no doubt it was in the forefront of the learned Registrar''s consideration, is the purity of the register. Two, when both parties have led evidence, as here, even though it is affidavit-evidence, as is the normal procedure, sanctioned by section 99 of ''the 1958 Act'', the question of onus ceases to be that important, and the only thing that remains for the tribunal or the court to do is to arrive at a true inference upon the whole of the evidence led by both. That is the general law laid down in a respectable body of decisions, two of which may only be referred to. One is (21) Satu-ratnam Aiyar v. Venkatachala Gounden, 1919 LR 47 IA 76: 25 CWN 485: ILR 43 Mad 567, where Sir Lawrence Jenkins points out when the question of onus ceases to be pertinent: "The controversy had passed the stage at which discussion as to the burden of proof was pertinent; the relevant facts were before the Court, and all that remained for decision was what inference should be drawn from them."
The other is (22) Chidambara Siva-prakasa Pandara Sannadhigal v. Veera-ma Reddi, 1922 49 IA 286: 27 CWN 245, where Mr. Ameer Ali observes: "When the entire evidence on both sides is before the Court, the debate as to onus is purely academical."
In the realm of trade-mark law too, Lord Esher, M.R., in (17) Pinto v. Bad-man, supra, dealing with the transfer of a trade mark simpliciter divorced from goods, goodwill, manufactory and all, came by the origin of the plaintiffs'' title to the exclusive use of the trade mark on the basis of documents produced by the plaintiffs themselves, though the defendants'' plea was that the transfer to the plaintiffs of the trade mark in gross, without the transfer of the goodwill etc. of the business, was bad, a plea which was for the defendants to prove and sustain. In that context, his Lordship observed: "Now, the whole question comes back to this. The plaintiffs had a prima facie right to the exclusive use of this trade mark. They had that by being registered, and that threw the whole burden of proof on the Defendants to show that, notwithstanding that prima facie right, the Plaintiffs had no right to that exclusive use. Now the origin is shown (I care not by whom) of the Plaintiffs'' right to use this registration."
Thus, though the onus is upon the defendants, that onus is well discharged by documentary evidence led by the plaintiffs, showing transfer of the indication of origin (trade mark) without transferring the origin itself (goodwill etc). Therein lies the point. Consider the evidence whole and come to a true inference, no matter who this evidence is by. Not that since the onus is on a party, the onus must be discharged by evidence led by that party only, as if you are forbidden to look to the evidence led by that party''s adversary. In sum, the onus is upon "Caprihans" to prove the case they have come to court with: the case of rectification of the register by removal of "Formica". Yet the court will look to the whole of the evidence and come to a true inference, with a view to maintaining the purity of the register. If, for example, "Caprihan''s" evidence lacks, but their adversary''s evidence supplies, the necessary material to rectify the register in the manner prayed for, certainly rectification shall be ordered, even though "Caprihans" do not discharge the burden which is upon them. What Viscount Maugham lays down on a point as this, in (23) The Shredded Wheat Company, Ltd. v. Kellog Company of Great Britain, Ltd., 1939 67 RPC 137, a case of registration of the trade mark "Shredded Wheat" under the United Kingdom Trade Marks Act 1905, the 40th section of which is of the same pattern as section 31, sub-section 1, of our "1958 Act", making registration prima facie evidence of the validity of the trade mark registered, (paragraph 53 ante), and a case of rectification too by removal of the mark, appears to be so apposite here: "Great reliance was placed by the Appellants on Section 40 of the Act, which provides that in legal proceedings relative to a registered trade mark the fact that a person is registered as proprietor of such trade mark shall be prima facie evidence of the validity of such trade mark end of subsequent assignments and transmissions of the same. The onus of proof was thus placed in this case on the respondents and in my judgment that onus has been amply discharged. If, however, this matter had been left in some doubt (and I think it was not), I should still have been of opinion that in the circumstances of this case the mark (a descriptive name without a distinctive meaning) ought not to have been registered." The concluding portion of the above excerpt I rely upon, in support of the view I have taken. Failure on the part of "Caprihans" to discharge the onus ? That does not matter. Look to the circumstances of the case as revealed by the entire evidence on record, including the evidence of the adversary of "Caprihans"., and conclude whether "Formica" should remain on the register or not, on the ground of infraction of section 11, clause (a), of "the 1958 Act". This is what I find on the question of onus.
57. Now, to the standard of proof. The likelihood of deception or confusion created by the trade mark "Formica" is the topic under consideration here. That a mark as this is likely to deceive or cause confusion has got to be proved. But whom is this likely to deceive ? Amongst whom is this likely to cause confusion ? More, in the context of "Caprihan''s" case, whom is a mark as this, "Formica", likely to deceive in the sense that they, in purchasing "Formica", are likely to be under the impression that they have purchased a substitute for mica: "Formica", it is said, meaning or suggesting "for mica", a substitute for mica ? More in the context of "Caprihan''s" case again, who, amongst the purchasers, -are likely to get confused whether or no, in purchasing "Formica", they have purchased a substitute for mica: the very word "Formica" suggesting "For mica", a substitute for mica ? Evidence should be the answer, evidence the lack of which the learned Registrar comments, and rightly too, in paragraph 12 of his judgment, and in the absence of which he goes by the meaning of the word "Formica" in the dictionaries. Not that the learned Registrar feels overborne by the test of distinctiveness, loss or lack of which, at the date of the commencement of the present rectification proceedings Mr. Shah does not press before him; nor that the learned Registrar passes by the test of deceptiveness, as is Mr. Shah''s grievance before me. The learned Registrar is fully alive to the test of likelihood of deception or confusion, finds no evidence "as to the meaning or significance commonly attached to the word ''Formica'' by those who use it or have occasion to hear it in the course of their daily lives", and, therefore, takes recourse to the meaning of the word as given in the dictionaries.
58. If all probable purchasers of those non-metallic laminated materials, the trade mark "Formica" stands for, were of that high standard, with a rich vocabulary of the English language at their command, the charge of likelihood of deception or confusion, as laid by "Caprihans", could have never been raised. Here are some references about the meaning the word "Formica" illustrated by the manner of its use, culled from that world famous lexicon: A new English Dictionary on Historical Principles, edited by Dr. James A. H. Murray, with the assistance of scholars and men of science, vol. IV. By Henry Bradley, M.A. (1901):
A. Entomological, (pertaining to insects.)
(1865) Livingstone Zambesi IX. 190: "We could not sleep because of the attacks by the fighting battalions of a small species of formica," that is to say, ants.
B. Medical.
(i) 1543: Traheron tr. Vigo''s Chirurg. II. vi. 20 b: "Formica is a lytle pustle, or many pustules that come upon the skynne...The thyrde (sygne) is pryckynge, it is a sodayn bytyng as if it were of an ante whereof it hath his name."
(ii) 1674: N. Cox Gentl. Recreat. II. (1877) 248: "Of the Formica. This is a distemper which commonly seizeth on the horn of Hawks'' Beaks, which will eat the Beak away".
(iii) 1707 : Floyer Physic. Pulse-Watch 51: "A formicant Pulse is like the motion of an Ant who moves her feet off without going much forward.
(iv) 1842: Dunglison Diet. Med., (ed. 3) : "Formicant, an epithet given to the pulse when extremely small, scarcely perceptible, unequal and communicating a sensation like that of the motion of an ant through a thin texture.
C. Other use. 1880. Daily Tel. 16 Nov. : "If the Queen-ant is removed from a nest, the formican politicians (formican, that is, of or pertaining to ants) settle down soon into a steady-going republic
59. Scholars and men of science, who have read these original texts or even the extracts in that magnum opus: Murray''s OED, will not have the remotest likelihood of being deceived or confused into thinking that they are purchasing substitutes for mica (For mica) when they purchase those laminated materials with the trade mark "Formica". That is however not the yardstick to measure the matter with. At one extreme stand such savants, defying any likelihood of deception or confusion. Indeed, the moment one of this class comes across the trade mark "Formica", it becomes plain to such a one that it is an orotund expression for the ant, the typical genus of the family Formicidae; or it is a kind of ulcer occurring in a hawk''s bill or a dog''s ears; or it is an epithet given to the pulse exhibiting certain symptoms. With mica, such a one concludes then and there, "Formica" has little to do. At the other extreme, stand fools, idiots and all sorts of stupid people who are born and exist to be deceived or confused ever, even though there is no reason for either.
60A. In support of what goes before in the preceding paragraph, I will quote, to begin with, "one authority, but that a high one", to borrotv the language of the late President, Sir F. H. Jeune, in (24) Moss v. Moss (otherwise Archer), 1897 P. 263 at page 271. The authority is the authority of Jessel, M.R. as a judge in the court of first instance, and of the court of appeal, James, Mellish, L. JJ. and Bagallay, JA. being members of the court, in (25) Singer Manufacturing Company v. Wilson, 1876 2 Ch. D. 434. The gist of the case is this: The Singer Manufacturing Company, the suing party, earned a reputation all its own as the maker of sewing machines commonly called Singer machines, but without having been possessed of any patent. The Defendant came out with sewing machines too, and started selling them with a distinct trade mark on a brass plate affixed on each such machine. The brass plate; containing inter alia : "Neivton Wilson and Company, Manufacturers", was a representation that Newton Wilson & Co. manufactured the defendant''s sewing machines. But the price list issued by the defendant listed very various varieties of machines of Newton Wilson & Co. One such variety was Singer Family Machine, F.A. Two more varieties were Singer machines, the Medium Machine, F.E. The price list contained a passage:
Treadle machines, for family and manufacturing use, on the various American systems, and manufactured by us under their expired patents, but in some cases with patented improvements of our own, and with a finish and perfection that is unapproachable.
Upon such facts, the question arises, in Singer Manufacturing Co.''s suit to restrain improper use by the defendant of its trade-mark or trade name, whether or no the machines sold by the defendant are such as is calculated to mislead any one that he is purchasing Singer Manufacturing Co.''s machine when in fact he purchases the defendant''s. But how do you size this "any one" ? Who will such a one be like, ? Or what will he be like? Jessel M.R. answers: "-
in my opinion trademarks, being made for those who have ordinary sight and ordinary minds, and not being made for persons of extraordinary acuteness or extraordinary dullness, I think there is on every machine sold by the Defendants a fair and reasonable notice, not calculated to mislead any one, that the machines sold by them with that mark affixed to them are manufactured by the firm of New-ton Wilson & Co.
Again, in the context of an illustration about wines : "I am not, as I consider, to decide cases in favour of fools or idiots, but in favour of ordinary English people, who understand English when they see it, and are not deceived by any difference in type, but who have before them a very plain statement."
The Singer Manufacturing Co.''s suit fails. As appeal taken fails too. Another equally high authority I will quote is the decision of the court of appeal again, Lindley, M.R., Sir Francis Jeune, and Romer, L.J. being members of the court, in (26) Payton & Co., Ltd. v. Titus Ward & Co., Ltd., decided on November 29, 1899, and come into the reports in 1900: 1900 17 RPC 58. It is a case of two competing trade marks, the plaintiffs'' "Royal" Coffee and the defendants'' "Palais Royal" Coffee, both in tins which were enamelled in a somewhat similar pattern. Necessarily, here also the "extremely difficult" question to be solved is: "who or what is the person, who is supposed to be deceived or to be misled ?" Sir Francis Jeune solves the question thus : "I cannot find a definition of such a person, but I think it is not unfair to say that the person who is supposed to be misled, or supposed to be deceived, must be a person who at least knows--I do not say more than that--what he wants and by the deception or mistake gets, in place of that, something which he does not want. Now, that seems to me the lowest you can put the definition at."
Romer, L.J. puts the matter as under :
Much has been said on. behalf of the plaintiffs about what is commonly called the unwary customer; but the only customer that the Plaintiffs can really be thinking of, as it appears to me, is either one so stupid as to be wholly unable to distinguish one coffee tin from another, or one who chooses to assume that every coffee tin which is enamelled and is of the same common size and shape as the Plaintiffs'' tins must of necessity be one of the Plaintiffs'' tins. If you determine the question as to whether the Defendants'' tins are calculated to deceive by considering customers of the kind I have just mentioned, you would be induced to hold that any tin was calculated to deceive which only resembled the Plaintiffs'' tin in matters common to the trade; in other words, you would confer on the Plaintiffs'' tins a monopoly to which they are not entitled.
Two more authorities I will quote. One is (27) Thomas A. Smith Ltd.''s application, 1913 30 RPC 363, to register as a trade mark for shirts and collars the word "Limit" in large capital letters. An application as this is opposed by Austin Reed, Ltd., the registered proprietors of the trade mark, consisting of the word "Summit", for, amongst other goods, collars and shirts too. Before the Comptroller, the opposition fails, and registration is allowed, The opponents appeal to the court. The appeal fails too. In dismissing the appeal, Neville J. says at page 366: "The words in question Limit'' and ''Summit'' are words in common use and each of them conveys a perfectly definite idea, and the only connection between them, that I can see, is that one refers to the extreme of height, and the other refers to the extreme of breadth, and undoubtedly in the vulgar colloqualism of the day the word ''limit'' has a secondary meaning attached to it which may convey the idea of the extreme of excellence, or the extreme of the reverse. I do not think that so far as the meaning of the words is concerned, a reference to the one would in the least leave such an impression in the mind of the reader as to make him mistake the other for it. Looking at-the marks I do not think that there is any possibility of anybody being deceived. That nobody will ever make a mistake is more than I am prepared to say. but if there is a mistake. I think it will be made by some person so foolish, or so unobservant, as in that respect to be without the pale of the protection of the law".
The other authority is (28) In the matter of Crook''s Trade Mark, 1914 31 RFC 79, a case Of two rival marks again, "Swankie" for a detergent versus "Swan" for soaps and the like. The Comptroller-General as Registrar of Trade Marks allows "Swankie" to be registered. The opponents, the proprietors of the trade mark "Swan", carry the matter on appeal, which Joyce J. hears and dismisses, holding inter alia:
A. The judge is to consider the evidence of facts before him--not of opinion. Having so considered the evidence of facts, he must form his own independent judgment--a matter for him and him alone and not for the witness--as to whether the proposed -mark is calculated to deceive or not: Per Lord Macnaughten in (29) Payton & Co., Ltd. v. Snelling, Lampard & Co., Ltd., 1900 17 RPC 628 at p. 635.
B. What the court has to bear in mind is the sort of people who buy the articles..
C. "It can hardly be a bar to the admission of a mark that unusually stupid people, fools or idiots, may be deceived." : Per Romer J.
D. "With regard to possibilities, you can hardly say of anything that it is absolutely impossible. I do not think it is with absolute impossibilities that I have to deal, but I have to deal with reasonable probabilities.... there is no serious danger of there being any confusion whatever between ''Swankie'' and....''Swan''.... especially considering that ''Swan'' has nothing whatever to do with ''Swankie''.
60B. No more of authorities I need quote, though the fascinating topic, I am on now, is full of them. It is time now to formulate the test I shall have to go by, in order to find out, upon the evidence of facts before me, not upon the evidence of opinion, whether the use of the trade mark "Formica" is "likely to deceive or cause confusion", within the meaning of section 11, clause (a), of our "1958 Act". I say: ''not upon the evidence of opinion'', not only in view of (28) Crook''s Trade Mark case and (29) the Paytor, case supra, but also on the authority of the judgment rendered by Viscount Maugham for the Judicial Committee of the Privy Council in (30) Thomas Bear & Sons (India), Ld. v. Prayag Narain, 1940 LR 67 IA 212, that case of smoking tobacco versus chewing tobacco ("Khaini"), where a significant passage that occurs is : "There is no such person as an expert in human nature, and it is now well settled that a witness cannot be called to say that it is likely that purchasers of goods will be deceived."
Hence, by evidence of opinion I do not go; by evidence of facts I do. Here is a statement in a tabular form showing alongside one another what must be taken into reckoning and what must not be, in order to judge the likelihood of deception or confusion--the only portal that is so far open to "Ca-
To be taken into recokoning.
|
1. Ordinary people with ordinary sight and ordinary minds using ordinary heedfulness. |
1. |
Persons of extra-ordinary acuteness or extra-ordinary dullness; savants and scholars, on one hand, and fools, idiots or stupid fellows, on the other. |
|
2. Only the sort of people in category 1 (one) above who buy or may buy non-metallic laminated materials under the trade mark "Formica". |
2. |
The sort of people who never buy nor do ever dream of buying this type of materials |
|
3. Of those in category 2 (two) again, ordinary Indian people who understand English, come across "Formica", and, by deception or confusion, get, in place of a substitute for mica, "Formica", which is no such substitute and which they do not want. |
3. |
The ordinary Indian people who do not understand English-- people beyond whom therefore, it is to split up "Formica" into "For" and "mica", as is "Caprihan''s," case, and to sniff in it a substitute for mica. |
|
4. Evidence of facts. |
4. |
Evidence of opinion. |
|
5. Reasonable probabilities. |
5. |
Absolute impossibilities. |
|
1. Ordinary people with ordinary sight and ordinary minds using ordinary heedfulness. |
1. |
Persons of extra-ordinary acuteness or extra-ordinary dullness; savants and scholars, on one hand, and fools, idiots or stupid fellows, on the other. |
|
2. Only the sort of people in category 1 (one) above who buy or may buy non-metallic laminated materials under the trade mark "Formica". |
2. |
The sort of people who never buy nor do ever dream of buying this type of materials |
|
3. Of those in category 2 (two) again, ordinary Indian people who understand English, come across "Formica", and, by deception or confusion, get, in place of a substitute for mica, "Formica", which is no such substitute and which they do not want. |
3. |
The ordinary Indian people who do not understand English-- people beyond whom therefore, it is to split up "Formica" into "For" and "mica", as is "Caprihan''s," case, and to sniff in it a substitute for mica. |
|
4. Evidence of facts. |
4. |
Evidence of opinion. |
|
5. Reasonable probabilities. |
5. |
Absolute impossibilities. |
60. To this may be added another consideration, resting on a feature, which is the present litigation''s own, and distinguishes it from so many-others. The trade mark here consists of the word "Formica", a dictionary word No. doubt, a word from "the great open common of the English language", no doubt; yet not an ordinary English word in common use, as, say, each of such words ''Summit'', ''limit'', etc. is. In so far as it means the typical genus of the family Formicidae, the ant, none will say ''formica'' for ''ant'', unless one is addicted to the vice of preferring the long word to the short, or "words of learned length and thundering sound" to plain and unaffected diction. Let them--and they must be so few--be content displaying their superior knowledge. But they are not the sort of people I am after. Those I am after are the ordinary people with ordinary intelligence, and Indian people at that, whose mother tongue is not English. So, the mere fact that "Formica" is a dictionary word is nothing. Floccinau-cinihilipilification is a dictionary word too. But how many of the ordinary English people have even heard of such a pompous word? And how many know such a verbose word to mean ''setting little or no value'' or ''formica'' to mean ''ant'' ? A very few, if at all. The ordinary Indian people, by whose vulnerability to deception or confusion I go, know still less. Hence, taking together the test of onus, in the way I have indicated above, and that of proof, inclusive of its standard and manner, the proposition I shall have to go by in evaluating the evidence on likelihood of deception or confusion, works out as follows : Have "Caprihans" succeeded in proving, or are there materials on record to prove, to my satisfaction, that it is reasonably probable, upon evidence of facts, and not upon evidence of opinion, that the ordinary run of customers in India, with ordinary intelligence and a little knowledge of English, when they go about, with ordinary caution, to purchase those non-metallic laminated materials under the trade mark "Formica", are likely to be deceived or confused into thinking1 that they are purchasing substitutes for mica, that, by deception or confusion, they are likely to get, in place of substitutes of mica, "Formica" goods, which are no such substitutes and which they do not want ?
This, therefore, is the test I apply in proing and conning the whole of the evidence on record--which I now proceed to do, making it, however, clear that some of the authorities I have quoted above being cases of infringement detract little from their ratio. No doubt, as Kerley says in paragraph 836 in his great book on Law of Trade Marks and Trade Names, 9th edition :".......a weaker case than would entitle a plaintiff to succeed in an action for infringement will enable an opponent to object successfully to the registration of a new mark".
But, in the case on hand, "Caprihans" do not object to the registration of a new mark. They object to an old mark remaining on the register where it is for years, and for more than seven years, having acquired thereby a protection, given it by the provision of repose--a protection which can be lifted only on three specific grounds, two of which fail "Caprihans", and one of which is now under consideration. So, the outlook must necessarily be otherwise. A weaker case than would entitle a plaintiff to succeed in an action for infringement will not enable "Caprihans" to object successfully to "Formica" remaining on the register where it is for more than seven years. An equally strong case, if not a little stronger still, will enable "Caprihans" to get "Formica" off the register.
61. The evidence the learned Registrar has had put before him is affidavit-evidence only.......I now proceed to consider what this sort of evidence comes to, on the question of likelihood of deception or confusion, and no other. No other, because no other avenue is open to "Caprihans".
62. I start with the affidavit of Prakash Chandra Verma, a director of "Caprihans", filed on December 10, 1963, but affirmed on December 5 previous. On the point I am on now, two paragraphs of this affidavit call attention: paragraph 12, by which Verma affirms that "Formica" is nothing but two common English words (for and mica) put together and cannot, therefore, be an invented word; and paragraph 13, by which he affirms that the very name "Formica" is deceptive suggesting as it does a substitute for mica, that well-known mineral, which however does not enter, into the manufacture of the goods (sic) the trade mark "Formica". So, (sic) ilemnly affirms two things : One, "Formica", a combination of two common English words : for and mica: is no invented word.
Two, the very name "Formica"'' is deceptive, suggesting as it does a substitute for mica, which it is really not.
An affirmation as this merits more than one answer.
63. First: why resort now to the plea of "Formica" being not an invented word? What is really at the back of this plea ? Want to take "Formica" off the register on the ground that it is there in breach of section 9, sub-section 1, of "the 1958 Act", which, by clause (c) provides: "9. (1) A trade mark shall not be registered in Part A of the register unless it contains or consists of at least one of the following essential particulars, namely: --
* * *
* * *
(c) One or more invented words ?" But that way is barred against "Caprihans". I have stated why, and on the strength of a high authority too. "Cap-rihans" can no doubt call in aid section 11, clause (a)--as they do. But the grounds on which section 11, clause (a), is offended against are grounds which exclude further consideration of the questions dealt with by section 9. I am simply repeating what I have said in paragraphs 29-32 ante.
64. Second : truth to tell, as it seems to me upon the whole of the affidavit-evidence, "Formica", not an ordinary word in common use, Verma as much as Rankin, the opposite number of Verma, in Formica International Limited, the second respondent to this appeal, do (sic) as a dictionary word at all. Whereas Verma sees in it two very common words "For" and "mica" put together, words so put not making an invented word, as he says, Rankin, by paragraph 7 of his affidavit bearing date August 26, 1964, swears that "Formica" is an invented word, coined for indicating the commercial origin of the products sold under such mark, having no connexion with mica, and having been "purely meaningless at the date of its adoption." "And so it remains", just the words Rankin concludes this paragraph with. What Rankin swears does not surprise me. Verma does not surprise me either, when he claims not "Formica" to be a dictionary word, but sees in it a combination of two words : "For" and "mica", and therefore, not an invented word, just as "Cheapandgood" is not, to take the gross example Lord Halsbury takes in the Solio case : (31) Eastman Photographic Materials Co. Ltd.''s application, 1898 AC 571: 15 RPC 476. Far from being surprised, I take it to be very probable. Because neither Verma nor Rankin in all likelihood knows "Formica", not an ordinary word in common use, none saying ''formica'' for ''ant'' etc., as a dictionary word. To take that sesquipedalian word again : floccinaus-inihilipilifaction, if some enterprising man of commerce resorts to it as his trade mark, how many amongst the ordinary English people, nothing to say of the ordinary Indian people, knowing English, will take it as a dictionary word which, in fact, it is Probably none. Probably too, all will take it as an invented word. So with "Formica", though not of that sound and thunder, but not an ordinary word nor in common use. Rankin swears what he honestly believes to be true. Verma too affirms what he honestly believes to be true: that "Formica" is a combination of two words, not a word, a dictionary word at that, in itself. But barren is such discussion, because none of the grounds in section 9 avail "Capri-hans". The only'' ground that avails them is that in section 11, clause (a), through which they cannot reach section 9. By parity of reasoning, it will be a profitless task to enter into the question that nothing can thwart, even in the realm of section 9, "Formica''s" registration under clause (d), sub-section 1, thereof, corresponding to section 6, sub-section 1, clause (d), of "the 1940 Act", as Mr. Shankar Ghose submits, "Formica" being a word having no direct reference to the character and quality of the goods, clauses (a) to (e) being independent of, and alternative to, one another, and clause (d), therefore, standing on its own, just as the ratio in the (31) Solio case is, and just as it follows plainly enough from the words : "at least one of the following particulars", section 9, sub-section 1, almost opens with.
65. Third : the question of an invented word being thus put aside as irrelevant, what remains in Verma''s affidavit-evidence is the charge of deception. In order to understand how the charge is laid, the whole of the relevant portion of the averment in paragraph 13 of Verma''s affidavit (which I am on now and which I have only summarised so far) needs looking into:
It (''Formica'') is further deceptive inasmuch as it suggests that the goods on which it appears would be a substitute of mica which is a well-known mineral. The Registered Proprietors'' laminated sheets on which they claim to use the mark are made from paper treated with a chemical called malamine which hardens on heat treatment. No mica enters into its manufacture. In physical properties the Registered Proprietors'' said sheets are totally different from mica and they can never substitute mica in industrial use. The registered trade mark is inherently deceptive and its continuance on the Register is barred by section 32(b) of the Act".
And this is all Verma solemnly affirms on the charge of deception, section 32, clause (b), he concludes his averment with, bringing in its trail infraction of section 11, with clause (a) of which alone I am concerned in this appeal, Call this evidence of facts ? You cannot call it so. It is evidence of what Verma thinks. It is evidence of Verma''s opinion. Verma''s eminence in the trade of laminated materials is not denied. What is denied is his expertness in human nature--indeed, "there is no such person as an expert in human nature"--and his consequential ability* to say how ordinary people in our land with ordinary intelligence and a little knowledge of English, going about in the market, with ordinary circumspection, for purchase of such laminated materials, will take, on a reasonable probability, the "Formica" goods to be, when they come across them, as substitutes for mica or as products with a commercial origin of their own. So, such evidence of opinion, even though it is the opinion of one of Verma''s stature, appears to be beneath my'' notice. By such evidence of opinion, I cannot, I must not, go, in order to decide the probability of deception: the (28) Crook''s Trade Mark, (29) Payton and (30) Thomas Bear cases supra. See paragraph 60, 60A and 61 ante.
66. The next affidavit, in order of date, coming from "Caprihans", is that of Sadhubhai Vallabhai Desai (S.V. Desai), filed on August 17, 1964, but solemnly affirmed on August 14 previous. The averment on the charge of deception or confusion is that in paragraph 10 which, in so far as it is material to the charge laid, bears: ''I submit that the person to be considered by the Tribunal is the average intelligent man of the street completely unaware of the technical aspects of the furniture trade end who hears for the first time the word ''Formica'' and it is his reaction that must resolve the question."--a submission which I accept, as the test I have formulated (paragraph 61) goes to show, the purchaser, who hears ''''Formica" for the first time, made a point of in this submission, being implied there, a submission which the learned Registrar has accepted too, as the following extract from his judgment reveals :
Admittedly, the goods are not a substitute for mica nor have they any connexion with mica. But this fact by itself is not decisive of the question. I think the proper test is to consider the immediate mental reaction or first impression of a man of average intelligence who comes across the word ''Formica'' in relation to the goods as a substitute for mica. No evidence was produced on this point".
And yet it has been said more than once on behalf of "Caprihans" that the learned Registrar passes by the test of probability of deception. He does not. He is fully alive to it. He is after it*. But he cannot pursue it, as he says very rightly, because of total absence of evidence, where evidence, and nothing but evidence, can "put before the court the material (and the only material) upon which the court could come to a conclusion upon the point in issue", namely, the probability of deception or confusion, the quote being the words of Bennett J. in the (19) Gaco case supra. (1)
67. To come back to Desai''s affidavit, the tenth paragraph thereof, quoted in part, continues and concludes : "To such a person (an average intelligent man on the street ignorant of the technical aspects etc.) I submit, ''Formica'' could have only one meaning, i.e., ''For mica'', and nothing else. A combination of two ordinary English words which is capable of a grammatical meaning would at once convey only that meaning to the hearer of it and none other".
What is it I see here--evidence of facts or evidence of opinion ? Evidence of facts it is not; it Cannot be. Desai does not solemnly affirm here any fact of anybody having been deceived or anybody''s deception having been probable. He solemnly affirms instead his opinion--mark the words "I submit"-- that to an average intelligent buyer "Formica" can have only one meaning: "For mica", a substitute for mica. Such opinion evidence again, though coming from one of Desai''s stature, is beneath my notice. With all his eminence in the trade, he is not, as indeed he cannot be, an expert in human nature. Even Mr. Shah does not see in such averment by Desai evidence of facts. He sees instead in an averment as this, to quote his exact words, "Desai pleading law and expert opinion". If that, Desai pleads so in vain. Evidence of opinion, no matter who or what the expert is, whose opinion is being pleaded so, cannot be a substitute for evidence of facts by which alone I can go, in order to decide whether deception or confusion is probable. Pleading law ? Law neither exists nor works in the abstract. I must get at the facts first, such as how the trade, in which "Formica" is sold, is carried on, the circumstances and the places in which "Formica" is sold, the classes of persons who buy them and with what first reaction in their mind, whether such persons include those who are illiterate or ignorant or the reverse, the manner in which they are accustomed to ask for "Formica": whether as "Formika", with a macron placed over "i" in "Formica"--, that is, a straight line placed over a vowel to show it just what the system of notation known as the ''Text-book key", as distinguished from the phonetic system of orthoepy, aims at, e.g. in ''mine'', ''mind'', ''mime'', ''bribe'', etc., or as "Formeeka", with no macron over "i" or with a breve over it,--a breve, that is, the mark of a short vowel, opposed to macron, as in ''tin'', ''hit, ''sit'', ''bid'' etc. So what the hearer will hear, --"Formica", with a macron over "i" or "Formeeka", without a macron or with a breve,--is anybody''s guess in absence of evidence, and cannot necessarily be what Desai, by the opinion he holds, takes for granted. Unless such facts are established, what good pleading law alone, the law here being, as is indeed obvious by now, section 11, clause (a), so dependent on facts, the like of which has just been tabulated, and nothing like which the affidavit-evidence of Verma and Desai, so far reviewed, discloses. So, Mr. Shah''s attempt to turn the corner on the basis of evidence of opinion, not evidence of facts, fails. Necessarily fails too the affidavit-evidence of Desai dated August 14, 1964.
68. There are two other affidavits, relied upon by "Caprihans". One is by Desai, and the other is by Verma. Both have been affirmed on November 25, 1964. Desai''s has been filed on November 28, 1964. Along with it has been filed Verma''s as an exhibit to Desai''s. I find there nothing new to comment upon, in support of the issue of probable deception or confusion, and leave them at that. In sum, I miss, as. the learned Registrar does any evidence of facts, as distinguished from evidence of opinion, from "Caprihans", in support of their plea that "Formica" is a mark, "the use of which would be likely to deceive or cause confusion", within the meaning of section 11, clause (a), of "the 1958 Act", even though the onus is upon them to substantiate this plea of theirs.
69. Now, to the affidavit-evidence in support of "Formica" remaining on the register and incapable of being dislodged therefrom on the ground that section 11, clause (a), of "the 1958 Act" has been offended against. The application by "Caprihans" for rectification, be it recalled, is dated June 13, 1963, but filed in the registry four days later.
(The judgment deals with such affidavit-evidence in a tabular form and proceeds:)
70. Affidavit-evidence as this, coming from people who know what they are speaking about, tells. Not that it is an immaculate one. Not that Mr. Shah has no criticism to make. But that it is evidence of facts,--not evidence of opinion. None of these deponents--ordinary people with ordinary intelligence, with an eye on these laminated materials known to the trade as "Formica", and using ordinary caution--say that they took "Formica" as a substitute for mica. They took it as indicating the commercial origin of the goods or associated with the goods of Formica International Ltd. That is what counts;that is what tells, on the charge of probable confusion or deception which falls for my decision.
71. And what is Mr. Shah''s criticism of such affidavit-evidence ? Here is it, one by one:
First, some of the affidavits -are of the same pattern. They are. But when facts are of the same pattern, will the affidavits be of different patterns ?
Second, the crucial date is May 13, 1952, the date of original registration of "Formica". So, the years these deponents mention as the years of their having come to know "Formica"--the years which are years other than 1952 --are irrelevant, such as 1959 stated by Deobrat Tyagi, 1950 stated by Razi Mohamed, 1946 stated by Bawa Para-mata Singh etc., as tabulated in the chart (paragraph 71). With respect, I do not agree. The two dates are relevant here,-not one. The two dates are May 13, 1952, the date of "Formica''s" original registration, and June 17, 1963, the date of application by "Caprihans" for rectification. Necessarily are relevant too facts which existed before May 13, 1952, or between May 13, 1952, and June 17, 1963. I have stated why: paragraphs 22-26 ante. There appears, therefore, to be nothing wrong in the deponents stating years other than 1952, whether before or after. Then, when a -deponent says : "I have known ''Formica'' since 1946", as, for example, Bawa Parmata Singh does, it does not mean that he had no knowledge of "Formica" in 1952. "Since 1946" means that he knew it as well in years that followed.
Third : how could Bawa Parmata Singh come to know "Formica" since. 1946, when Rankin''s affidavit is that "Formica" laminates were distributed in India between 1947 and 1957, as noticed in paragraph 45 ante ? An inconsistency is seen here. But "Formica" is as old as 1913. Decorative laminated plastic was first produced "in the late 1920''s", though in a foreign land. : paragraph 45 again. So, one in the trade having come to know of it in 1946 has little to be surprised at.
Fourth: another inconsistency, it is said, lurks in Deobrat Tyagi''s affidavit, in that he solemnly affirms in paragraph 3 : "The trade mark ''Formica'', of which Formica International Limited are the owners, has been known to me since the year 1959 in respect of laminated plastic materials."--whereas Rankin''s affidavit is : "... since 1959 they (''Formica'' laminates) have been manufactured in England and marketed in India by Formica Limited....
Why say then Formica International Ltd. instead of Formica Ltd., as Deobrat Tyagi does, and that too with reference to the year 1959 ? Herein, it is said, lies the inconsistency. A criticism as this merits three answers. One, Deobrat Tyagi''s affidavit is dated August 14, 1964. At that point of time, Formica International Limited are the owners. He says as much. When he refers to 1959, he associates 1959 with his knowledge of "Formica", not with the ownership, the history of which a stranger like him does not and need not know. Two, the history of ownership reveals that the name of Formica Ltd. was changed into Formica International Limited in 1959 too. See paragraph 10 ante. The so-called inconsistency then vanishes. Three, what I look forward to for, in such affidavits, are materials on the charge of probable deception or confusion. What does it matter, therefore, if a deponent goes a little wrong on the history of ownership Tyagi does not go wrong either.
Fifth, particulars are missed in'' Tyagi''s averment in paragraph 3 just reproduced. Absence of documents showing how Tyagi came by "Formica" laminates is commented on too. Sure enough, with all particulars and documents, Tyagi''s affidavit would have been an ideal one. But the question is whether or no the court will draw a presumption adverse to Tyagi for lack of particulars or documents. The law is, the court may, not that the court must. Upon all I see on materials in the affidavit-evidence, including "the meagreness of imports of ''Formica'' decorative laminates", as sworn to by Desai in his affidavit of November 25, 1964, I am unable to draw any presumption adverse to Tyagi. Arguendo, say, I reject all the affidavit-evidence in support of "Formica" continuing on the register. So what ? "Caprihans", upon whom lies the onus to prove the charge of probable deception or confusion, have failed to produce before the learned Registrar any material upon which a conclusion can be come to in favour of the charge just mentioned, dIsplacing the prima facie evidence of validity of "Formica''s" registration u/s 31, sub-section 1, of "the 1958 Act": paragraph 53 ante.
Sixth, some of the affidavits, e.g., Razi Mohamed''s, are said to be "tutored". I see no material on which I can bring myself to hold so.
Seventh, the affidavits of Razi Mohamed and Bawa Parmata Singh refer to "Formica" as well known to them, to the trade, and to the interested public. But when it comes to saying what the trade mark means to all, namely, as nothing but the commercial origin of the goods, they do not go beyond themselves and the trade, and exclude the interested public. Say, they do. Even then what "Formica" means to them and to the trade stands. Certainly they did not shadow all the interested public, when out for buying "Formica" laminates. So, nothing much can hinge on it; the more so, when the expression "to the trade" is compendious enough to include the interested public as well. This is what Sarkar C.J. (then Sarkar J.) says, speaking for the court, in (32) Corn Products Refining Co. v. Shan-grila Food Products, Ltd., AIR 19<=j0 SC 142 at page 144: "We think that the learned appellate judges put too strict a meaning on the words ''in the trade'' in thinking that they referred only to the trades people. In our opinion these words may refer also to the public."
72. And these are all the criticisms of the affidavit-evidence in support of "Formica" remaining on the register. Most of these criticisms appear to be destitute of merit. On the whole, I accept such affidavit-evidence,--evidence of facts. I reject the affidavit-evidence led by "Caprihans",--evidence of opinion. And I hold, upon the whole of the affidavit-evidence, the charge of deception or confusion against "Formica" fails.
73. The finding I have just recorded rests upon the whole of evidence. Necessarily, therefore, the question of burden of proof,--be it of the first variety resting on the pleadings or of the second variety resting on the adducing of evidence recedes into the background and does not even call for any consideration, as pointed out by Lord Dunedin in (32) Robins v. National Trust Co., Ltd., 1927 AC 515 (520),".....onus as a determining factor of the whole case can only arise if the tri-bunal finds the evidence pro and eon so evenly balanced that it can come to no such conclusion. Then the onus will determine the matter. But if the tribunal after hearing and weighing the. evidence comes to a determinate conclusion, the onus has nothing to do with it, and need not further be considered."
The conclusion I have come to, after weighing the evidence, is a determinate conclusion. So, I might not have considered the onus at all.
74. Evidence failing "Caprihans", --and fail it must--, does the maxim, res ipsa loquitor, come to their aid? Mr. Shah submits, it does. Let this submission be examined. Res ipsa loquitor means: the thing speaks for itself. What is the thing here ? "Formica". And how does it speak ? Formika, with a macron over "i" of "Formica", or with no macron, or with a breve, just the opposite of what a macron indicates (1). Evidence again is the answer. But there is no evidence to show how in the trade, in which "Formica" is sold, the manner in which "Formica" is asked for: as Formica or as Formeeka. And, in absence of such evidence, the maxim, so much relied upon, can do no duty here, even if I transfer the maxim to the statutory domain of trade-mark law from its usual domain of tort, where--"Under special circumstances, indeed, the mere fact that an accident has happened may be prima jade evidence of negligence, casting upon the party charged with it the onus of proving the contrary, for owing to the nature of the accident, res ipsa loquitor." : Broom''s Legal Maxims, 8th edition, page 253.
So, the contention, rested on this maxim, fails too.
75. I have so long proceeded on the footing of "Formica" being split up into two : "For" and "mica". And I have found no evidence of facts that it is reasonably probable that the average buyers, and the Indian buyers at that, whose mother tongue, amongst the vast majority, is not English, nothing to say of the way of pronouncing English words by them being not the way how Englishmen pronounce them, as pointed out in the (32) Corn Products case supra, would be deceived or confused into thinking that they were purchasing substitutes for mica when they were- in fact purchasing "Formica". That is no doubt one consideration. But there is still another: is it reasonably probable either, that such buyers would ever think of splitting "Formica" into component parts : "For" and "mica" ? A matter for evidence again. But there is no evidence. That apart, on a consideration as this, namely, splitting up into component parts, "Lakshmandhara", a medicinal preparation, is sought to be kept away from probable deception or confusion because of comparison with an old existing trade mark "Amrit-dhara", also a medicinal preparation. But that attempt fails. S. K. Das C.J. (then S. K. Das J.), speaking for the court, in (33) Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 449, observes at page 453 : "An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as ''current of nectar'' (''Amritdhara'') or ''current of Lakshman'' (''Lakshmandhara''). He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase."
The trade in such medicinal preparations relates, no doubt, to goods "largely sold to illiterate or badly educated persons" and "it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between the ''current of nectar'' and ''current of Lakshman,''" to quote further from his Lordship''s judgment. But who the trade in "Formica" laminates relates to ? Referring to advertisements of "Formica" in English in foreign periodicals at a cost "running in the region of �2,000,000," as sworn to by Rankin in his affidavit of August 26, 1964, Desai answers :
A. "I submit that alleged circulation of the alleged foreign periodicals must be assessed against the enormous population of India who do not know even the English alphabet.": paragraph 5 (X) of Desai''s affidavit dated November 25, 1964: page 115 of the paper-book.
B. "The alleged advertisements in the so-called international periodicals reach only to an infinitesimal minority of foreigners and Westernised "Indians and not hundreds of millions of Indians who are in blissful ignorance of English-": paragraph 5 (xxii) (6) ibid. : p. 122 ibid.
If you are after hundreds of millions of Indians who are in blissful ignorance of English, as indeed they are, if you are after the enormous population of India who do not know even the English alphabet, as indeed they do not, as probable customers of "Formica" stop saying "Formica" is inherently deceptive, compounding as it does two common English words: "For" and "mica", suggesting substitutes for mica. One who is in blissful ignorance of English, one who does not even know the English alphabet, cannot read or sense in "Formica" "For mica", a substitute for mica.
76. Leave aside the indigenous portions like "Amritdhara" and "Lak-shamandhara" the trade in which relates to goods mostly sold to the illiterates and to the badly educated. Take the case of the application to register "Erec-tiko" opposed by the proprietors of the trade mark "Erector" in (34) William Bailey (Birmingham) Ltd.''s application, 1935 52 RFC 136, where the method to divide the word up and to found a distinction thereupon fails and the Registrar is directed by the court not to proceed. In directing so, Farewell J. says: "I do not think it is right to take a part of the word and compare it with a part of the other word; one word must be considered as a whole and compared with the other word as a whole. I thing it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word".: just the passage which S.K. Das J. quotes in his judgment in the (33) Amritdhara case supra and Kerley''s Law of Trade Marks and Trade Names, 9th edition, quotes too in paragraph 487. True it is, as Mr. Shah points out, in both these'' cases : the (33) Amritdhara case and the (34) William Bailey case, what is seen is a conflict between two marks. What is however seen in the case on hand, as Mr. Shah contends, is the inherent vice in the mark itself: "Formica", meaning "For mica". But, upon evidence, I find no vice. And then, "the trade mark is the whole thing--the whole word has to be considered", to quote from S.K. Das J.s judgment again in the (33) Amritdhara case supra. So considered, "Formica", taken as a whole, shows no vice. Far less does it show any vice if it is pronounced in India as Formeeka. How it is in fact pronounced in the trade is anybody''s guess. It is not in the realm of evidence. It is not a case of a misspelt word either, as "Orlwoola" is for "All Wool": (35) Orlwoola Trade Marks, 1909 28 RPC 850, and cases of that class. It is a word in itself. Even taking the standard pronounciation of "Formica" amongst English-knowing Indian people as Formaika, though there is no evidence to that end, which portion of the word is slurred and which portion is not ? I do not know. The evidence does not help me knowing it either. If the earlier portion is slurred, the ear--and the ear is a pretty good test to go by-- will not hear it as "For mica": "For maika". If the termination is slurred, the ear may or may not hear it so, depending upon how it is slurred. A doubtful case. The ear will hear it as "For mica", if no part of it is slurred and if a short pause be taken after pronouncing "For" and before pronouncing "mica". But why shall I assume so, in complete absence of evidence ? Why shall I dissect the word to find probable deception or confusion, when, upon evidence, the word by itself does not give rise to either ? The so-called inherent vice cannot, therefore, be assumed. It must be proved. It has not been proved.
77. The contention on inherent vice brings me to another topic--an allied one. On January 2, 1958, "Caprihans", through their Director Verma, was writing to Formica Ltd., De La Rue House, 84 86 Regent Street, London W. 1, with a view to sounding them for partnership so that they could establish an industry in India with the necessary technical knowledge and with a reasonable chance of success too. It is a letter which I find as an exhibit to Rankin''s affidavit and to Verma''s affidavit too, captioned "Evidence in Reply". The penultimate paragraph of this letter bears inter alia:
It is understood that the name Formica will only be used after the material reaches the necessary standard.
The proposal fell through. At the first blush, it, therefore, looks that "Formica" is free from vice if "Caprihans" and Formica Limited are in copartnership; but "that "Formica" becomes full of vice, and inherent vice at that, when "Caprihans" fail to become partners of Formica Ltd., now Formica International Ltd. Looking at the matter, however, a little below the surface, the true position comes out thus: "Formica" is either likely to deceive or not likely to deceive; "Formica" is either likely to cause confusion or not likely to cause confusion. If "Formica" is likely neither to deceive nor to cause confusion, as I find, upon evidence and reasonable probability, it is not, here is an end of all controversy. "Formica" survives on its inherent strength. Could I have found, however, "Formica", devoid of inherent strength, but down with the inherent vice" of being likely to deceive or cause confusion, as "Caprihans" contend, no amount of consent by Verma or anybody of "Caprihans" to adopt the name "Formica" would have rendered valid what the statute, by section 11, clause (a), a prohibitory enactment, declares to be invalid. As Lord Sumner points out, quoting (36) Nixon v. Albion Marine Insurance, 1867 LR 2 Ex. 338, on the question of statutory invalidity, in (37) Surajmull Nagoremull v. Triton Insurance Co., Ltd., 1924 LR 52 IA 126 :
No court can enforce as valid that which competent enactments have declared shall not be valid, nor is obedience to such an enactment a thing from which a court can be dispensed by the consent of the parties....
Such then appears to be the true position at law, contended for by Mr. Shah and conceded by Mr. Shankar Ghose.,
78. Two other matters I must refer to. One is the ground of non-user, for which "Caprihans" had filed on November 2, 1962, an application for rectification u/s 46 of "the 1958 Act"--an application which was numbered as Rectification Cal.-41. The registered proprietors of "Formica" had contested the rectification proceedings which "Caprihans" withdrew: paragraph 18 of Verma''s affidavit bearing date December 5, 1963. So, this is now closed. The doctrine of finality of litigations rules here. This plea is not available either, to "Caprihans". u/s 32 of "the 1958 Act". Nor is their present case rested on non-user. "The present proceedings are based on section 32(b) and (c) of the Act."--as is the averment of Verma in paragraph 18 of his affidavit just mentioned.
79. The other matter is foreign registration and user of "Formica" in more than one hundred countries, some of which are English speaking countries at that, as stated by Rankin in his affidavit of August 26, 1964. No doubt, what counts most is the law of the country where registration is made. Yet registration in so many countries & not valueless either. This is what Lord Cozens-Hardy M. R. says in (38) La Societe Ananyme Dubonnet''s application, 1915 32 RFC 241 at page 251:
I think foreign user cannot be disregarded.....There have been extensive sales by the applicants in almost all countries oi the world, and registration of the mark in a very great many countries. In no single instance has any confusion or deception been proved or even suggested as having, in fact, occurred, and F do not think that, under those circumstances and on those facts, we ought to have, regard to the statements of belief of persons as to what will happen if this mark is registered". This passage fits the case on hand pretty nicely; the more so, as some of the very great many countries here too are English speaking countries, such as Australia, Great Britain, Canada (part at any rate), and USA, where "Formica", I can take it for granted, is pronounced in a correct manner, that is as "Formaika": just the orthoepy which is given in Murray''s dictionary, showing the equivalent key words to be "eye", "bind".
80. The case of (39) National Cash. Register Company''s application, 1917 34 RPC 273, appears to be a pointer too. Sargant J. observes towards the close of his judgment at page 282:
Finally, considerable importance should, I think, be attached to the fact that the word "National", or its French equivalent, has been registered as the Trade Mark of the Applicants, not only in the country of origin, namely the United States of America, but also in all, or nearly all, the civilised countries of the world".
The learned judge then refers to the International Convention of 1883, and concludes: "But in cases where the Trade Mark is so registrable and the question of registration is reduced to one of expediency rather than of principle, the circumstance that the Mark is registered in its country of origin as well as in most other countries is, in my judgment, an important element for the guidance of the registering tribunal here in the exercise of its discretion."
Result : the registration is directed to be proceeded with. The Registrar appeals. The appeal fails: (40) National Cash Register Company''s application, 1917 34 RPC 354, Swinfen Eady L.J. also referring to the registration of the mark "National", or the French form of it "La Nationale" in most European countries, including France, Germany, Belgium, Holland, Italy, Switzerland, Spain, Norway and Bulgaria. Hence, all I say is, foreign registration and user of "Formica", sales of such laminates having come to Rs, 200,000,000, according to Rankin''s affidavit, "for the year ended April 1961", are not valueless. They have some value, international convention or no international convention, to which India is a party, the latest such convention having been at Lisbon on October 31, 1958 (Kerley''s Law of Trade Mark and Trade names, 9th edn., paragraph 952). This is perhaps as it should be in the realm of trade and commerce all the world over. So, such consideration'' too goes in favour of "Formica" remaining on the register.
81. Of the three points for decision in this appeal, as formulated in paragraph 17 ante, two, the first and the third, are found against the appellant "Caprihans" in the foregoing lines: (i) the likelihood of deception and confusion caused by the use of "Formica" (paragraphs 51-82) and (iii) a misstatement in the original application for registration of "Formica", infracting, it is said, section 48 of "the 1958 Act" (paragraphs 19 et seq and 48). The second remains: entry of the trade mark "Formica" in the register without sufficient cause. This has been answered too, though not specifically. The material for the answer is there (paragraph 23). And the answer is the answer given by Wynn-Parry J. in the (4) Pan Press case supra, on the construction of section 32 of the British Act 1938, which corresponds, broadly speaking, to section 56 of our present Act, by virtue of which "Caprihans" seek rectification, and which, in its sub-section 2, contains the expression "any entry made in the register without sufficient cause." Section 56 is procedural. The grounds justifying removal cannot be found here. The test is if the entry complained against gets into the register contrary to some section other than section 56. The only section available to "Caprihans" other than section 56 is section 11, clause (a). "Formica" does not get into the register contrary to section 11 clause (a), no cause for probable deception or confusion having been there. Hence the second point fails "Caprihans" too.
82. First and last, upon all I see before me, I am clear,--and so I hold--, that the learned Registrar has plainly been right in dismissing the application by "Caprihans" for rectification.
83. I, therefore, affirm the judgment and order of the Registrar dated December 20, 1965, corresponding to Agrahayana 29, 1887 ( Saka).
84. In the result, the appeal fails and be dismissed with costs.
85. Certified for two counsel. For reasons beyond my control, I have "somewhat of the cuncative" (as a Lord Chancellor treed to say) in preparation of this judgment and some others. I regret the inconvenience caused; the more so, as it is a trademark case where a speedy decision was essential.
