ORDER
1. This is an application under Section 56 of the Trade and Merchandise Marks Act, 1958. The petitioner Banik Rubber Industries is seeking the cancellation of a trade mark which has been registered by the Registrar of Trade Marks, under Registration No. 377580 in Class 25 in the Trade Marks Register. The petitioner is also seeking the rectification of the register of trade marks by removal of the aforesaid entry, from theregister of trade marks, in favour of the respondent No. 1, Sree K. B. Rubber Industries.
2. The case of the petitioner inter alia is that the firm in the name of Eastern Rubber Works had got registration in respect of two trade marks. One was the trade mark bearing Registration No. 232909 dated 27th December, 1965 in Class 25 in the Trade Mark Register in the name of 'Ajanta Hawai' in respect of Chappals and soles and straps. The other tade mark is the trade mark bearing No. 242561 dated 7th June, 1967 in Class 25 in the Trade Mark Register under the name of 'Mugur Brand' in respect of chappals. There is no dispute that the pelitioner, Banik Rubber Industries, is the present holder and/or assignee of the said trade marks, under the name of 'Ajanta Hawai' and 'Mugur Brand'. The said Eastern Rubber Works was also the proprietor of a registered copyright in respect of artistic work relating to the aforesaid trade marks, under copyright registration No. A 11318/74 dated 11th June, 1974. However this court is only concerned with the rights if any of the parties under the Trade & Merchandise Marks Act 1958.
3. On 8th June, 1981 the petitioner sent a notice to Sree K. B. Rubber Industries, the respondent No. 1, stating inter alia that the respondent was using the trade mark 'Ananta' in such a fashion so as to deceive or confuse the customers or intending purchaser of 'Ajanta Hawai' Chappals. The petitioner also objected to the use of the trade mark 'Hammer Brand' which according to the petitioner, was confusingly similar and/or nearly resembled the registered trade mark 'mugur Brand'. By the said letter the petitioner inter alia requested the respondent No. 1, to desist from manufacturing, stocking, selling, advertising and/or distributing any products bearing the offending trade marks. The respondent No. 1 by its letter dated 26th June, 1981 replied claiming that the said trade mark 'Ananta' and the 'Hammer Brand' were their distinctive trade marks which they had been unsing over three years. According to the respondent No. 1, on comparison of the respective marks there were differences in them and nobody could bemisled and/or confused in selecting the article intended to be purchased. The respondent No. 1 refused to comply with the request made by the petitioner. On 26th June, 1981 the respondent No. I filed an application for registration of its trade marks under the name of 'Hammer Brand' and 'Ananta Hawai' with a crossed 'Hammer' within the circle. Pursuant to the application an advertisement was issued in the Dainik Basumati under Section 20(1) of the Trade and Merchandise Marks Act, 1958 before acceptance.
4. On 25th August, 1981 a petition of complaint was filed under Section 156(3) of the Criminal Procedure Code read with Sections 77,78 and 79 of the Trade Marks Act by one of the partners of the Eastern Rubber Works. On 2nd February, 1982 the said criminal complaint was dismissed and the partners of the respondent No. 1 were discharged inter alia on the ground that there was a sufficient evidence. On 14th April, 1982 another criminal complaint was filed and the same was marked as Case No. 137 under the same sections of the Criminal Procedure Code and the Trade & Merchandise Marks Act. Further, advertisements were published in respect of the proposed trade mark, inter alia in trade marks journal. On 21st January 1983 the petitioner filed an opposition to the registration of the proposed mark in favour of the respondent No. 1 under the name 'Hammer Brand' and 'Ananta Hawai' under Section 21(1) of the Trade & Merchandise Marks Act 1958. On 6th May, 1983 the respondent No 1 filed its counter-statement. The petitioners were required by the Registrar to file their evidence by 29th September, 1983 under Rule 53(1) of the said Trade & Merchandise Marks Rules, 1959. On 15th December, 1983, the Registrar of Trade Marks made his order inter alia recording that by reason of the operation of the sub-rule (2) of Rule 53 of the Trade & Merchandise Marks Rules, 1959, the opponents (the petitioners herein) are deemed to have abandoned their opposition and it is ordered that the application of the respondent No. 1 be accepted and proceeded to register.
5. The petitioner had filed with the Registrar an opposition dated 21st January,1983, in which the ground of opposition was specified. The petitioner also relied on the registered trade marks Nos. 232909 and 242561, both in Class 25. The petitioner in its opposition stated that the trade mark No. 232909 consists of the words 'Ajanta Hawai' written in fanciful lettering and the trade mark No. 242561 consists of a composite mark comprising inter alia the device of 2 crossed 'Mugurs' (Clubs) and the words 'Mugur Brand' and encompassed within 2 concentric circles. The petitioner also mentioned in its opposition that the words 'Ananta Hawai' and 'Hammer Brand' as used by the respondent No. 1 are closely similar to and deceptive to the petitioner's trade marks as used, which amounts to infringements of trade mark and copyright registration under Sections 9(1), 11(a), (b) and (e), 12(1) and 18(1) of the Trade and Merchandise Marks Act.
6. The petitioner also mentioned that by reason of long and extensive use of their trade mark and the copyright design, the same has to be recorded as customary (copy) chappals manufactured and marketted by the petitioner. According to the petitioner any averment of any identical or a deceptible trade mark by any other policy is meant to deceive the public. According to the petitioner, the said proposed trade mark was deceptively similar to their trade mark and the points of dissimilarity which according to the petitioner had been fraudulently introduced by the respondent No. 1 with a view to achieve their wrongful designs.
7. However, the Registrar treated the said opposition under Rule 53(2) of the aforesaid Rules as abandoned and made the aforesaid order dated December 15, 1983 in the application No. 377580, made by the respondent No. 1 directed that the application be accepted and proceeded to the registration.
8. Thereafter, on February 18, 1984 the petitioner filed before the Registrar, apetition for review of the said order dated December 15,1983. In the said application the petitioner mentioned the fact with regard to its registered trade marks. Petitioner also mentioned the fact about its opposition wherein it reliedon Sections 9, 11, 12(1) and 18(1) of the said Act, in support of its opposition. It also mentioned that the authorised attorney for the petitioner had unfortunately fallen ill and during his absence from the office the said File relating to the said proceeding got mis-placed and no application for extension of time could be filed in due course. The said application for review was, however, dismissed by an order dated January 9, 1985. The Deputy Registrar of trade marks, inter alia, held that there was no sufficient reason for reviewing the order passed by the Joint Registrars on December 15, 1983. However, he further held that if the petitioner is still aggrieved by the registration of the mark in favour of the respondent No. 1, the petitioner can initiate necessary proceedings for rectification of the registration under Section 56 of the Act and thus the petitioner has an alternative remedy.
9. Under the aforesaid circumstances the instant application under Section 56 of the said Act was filed on 23-9-1985. There is one more point to be noted that is on 29-11-1984 Ranajit Mitra on behalf of the petitioner intimated the Registrar of trade marks that he would be out of Calcuttafor personal reasons between 29-12-1984 and 10-1-1985 and prayed that the review petition should not be taken up during that period. Such letter was received by the Registrar of trade marks on 2-1-1985. The letter of the Registrar dt. 28-12-1984 reached the office of the learned Advocate for the petitioner on 2-1-1985 when Sri Mitra was out of Calcutta and the office was closed. However, inspite of the said application of the petitioner's Advocate for adjournment of the review application was delivered and the same was heard on 5-1-1985:
10. On 16-4-1985 a notification was printed in the trade marks journal to the effect that the application for registration of the trade mark ('Hammer Brand' 'Ananta Hawai') was allowed in favour of the respondent No. J.
11. Mr. Ginwala, the learned Counsel on behalf of the petitioner drew my attention to Section 56 of the said Act which provides forthe cancelling and/or varying the registration of the trade mark on the ground of any contravention or failure to observe a condition entered on the register. Sub-section (2) of the said section provides that any person aggrieved by any entry wrongfully remaining on the register may apply to the High Court or to the Registrar and the Tribunal may make such order for making, expunging or varying the entry as it thinks fit. Section (3) provides that the Tribunal may in any proceeding under the said section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.
12. It was further submitted that under Section 11 of the said Act there was a prohibition in respect of the registration of a mark the use of which would be likely to deceive or cause confusion. It was further submitted that under Section 12(1) of the said Act there was prohibition of registration of identical or deceptively similar trade mark.
13. The said Sections 11 and 12 of the said Act are as follows:
'11. Prohibition of registration of certain marks: A mark -
(a) the use of which would be likely to deceive or cause confusion; or
(b) the use of which would be contrary to any law for the time being in force; or
(c) which comprises or contains scandalous or obscene matter; or
(d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or
(e) which would otherwise be disentitled to protection in a court; shall not be registered as a trade mark.
12. Prohibition of registration of identical or deceptively similar trade marks: (1) Save as provided in sub-section (3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a differentproprietor in respect of the same goods or description of goods.
(2) Where separate applications are made by different persons to be registered as proprietors respetively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the Registrar may defer the acceptance of the application or applications bearing a later date until after the determination of the proceedings in respect of the earlier applications, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any,
(3) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, makes it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods subject to such conditions and limitations, if any, as the Registrar may think fit to impose.'
14. The petitioner relied on the judgment in the case of Hiralal Prabhudas v. M/s. Ganesh Trading Company reported in : AIR1984Bom218 .
15. In that case the Division Bench of the Bombay High Court held as follows (at Pp. 222-23 of AIR 1984 Bom):
'In deciding the question of similarity of two marks the following well established principles are to be observed : (i) marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole, (ii) overall similarity is the touch stone, (iii) marks must be looked at from the first impression of a person of average intelligence and imperfect recollection, (iv) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (v) marks must be compared as a whole, microscope examination being impermissible, and (vi) the broad and salient features must be considered forwhich the marks must not be placed side by side to find out differences in design. In addition, the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances must also be taken into consideration.'
'20. It was urged by Mr. Kale that the respondent were entitled to the benefit of Section 12(3) of the Act on the ground of honest concurrent user. This plea is certainly not open to the respondents. The entire modus operand! of the respondents has been far from honest. It is also not without its own significance that no explanation has been forthcoming how the respondents adopted their mark. Beyond Mr. Kale's ipse dixit thrown across the Bar, there is nothing on record that the get up of the labels is usual and commonly used by bidi manufacturers. It is manifest that the entire exercise has been engineered by the respondents against a vastly successful competitor, namely, the appellants. Where a case is not founded on truth such as the present, to such a person the benefit of Section 2(3) is not available (Mahomed Oomer v. S. M. Nooruddin : AIR1956Bom76 ). Furthermore, this is not a lis between the two parties. It is public interest that must be of primary consideration and the purity of the register must be maintained (K. Surinder-kumar v. T.D. Rohire, : AIR1982Bom505 ).
16. The learned Counsel on behalf of the petitioner also relied on another judgment of the Bombay High Court in the case of 'In the matter of M/s. R. T. Engineering and Electronics Co.' reported in AIR 1972 Bom 157. In the said case the Bombay High Court held as follows (at Pp. 159 and 163 of AIR):
'Whilst, generally speaking, the court would follow the procedure of advertising the mark and deciding the question of confusion or deception only when it is opposed and evidence taken in regard to the same, before it applies the bar of Section 11(a) of the Act, there is nothing in the said Section to deprive the Registrar of the power which he has under Section 18(4) of the Act in a proper case, torefuse to accept an application for registration without advertising it or calling for evidence of likelihood of deception or confusion. It is not difficult to conceive of case in which the likelihood of confusion of deception may be so patent that to compel the Registrar to advertise and call for evidence would be sheer waste of public time, and it is for that reason that the ligislature has advisedly not made it obligatory on the Registrar to do so in every case under Section 11(a).
The distinction between Sections 11(a) and 12(1) of the Act is: (1) whereas under Section 11. Actual user must be taken into account, including the mode of user, or the fact that the goods are known in the market by a particular name, for the purpose of considering the possibility of deception or confusion under Section 12, the court has only to take into account what may tersely be called, notional fair user on the basis of the similarly of the two marks, though it must no doubt consider not only visual or phonetic similarity, but also the possibility of contextual confusion or deception as to trade origin, as well as the other surrounding circumstances such as the nature of the goods and the kind of customers who would be likely to buy those goods; (2) whereas Section 12 comes into play only when the opponent's mark is a registered trade mark, there is no such limitation in regard to the applicability of Section 11, and (3) whereas Section 12 applies only when the mark applied for is identical with or deceiptively similar to a registered trade mark, there is no such limitation in regard to the nature of the goods in a case under Section 11. In either case, however, the Court has to consider the position from the point of view of an unwary purchaser who is a man of average intelligence and of an imper feet recollection.'
The petitioner also releid on the judgment of the Division Bench of the Bombay High Court in the case of Ciba Limited Basle Switzerland v. M. Ramalingam and S. Subramaniam trading in the name of South Indian Manufacturing Co., Madura and another reported in : AIR1958Bom56 . In the said case the Division Bench of the Bombay High Court held as follows:
. 'The object of maintaining a trade mark register is that the public should know whose goods they are buying and with whom particular goods are associated. It is therefore essential that the register should not contain trade marks which are identical or which so closely resemble each other that an unwary purchaser may be likely to be deceived by thinking that he is buying the good of a particular person or a particular firm or a particular industry, whereas he is buying the goods of another person or firm or industry. When a case is sought to be made out that a particular trade is likely to deceive or cause confusion the contest is not so much between the parties to the litigation as it is a contest between the party defending his right to a particular trade mark and the public, and the duty of the Court must always be to protect the public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to decieve or cause confusion.'
The petitioner also releid on the judgment in the case of Lakhpat Rai Sampat Rai Sadha v. Dhanpat Rai Goel reported in : AIR1974Delhi91 . In the said case it was held as follows:
'(A). When the later trade mark is deceptively similar or identical to an already registered trade mark, registration of the later becomes wrongful in view of the provisions of Sections 11 and 12 of this Act. Therefore, such wrongful registration has to be rectified by suitable alteration of the later trade mark or its cancellation. Refusal to do so cannot be justified.'
17. It was submitted that the marks which have been registered since 1965 and 1967 in favour of the petitioner are such that if the newly registered trade mark in favour of the respondent No. I is allowed to stand the purchaser is likely to be deceived by thinking that he is buying goods of the petitioner whereas the goods could be manufactured by the respondent No. I. The two marksasused on Chappals manufactured by the petitioner and the respondent No. 1 were also placed before me and it was submitted that they were so similar to each other in many respects thatin spite of some dissimilarities or changing of words are likely either to be confused and/or pruchasers are likely to be deceived.
18. I have compared the two marks. It is found that the word 'A' has been designed in both marks in a similar peculiar fashion. The test is whether an unwary purchaser who does not have a photographic memory with regard to the contents of the marks is likely to be confused or decieved as mentioned in the judgment of Division Bench of the Bombay High Court and specially when the court has to compare two different words the matter in the ultimate analysis must depend upon the first impression. The resemblance between the two words may be visual or phonetic and the only test that has to be applied when the court is considering a case falling under the section is the test of identity or resemblance. The two words must be taken and judged by their look and sound in relation to the goods to which they are to be applied. The nature and kind of customer who would be likely to buy those goods and the surrounding circumstances and the likely result if each of those trade marks is used as a trade mark for the goods of the respective owners of the marks, must all be considered and if on such consideration the conclusion is that there will be a confusion, that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods, then the registration must be refused.
19. In the instant case the articles 'Chap-pals' are in both the trade marks. The user of such chappals is by all sorts of people including illiterate persons. Looking at the two marks any purchaser can be confused with regard to the identity of the articles if in respect of the petitioner's mark, if it is manufactured by the petitioner No. 1, is placed before him. The petitioner No. I has his trade mark registered since 1965 and 1967. It is peculiar to note that even the word 'A' in both the marks has been stripped in the similar artistic manner. The word 'Chappals' placed before me was found in the similar identicalposition. The circles in the marks are also in similar position. In one case there is a crossed 'Mugur' and in the other case there is a crossed 'Hammer'. The words 'Mugur Brand' and the 'Hammer Brand' are also in similar position. But of course there is a variation with regard to the word 'Mugur' in place whereof the word 'Hammer' is there.
20. Mr. B.K. Chatterjee, learned counsel on behalf of the respondent No. 1 has opposed the application on three grounds; (1) the application was not maintainable (2) In any event, the petitioner had acquiesced in the user by the respondent No. 1 of its trademark and hence the petitioner was estopped from objecting to the registration of the trade mark of the respondent No. 1 and lastly on the ground (3) that in any event, the mark of the respondent No. 1 could not confuse the purchasers nor was the same deceptively similar to the mark of the petitioner.
21. So far as the question of non-maintainability of the application is concerned, learned counsel for the respondent No. 1 could not point out any provision of law where under it could be said that the application was not maintainable. This application has been made under Section 56 of the said Act. The said Section provides that an application can be made to a High Court for cancelling or varying the registration of the trade mark on the grounds of contraventions as specified. It also provides that any person aggrieved by any entry made in the register without sufficient cause or by any entry wrongly remaining in the register will apply to the High Court and the Court may pass an order for expunging or varying the entry, as it may think fit. Mr. Chatterjee mainly relied on the proceedings that had taken place before the Registrar of Trade Mark and on the fact that the opposition was treated as abandoned. However, in my opinion, the application under Section 56 of the said Act can be made only after the alleged wrongful entry has been made in the register by the Registrar and simply because the petitioner appeared before the Registrar and did not succeed before the Registrar in his opposition, does not make an application under Section 56 as non main-tainable. It is to be noted that the application for rectification can even be made to the Registrar himself.
22. The next submission of Mr. Chatterjee was that the petitioner acquisced in the user by the respondents of the trade mark as used by the respondent No. 1 and as such the petitioner was estopped from making this application. The petitioner has been taking, one proceeding or other and has been opposing the user of the mark 'Ananta' by the respondent No. 1 since 1981. Mr. Chatterjee pointed out that prior to 1981 the petitioner did not object to the user of this mark by the respondent. No. 1. The letter of 8th June, 1981 states that the petitioner recently came to know of the wrongful user by the respondent No. 1 of the mark. There is nothing on record to show that the petitioner came to know about the user of the said mark by the respondent No. 1 in/or about 1978 when it is alleged by the respondent No. 1 that it started to use of the said mark. There have been at least three complaints by the petitioner since 1981. According to Mr. Chatterjee, they were all frivolous. According to Mr. Ginwalla, each and every user of the mark giving rise to a fresh cause of action as against the respondent No. I. This conduct shows that the petitioner had at least repeatedly opposed to the user of the said mark by the respondent No. 1. Mr. Chatterjee further pointed out to me that the petition was dismissed in January, 1985 and the instant application was made in September, 1988. According to Mr. Ginwala, this was made mainly due to the illness of his previous attorney who fell ill and ultimately there was a change of Advocate. Be that as it may, the said delay is not such that it can be said that the petitioner allowed the user of the trade mark or acquiesced in the user of the said mark by the respondent No. 1. Mr. Chatterjee of course, agreed that there was no period of limitation for an application under Section 56 of the said Act' and as such the instant application could not be held as barred by limitation. However, he submitted that the petitioner had the right to go in appeal from the order of the Registrar and he had chosen not to do so. The petitioner also had the right to go in appeal from the order ofdismissal of the review application. According to Mr. Chatterjee, the petitioner was not diligent enough in protecting his rights. He allowed the time for appeal to be lost. The petitioner even did not file any suit and even did not make any application for injunction. However, in my opinion, the petitioner by his letter of 8-6-1981 opposed to the user of the said trade mark by the respondent No. 1 and thereafter he has been taking one proceeding or the other either in the shape of criminal procedings or in the shape of opposition to the application of the respondent No. 1 for registration of his trade mark and/or for the review of the order by the Registrar. Steps taken by the petitioner are certainly in opposition to the user of the impugned trade mark by the respondent No. 1 is possible that the petitioner might have received such legal advice but one thing is quite clear that the petitioner althroughout since June, 1981 has been opposing the user by the respondent No. 1 of the said trade mark. In a case like this I am unable to hold that there has been any acquiscence by the petitioner in respect of the user of the impugned trade mark by the respondent No. 1 or that the petitioner can be held to have been estopped by his own conduct. Mr. Chatterjee also tried to argue before me that in view of the provisions of Section 12(3) of the said Act the Registrar could in case of honest concurrent use grant registration by more than one proprietor of the trade marks which are identical or nearly similar mark to each other. However, there is no material on record to show that the registration of the trade mark was granted to the respondent No. 1 under Section 12(3) of the said Act. No. special circumstances have been recorded in any order nor was any case of honest, concurrent use made before the Registrar, of such identical mark or nearly resembling mark nor is there any observation by the Registrar that it was proper to permit the reigstration of such identical or nearly similar mark. I do not think that in the instant case the said Section 12(3) had any application, or that the registration of the trade mark was granted under the said section. Furthermore the court's powers under Section 56 do not in any manner seem to havebeen circumscribed, simply because the registration of the impugned Trade Mark was granted under Section 12(3).
23-24. Since it is not a case of registration of a trade mark under Section 12(3) of the Trade and Merchandise Act, 1958 1 do not think that the cases cited by Mr. Chatterjee, learned Advocate, in support of the proposition that a registration can be granted under Section 12(3) of the said Act even of an identical or a practically similar mark under a special circumstances, has any application to the facts of this case. So far as the present case is concerned, it was not the case of the respondent No. 1 that its mark should be registered under Section 12(3) of the said Act nor the Registrar had any occasion to consider any special grounds or to grant registration of the said Trade Mark by the Respondent No. 1 under Section 12(3) of the said Act.
25. Under these circumstances, in my opinion, the judgment in the case of London Rubber Co. Ltd. v. Durex Products Incorporated reported in : [1964]2SCR211 is of no assistance to the respondent No. 1. In the said case the Supreme Court inter alia held as follows:
'From a comparison of the provisions of Section 8(a) and Section 10(1) of the Trade Marks Act, 1940, it is clear that the object of both these provisions is to prohibit from registration marks which are likely to deceive or cause confusion. Deception or confusion may result from the fact that the marks are indentical or similar or for some other reason. While sub-clause (a) of Section 8 is wide enough to cover deception or confusion resulting from any circumstance whatsoever sub-section (1) of Section 10 is limited to deception or confusion arising out of similarity in or resemblance between two marks. In other words the enactment of this provision would show that where there is identity or similarity in two marks in respect of the same goods or goods of the same description registration at the instance of another proprietor would be prohibited where a mark is already on the register as being the property of another proprietor.'
'Deception may result from the fact that there is some misrepresentation therein or because of its resemblance to a mark, whether registered or unregistered, or to a trade name in which a person other than the applicant had rights. Where the deception or confusion arises because of resemblance with a mark which is registered, objection to registration may come under Section 10(1) as well. There is reason for holding that the provisions of Section 8(a) would not apply where a mark identical with or resembling that sought to be registered is already on the register. The language of Section 8(a) is wide and though upon giving full effect to that language the provisions of Section 10(1) would, in some respects, overlap those of Section 8(a), there can be no justification for not giving full effect to the language used by the Legislature. (1890) 15 AC 252 Rel. on. (Para 8).'
In that case, the Supreme Court held that the provisions of sub-section (2) of Section 10 of the Trade Marks Act (1940) are by way of an exception to the prohibitory provisions of the said Act.
26. Similarly, in the case of Gopal Hosiery v. Dy. Registrar of Trade Marks reported in : AIR1981Cal53 the claim for registration was based on honest concurrent user without any interference by the opponent for a period of 13 years and the discretion exercised by the Registrar under Section 12(3) of the said Act. Since the granting of the registration of the trade mark, in the present case, was not under Section 12(3) of the said Act, I do not think that the respondent No. 1 can draw any support from the observations made in the above referred cases.
27. The respondent No. 1 also relied on the judgment in the case of Ciba Ltd. Basle Switzerland v. R. Ramalingam and S. Subramaniam reported in : AIR1958Bom56 . In the said case the Division Bench of the Bombay High Court while considering Section 10 of the Trade Marks Act (1940) held as follows:
'The object of maintaining a trade mark register is that the public should know whose goods they are buying and with whom parti-cular goods are associated. It is therefore essential that the register should not contain trade marks which are identical or which so closely resemble each other that an unwary purchaser may be likely to be deceived by thinking that he is buying the goods of a particular person or a particular firm or a particular industry, whereas he is buying the goods of another person or firm or industry. When a case is sought to be made out that a particular trade mark is likely to deceive or cause confusion the contest is not so much between the parties to the litigation as it is a contest between the party defending his right to a particular trade mark and the public, and the duty of the Court must always be to protect the public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive or cause confusion.'
'In trade mark cases and especially when the Court has to compare two different words the matter in the ultimate analysis must depend upon first impression. The resemblance between the two words may be visual or phonetic and the only test that has to be applied when the court is considering a case falling under the section is the test of identity or resemblance. The two words must be taken and judged by their look and sound in relation to the goods to which they are to be applied. The nature and kind of customer who would likely to buy those goods and the surrounding circumstances and the likely result if each of those trade marks it usual in a normal way as a trade mark for the goods of the respective owners of the marks must all be considered and if on such consideration the conclusion that there will be a confusion, that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods, then the registration must be refused.
In a case falling under the section the evidence of long user by the person accused of infringement or the failure of the complaint to prove actual deception is irrelevant. It is not for a witness or a large number of witnesses to tell the Court whether there is likelihood ofdeception. The Court cannot abdicate its own function which is to decide on looking at the two trade marks and on considering them phonetically whether they resemble each other and whether there is likelihood of deception. It is true that the absence of any evidence of deception may be a material fact which the Court may take into consideration, but if the resemblance between the two marks is clear and obvious, then it is the duty of the court to remove from the register mark which is likely to cause deception.'
'The granting of relief under Section 46 is a discretionary relief and the Legislature has not laid down any period of limitation for making an application under Section 46. The question of delay in the making of the application must be approached from this point of view whether the applicant stood by and thereby caused substantial injury in the respondent and the injury was so substantial that injury would outweigh the interest of the public which the Court must consider where a trade mark is likely to deceive.'
Relying on the said case, Mr. Chatterjee tried to impress upon me that the petitioner had stood by and allowed the user by the respondent No. 1 of the said mark and as such, has caused substantial injury to the respondent No. 1 and the injury was so substantial that injury would outweigh the interest of the public which the Court must consider where a trade mark is likely to deceive.
28. In my opinion, the petitioner has all along opposed the user of the trade mark by the respondent No. I since I98f and has taken various legal steps including filing of criminal complaints and opposing the registration of the trade mark. Simply because the petitioner's advocate did not or could not appear at the time of the hearing of the application for registration as made by the respondent No. I, it cannot be said that the petitioner has stood by or has acquiesced in the user by the respondent No. I of the said mark.
29. The case of the petitioner is that the petitioner's Advocate was ill and he could not appear at the hearing, However, the petitioner, thereafter made an application forreview of the order by the Registrar and that also shows that the petitioner intended to oppose the user of the trade mark by the respondent No. 1.
30. Mr. Chatterjee also relied on the delay in the making of the instant application after the Registrar rejected the application for review of his earlier order, it appears that after the order rejecting the application for review was made, the petitioner has taken time of about 9 months in making the application. Even during that period of 9 months, the petitioner in April, 1985 filed a case against the respondent No. I at New Delhi under the Copyrights Act. In August 85, the respondent No. filed its objections to the petitioner's application under the Copyrights Act. It was further submitted that the petitioner had to obtain the change of Advocate in Calcutta and as such, the time was taken. Apart from that it was impressed by Mr. Chatterjee that one of the criminal cases is still pending.
31. I do not think that in the facts and circumstances of this case, it can be said that the petitioner acquiesced in the user of the said trade mark by the respondent No. I or that the petitioner waived his right to oppose to the same.
32. Mr. Chatterjee also relied on the judgment of the Madra's High Court in the case of Devidas and Co. v. Alathur Abboyee Chetty & Co. reported in : AIR1941Mad31 . In that case the holder of the registered trade mark even after he came to know about the user of the offending mark, did not make any steps for about 8 years.
33. During the said 8 years the party alleged to be using the offending trade mark had built up a target trade and imported goods worth about Rs. 17 lacks prior to 1940. I do not think that the said case has any application to the facts and circumstances of this case.
34. The last point that was argued on behalf of the respondent No. I, was that the two marks were quite distinctive of each other and the mark of the respondent No. 1 was not likely to cause any confusion or deception inthe minds of the purchasers. I have seen the said two marks as used on the chappals manufactured by the petitioner and the respondent No. 1. The words 'Ajanta-Hawai' and the words 'Ananta-Hawai' are written on the respective chappals manufactured by each of the parties in a practically identical manner and the manner of writting of the words and the relative position seems to be identical in the two trade marks as used. The valuation with regard to the letter 'N' in the two trade marks does not seem to be prominent, so that it might draw attention even of the unwary purchasers. Furthermore the user of the other mark 'Mugur Brand' and the User of the word 'Hammer Brand' within a circle is also likely to cause confusion in the minds of the purchasers. Though in one case it is crossed 'Mugurs' and in the other case it is crossed 'Hammers' and though in one case it is 'Muguar Brand' and in the other case it is 'Hammer Brand'. Yet the manner in which the same are written and the way the same appear in the respective chappals it cannot be said that an unwary purchaser is not likely to be deceived or confused. I agree with the case made out by the petitioner that, the use by the respondents, of the said trade marks 'Ananta Hawai and also 'Hammer Brand' is likely to cause deception and/or confusion in the minds of the purchasers who generally do not get the occasion of comparing the two marks in presence of each other.
35. To protect the registered trade mark which was registered prior to the respondent's mark, as also in the interest of the public, the public should know, as to whose products they are purchasing an order is made as hereinafter provided. In the instant case the trade marks of the petitioner were registered long time back in 1965 and in 1967. The respondent No. 1 is alleging to have started the user of the impugned marks sometime in April, 1978 and the petitioner's case is that the petitioner came to know sometime in or about June, 1981 for the first time.
36. In my opinion, it is a fit case where the Court should exercise its powers under Section 56 of the Trade and Merchandise Marks Act, 1958. The Registrar of Trade Marks is directed to cancel and/or remove theentry bearing No. 377580 in Clause 25, in the Trade Marks Register entered in favour of the respondent No. 1, herein, Shree K.B. Rubber Industries, in respect of Hawai chappals. Let the Register of Trade Marks be rectified as aforesaid and let an appropriate notice of rectification be served upon the Registrar, Trade Marks, the respondent No. 2 herein, under Section 56(5) of the Trade and Merchandise Rules 1958 by the Registrar, O.S. of this Court.
37. So far as the prayer for injunction against the respondents is concerned, it was submitted on behalf of the petitioner by Mr. Ginwala, that the said prayer does not fall within the scope of an application under Section 56 of the said Act and as such I have not considered the said prayer for issuing an order of injunction but that does not mean that the rights if any of the petitioner as a holder of its trade mark and as per the findings in the judgment will in any manner be affected or that the respondent No. 1, will be entitled to further user of the impugned trade mark, as of right. I am making it quite clear that the petitioner will be entitled to seek all remedies available to it under law by means of appropriate legal proceedings and to pray for appropriate reliefs and orders, as it may be held to be entitled in accordance with law.
38. The respondent No. I will pay the costs of this application to the petitioner.
39. Stay of operation of this order is prayed for on behalf of respondent No. 1 and is declined.
40. All parties including Registrar, O.S. to act on a signed copy of the operative portion of this judgment on the usual undertaking.
41. Order accordingly.