1986 PLP 1636 (CLC)

14. An old case reported in (1899) 16 R P C 12 is very close to the point. 'Dunlop Pneumatic Tyre Company Ltd.' was manufacturing and selling tyres and other accessories such as pumps and inflators under the name Dunlop since 1888. This word "Dunlop" had become so identified with the name of the Company that an‑y one could not think of one without the other. One Peter Funt started business as "Dunlop Lubricant Company". The original Dunlop Company filed an action for a prohibitory injunction to restrain the defendant from trading under the name Dunlop. The defendants contested the action on many grounds but two most impressive grounds were (i) that the defendant and one other John Francis Dunlop had formed a partnership under the style "Dunlop Lubricant Company" in November 1896 with the object of selling, the lubricant etc. The business continued in partnership till August, 1887 when John Dunlop retired after releasing and assigning all his rights and estate to the defendant. The defendant has thus acquired the name Dunlop from his previous partner and desired to continue to exploit the name in future. Additionally, the defendant pleaded, the business of Lubricant was so distinct from the business of the plaintiff that there was no chance of either any loss being caused to the plaintiff or any possibility of any deception to the public. Romer, J. after hearing the parties disbelieved the story of Peter Funt having adopted the name Dunlop in the manner he had alleged and granted injunction to the plaintiff as prayed. The learned judge held:‑ "I am satisfied that there was never any prior business carried on by Mr. Dunlop under that name. I am not satisfied that the arrangement purported to be come to by the deed which has been put in was a genuine arrangement, and the conclusion I come to is that the defendant himself chose to carry on business under the name of the Dunlop Lubricant Company because of the word 'Dunlop'. and because the word 'Dunlop' suggested the plaintiff Company and for no other reason. It appears to me it would be wrong to allow him to carry on business under that name, and to describe the goods as he does as 'Dunlop' goods, for that is the chief word that he uses on the covers of his goods, with regard to his burning oil and his graphite, which he sells. The word 'Dunlop' is put in a very prominent way, and I am satisfied that he does that with a view of inducing customers to believe that those goods if they are not the goods of the plaintiffs, are goods used in some way with their sanction, or connected in some way with them, so as to get the benefit of the plaintiffs. name. It appears to me that the plaintiffs are entitled to say that the word 'Dunlop' ought not to be allowed to be used under those circumstances with those objects by the defendant; that it would injure them in their business very considerably if it is not stopped. They themselves are sellers of cycle accessories, though as a matter of fact up to the present time they have not sold burning oil or lubricants. But they may do so, and in the meantime it appears to me that they are entitled to come into Court and say that a name substantially identical with theirs ought not to be allowed to be used by the defendant in the way in which he is using it. I, therefore, think the plaintiffs are entitled to some relief." (1912) 29 R P C 433

15. Another interesting case was decided by the High Court of Justice Chancery Division as early as 1912 and is reported as Lloyd's v. Lloyd's (Southampton) Ld. in (1912) 29 R P C 433, Lloyd's the world known name in the Marine Insurance and shipping circles have existed as an establishment since 1774. They have branches or agents at practically every port of any importance throughout the world. In 1911 some person floated a Company using the name Lloyd's and called it "Lloyd's (Southampton) Ld. Dawson Bros. who were Lloyd's agents at Southampton brought an action against this company praying for an injunction against the defendants restraining them from using this name. The trial Judge while concealing, that the defendants had no satisfactory explanation to offer why they had chosen this name Lloyd's for their adventure and also being convinced that by the use of this name defendant had no other motive but to take some benefit out of the goodwill and reputation of Lloyd's still refused to issue injunction on the ground that there was no evidence worth the name to prove that "there is a reasonable probability of such deception being practised".

16. The plaintiff appealed. The appeal was allowed and defendants were restrained by injunction to use the name Lloyd's. Cozens‑Hardy M.R. observed: "If I find that a man, taking a particular name under which to trade, is a knave, I give him credit for not being also a fool, and I assume that there is a reasonable probability that his knavish purpose will succeed. I think there is ample evidence on the part of the plaintiffs that this is not an honest case, but one in which serious damage might be done to Lloyd's and to Lloyd's agents at Southampton. I think the order which Lord Justice Buckley proposes is the proper order to make in this case."

17. Buckley L.J. who wrote the leading judgment held:‑ "Lloyd's has existed for 200 years in connection with shipping; for 100 years they have had an agency at Southampton. The defendant Company is formed with objects which according to its Memorandum of Association cover all sorts of purposes not all shipping but nearly everything relating to shipping and a multitude of other purposes, and they have chosen for their name 'Lloyd's (Southampton) Ld.' They said they thought it was a suitable name. I have not the least doubt that it was a suitable name for their purpose, and that purpose was what the learned Judge described as an impudent attempt to pretend they are that which they are not. The defendants say, and with reason, that a plaintiff coming to this Court must prove his case. 1 entirely agree, but when you have facts such as stare one it the face in this case it does not require very much evidence to assist one to arrive at the proper conclusion. The evidence which has been filed is, I think, amply sufficient to enable the Court to say that there is, in the use of this name, a fraudulent and improper purpose, namely that these defendants, who are not, shall pose as being, Lloyd's of Southampton, putting 'Limited at the end of their name. To my mind there is no difference between this case and such a one as I suggested in the course of the arguments, of persons registering a company in the name of 'London County' and Westminster Bank, Lothbury, Limited,' then saying, 'we have no intention of being mistaken for the well‑known Banking Company in the City'."

18. Reference may also be made to a very old case which came before the House of Lords and by majority judgment their Lordships held that "Dunn's Fruit Salt' should not be registered because "Eno's Fruit Salt" had by that time gained so much popularity and the name of the producer Eno with the name of the product 'fruit salt' had become so identified that to allow the registration of the word 'fruit salt' to a different person was bound to cause confusion in the market. It may be stated that in this case the words 'fruit salt' were common words and the product being baking powder was also different from the product of 'Eno's' which was a 'fruit salt' to be used for medicinal purposes, yet the registration was not allowed to Dunn's for registering his baking powder under the name 'fruit salt'. A passage from the judgment of Lord Macnaghten which is of general importance may be quoted here: Unfortunately in the competition for business a trader not unfrequently endeavours to attract custom or by representing that the goods which he offers for sale and different in origin, composition, or character from what they really are. The public are constantly tempted to buy one thing when they think they are buying another. It is not, as has been observed, the province of the Court to protect speculations of this kind. Between rival traders the application of the principle is necessarily a matter of extreme difficulty. But as between the innocent public and a trader seeking registration of a proposed trade mark, there is, I think, no room for hesitation or doubt. The Statute allows any person to oppose an application for registration, whether he has or has not a personal interest in the result. It declares that it is not lawful to register as part of, or in combination with, a trade mark, any words, the exclusive use of which would, by reason of their being calculated to deceive, be deemed disentitled to protection in a Court of Justice. It seems to me that in registering trade marks the principle to which the enactment so plainly refers ought to be applied without any qualification whatever, and that the Comptroller, to whom in the first instance is committed the 'discretionary power', as it is termed, in the Act, of registering a trade mark, ought to reject words which involve a misleading allusion or a suggestion of that which is not strictly true, as well as words which contain a gross and palpable falsehood. The above observations made by Lord Macnaghten would indicate that the consideration for refusing registration of a mark is not only to save a prior owner from possible losses to him, but more than that to protect and safeguard the interest of the innocent public and a customer, who may be duped to pay for something which he is not getting in return.

19. In this connection reference may also be made to some cases of our Court also:‑ P L D 1968 Kar. 369 (Monsanto Company v. Gul Ahmed Textile Mills Ltd. and another In the case of Monsanto Company v. Gul Ahmed Textile Mills Ltd. a mark "Resloom", which was applied to chemical preparations for dyeing textiles and known for their quality, was adopted by a Textile Manufacturer for his Textile goods. This mark originally belonged to an American Company and the Chemical products were imported by the respondent and used for treatment of Textile by the respondent. Both the American Company and Textile owner in Pakistan applied for registration of the "Resloom" in Pakistan and the Registrar, allowed registration to both on the consideration that none of the two applicants had acquired any reputation for this Trade Mark in Pakistan market. The American owners appealed against the decision of the Registrar allowing registration to the Pakistani defendants. Qadeeruddin J. disposing of the arguments raised on behalf of the respondent observed:‑ "Future confusion and deception are not relevant when the situation existing on the date of the applications is considered. But it would be relevant for exercising discretion to make a choice between the two parties in respect of their future trade because the likelihood of confusion and deception in the event of the parties developing their respective trades is undeniable. While making such a choice the likelihood of future confusion or deception is a material consideration."

20. Disposing of the contention of the counsel for the respondent that chemical and Textiles fall in two different classes and as such there was no likelihood of any confusion and deception the learned Judge held: "The real point is not whether the goods belonged to the same class or to different classes, but whether there is any trade relation between them of such a nature as to create an impression that the manufacturer of one might be the manufacturer of the other; or the products of one manufacturer might have been used in the production of the goods of the other manufacturer. From this point of view, there is a likelihood of deception and confusion if the chemical liquid, which is used for giving a finish to textiles and for protecting them against shrinkage has the same name as the textiles themselves, because the impression can easily be created that the textile piece goods which bear the name of 'RESLOOM' may have been treated with the chemical preparation of the other manufacturer." P L D 1967 Kar. 492 (Bandenawaz Ltd. v. The Registrar of Trade Marks)

21. To the same effect are the observations of Arefeen, J. in the case of Bandenawaz Ltd. v. The Registrar of Trade Marks. In this case the device of a deer in standing position to identify their products was used by Shell Co. on Kerosene, Petroleum and spirit, while another Company Bandenawaz Ltd. wanted to use the device of deer in raupant position on lubricating oils and greases. The registration was refused to the appellant Company. In appeal to the High Court against this decision, Arfeen, J. upholding the decision of the Registrar observed:‑ "The consideration which has to be kept in mind is whether a member of the public buying the products of the appellant was likely to be deceived into believing that he was buying the products of the Shell Co." P L D 1973 Kar. 567 (Messrs Montgomery Flour and General Mills Ltd. v. Registrar, Trade Marks, Karachi

22. Another leading case on the point decided by the Late Chief Justice Tufail Ali A. Rahman reported in P L D 1973 Kar. 567 M/s. Montgomery Flour and General Mills Ltd. v. Registrar, Trade Marks, Karachi deserves to be noted. In this judgment the learned Judge has examined the statutory implications of section 8 and section 10 of the Trade Marks Act while disposing of the dispute between the parties on the question of registration of a trade mark "Seven‑Up". This mark belonged to the respondents and was applied to the non‑alocoholic beverages. The appellants wanted the registration of the word 'Seven‑Up' to apply to their goods like "hard boiled sweet, candies and drops " The Registrar refused registration and an appeal was filed against the order of the Registrar. The main contention raised was that the appellants desired registration under Class 30 of the IVth Schedule while the respondents an American Company had their registration under Class‑32 which includes goods like "soft drinks, beverages, carbonated, non‑alcoholic, non‑cereal maltless, beverages sold as soft drinks and 11 syrups, flavour and extracts for making soft drink beverages".

23. The next contention was that although the respondents had also obtained registration under Class 30, but they had not yet manufactured or sold candies etc. in the market, while the appellants had been selling them for quite some time. The learned Judge in his very' exhaustive analysis of the law has made observations which it is worthwhile to quote here. On page 578 the learned Judge has observed: "Admittedly the Trade Marks relied upon by the respondent No.2 are registered in Class 32 while those of the appellant were refused registration under Class

30. According to learned counsel since they fall in different classes they cannot be described as being 'goods of the same description'. I regret my entire inability to accept this argument. In the first place the word used in the statute is 'description' and not 'class'. But even if I were to regard the two words as synonymous, the argument really comes to this; that I should interpret the words of the statute by reference to words used in the rules made thereunder. Now the rules themselves are made under the rule‑making authority given by the statute and, in the event of any conflict between the rules and the statute, it is obvious that it is the statute and not the rule which must prevail. It would, therefore, be understandable, particularly if it was necessary to reconcile a rule with the statute, that language used in a rule should be interpreted by reference to language used in the statute but learned counsel for the appellant is asking me to do the exact reverse. If I were to accept his argument it would amount to subordinating the statute to the rues and allowing the latter to control the meaning of the statute. For the purposes of this point, therefore, I propose to pay no attention whatever to the fact that the registration of the respondent No.2 upon which he relies is in Class 32 while the appellant had applied under Class 30." At page 581 it was observed by the learned Judge "as I have emphasised before, a Trade Mark indicates merely the connection of the goods in the course of trade with a person who has the right to use the mark and not an indication that they are the goods in fact manufactured by that person".

24. In the early part of the judgment after quoting Kerly on Trade Mark the learned Judge explained the expression same goods or description of goods" occurring in subsection (1) of section 2 of the Trade Marks Act, 1938 and held:‑ "The statutory rights conferred by registration are now more extensive than is necessary merely for the purpose of preventing deception, and do confer something in the nature of a limited monopoly, the terms of which must be ascertained from the words of the relevant provision. The leading principle cited above remains of importance in determining the rights of parties where the specific provisions extending the general rights do not apply. While of course the Courts will give full meaning to every section and every word in every section of the law, I think it would be right to say that the Courts ought, in construing the provisions of the Trade Marks Act, have regard both to public and to private rights, the first consisting of protecting the unwary customer from purchasing goods in the belief that they are manufactured by a company or firm in the quality of whose goods he has acquired confidence and the latter consisting of protecting the proprietors of registered Trade Marks against the infringement thereof and against the use of the Trade Marie by other person wishing to capitalise upon the reputation of the owner of the Trade Mark." A I R 1969 Bom. 24 (Sunder Parwanand Lalwani and others v. Caltex (India) Ltd.) 25. 1 may also refer to a case from Indian jurisdiction. It is a D:B. judgment reported in A I R 1969 Bomb. 24 Sunder Parmanand Lalwani and others v. Caltex (India) Ltd. This judgment is an exhaustive analysis of the law on the subject. The main reason for taking note of this judgment by me here is that the mark "Caltex" which belonged to the respondents and was applied on petroleum and lubricating oils, was sought to be adopted by the appellants for being applied to "Horological and other Chronometric instruments and parts thereof" falling in Class 14 of the IVth Schedule of Trade Marks. The goods of the respondents Caltex Co. had a registration of the word "Caltex" in Class 4 and Class 19 only. It was also admitted position that "Caltex" have never manufactured or marketed the goods for which the appellants desired the registration under that mark and their argument in the Court was that there was no likelihood of any confusion yet the mark was refused registration and in appeal the High Court of Bombay dismissed their appeal, affirmed the order of the Registrar and the following observations of the learned Judges at page 36 of the judgment are relevant:‑ "In this case, the goods are totally different. There is no trade connection between them. There is no connection in the course of trade, nor any common trade channels. There are factors against holding that there would be any danger of deception or confusion. But we must consider the factors which tend to show that there is a likelihood of creating deception or confusion. The opponents have been using their mark on a very large scale since 1937. Their sales in 1956 exceeded Rs. 30 crores. Their publicity is wide spread and large. In 1956 they spent over a million rupees on advertisements. The goods in respect of which they use the trade mark 'Caltex' are mainly petroleum, kerosene and lubricants like greases and oils etc. The goods in respect of which the applicant seeks registration are mainly watches. The class of goods in respect of which the applicant seeks registration is wider than watches and wathees can be both costly and cheap. It cannot go without notice that the goods in respect of which the applicant in fact used the mark before he applied for registration were very cheap watches. The goods of the opponents are used by persons all over India, in cities and in villages, in different walks of life, rich or poor, literate or illiterate. The goods of the applicant are different in nature. But they are watches. They can be cheap watches. The potential market for them is, therefore, similar to that of the existing market of the opponents, in the sense that the goods of both the parties are not special goods. They are goods which would be purchased by the common man. Now, so far as the word 'Caltex' is concerned, it is common to the opponent's mark as also to the opponent's name. To mention the mark 'Caltex' is also to mention the name of the owner. The mark is unlike the Lion or the 'Stag' mark where there would be no direct connection between the mark and the name of its owner. The opponents are a large company known by many as having large resources, and therefore, capable of starting any new industry or trade. Because of that reasons, there is a greater probability of the public believing that any goods with the mark 'Caltex' on them would be the goods of the opponents." It has further been observed: "But unfortunately for the applicant, it is also his evidence that Degoumois & Co. had other marks in respect of their watches. As a matter of fact, on the first order which the applicant placed with Degoumois & Co. which is dated 6th April, 1955, the mark originally selected by him in respect of the categories of watches covered thereby was 'Sandy', which also was a mark of Degoumois & Co. He got the mark 'Sandy' changed to 'Caltex' only subsequently. Why he made the change has not been explained. It would be legitimate to infer that he selected the mark 'Caltex' to take advantage of the reputation of that mark as used by the opponents in connection with their goods. The applicant's selection of the mark was made, to use the words of Lord Denning in 1962 RPC 265 (HL), with intention to deceive and cause confusion, and he must, therefore, be given credit for success in his intention, and we should not hesitate to hold that the use of that mark is likely to deceive or cause confusion."

26. There is an unending chain of case‑law on the subject. Judges have stated the law in different circumstances and in peculiar situation of each case. On the one hand we have a number of cases, some of which have already been mentioned in the preceding paragraphs in which registration has been refused and on the other we have such leading cases as the Granada Group Ltd. and others v. Ford Motors Co. Ltd. (1973) R P C 49 and Thomas Bear and Sons (India) Ltd. v. Prayag Narain and another A I R 1940 P C

86. Let me examine the contrary view as well. In the former case Garham, J. declined to issue injunction to the Ford Motor Co. Ltd. restraining them from using the name 'Granada' for a new car on the objection of the Granada Group Ltd. The facts found in the judgment were: "In the present case the onus is on the plaintiffs to make out their prima facie case and to show that there is a likelihood of confusion between the defendant's business and their business, if the defendants proceed as they at present intend to do. In my judgment, the plaintiffs have failed to produce evidence that satisfies me that such is likely to be the case."

27. The other case decided by the Privy Council was an appeal from India. It was held that the figure of 'Elephant' which was a registered mark of a company applied on cigarettes and smoking tobacco could be applied by the defendants on packets of chewing tobacco 'Pan Tambacoo', as according to the learned Judges, there was no possibility of any confusion in the circumstances of the case.

28. The law is best stated by James L.J. in the very old case of Singer Manufacturing Co. v. Loog (1880) 18 Ch. D

395. The opinion of Jame L.J. quoted on page 1 of the book 'Kerlys Law of Trade Marks and Trade Names' runs as follows:‑ "No man is entitled to represent his goods as being the goods of another man; and no man is permitted to use any mark, sign or symbol, device or means whereby, without making a direct false representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer. That being, as it appears to me, a comprehensive statement of what the law is upon the question of trade mark or trade designation, I am of opinion that there is no such thing as a monopoly or a property in the nature of a copyright, or in the nature of a patent, in the use of any name. Whatever name is used to designate goods, anybody may use that name to designate goods; always subject to this, that he must not, as I said, make, directly or through the medium of another person a false representation that his goods are the goods of another person."

29. To revert to the case on hand the important question that remains unanswered by the applicants/ respondents is what else if not the urge and anxiety to thrive at the goodwill and deep‑rooted reputation of the appellants, inspired and motivated them to hit upon the word 'BATA' which is a proper noun of the founder of Bata Shoe Company and has acquired a commercial reputation by its constant use as a commercial name. As no explanation is offered for making a choice of this name, I would respectfully follow the opinion of the Court in 'Kodak and Disneys'I cases quoted above.

30. True it is that thread balls fall in a different class from shoes polish, soles, eye‑lids and variety of other articles used in shoe‑making industry and for the present the thread balls and these articles may not be sold at the same counter and through the same trade channel, but the possibility of the appellants producing the thread for use in their industry cannot be ruled out. Such a consideration weighed with the Judges who decided the Dunlop case.

31. Assuming for a moment that the appellants would not monetarily stiffer any loss if the respondents are allowed to use the word 'BATA' as their mark, yet the possibility of confusion in the trade circles and of deception, intentional or even unintentional, to the innocent public and particularly unwary purchasers of thread balls by shoe‑makers and leather goods manufacturers, cannot be completely ruled out. In the circumstances the safer course is to uphold the opposition' and refuse registration of the word 'BATA' to the respondents. The appeal is allowed and the mark registered in favour of respondents I, should be struck off from the Register of Trade Marks. A.A. Appeal allowed.