Allied Auto Accesories Ltd. Vs. Allied Motors Pvt. Ltd. and anr. - Court Judgment

Excerpt:
(i) intellectual property rights - primary nature - sections 46 and 56 of trade and merchandise marks act, 1958 - primary nature of goods in question is guiding principle if not decisive test - primary nature of goods cannot obviously be determined on basis of priori considerations - in assessing primary nature of goods it would be necessary to have regard to nature or composition, uses and functions of goods, trade channel where goods are available - it would be also necessary to have regard to class of customers which is comprehended in class of purchasers of those goods. (ii) adjudication - 4th schedule to trade and merchandise marks rules, 1959 - in adjudicating whether part of article or apparatus constitutes article included in another class - court has to have regard to primary.....d.y. chandrachud, j.1. on an application moved under section 56 of the trade and merchandise marks act, 1958 ('the act') by the first respondent, the assistant registrar of trade marks passed an order on 21st june, 1989 which is challenged in these proceedings. the assistant registrar of trade marks allowed the application and directed that the registration granted of the mark of the appellant in class 12 of the fourth schedule to the trade and merchandise marks rules, 1959 ('the rules') would stand expunged from the register of trade marks. the appellant has moved this court in an appeal under section 109 of the act. registration of the appellant's mark :2. the appellant was incorporated on 27th april, 1968 and claims to have adopted the word mark 'allied' in respect of parts and.....

Judgment:

D.Y. Chandrachud, J.

1. On an application moved under Section 56 of the Trade and Merchandise Marks Act, 1958 ('the Act') by the first respondent, the Assistant Registrar of Trade Marks passed an order on 21st June, 1989 which is challenged in these proceedings. The Assistant Registrar of Trade Marks allowed the application and directed that the registration granted of the mark of the appellant in Class 12 of the Fourth Schedule to the Trade and Merchandise Marks Rules, 1959 ('the Rules') would stand expunged from the Register of Trade Marks. The appellant has moved this Court in an appeal under Section 109 of the Act.

Registration of the appellant's mark :

2. The appellant was incorporated on 27th April, 1968 and claims to have adopted the word mark 'Allied' in respect of parts and fittings of automobiles. On 3rd November, 1978 an application was filed by the appellant (342368-B) for the registration of its word mark 'Allied' in Class 12 before the Registrar of Trade Marks claiming that it had been using the mark from 1st June, 1968. On 27th February, 1980, an affidavit was filed on behalf of the appellant before the competent officer to show that the mark had acquired distinctiveness and had become distinctive of the goods of the appellant. The Registrar of Trade Marks ordered the mark of the appellant to be registered on 27th February, 1980 and in view of the provisions of law, the registration would take effect from 3rd November, 1978 when the application was filed by the appellant. The certificate of registration that has been granted to the appellant on 25th May, 1985 records that 'the Trade Mark ALLIED (word per se) is registered under No. 342368 in Part B of the register as of the date 3rd November, 1978 in Class 12 in respect of parts of motor land vehicles' in the name of the appellant.

The respondent applies for rectification :

3. On 31st December, 1985, the first respondent filed an application for rectification of the mark on the grounds prescribed in Clauses (a) and (b) of Sub-section (1) of Section 46, namely, that the appellant had no bona fide intention to use the mark in relation to the goods in respect of which it was registered and that the mark had not been used for a period of five years and one month preceding the date of the application. The appellant filed its counter-statement on 16th April, 1986 and filed evidence in support of the registration of the mark in the form of an affidavit, together with the documentary material on which the appellant relied. Evidence was also filed on behalf of the first respondent in support of the application for rectification and in reply to the evidence which had been filed on behalf of the appellant.

The order of the Assistant Registrar :

4. The application for rectification was heard by the Assistant Registrar on 15th June, 1988 and almost a year thereafter, an order was passed on 21st June, 1989 allowing the application of the first respondent on the sole ground that the goods in respect of which the mark was used by the appellant did not fall in Class 12 and that therefore, the mark was not used in respect of the goods for which it was registered. The register was, therefore, directed to be rectified in view of the provisions of Clauses (a) and (b) of Sub-section (1) of Section 46.

The basis of the impugned decision :

5. The Assistant Registrar of Trade Marks, while passing the impugned order of rectification dated 21st June, 1985, decided the matter solely and exclusively on the basis that none of the goods in respect of which the mark is used by the appellant fall in Class 12. In holding thus, the Assistant Registrar stated that he had individually verified each of the 15 products in respect of which the appellant sought to use the mark 'Allied' in Class 12. The order of the Assistant Registrar records that the adjudicating authority had compared each of the said goods with the International Classification of Goods and Services and the Indian Classification of Goods. The Assistant Registrar concluded that the goods in question would not fall in Class 12 as claimed by the appellant but, in Classes 7, 9 and 11. The goods of the appellant and the respective classes which the Assistant Registrar held that they would fall in, are thus :

'The Goods of the AppellantThe correct Classification according to the Assistant Registrar

(1) Head Light Switch Bullet9(2) Ignition Switch Bullet9(3) Plug Cap9(4) Horn Dipper Switch9(5) Light Changeover Switch9(6) Look Ignition Switch9(7) Auto Voltage Regulator9(8) Motor Starter Switch9(9) Relays9(10) Spark plug7(11) Plug connector9(12) Regulator for motor9(13) Break Light Switch9(14) Dimmer Switch9(15) Button (illuminating)11.'

One of the grounds for rectification that was urged before the Assistant Registrar by the respondent was that the appellant has procured the registration by fraudulent misrepresentation. That ground has been expressly negatived by the Assistant Registrar and there is no challenged to that finding. No. cross-objection has been filed on behalf of the first respondent, nor has the learned counsel for the first respondent assailed that finding. The Assistant Registrar finds that 'no doubt it is well settled that... classification is a matter of convenience in administration, e.g., in facilitating the search which is to ascertain whether the application is objectionable under Section 12(1)'. However, having said that, the Assistant Registrar has held that the goods in respect of which the mark is registered are not 'goods to which the registered trade mark is applied and used'. Consequently, the Assistant Registrar held that the application for rectification was liable to be allowed with a direction that the mark would stand expunged from the register. This finding and the consequential direction have been assailed on behalf of the appellant.

6. An appeal was filed by the appellant in this Court on 14th September, 1989 under Section 109 for impugning the correctness of the Order of the Assistant Registrar.

The case of the respondent :

7. An affidavit in reply has been filed on behalf of the first respondent stating that the first respondent was incorporated in 1931 under the Indian Companies Act, 1913 under the corporate name of Allied Motors Pvt. Ltd. The case of the first respondent is that the mark 'Allied' is a dominant part of its corporate name and its business includes the manufacture of automobile parts and accessories. According to the first respondent, it has held agencies of reputed automobile manufacturing companies since 1931. The first respondent has relied upon correspondence of the years 1952 and 1958 to establish its case that it has used the mark 'Allied' and two letters dated 18th December, 1952 and 26th August, 1958 which are relied upon contain a reference to the sale of 'Allied' batteries. According to the first respondent, it filed an application in the year 1981 for registration of the Trade Mark 'Allied' in Class 12 in the Trade Marks Registry. On 29th December, 1984 the appellant has issued a legal notice to the first respondent calling upon it to cease and desist from using the mark 'Allied'. The first respondent replied to that notice on 5th February, 1985 to which there was a further letter dated 29th July, 1985 calling upon the first respondent to cease and desist from using the mark 'Allied'. On 20th November, 1985, a notice was addressed on behalf of the appellant by its Advocate once again calling upon the first respondent to discontinue the manufacture and sale of brake linings and other similar goods under the name 'Allied'. On 24th April, 2000, the first respondent had entered into an agreement with the second respondent by which the mark 'Allied' (bearing No. 527685) registered in Class 12 in the name of the first respondent has been assigned to the second respondent alongwith the goodwill of the business. On 16th May, 2000 a joint request was filed with the Registrar of Trade Marks to note the name of the second respondent as the subsequent proprietor. The second respondent is the assignee of the mark and since it is interested in these proceedings, it has been brought on the record.

The Issues :

8. The only basis on which the application for rectification has been allowed in this case, therefore, is that the goods on which the mark has been used by the appellant could riot be classified under Class 12 and had been erroneously classified as such, while granting registration. Consequently, the Assistant Registrar has held that since the goods would not fall in Class 12, it could not be said that there was a bona-fide intention on the part of the appellant to use the mark in relation to those goods for which it was registered or that it had been used for a continuous period of five years and one month prior to the date of the application for rectification. The provisions of Clauses (a) and (b) of Sub-section (1) of Section 46 have hence been invoked. Having regard to this finding, the question which arises before this Court in appeal is whether the Assistant Registrar was correct in coming to the conclusion that the goods in respect of which the appellant had sought registration and on which the mark has been used did not in fact, fall in Class 12 of the Fourth Schedule to the Trade and Merchandise Marks Rules, 1959. The Court will have to consider whether the Assistant Registrar was correct, while adjudicating upon the application filed by the respondent, in coming to the conclusion that the goods of the appellant could be classified not under Class 12 of the Fourth Schedule to the Rules, but under Classes 7, 9 and 11. Ancillary to these points for determination, the Court will have to have regard to (i) the principles of classification; (ii) the scope and ambit of the power of the Registrar; and (iii) the impact of the relevant statutory provisions including Sections 8, 46 and 56. That is the heart of the matter.

The Submissions :

A. Appellant :

9. Counsel appearing on behalf of the appellant has urged the following submissions:

(i) Before the mark of the appellant came to be registered by the Registrar of Trade Marks, the appellant had duly clarified to the registering authority that the goods in respect of which registration had been sought--parts and fittings of automobiles--fell in Class 21 of the Fourth Schedule to the Rules. The appellant had filed a detailed affidavit in support of the distinctiveness of the mark and in support of the contention that the goods in respect of which the mark was sought to be registered were electrical parts which could be used only in automobiles and not elsewhere;

(ii) When the application for rectification was considered by the Assistant Registrar of Trade Marks, material evidence was produced by the appellant to establish the nature of the products; the fact that those products could be used only in automobiles and not else where ; that those products were automobile parts ; and in support of the actual use and sale of goods which fell within the description of Class 12;

(iii) On the contrary, absolutely no material was produced by the first respondent to establish that the goods in respect of which the mark was registered or used did not fall in Class 12 ;

(iv) The impugned order of the Assistant Registrar dated 21st June, 1989 furnishes no reasons whatsoever as to why the adjudicating authority came to the conclusion that the goods did not fall in Class 12. There is no reference in the impugned order to the documentary material produced on behalf of the appellant including the certificates of manufacturers of automobiles, of experts in the trade and price lists which showed that the goods sold are parts of vehicles ;

(v) The impugned order of the Assistant Registrar is not based upon the exercise of discretion but, upon an adjudication of rights. Therefore, the principle that the Appellate Court will not interfere in the exercise of discretion of the lower adjudicating authority will not apply in a case such as the present, where the order is based on an adjudication of rights ;

(vi) When the Registrar initially in the exercise of his powers under Section 8 granted registration, there was sufficient material for him to come to the conclusion that the goods fell in Class 12. That decision is final under Sub-section (2) of Section 8 unless the Registrar has acted mechanically without any material or on a patently erroneous basis ;

(vii) The question of classification is required to be answered by considering (i) the nature of the goods and the purpose and function of the goods ; (ii) the trade channel through which the goods are available ; and (iii) the class of customers who purchase the goods. The Assistant Registrar mechanically followed the International classification and the Indian classification which at the highest are only a guide for classification. An adjudication on the question of classification cannot be based only upon these guidelines which are of an administrative nature;

(viii) If the practice followed by the Trade Mark Registry is wrong, it is the duty of the Court to correct it and the practice must yield to law; (ix) In any event, even if the Court were to come to the conclusion that the mark had not been used in relation to goods for which it had been registered, this is a fit and proper case for the Court to exercise its discretion under the proviso to Section 46 since the appellant has been using the mark on the goods of the same description as those in respect of which it has been registered.

B. Respondent :

10. On the other hand, counsel for the respondent submits that :

(i) The Assistant Registrar was not in error in following the Indian classification which is along the lines of the international classification which has been followed since 1940 in India as well as under the 1958 Act ;

(ii) The classification of goods and wording of the Fourth Schedule to the Rules read with the explanatory note thereto in the 1940 Act is exactly the same as in the Rules framed under the 1958 Act ;

(iii) There was no adjudication in the real sense by the Registrar, in the first instance, of the appropriate classification of the goods of the appellant, and therefore, the decision on registration, in the first instance, cannot be dispositive of the proper classification of the goods of the appellant. The decision in Byrd's case 1953 RPC 212 lays down the appropriate test to be applied by the Court in matters of classification and the appropriate test is what is the primary nature of the goods ;

(iv) No case under the proviso to Section 46 has at any stage been argued in the Trade Marks Registry, either in the pleadings or in the submissions before the Assistant Registrar ;

(v) Extracts from the Trade Marks Journal which were relied upon would show that goods such as lamps for motor land vehicles and bulbs and fittings for use in motor land vehicles have been included in Class 11 of the Fourth Schedule to the Rules while switches and junction boxes for automobiles, scooters and motor cycles have been included in Class 9 ;

(vi) The goods of the appellant properly fall for classification under Classes 7, 9 and 11 and not under Class 12 ;

(vii) The importance of the practice of the Trade Marks Registry is recognised in Section 112 of the Act. In determining the classification of goods in the Fourth Schedule, the test as to whether the goods are of the same description is not material or relevant because goods in the same class may not be of the same description and whereas goods of the same description often fall in different classes. Therefore, in the present case, the question is not whether the goods of the appellant are of the same description as those in Class 12 but, whether the application that was filed by the appellant was for goods which fell in Class 12 ;

(viii) There was no decision or finding recorded by the Registrar in respect of the classification of the appellant's goods at the earlier stage and the Registrar was not called upon at that stage to adjudicate upon the class in which the goods fell. Since there was no specific decision, the earlier decision of the Registrar to register the goods cannot be conclusive or binding.

11. These submissions can now be considered. The material produced in support of the application for registration :

12. While considering the correctness of the submissions that have been urged before the Court on behalf of the appellant and in evaluating the merits of the defence of the respondent in attempting to sustain the impugned order, it would at the outset be instructive to consider the application that was filed by the appellant for the registration of the mark and the material that was produced in support of the application. In its application dated 30th October, 1978, the appellant had sought the registration of the word mark 'Allied' in Class 12 in respect of parts and fittings for automobiles. The appellant claimed user of the mark since May 1968. During the pendency of the proceedings before the registering authority, an affidavit was filed by the appellant in support of the application for registration in which the appellant claimed that it was engaged in the business of manufacturing and marketing electrical parts and fittings for automobiles. The appellant claimed that the business of the company was extensive and that parts and fittings for automobiles bearing that Trade Mark had been produced throughout India. The appellant claimed that Trade Mark had been produced throughout India. The appellant claimed that the mark had acquired distinctiveness and disclosed its sales figures. Sample orders out of the orders received by the appellant from customers located in various places in India were annexed to the application. The application filed by the appellant for registration-came to be allowed on 27th February, 1980 the mark was ordered to be registered in the name of the appellant with effect from 3rd November, 1978.

The basis of the respondents' plea for rectification :

13. The next stage in the matter arose out of the application that was filed by the first respondent for rectification under Section 56 on 31st December, 1985. The grounds on which rectification was sought were that (i). The registered proprietor--the appellant--had not until then marketed any parts of motor land vehicles in Class 12 ; (ii) The adoption of the trade mark 'Allied' by the registered proprietor was fraudulent and that the registration claimed was by fraud ; (iii) The mark had been registered without any bona-fide intention on the part of the registered proprietor to use the mark in relation to goods in respect of which the mark had been registered ; and (iv) That upto a date one month before the date of the application for rectification and for a continuous period of five years prior thereto, there had been no bona-fide use of the mark. The last two grounds were referable to Clauses (a) and (b) of Sub-section (1) of Section 46 of the Act. The same grounds were reiterated in the statement of case.

14. The appellant filed a counter-statement on 16th April, 1986 denying the allegations contained in the application of the first respondent. The appellant contended that it did not claim a monopoly in respect of parts of motor land vehicles but, a monopoly in the trade mark 'Allied' in respect of motor land vehicles and that the registration which was granted to it was conclusive.

15. Evidence was adduced by the parties on their respective cases in the course of the enquiry into the application for rectification. The case of the first respondent was that (i) it had been incorporated in 1931 and that the word 'Allied' was a key part of its corporate name ; and (ii) it had used the mark 'Allied' in the course of its business. The respondent annexed correspondence for the years 1952 and 1958 in order to establish its use of the mark 'Allied' and appended a statement of the sales of the company between 1932 and 1985.

The evidence produced by the appellant :

16. Insofar as the appellant was concerned, its case was that right from the year 1958, it had been manufacturing and supplying original automobile parts to vehicle manufacturers as original equipment fabricated exclusively for them, so as to suit the individual requirements of vehicle manufacturers. The appellant claimed that it was incorporated on 27th April, 1968 specifically to take over the running business of a partnership firm by the name of Allied Industrial Engineers and that the company accordingly took over the business of the partnership which had existed since 1958. The business of the partnership which consisted of the manufacture of automobile components and of supplying them to vehicle manufacturers was thereupon taken over by the appellant-company. Amongst the documents which were produced by the appellant included :

(i) Pamphlets and brochures of the predecessor-in-interest of the appellant relating to the manufacture of automobile parts (Exhibit B-1);

(ii) A certificate dated 30th January 1987 of the Automotive Component ., Ind-Suzuki Motorcycle Ltd., Brooke Bond India Ltd., Shree Chamundi Mopeds Ltd. and Gujarat Narmada Auto Ltd. and that these switches could not be used independently elsewhere. (Exhibit C) ;

(iii) An affidavit of the company Secretary of Enfield India Ltd., stating the company was purchasing Headlight Switches AC Model, Headlight Switches DC Model, Horn Dipper Switches, Ignition Switches DC Model and Spark Plug Caps which were being used in the assembly of vehicles and that these could be used only in the vehicles manufactured by that company (Exhibit D-1) ;

(iv) A certificate of a Chartered Engineer and Technical Consultant dated 8th August, 1982 that the appellant was manufacturing switches of various types and models usable only on specific models of vehicles manufactured by certain vehicle manufacturers including Enfield India, Rajdoot and Escorts and that these were original auto parts meant for particular type and models of motor cycles, mopeds and cars which could not be interchanged (Exhibit D-2) ;

(v) A certificate of Messrs Electro mobiles (India) Ltd., which was purchasing Stop Light Switches from the appellant for the use of its mopeds. The certificates set out that these goods could not be used for any other purpose except as parts in their vehicles (Exhibit D-3). Similar certificates were also issued by Ramon Engineering Ltd. and Atlas Auto Industries (Exhibits D-4 and D-5) ;

(vi) A certificate dated 6th August, 1982 of the Head of the Mechanical Engineering Department of the Victoria Jubilee Technical Institute (V.J.T.I.) confirming that the switches produced by the appellant such as the Horn dipper switch, ignition switch and headlight switch constituted special automobile parts operating at low voltage and that these could not be used on ordinary 200-240 volt mains (Exhibit D-6) ;

(vii) Invoices showing the actual sale of spare parts to automobile manufacturers including Bajaj Tempo Ltd., Enfield India Ltd., Escorts Ltd., G.E.C. of India Limited, Pravin Auto Spares, Lucas Indian Services Ltd., Majestic Auto Ltd., Jayhind Industries Ltd., Madras Motors Ltd., Kinetic Engineering Ltd., Rallis India Ltd., Chamundi Mopeds Ltd. and other automotive manufacturers (Exhibits E-1 to F-12) ;

(viii) An advertisement setting out the names of the dealers of the appellant was relied upon on order to show that these were all dealers of auto parts (Exhibit'G-3) ;

(ix) A brochure of the appellant containing the reference numbers of the old auto parts and the corresponding new reference numbers (Exhibit G-4) ; and

(x) Price lists of the appellant's products with effect from 1st August 1981, 9th April, 1983, 1st June, 1985 and 1st August, 1987 each of which refers to the parts manufactured and sold by the appellant for use in vehicles of specified automotive manufacturers (Exhibits 1-1 to 1-4).

The first respondent's case, in evidence :

17. Insofar as the first respondent is concerned, apart from bald denials contained in the affidavit which was filed on its behalf in lieu of the oral evidence, the contention of the first respondent was that vehicle manufacturers who purchase goods manufactured by the appellant use or sell these goods as original equipment in their own hands, under their own brand name. The averments contained in the affidavit which was filed on behalf of the first respondent (particularly in paragraph 30), would show that the fact that the appellant had manufactured goods, being parts of automobiles and that these had been sold to automotive manufacturers was not disputed. What was, however, sought to be contended was that the vehicle manufacturers had in turn used the goods in their own products and which were marketed under their respective brand names.

Appellant's goods are automobile parts usable only in vehicles :

18. In the backdrop of this material which was produced in the course of the enquiry before the Assistant Registrar, the appellant has been able to establish that (i) Electrical components or parts of automobiles had in fact, been manufactured by the appellant and prior to the incorporation of the appellant, by its predecessor-in-interest which was a partnership firm ; (ii) Since 1968, these electrical parts had been sold by the appellant under the 'Allied' mark to automotive manufacturers ; and (iii) The electrical parts manufactured and sold by the appellant can be utilised only in vehicles and were specific to particular types and models of vehicles manufactured by specified automotive manufacturers.

The statutory provisions :

19. The original application for registration had been granted in exercise of powers conferred upon the Registrar by Section 8 of the Trade and Merchandise Marks Act, 1958 which provides as follows :

'(8) Registration to be in respect of particular goods--

(1) A trade mark may be registered in respect of any or all of the goods comprised in a prescribed class of goods.

(2) Any question arising as to the class within which any goods fall shall be determined by the Registrar whose decision in the matter shall be final.'

The rectification of the register was sought under Section 56 of the Act and hence it would be convenient to make a reference to that provision. Section 56 of the Act provides as follows :

'(56) Power to cancel or vary registration and to rectify the register :

(1) On application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the Tribunal may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.

(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error of defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar, and the Tribunal may make such order for making, expunging or varying the entry as it may think fit.

(3) The Tribunal may in any proceeding under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the register.

(4) The Tribunal, of its own motion, may, after giving notice in the prescribed manner to the parties concerned and after giving them an opportunity of being heard, make any order referred to in Sub-section (1) or Sub-section (2).

(5) Any order of the High Court rectifying the register shall direct that notice of the rectification shall be served upon the Registrar in the prescribed manner who shall upon receipt of such notice rectify the register accordingly.

(6) The owner to rectify the register conferred by this section shall include the power to remove a trade mark registered in Part A of the register to Part B of the register.'

In the application that was filed by the first respondent for rectification under Section 56 of the Act, it was sought to be contended that the goods in respect of which the mark was registered are not goods which fall for classification under Class 12 of the Fourth Schedule to the Rules and that, therefore, within the meaning of Clauses (a) and (b) of Sub-section (1) of Section 46, there was neither a bona fide intention on the part of the appellant to use the mark for the goods for which it was registered, nor in any event had the appellant used the mark for a continuous period of five years and one month prior to the filing of the application. The Assistant Registrar by the impugned order has come to the conclusion that the mark was liable to be removed from the register on the ground of non-user, contained in Section 46(1). In that view of the matter, it would also be necessary to refer to Clauses (a) and (b) of Sub-section (1) of Section 46 and the proviso ;

'(46) Removal from register and imposition of limitations on ground of non-use--

(1) Subject to the provisions of Section 47, a registered trade mark may be taken off the register in respect of any of the goods in respect of which it is registered on application made on the ground either :

(a) that the trade mark was registered without any bona-fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of Section 45 apply, by the company concerned, and that there has, in fact, been no bona-fide use of the trade mark in relation to those goods by any proprietor thereof for the time being upto a date one month before the date of the application ; or

(b) that upto a date one month before the date of application, a continuous period of five years or longer had elapsed during which the trade mark was registered and during which there was no bona-fide use thereof in relation to those goods by any proprietor thereof for the time being :

Provided that, except where the applicant has been permitted under Sub-section (3) of Section 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the Tribunal is of opinion that he might properly be permitted so to register such a trade mark, the Tribunal may refuse an application under Clause (a) or Clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona-fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description, being goods in respect of which the trade mark is registered.'

The question of classification :

20. The essential question which falls for consideration in these proceedings relates to the correct classification of the goods of the appellant which form the subject-matter of dispute. This dispute must be approached from the stand point of the admitted position that the goods in respect of which registration was sought by the appellant are electrical parts which are used in vehicles and that these electrical parts are utilised only in vehicles. Class 12 of the Fourth Schedule to the Rules is entitled 'vehicles ; apparatus for locomotion by land, air or water'. According to the appellant, the goods produced and marketed by it are admittedly parts of vehicles and must, therefore, be classified together with vehicles in Class 12.

21. The Fourth Schedule to the Rules is entitled 'classification of goods--names of the classes'. The Fourth Schedule contains an explanatory note before it sets out the classes. The explanatory note is as follows :

'Parts of an article or apparatus are, in general, classified with the actual article or apparatus, except where such parts constitute articles included in other classes.'

22. A perusal of the Fourth Schedule would reveal that goods of the same description are not necessarily included in one class. Articles comprised in one class may not necessarily be goods of the same description. Goods of the same description may on the other hand fall in two or more classes.

23. The Fourth Schedule adopts in certain cases words of exclusion so that goods which ordinarily fall for classification within a particular class are excluded from that class by specific words of exclusion. For instance, in Class 6, therefore is a reference to chains except driving chains for vehicles) ; and in Class 7, there is a provision for motors (except for vehicles) and machine couplings and belting (except for vehicles). Class 14 consists inter-alia of 'Precious metals and their alloys and goods in precious metals or coated therewith (except cutlery, forks and spoons)'. Cutlery, forks and spoons are excluded from Class 14 and are specifically included in Class 8. Similarly, Class 15, which deals with musical instruments, is qualified by the exclusion that these would be other than talking machines and wireless apparatus. Similarly, in Class 16, the entry entitled 'typewriters and office requisites' has been qualified by the words 'other than furniture' and the entry 'instructional and teaching material' by the words 'other than apparatus'. There is a specific entry for furniture viz., in Class 20. Therefore, in certain cases the Fourth Schedule has adopted the device of exclusion. The impact of the exclusion is that articles which would ordinarily fall within that class, are specifically excluded therefrom.

24. A second device which is utilised in the Fourth Schedule is the device of inclusion. For instance, in Class 4, the entry 'fuel' is defined to include motor spirit and in Class 9, which inter-alia deals with scientific, nautical, surveying the electrical apparatus and instruments, it has been provided that this would include wireless apparatus and instruments. Similarly, in Class 10, it has been specified that surgical, medical, dental and veterinary instruments and apparatus would include artificial limbs, eyes and teeth. Words of inclusion are sometimes used to indicate that goods which may not ordinarily fall for classification as a part of a particular class are nevertheless to be included in that class. Alternatively, the exclusionary device is utilised, as in the case of fuel in Class 4, to provide by way of abundant caution that this would include a particular article (e.g. motor spirit).

25. A third device that can be noticed in the Fourth Schedule is the use of words which have the effect of creating a residuary entry in a particular class. For instance, in Clause 6, there are 'other goods in non-precious metal not included in other classes'. Similarly, Class 17 contains 'gutta percha, India rubber, balata and substitutes and articles made from these substances and not included in other classes'. Similarly, in Class 18 are included articles made from leather and imitation of leather not included in other classes. A similar device has been used in Class 20 and Class 24 ; the latter deals with textile articles not included in other classes. In Class 31 are agricultural, horticultural and forestry products and grains not included in other classes.

26. The explanatory note to the Fourth Schedule provides that parts of an article or apparatus are, in general, classified with the actual article or apparatus, except where such parts constitute articles included in other classes. What the explanatory note tells the reader is that generally speaking, parts of an article or apparatus are classified with the actual article. This is, however, not an absolute rule for the explanatory note specifies that this is so 'in general'. The explanatory note then provides that parts of an article or apparatus will not be classified with the actual article or apparatus where such parts constitute articles included in other classes. In other to constitute an article included in another class, it is not necessary that the product must be referred to specifically by name in another class. So long as the part of an article or apparatus in question is comprised within an article included in another class, so as to constitute that article it will fall for classification under the latter class.

27. Vehicles have been classified in Class 12. A vehicle is made up of a large number of individual parts, of which some may fall for classification under other classes. In certain classes, there are specific words of exclusion by which a component used in a vehicle is specifically excluded from a class. These cases therefore, pose no difficulty. Thus, for instance, in Class 6, there is a specific exception of 'driving chains for vehicles' from the entry 'chains' and in Class 7, the entry 'motors' is qualified by the words 'except for vehicles'. Similarly, 'machine couplings and beltings' are also qualified by the words 'except for vehicles' in the same class.

28. The Assistant Registrar has come to the conclusion that the goods provided by the appellant fall for classification in Classes 7, 9 and 11. Hence, it would be convenient to refer to these entries in the Fourth Schedule. Class 7 of the Fourth Schedule is as follows :

'(7) Machines and machine tools ; motors (except of vehicles) ; machine couplings and belting (except for vehicles) ; large size agricultural implements ; incubators.' Class 9 of the Fourth Schedule provides as follows :

'(9) Scientific, nautical, surveying and electrical apparatus and instruments (including wireless) photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision) life-saving and teaching apparatus and instruments; coin or counter-freed apparatus ; talking machines ; cash registers ; calculating machines ; fire-extinguishing apparatus.' Then comes Class 11 which is thus :

'(11) Installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.'

29. A part of an article or apparatus has, in general, to be classified with the actual article or apparatus of which it is a part. The Fourth Schedule carves out an exception in cases where a part constitutes an article included in another class. Where a part of an article or apparatus constitutes an article included in another class, then the Fourth Schedule necessarily warrants that the part should be classified in the other class of which it constitutes an article. In a case where another class contains an express reference to the article by name, the question of classification presents no difficulty. In such a case, the part being specifically constituted as an article included in another class, the part in question must be included in that other class. Difficulties, however, arise where a part of an article or apparatus is not referred to eo nominee in another class but, where nevertheless a description of goods falling in another class is sufficient to comprehend the part of the article or apparatus in question. In such a case, the question of interpretation is as to whether the part would constitute an article included in that other class. Counsel for the appellant urged as one of his submissions that a part of an article or apparatus cannot be regarded as constituting an article included in another class, unless it is described specifically by name in that other class. That, in my view, would be a rather restrictive reading both of the explanatory note and of the Fourth Schedule. The words 'constitute articles included in other classes' cannot be construed to mean that the part of the article or apparatus must be an article which is referred specifically by its name in another class. The words 'constitute articles included in other classes' mean that the part of the article or apparatus concerned can legitimately be comprehended as falling within the description of an article that is included in any other class. That would be the plain and ordinary meaning of the expression 'constitute articles'.

30. That, however, is really to beg the main question in such a case. The main issue or question is as to how one would come to the conclusion in the first place that a part of an article or apparatus constitutes an article included in other class. In answering that question, the test, in my view, has to be the primary nature of the commodity or product. In considering the question of classification in a case such as the present, the decision making authority has to assess whether it would be appropriate to classify the part of the article or apparatus with the final product of which it is a part or, more appropriately, with an article included in another class. In order to decide upon the latter course of action, the goods in question must constitute articles included in the other class. Whether in a case such as the present, the goods in question should be regarded as appropriately falling for classification in Class 12 as parts of a vehicle or in Classes 7, 9 or 11 as machines, electrical apparatus or installations for lighting must, therefore, depend upon the primary nature of the goods themselves. This test was laid down in England in a decision in Byrd's case (supra). In that case, an application was made by Byrd and Company Ltd. for the rectification of the register by removing two marks, 'Tricosal' and 'Tricosalicic'. Both the marks were registered in Class 1 Schedule III to the Trade Marks Rules, 1938. According to the applicants, the mark Tricosal had been used only in respect of goods which were not included in the specification of the goods for which it was registered. The actual goods in relation to which the mark had been used were preparations for waterproofing cement and for accelerating the hardening of cement. The preparation in question was added to the cement or other substance and a chemical action took place which produced a hardening effect, a high immunity from atmospheric corrosion and protection from rusting of any metal reinforcements in the concreted object or structure. Class 1 was 'Chemical substances used in manufactures, photography or philosophical research and anti corrosives'. Class 17 was 'manufacturers from mineral or other substances for building or decoration'. The decision of the Chief Examiner was that the goods in relation to which the mark 'Tricosal' had been used belonged to Class 17 of Schedule III and not Class 1 of Schedule III in which class the mark was registered. In that context the examiner held as follows :

'Now, in determining the class in which a particular article should be allocated, the Registrar is often aware that the article possesses various properties which of themselves might possibly justify him allocating the goods to the class in which goods possessing one of these particular properties are placed, but the overriding consideration which has always influenced his decision is the question as to what the primary nature of the goods actually is, and it is my opinion that the goods herein concerned are by their nature accurately described as 'Manufactures from mineral and other substances for building or decoration', and hence belong to Class 17, and that the mere fact that they are anticorrosive in effect, or have a petrifying effect, or cause resistance to damp or atmospheric pollution, does not offset in any material degree the real nature of the goods which is as I have said the overriding consideration in matters of classification.'

The decision in Byrd's case is referred to in the leading treaties on the subject and counsel appearing on behalf of the respondent has drawn the attention of the Court to an extract from Venkateswaran's commentary on the subject where the test as regards the primary nature of the goods has been adopted.

31. The primary nature of the goods in question is the guiding principle, if not a' decisive test. The primary nature of the goods, however, cannot obviously be determined on the basis of a priori considerations. Byrd's case formulates the 'primary nature of the goods.' test but, does not really expound upon the manner in which the Registrar of Trade Marks or the Court will determine the primary nature. In assessing the primary nature of the goods, it would be necessary to have regard to ; (i) the nature or composition of the goods ; (ii) the uses and functions of the goods ; (iii) the trade channel where the goods are available ; and (iv) the class of customers which is comprehended in the class of purchasers of those goods. These considerations are but material circumstances because a business and practical sense has to be imported in determining the primary nature of the goods. Counsel for the respondents urges that considerations as regards the nature and composition of the goods, their uses and the trade channel where they are available are alien to the question of classification and these considerations are relevant only on when a question arises as to whether the goods are of the same description. The submission was that whether or not the goods are of the same description is relevant to Section 12 of the Act but, not to the question of classification. Counsel for the respondent is right insofar as he urges that in determining the appropriate classification of goods of a particular nature under the Fourth Schedule to the Rules, the decision must be based on the primary nature of the goods. In fact, the decision in Byrd's case has been relied upon extensively by the Counsel for the respondents. What is important, however, is that in determining the question of classification, the registry, and in a case where question arises before it, the Court must determine the primary nature of the goods by applying a robust and business like test. After all, even in applying the test as to whether parts of articles or apparatus constitute articles included in other classes, the Court has to have regard to all the relevant circumstances in assessing that question. The nature and composition of the goods, their uses and functions and the trade channel where the goods are available, are material circumstances in determining the primary nature of the goods and, therefore, in coming to the conclusion as to whether the part of an article or apparatus constitutes an article included in another class.

32. There is a long line of established precedent where a test incorporating these circumstances has been propounded. In the Australian Wine Importers case, 6 RPC 311 Lindley L.J., approached the issue by stating that 'one has to look at the trade' and that 'one must look at it from a business point of view'. Similarly, in Ofrex Ltd. v. Rapesco Ltd. 1963 RPC 169 Pennycuick, held that staples according to the ordinary meaning of the word constituted an article of stationery under Class 39 of the relevant schedule to the Trade Mark Act, 1933 and did not constitute 'metal goods' falling in Class 13. In the ACETEST Trade Mark case 1967 FSR 315 the judgment of Mr. Justice Lloyd-Jacob in the Chancery Division dealt with a diagnostic preparation of the type which was applied to material drawn from the body and, therefore, operated externally of the human being. Class 5 of the schedule which came up for consideration before the Court inter alia dealt with pharmaceutical, veterinary and sanitary substances. The Court held that this was a diagnostic substance for carrying out tests on samples taken from the human body and fell for classification as a pharmaceutical substance. Section 46 :

33. Section 46 of the Act provides that a registered trade mark be taken off the register in respect of any of the goods in respect of which it is registered on the ground that either (i) the mark was registered without any bona-fide intention on the part of the applicant for registration that it should be used in relation to those goods by him or, in a case to which the provisions of Section 45 apply, by the company concerned, and that there has, in fact, been no bona-fide use of the trade mark in relation to those goods by any proprietor thereof for the time being upto a date one month before the date of the application or (ii) that upto a date one month before the date of application, a continuous period of five years for longer had elapsed during which the trade mark was registered and during which there was no bona fide use thereof in relation to those goods by any proprietor. Under the proviso to Section 46, it has been laid down that except where the applicant has been permitted under Sub-section (3) of Section 12 to register an identical or nearly resembling trade mark in respect of the goods in question or where the Tribunal is of opinion that he might properly be permitted to so register such a trade mark, the Tribunal may refuse an application under Clause (a) or Clause (b) in relation to any goods, if it is shown that there has been, before the relevant date or during the relevant period, as the case may be, bona-fide use of the trade mark by any proprietor thereof for the time being in relation to goods of the same description being goods in respect of which the trade mark is registered. The proviso to Sub-section (1) of Section 46 of the Act uses the expression 'goods of the same description'. The expression 'the same goods or description of the goods' is used in Sub-sections (1), (2) and (3) of Section 12 of the Act. The position as to when goods can be considered of the same description has been considered in judgment of a learned single Judge of this Court Eagle Potteries Private Ltd. v. Eagle Flask Industries Pvt. Ltd., : AIR1993Bom185 ., S.N. Variava, J. (as the learned Judge then was) held that in all such cases, the nature and composition of goods, their respective uses and functions and the trade channel through which they have been marketed and sold have to be considered. The matter, the learned Judge held, must be adjudged in a business sense.

34. The same test has been enunciated in decisions rendered by Courts in England. In the decision George Key Ld's Trade Mark 1953 (71) RPC 106 Mr. Justice Lloyd Jacob held that the expression 'goods of the same description' has the same meaning in Section 26 of the Trade Marks Act, 1938 (which corresponded to Section 46 of the Trade and Merchandise Marks Act, 1958) as in Section 12. The learned Judge held that the proviso to Section 26 contains a reference to Section 12 and, therefore, it would be straining the construction of the words too much to say that in a proviso which specifically refers to Section 12, a phrase which is quoted from that section is intended to be construed in a sense other than the sense attributable to it when it is used in Section 12 itself. The decision of the Assistant Comptroller had in that case taken the view that in determining the question of sameness of description, one has to take into account not merely the trade channels through which the goods are distributed, but also such other factors as the origin of the goods, their nature and the purposes or uses to which they are put. The decision of the Assistant Comptroller was endorsed in the judgment of Mr. Justice Lloyd Jacob. An instructive decision of the House of Lords is in the Daiquiri Rum Trade Mark case 1969 RPC 600. Lord Wilberforce held that the expression 'goods of the same, description' which is used in Sections 12 and 26 of the Trade Marks Act, 1938 must bear the same meaning throughout. In considering these words, the learned Judge held thus :

'The expression 'goods of the same description' is used elsewhere in the Trade Marks Act, 1938, in particular Sections 12 and 26, and no reason appears why it should not bear the same meaning throughout. The words are not perhaps self explanatory. Taken by themselves, they would suggest that it is necessary to search for a description, by species, genus, or wider category which would include all the goods in question. Taken in relation to the Act of 1938, they might suggest a grouping by reference to the classification of goods for trade mark purposes contained in the Third or Fourth Schedules to the Trade Marks Rules. But reference to the classification shows at once that this cannot be the basis of 'description', for there are many cases where a single class contains goods of different descriptions, while goods which one would think were of the same description may be found in different classes.'

Lord Wilberforce held that 'the test of sameness in description has rightly been taken to be a business and practical test', and that the nature and composition of the goods, the uses of the articles and the trade channel through which commodities are bought and sold would be the test by which the Registrar should be guided.

35. I am of the view that where a part of an article is not specifically eo nominee included in another class, then in arriving at the conclusion as to whether such a part constitutes an article included in another class, the Court must apply the business and practical test which is propounded in the decisions of the Courts in England and of this Court. In adjudicating on whether a part of an article or apparatus constitutes an article included in another class, the Court has to have regard to the primary nature of the goods. The explanatory note to the Fourth Schedule to the Rules enunciates that parts of an article or apparatus are, in general, classified with the actual article or apparatus. The exception is where such parts constitute articles included in other classes. Where the part of the article or apparatus in question in specifically named as an article in any other class, no difficulty of construction arises. If the part of the article or apparatus is, however, not included eo nominee in another class, the Court has to construe in each case as to whether it constitutes an article included in another class. In arriving at the decision as to whether that part constitutes an article included in another class, a business and practical test must be applied. The Court must have regard to the nature and composition of the goods, the uses and functions of the goods, and to the trade channels through which the goods are sold in order to determine as to whether that part of an article or apparatus should appropriately be classified with the article or apparatus itself or whether it falls in another class of which it constitutes an article. The decision has to be founded on the application of a business test by the Court. The decision cannot be based on priori or abstract considerations. The decision must reflect a sense of commercial and business reality and it is that which must be a guiding consideration.

The tenability of the impugned order :

36. The impugned order which has been passed in this case by the Registrar of Trade Marks is based entirely on the consideration that the Indian classification of goods and services classifies the goods in respect of which the mark was registered under Classes 7, 9, and 11. The Assistant Registrar of Trade Marks acknowledged that 'it is well settled that classification is a matter of convenience in administration'. However, the Assistant Registrar was of the view that since the goods in respect of which the mark had been registered are listed in the Indian classification of goods and in the International classification not in Class 12 but, in Classes 7, 9 and 1.1 the application for rectification had to be allowed.

37. The entire approach of the Registrar, to the problem at hand suffers from error. The well settled principle of law is that guidelines or classification lists published by the Trade Marks Registry containing an alphabetical list of goods and the classes to which they are assigned are administrative guides. These do not constitute a decision of the Registrar.

38. Chapter 5 of the Twelfth Edition of Kerly's Law of Trade Marks, inter alia deals with the classification of goods. Nothing that 'classification is primarily a matter of convenience in administration', the Authors then state thus :

'A guide has been published by the registry containing a very complete list of goods in alphabetical order with a statement of the class in which an application to register for such goods should be made. This guide, however, is not to be taken as a decision of the Registrar on the question of classification, in the sense of Section 3, but is relevant if the specifications of goods is by reference to the classification.'

39. In the Thirteenth Edition of Kerly's Laws of Trade Marks and Trade Names published in 2001, the authors note that the significance of classification under the Trade Marks Act, 1994 in England is markedly different from that under the Trade Marks Act, 1938. That is because, under the 1938 Act; the rights conferred by registration were strictly limited to particular goods or services for which the mark was registered. This is no longer so under the Act of 1994 which provides protection in relation to goods or services similar to those for which the mark in question is registered as well as identical goods or services, provided that a likelihood of confusion on the part of the public can be shown. The author notes that this change will reduce the practical importance of the classification of goods and services. Kerly's treatise contains in its 13th Edition, a statement of the guiding principle which must be adopted inter-alia in determining the question of classification and this may be extracted for convenience of reference :

'In many cases the specification of goods or services of a registered trade mark is clear ; but sometimes it is not, either because of the limitation of the goods or services of a class or because the description of goods or services is general or vague. In the former case, and in other cases where it is necessary to determine into which class any particular goods or services fall, it is necessary to look at the Registrar's practice at the date of the application. In the latter case, a particular problem with services, it is necessary to interpret or construe the words used. Here one is concerned with how q product is, as a practical matter, regarded for the purposes of trade or the meaning of the words of the specification as a matter of ordinary language. In keeping with this approach, the test of whether particular goods fall within a specification of goods has been said to a question for the consumer and not a matter to be determined by expert scientific evidence.'

In a treatise entitled 'Intellectual Property : Patents, Copyright, Trade Marks and Allied Rights' by W.R. Cornish (Third Edition, First Indian Reprint 2001), again, it has been emphasised that the division of the Trade Marks Register into various classes in accordance with the Nice International Arrangement is an administrative measure and that the Registrar has the final power to decide the class into which particular goods are to be placed:

'The Trade Marks Register is divided into 42 Classes, 34 for goods and 8 for services, in accordance with the Nice International Arrangement on the subject This classification is an administrative measure, designed to aid the process of searching. An applicant needs to name all the goods and services for which he wants the registration from the outset, since no amendment is allowed on this score. The Registrar has a final power to decide the class in which particular goods or services are to be placed. Classification does not directly affect the validity or the scope of protection of a mark.'

40. Finally, on this aspect it would be apposite to refer to the decision of the Chancery Division in the GE Trade Marks case 1969 RPC 418. Mr. Justice Graham held there that though the Registrar issued a detailed guide for applicants 'but this is only a guide and not to be taken as a decision of the Registrar on the question of classification within Section 3' (at page 458). Adverting to Section 3 of the Trade Marks Act (which laid down that any question arising as to the class within which any goods fall shall be determined by the, Registrar whose decision shall be final) Graham, J., held that the section enables the Registrar to decide without appeal in which class any particular goods must be registered. However, that did not oust the jurisdiction of the Court to decide whether any goods as to which there is a dispute properly fall within a specification of one class or another.

41. The well settled position, therefore, it that guidelines or classification lists which are published by the Trade Marks Registry are only administrative guidelines. The same principle applies to classification lists prepared on the basis of international arrangements. These do not constitute binding determinations on the proper classification of goods and on every occasion when the classification of particular goods is in dispute, it is for the Registrar to apply his mind to that question and to arrive at a proper adjudication. Similarly, where the question arises before the Court, the ad-judicatory function of the Court is not ousted and the Court must decide the question as to the appropriate classification of the goods in question.

The findings :

42. The record of the present case establishes that the goods in question which are produced and marketed by the appellant are utilised exclusively in vehicles. The goods which form the subject-matter of the dispute consist of switches used in Headlights, Ignitions, Horn Dippers, Motor Starters, Brake Lights and Dimmers. Then there are plug caps, auto voltage regulators, relays, spark plugs and regulators for motors. The appellant has produced sufficient material on the record to establish that these goods constitute parts which are used in automobiles or vehicles and that they can be used only for that purpose. The evidence which has been produced by the appellant on the record before the adjudicating authority below included price lists, certificates of trade bodies, of purchasers and of experts. Besides this, the appellant produced invoices showing actual sales of parts by the appellant to automotive manufacturers. If these spare parts purchased by automotive manufacturers are thereupon utilised by them in the production of vehicles which they themselves manufacture and market under their own brand name, this does not detract from the case of the appellant, but in fact goes to emphasise that the goods in question which are sold by the appellant are manufactured for use specifically in vehicular models of specified manufacturers and that these goods cannot be used for any other purpose. The primary nature of the goods shows that these are parts of vehicles. That is their nature and composition. These goods are known to the trade as automobile parts. The evidence which was produced by the appellant establishes that the trade channels where the goods are available consist of trade outlets wherein automobile parts are sold. There was also evidence before the authority below showing the direct sales of these parts by the appellant to automotive manufacturers. The price lists which were produced by the appellant on the record would show that the business in these parts has been conducted on the basis that they constitute parts of vehicles. Therefore, if regard is had to the nature and composition of the goods used, to the functions of the goods, the trade channel where the goods are available, and the class of purchasers who purchase the goods, there can be no manner of doubt that the goods are in fact, parts of vehicles under Class 12 of the Fourth Schedule to the Rules. The goods which are produced and marketed by the appellant are not regarded either by the business or the trade as electrical apparatus, nor can the primary nature of the goods be regarded as electrical apparatus in the trade. Unfortunately, the Assistant Registrar furnished no reasons whatsoever for coming to the conclusion that the goods in question are liable to be classified under Classes 7, 9 and 11, save and except the fact that they are so classified in the Indian classification and in the International classification. That reason cannot be dispositive of the issue involved because classification lists of the nature that are published by the Trade Marks Registry are administrative guidelines which cannot be regarded as concluding the adjudicatory function of the Registrar of Trade Marks in each case where the question comes up for consideration before him. The Assistant Registrar has clearly overlooked that even in Class 7, the expression 'motors' is qualified by the exclusion 'except for vehicles'. Similarly, Class 11 deals with installations for lighting. The goods which art; sold by the appellant cannot be regarded by any stretch of imagination as installations for lighting. The question as to whether the goods fall under Class 9 has already been considered earlier the goods cannot be regarded as electrical apparatus. The Assistant Registrar has rested his decision entirely on the basis of the Indian and International classification. In view of the well settled position in law, the Assistant Registrar ought to have considered the documentary material that was produced on behalf of the appellant which he has evidently failed to do. The only reason which has been furnished by the Assistant Registrar for allowing the application of the first respondent cannot sustain the impugned Order.

43. In the circumstances, I am of the view that the appellant is entitled to succeed. In that view of the matter, I am of the view that it is not necessary to consider the alternative argument which was urged on behalf of the appellant that even if a case under Clauses (a) and (b) of Sub-section (1) of Section 46 had been made out by the first respondent, the appellant would be entitled to the benefit of the proviso to Section 46(1). The question as to whether a recourse to the proviso could be had would arise if the respondents had established their case within the substantive part of Sub-section (1) of Section 46. In my view, the respondents failed to establish a ground for removal from the register within the meaning of Sub-section (1) of Section 46. Therefore, their application was liable to fail on that ground alone.

44. Before concluding the discussion, it would be necessary to record that the only ground which has been urged before this Court is the correctness of the finding that has been recorded by the Assistant Registrar of Trade Marks to the effect that the register was liable to be rectified on the ground that the goods which are produced and marketed by the appellant did not fall in Class 12 and that, therefore, they did not constitute the goods in respect of which registration had been granted by the registering authority in the first place. For the reasons already indicated, I am of the view that the impugned Order is unsustainable and is liable to be quashed and set aside. The appeal is allowed. The order of the Assistant Registrar dated 21st June, 1989 is accordingly quashed and set aside and the application moved by the first respondent shall, in the circumstances, stand dismissed. In the circumstances of the case, there shall be no order as to costs.

Appeal allowed.