l Appeal Nos
1952 and 1953 of 1966
Appeals from the judgment and order dated February 25 1965 of the Punjab High Court Circuit Bench at Delhi in Letters Patent Appeals Nos
38 D and 42 D and 39 D and 43 D of 1963
section T Desai and Naunit Lal for the appellants in both the appeals
C B Agarwala K P Gupta and R C Chadha for respondent No 1 in both the appeals
The Judgment of the Court was delivered by Shelat J
These two appeals under certificate are directed against the common judgment and order of the High Court of Punjab dated February 25 1965 passed in four Letters Patent appeals filed by the two appellant companies and the respondent company against the judgment and order of a learned Single Judge of the High Court
The said appeals were the outcome of two applications filed in the High Court under section 111 of the  XLIII of 1958 referred to hereinafter as the Act for rectification of the register in respect of two registered Trade Marks Nos 161543 and 161544 registered on November 20 1953 in respect of cycle bells manufactured by the respondent company
Registered Trade Mark No 161543 was the numeral 50  and Trade Mark No 161544 was the figure Fifty 
The two appellant companies carry on business in Kapurthala in Punjab one of them the National Bell Co Ltd claimed to be manufacturing bells with numerals 33  50  51  and 40  inscribed on them since 1957 and the other Ms Gupta Industrial Corporation since 1947 with numerals 20  50  and 60  inscribed on cycle bells manufactured by it
The two applications for rectification arose out of suits filed in the District Court Lucknow by the respondent company against the two appellant companies on the ground of infringement of its said registered trade marks the numeral 50  and the figure Fifty 
On April 24 1961 the District Court stayed the said suits at the instance of the appellant companies giving them time for filing the said rectification applications in the High Court
The grounds alleged in the applications were 1 that the numeral 50  and the word Fifty  were common to the trade at the time of the original registration and were therefore not distinctive of the bells manufactured by the respondent company Sup
CI 6 74 2that many other manufacturers in the market were using the numeral 50  and the word Fifty  on or in relation to cycle bells and therefore the distinctiveness of the said marks in relation to the bells manufactured by the respondent company if any had been lost 3 that the respondent company did not get the registration of these marks with any bona fide intention of using them in relation to their cycle bells and that in fact there had been no bona fide use of the said trade marks in relation to their goods before the date of the applications
They also alleged that the respondent company had fraudulently declared at the time of registration that they were the originators or proprietors of the said two marks 50  and Fifty 
Both sides led evidence oral and documentary the latter including several price lists from the possession of some of the dealers in cycle spare parts
The learned Single Judge who in the first instance tried the applications found on a consideration of the evidence that cycle bells with different numerals and in particular the numeral 50  were being sold in the market before the respondent company put its cycle bells with the numeral 50  and the figure Fifty  inscribed on them in the market and continued to be sold right upto 1952 when import of foreign manufactured cycle bells was prohibited and that despite such prohibition those cycle bells were being sold in the market as late as 1958 presumably from old stocks still lingering in the market though not from any new imported stock
The learned Single Judge also found that there was no evidence of the original registration having been fraudulently obtained by the respondent company that there was no averment by the appellant companies that Lucas or any other concern had obtained registration of any mark either of the numeral 50  or the figure Fifty  and that therefore cl
a of section 32 did not apply
He further found that cl
b of section 32 also did not apply
He held however that the trade mark namely the numeral 50  was not at the commencement of the proceedings distinctive of the goods of the respondent company as a numerals are prima facie not distinctive except in the case of textile goods as recognised by Part HI of the Trade and Merchandise Marks Rules 1959 and b that the numeral 50  was being commonly used by several dealers and manufacturers subsequent to the registration thereof by the respondent company and that therefore the registered trade mark the numeral 50  was hit by cl
c of section 32
So far as the trade mark of the figure Fifty was concerned he held that there was no evidence that it was used by other parties either prior to or after the registration thereof by the respondent company and in that view declined to rectify or expunge the trade mark Fifty  as seven years had already elapsed by the time the rectification proceedings were launched and could not therefore be challenged on the ground of absence of distinctiveness as laid down in section 32
75 The learned Single Judge on the basis of his aforesaid conclusions cancelled the trade mark No 161543 ie of the numeral 50 
In the appeals filed against the said judgment the Division Bench of the High Court held 1 that though the use of the numeral 50  in relation to cycle bells dated back at least 30 years as in the case of Lucas and certain other foreign concerns the imports of such goods stopped from about 1952 though some bells were being sold till 1958 presumably from the remaining previous stock 2 that the numeral 50  in connection with those foreign made bells was never intended as a trade mark but was used only as an indication of the type or quality and 3 that statements Exs
R 2 R 3 and R 4 produced by the respondent company showed that sales of its bells with the trade marks 50  and Fifty  inscribed on them had risen from the value of Rs 19644 in 1949 50 to Rs 1483 lacs in 1961 62
The Division Bench agreed with the Trial Judge that cl
a of section 32 did not apply as there was no question of the original registration having been fraudulently procured in 1953
It also held that the trade marks in question could not be cancelled merely on the ground that if their registration had been opposed they would not have been registered and that therefore the question for determination was whether it was liable to cancellation in view of section 32c which lays down that the section would not apply in cases where the trade mark in question was not distinctive at the commencement of the proceedings
According to the Division Bench the word commencement of proceedings in cl
c of section 32 meant the commencement of the infringement suits filed by the respondent company as the proceedings for cancellation were the off shoots arising from those suits that therefore the situation in respect of section 32c had to be assessed in the light of the state of affairs existing in 1959
According to the Division Bench the earliest use of the mark 50  by any concern other than Lucas and other foreign manufacturers was in 1953 by Ms Indian Union Manufacturers Ltd The respondent company however had filed a suit against that company in 1954 which resulted in a compromise dated February 5 1955 whereunder the said company recognised the exclusive right of the respondent company to the use of the word Fifty  Thirty  and the numerals 50  and 30  while the respondent company recognised the right of the said company to the exclusive use of the words and numerals Thirty one  Forty one  and Fifty one  and 31  41  and 51  that the respondent company had also in 1956 similarly taken action against K R Berry  Co of Jullundur for use by that company of the mark Five 50 
The suit however had to be withdrawn in 1958 on account of lack of jurisdiction of the Banaras court where it was filed that though no fresh suit was 76 filed against that company the respondent company had opposed an application by that company for registration of the mark Five Fifty  before the Registrar and that application was then pending in 1962 and lastly that the respondent company had filed in 1959 the two suits against the appellant companies out of which these rectification proceedings arose
The Division Bench held that though there was some evidence of the use of the numeral 50  by certain other concerns after 1953 no importance could be attached to such breaches as there was hardly any evidence as to when the infringers started manufacturing and the extent of their manufacture and sales and that the correct principle applicable in such cases was that a few unchallenged scattered infringements by a number of traders did not render a registered trade mark common
As regards the earlier use of the word Fifty  and the numeral 50  by Lucas and other foreign concerns the Division Bench held that they were not the registered trade marks of those companies and that those concerns had used those marks as merely type marks
Though the idea of using 50  and Fifty  was not the original idea of the respondent company when it obtained registration in 1953 the foreign concerns had ceased importing the goods and though sales of those bells continued until 1958 such sales were from the stock still remaining unsold
Such sales could not he in any appreciable bulk
Even if the idea of using the two marks might have been conceived by the respondent company from the marks used by Lucas and other foreign concerns there was no question of any piracy or infringement of those marks as the respondent company was the first to convert what were originally type marks into registered trade marks
Lastly it held that the statements of sales produced by the respondent company demonstrated that its sales had been steadily increasing and that some concerns finding the use by the respondent company of its marks 50  and Fifty  highly successful had sought in recent years to take advantage of am popularity of the cycle bells of respondent company by imitating its marks
This fact however could not mean that either in 1959 when the respondent company filed the suits or in 1961 when rectification proceedings commenced the marks had ceased to be distinctive in relation to the goods of the respondent company or were therefore liable to cancellation under section 56 by reason of cl
c of section 32
Accordingly the Division Bench allowed the respondent company s appeals and set aside the order of the learned Single Judge cancelling the registration of its trade mark No 161543 in respect of the numeral 50  and dismissed the appeals of the appellant companies
Mr section T Desai for the appellant companies contended that the two trade marks in question were liable to cancellation on the grounds that 1 they were common and not distinctive at the 77 date of their registration and therefore ought never to have been registered 2 that in any event the numeral 50  is prima facie not distinctive unless shown to be of such extensive use as to make it distinctive 3 that there was clear evidence that the respondent company had imitated the use of these marks by Lucas and other manufacturers and that therefore these marks would be disentitled to protection in a court of law and 4 that the said marks were not at the commencement of the proceedings distinctive that is adapted to distinguish the goods of the respondent company
Mr Agarwala on the other hand argued that 1 the two marks having been registered in 1953 and seven years since then having elapsed at the commencement of these proceedings the question whether they were distinctive at the time of registration was not open to dispute 2 that that being so there was no question of any alleged piracy by the respondent company of the marks of Lucas and other concerns and therefore the marks could not be said to be disentitled to protection by a court 3 that the marks had not lost their distinctiveness at the date of these proceedings under section 56 and 4 that the Letter Patent Bench was therefore justified in dismissing these proceedings by the appellant companies
A mark under section 2j includes a word letter or numeral or any combination there of
A trade mark as difined in section 2v means in relation to Chapter X ie for offences and penalties provided in that chapter a registered trade mark or a mark used in relation to the goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark and in relation to the other provisions of the Act a mark used or proposed to be used in relation to the goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark and includes a certification trade mark registered as such under the provisions of Chapter VIII
Under section 9 a trade mark is not registerable in Part A of the register unless it contains or consists of at least one of the essential particulars mentioned therein
One of these particulars in any other distinctive mark
3 of section 9 defines the expression distinctive in relation to the goods in respect of which a trade mark is proposed to be registered as meaning adapted to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists either generally or where the trade mark is proposed to be registered subject to limitations in relation to use within the tent of the registration
 In determining whether a trade mark is distinctive regard is to be had whether it is inherently distinctive or is 78 inherently capable of distinguishing and by reason of its use or any other circumstances it is in fact adapted to distinguish or is capable of distinguishing the goods
section 1 1 prohibits certain trade marks from being registered
These are marks the use of which would be likely to deceive or cause confusion or the use of which would be contrary to any law or which comprises or contains scandalous or obscene matters or any matter likely to hurt the religious susceptibilities of any class or section of the citizens or e which would otherwise be disentitled to protection in a court
On registration of a trade mark the registered proprietor gets under section 28 the exclusive right to the use of such trade marks in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of any infringement of such trade mark
Under section 31 registration is prima facie evidence of its validity
The object of the section is obviously to facilitate proof of title by a plaintiff suing for infringement of his trade mark
He has only to produce the certificate of registra tion of his trade mark and that would be prima facie evidence of his title
Such registration is prima facie evidence also in rectification applications under section 56 which means that the onus of proof is on the person making such application
Being prima facie evidence the evidence afforded by the registration may be rebutted but in view of section 32 that can be done if seven years have not elapsed since the original registration
Even where such rebuttal is possible ie where seven years have not elapsed and it is shown that the mark in question was not registerable under section 9 as no evidence of distinctiveness was submitted to the Registrar the registration would not be invalid if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in interest as to have become distinctive at the date of registration
Sec 32 with which we are immediately concerned reads as follows  Subject to the provisions of section 35 and section 46 in all legal proceedings relating to a trade mark registered in Part A of the register including applications under section 56 the original registration of the trade mark shall after the expiration of seven years from the date of such registration be taken to be valid in all respects unless it is proved a that the original registration was obtained by fraud or b that the trade mark was registered in contravention of the provisions of section 11 or offends 79 against the provisions of that section on the date of commencement of the proceedings or c that the trade mark was not at the commencement of the proceedings distinctive of the goods of the registered proprietor
 We are not concerned with cl
a as no such case was even averred in the applications as pointed out both by the Trial Judge and the Division Bench
As regards cl
b it will be at once noticed that the clause relates to facts existing both at the time of and after registration
If a mark at the time of registration was such that it was likely to deceive or cause confusion or its use would be contrary to any law or contained or consisted of scandalous or obscene matters or matter likely to hurt religious susceptibilities or which would otherwise be disentitled to protection of a court and therefore was under section 1 1 prohibited from being registered cl
b would apply and the rule as to conclusiveness of the validity of the registration cannot be invoked
That would also be so if the trade mark at the date of the rectification proceedings was such as to offend against the provisions of section 11
But unlike cl
b cl
c relates to facts which are post registration facts existing at the date of the commencement of the proceedings
If the trade mark at such date is not distinctive in relation to the goods of the registered proprietor the rule as to conclusiveness enunciated in section 32 again would not apply
It would seem that the word distinctive  in cl
c is presumably used in the same sense in which it is defined in section 93 as the definition of that expression therein commences with the words for the purposes of this Act and not the words for the purposes of this section the intention of the legislature thus being to give uniform meaning to that expression all throughout the Act
section 56 deals with the power to cancel or vary registration and to rectify the register
Sub section 2 thereof confers a right to any person aggrieved by an entry made in the register without sufficient cause or by an entry wrongly remaining in the register to apply to the tribunal for expunging or varying such an entry
The expression aggrieved person has received liberal construction from the courts and includes a person who has before registration used the trade mark in question as also a person against whom an infringement action is taken or threatened by the registered proprietor of such a trade mark
The words without sufficient cause in the section have clearly relation to the time of the original registration
Therefore a person can apply for cancellation on the ground that the trade mark in question was not at the date of the commencement of the proceedings distinctive in the sense of section 93
The burden of proof however in such a case is as aforesaid on the applicant applying under section 5 6 80 The contention was that numerals such as 50  are prima facie not considered distinctive and to be registerable there must be evidence of extensive use
The contention was sought to be fortified by showing that contrary to the practice in England rules 139 and 140 of the Rules of 1959 permit numerals to be registered as trade marks only in the case of textile goods
But that is permitted on account of a long standing practice in that particular trade of using numerals with a view to distinguish goods of a particular manufacturer or a particular type or quality
It will however be noticed that although in the 8th edition of Kerly on Trade Marks page 135 it was stated that numerals are considered to be prima facie not distinctive and registerable only upon proof of their extensive use the 9th edition of the same work does not reproduce that passage
On the contrary at p 284 the learned editor states that numerals are capable of registration and that such marks exist
For this change the learned editor relies on the registered trade mark 4711 for eau de Cologne which was the subject matter of dispute in Reuter vs Mutblens1
In that case however no contention was raised as to whether the trade mark consisting of a numeral could be distinctive or not and the court therefore was not called upon to decide such a point
But the parties appear to have proceeded on the assumption that the numeral 471 1  was validly registered as a trade mark for that particular brand of eau de Cologne by reason of its having gained distinctiveness by extensive use
It is therefore not an inflexible rule and that was also conceded by Mr Desai that a mark consisting of a numeral is necessarily not distinctive and is not registerable except only in the case of textile goods in spite of proof of extensive use
section 32 in clear terms provides that the original registration of a trade mark after expiry of seven years from the date of its registration shall be taken to be valid in all respects in all legal proceedings including those under section 56 except in the three categories of cases mentioned therein
It follows therefore that no objection that the trade mark in question was not distinctive and therefore was not registerable under section 9 can be entertained if such an objection is raised after seven years have lapsed since the date of its registration as in the present came nor can an objection be entertained that no proof of distinctiveness was adduced or insisted upon at the time of the original registration
This is clear also from the fact that the three exceptions set out in section 32 against conclusiveness as to the validity of the registration relate to 1 fraud 2 contravention of section 11 and 3 absence of distinctiveness at the commencement of the proceedings in question and not at the time of registration
No contention therefore 1 81 can be raised that the trade marks 50  and Fifty  were not distinctive ie adapted to distinguish the cycle bells of the respondent company at the date of the registration and therefore were not registerable as provided by section 9 cf
Paine  Co vs Daniells  Sons  Breweries Ltd1
But the argument was that the appellant companies were en titled to show under cls
b and c in section 32 1 that these marks were registered in contravention of section 11 or that they offended against the provisions of that section on the date of the commencement of these proceedings and 2 that they were not distinctive at the date of the commencement of these proceedings
S11 as already noticed does not as section 9 does lay down the requisites for registration but lays down prohibition against certain marks from being registered
b c and d of section 1 1 obviously do not apply in the present case but reliance was placed on cls
a and e ie that the use of these trade marks would be likely to deceive or cause confusion and that they were such that they were otherwise disentitled to protection in a court
The burden of proof being on the appellant companies the question is  has that burden been satisfactorily discharged  The evidence relied on by them was that of dealers in cycle spare parts including bells certain price lists produced through them and the two representatives of the two appellant companies
That evidence no doubt shows 1 that for a number of years prior to 1952 bells manufactured by Lucas and certain other foreign concerns with various numerals such as 30  50  and 61  inscribed either on the belts or on their cartons were in the market 2 that even after 1952 bells with inscriptions thereon such as Berry 50 National 50 manufactured by one of the appellant companies Five 50 Padam 50 Balco 50 etc
were sold in the market 3 that Gupta Industrial Corporation one of the appellant companies claimed to have started the manufacture of bells since 1947 calling them Gupta 50 and the National Bell Company likewise began to produce bells calling them National 50 since 1957
But both the learned Single Judge and the Division Bench clearly found 1 that there was no evidence of any fraud having been committed by the respondent company at the time of the registration 2 that there was no averment by the appellant companies much less any evidence that Lucas or any other foreign concerns had obtained registration of trade marks either of the numeral 50  or the word Fifty  that the indication on the contrary was that those concerns used the different nume rals 30  61  50  etc
for distinguishing one type of bell from the other manufactured by them and 3 that about a year prior 1  232 82 to the registration of the trade marks in question in 1953 foreign bells were prohibited from being imported
Obviously therefore the evidence as to purchases and sales by the dealers examined by the appellant companies related to bells which had remained unsold from out of the stock earlier imported
As regards the bells called Gupta 50 said to have been manufactured by one of the appellant companies since 1947 no evidence was led to show either the extent of manufacture or sale between 1947 and 1953 or thereafter from which the High Court could be asked to draw any inference as to the likelihood of deception or confusion
Though there was some evidence that foreign made bells Such as Lucas 30 50 and 61 were being sold as late as 1958 such sales must have been few and far between as they could only be from the remaining stock out of the earlier imports
Such sales could hardly be considered as evidence showing alikelihood of confusion or deception as contemplated by section 1 1 a
In fact the evidence was that purchasers used to call those bells not by their numerals but simply as Lucas  bells and those manufactured by the respondent company as Asia bells and in some cases Asia 50
As against the voluminous sales by the respondent company shown by the statements filed by it for the years 1949 50 to 1961 62 there was no such corresponding evidence indicating the sales of other bells with numerals such as 50 inscribed on them from which any likelihood of confusion or deception could be deduced
Regarding deception there was indeed no evidence whatsoever in that regard
There was no question of piracy also on the part of the respondent company as argued by counsel as there was nothing to show that Lucas or any other foreign concerns used this numeral except for distinguishing one type of bell from another manufactured by them
In our view cl
a of section 11 therefore is clearly not attracted
The next question is whether the trade mark 50 or Fifty is one which would otherwise be disentitled to protection in a court as laid down in cl
e of section 1 1 so as to attract cl
b of section 32
While construing cl
e of section II it is necessary to repeat that it deals with prohibition and not with requisites of registration
Therefore although a mark cannot be registered for instance because it is not distinctive as provided by section 9 such a mark is not for that reason only one the registration of which is prohibited by section 1 1
The section lays down positive objection to registration and not to mere lack of qualification
This is clear from cl
e of section 11 which uses the expression disentitled to protection and not the expression not entitled to protection
The former contemplates some illegal or other disentitlement inherent in the mark itself
see Kerly 9th ed 344
83 In Imperial Tobacco Co Ltd vs De Pasqualil  Co1 the appellant company was the proprietor of two trade marks con sisting of Regimental Cigarettes and Regimental Tobacco
The company brought an action for infringement of its trade marks and for passing off against the respondent who sold cigarettes under the name of Pasquali s the Regiment in packets and boxes decorated with regimental crests
The respondent moved to have the trade marks expunged contending that the word Regimental was only a laudatory adjective in on use
It was proved that for many years it had been the practice of regiments to have their crests stamped on their mess cigrettes which were known as Regimental Cigarettes
The appellant company on the other hand contended that under section 41 of the Trade Marks Act 1905 equivalent to section 32 of our Act their trade mark could not be expunged and that section 1 1 equivalent also to our section 11  read in conjunction with section 41 was not relevant to the question whether or not a trade mark was registerable
The Trial Court held against the appellant company stating that if the appellant company s contention was correct the combined effect of sections 1 1 and 41 would be to perpetuate as distinctive a trade mark that was incapable of being distinctive and that such a contention was erroneous
On appeal the Court of Appeal reversed the judgment and held that section 11 was a qualification of section 9 that sections 1 1 and 41 must be construed together that the more fact that a mark did not comply with the requisites of section 9 ie not being distinctive and therefore not registerable did not bring it within section II that the marks did not offend against section 11 and that under section 41 their registration was valid
At page 203 of the ReportSwinfen Eady MR observed that section 11 contained a prohibition as to what it shall not be lawful to register and it followed upon section 9 which provided for the essentials of a trade mark
section 9 laid down what a registerable trade mark must contain and unless it contained one or the other requisites there set out it was not re gisterable and it was only registerable trade marks which were entitled to registration
But even if a mark were to fall within section 9 that alone was not necessarily sufficient to entitle it to registration because it might offend against section 11
section 11 being a qualification of section 9 and being a provision laying down a prohibition  it did not contemplate any enquiry on the question whether the trade mark complied with one or the other requisites enumerated in section 9 eg whether it had the quality of being distinctive or not
Dealing with section 41 he observed that it formed a new departure in dealing with trade marks and differed widely from the earlier Acts
The present section expressly enacted that the original registration shall after a lapse of seven years be taken to be valid in all respects that is to say whether the mark originally consisted of or 1 84 contained one or the other essential proofs or not that cannot be enquired into after the lapse of seven years
It had to be taken to be valid in all respects and what had to be taken to be valid in all respects was the registration of the trade mark unless it offended against the provisions of section 1 1
That section was a prohibitive section as to a matter which was disentitled to protection in a court that is it was intended to exclude from registration what would otherwise be included or covered under section 9
It did not extend to a mark disentitled to protection because originally not containing one of the essential particulars
It applied to a different set of circumstances such as that its use was likely to deceive or confuse etc
The words disentitled to protection he further observed were not equivalent to not entitled to protection which was the expression used in the earlier Acts
In other words they did not mean that a trade mark was not entitled to protection because it ought not originally to have been registered as a valid trade mark falling within section 9
The construction of cl
e of section 11 contended for on behalf of the appellant companies is therefore not correct
The true construction of cl
e is that even assuming that the trade marks in question were not distinctive and for that reason not registerable as not falling within section 9 that fact by itself would not mean that they became disentitled to the protection in a court
That being the true import of section 1 1 e the rule as to conclusiveness of the validity of registration embodied in section 32 applies even to those cases where if full facts had been ascertained at the time of the registration that registration would not have been allowed provided of course that it does not offend against the provisions of s11 ie by there being a likelihood of deception or confusion or its bring contrary to any law or containing obscene matter etc
or which would otherwise ie in addition to the matters in clsa to d in section 1 1 be disentitled to protection in a court
Conse quently the appellant companies cannot bring their case for cancellation of the trade marks in question under cl
b of section 32
There then remains the question whether cl
c of section 32 applies ie that the trade marks were not at the commencement of the proceedings distinctive of the goods of the respondent company
The distinctiveness of the trade mark in relation to the goods of a registered proprietor of such a trade mark may be lost in a variety of ways eg by the goods not being capable of being distinguished as the goods of such a proprietor or by extensive piracy so that the marks become publici juris
The principle underlying cl
c of section 32 is that the property in a trade mark exists so long as it continues to be distinctive of the goods of the registered proprietor in the eyes of the public or a section of the public
If the proprietor is not in a position to use the mark to 85 distinguish his goods from those of others or has abandoned it or the mark has become so common in the market that it has ceased to connect him with his goods there would hardly be any justification in retaining it on the register
The progressive increase in the sales of Asia Fifty  and Asia 50  bells from 1949 50 and onwards together with the evidence of witnesses examined by the respondent company shows that the said trade marks distinguished the goods of the respondent company from those of other manufacturers in the field
Under section 32 c the marks have to be distinctive at the commencement of the proceedings
Prima facie the expression commencement of the proceedings would mean the commencement of proceedings in which the question as to the conclusive character of the registration as laid down in section 32 arises
Such a question may arise in a suit for infringement of the trade mark in which the registered proprietor may rely on section 32 to prove his title to the registered trade mark as also in rectification proceedings filed as a result of such a suit or otherwise and the period of seven years would have to be calculated according to the particular proceedings in which the conclusive nature of the validity of registration is relied on
In the prevent case whether the crucial date for the purpose of section 32c is taken to be 1959 when the suits were filed or 1961 when the appellant companies took out the
rectification proceedings it makes no difference as it is not possible from the evidence on record to say that the trade marks in question were not or had ceased to be distinctive
The indication on the contrary is that they were distinctive
That is to be found from the zeal with
which the respondent company tried to maintain its right in them
The evidence shows that when the respondent company found in 1954 that Ms Indian Union Manufacturers Ltd Calcutta had been inscribing the word Fifty  on its bells it at once filed an infringement action
The action ended in a compromise by which the said company acknowledged the respondent company s rights in its trade marks of Fifty  and 50 
Again when the attention of the respondent company was drawn to an advertisement Five 50 it addressed a notice to the manufacturers of those bells
The case of the respondent company was that Gupta Industrial Corporation started using the word Fifty  on its bells in 1958 and not in 1948 as contended by Mr Desai
In the absence of any evidence as to the extent of manufacture and sale of those bells it would not be possible to say with any certainty that the respondent company did not come to know about it till 1958 and therefore presumed that Gupta Corporation had started using the word Fifty  on its bells in that year
According To the appellant National Bell Co it went into production only in 1957 and in 1959 the respondent company commenced action against it
A similar notice of infringement followed by a suit was also given to Ms Berry  Co but the suit became infructuous on account 86 of lack of the jurisdiction of the Court of Banaras where it was filed
This evidence negatives any abandonment of trade marks or letting infringements go unchallenged or misleading the other manufacturers that the respondent company would not interfere it they were to use the same marks
Rights in a mark can of course be abandoned by its owner but so long as he remains the registered proprietor of the mark and carried on the business to which the mark is attached a plea of abandonment is difficult to sustain
It would however be a different matter if it is shown that there were repeated undisturbed infringements
The evider in the present case does not show that there were repeated breaches which went unchallenged though known to the proprietor
Mere neglect to proceed does not necessarily constitute abandonment if it is in respect of infringements which are not sufficient to affect the distinctiveness of the mark even if the proprietor is aware of them
see Re Farina1 Where neglect to challenge infringements is alleged the character and extent of the trade of the infringers and their position have to be reckoned in considering whether the registered proprietor is barred by such neglect
see Rowland vs Mitchell2 
The plea of common use must fail for to establish it the use by other persons should be substantial
Though evidence was produced by the appellant companies to show that there were other bells in the market with Fifty  or 50  inscribed on them no evidence was led to show that the use of the word Fifty  or the numeral 50  was substantial
In these circumstances it is impossible to sustain the contention founded on cl
c of section 32
Under section 56 the power to rectify is undoubtedly discretionary
Where such discretion has been properly exercised a court of appeal would refuse to interfere
In the present case however the Trial Court did not appreciate the principle embodied in sections 32 and 1 1 with the result that the Division Bench was justified in interfering with the discretion exercised by the Trial Court
In our view the contentions urged on behalf of the appellant companies cannot be sustained and consequently the two appeals fail and are dismissed with costs
There will be one hearing fee
VPS Appeals dismissed


Summary:
For a number of years prior to 1952 cycle bells manufactured by Lucas And other foreign concerns bearing the numbers 50  and other numerals were in the Indian market
After 1952 the import of foreign bells was prohibited and though foreign made bells with the numerals 50  were being sold as late as 1958 the sales were from the stock remaining out of the earlier imports and were few and far between
In 1953 the respondent company got registered two trade marks in respect of cycle bells being the numeral 50  and the figure Fifty 
The appellant companies were manufacturers and also dealers in cycle bells and were selling their cycle bells with the numeral 50  inscribed on them
The respondent therefore filed suits in 1959 against the appellants alleging infringement of its trade marks
In 1961 the appellants applied for stay of trial of the suits and filed applications in the High Court for rectification of the register by cancelling the trade marks of the respondent under section 56 of the 
A single Judge of the High Court refused to expunge the trade mark Fifty  but ordered the cancellation of the trade mark 50 
In appeals to the Division Bench of the High Court the order cancelling the trade mark 50  was set aside
In appeals to this Court it was contended that  1 the trade marks in question were common and not distinctive at the date of their registration as required by section 93 and therefore ought never to have been registered 2 that the numeral 50  is not distinctive 3 that the use of the trade mark was likely to deceive or cause confusion and hence the registration should be cancelled under section 32b and section II a 4 that the respondent had imitated the use of the marks by Lucas and other foreign concerns that therefore they would be disentitled to protection under section 11e and hence the registration should be cancelled under section 32h and 5 that the trade marks were not at the commencement of the proceedings distinctive and hence liable to be cancelled under section 32c
HELD  1 Under section 32b and c the original registration of the trade mark has after the expiration of 7 years from the date of registration to be taken to be valid in all respects including in rectification applications under section 56 unless it is proved  1 the trade mark was registered in contravention of the provisions of section 11 or offends against the provisions of that section on the date of the commencement of the proceeding or 2 that the trade mark was not at the commencement of the proceedings distinctive of the goods of the registered proprietor
Section 11a prohibits the registration of trade mark which would be likely to deceive or cause confusion and section 11e prohibits the registration of trade marks if they were such that they were otherwise disentitled to protection in a court
Section 71 562 confers a right on any person aggrieved by an entry made in the register without sufficient cause or by an entry wrongly remaining in the register to apply for expunging or varying such an entry
Since an aggrieved person  includes a person who has before registration used the trade mark and a person against whom an infringement action is taken and the words without sufficient cause  relate to the time of original registration
the appellant could apply for cancellation on the ground that the trade mark in question was not distinctive within the meaning of section 93
But in view of the language of section 32 no contention could be raised in the present case that the trade mark 50  and Fifty  were not distinctive under section 93 that is adapted to distinguish the cycle bells of the respondent at the date of registration as seven years had elapsed since the date of the Registration
78 D F 79 B H Paine  Co vs Doniells  Sons Breweries Ltd 1893 RPC 217 232 referred to
2 It is not an inflexible rule that except in the case of textile goods
a mark consisting of a numeral is necessarily not distinctive and is not registerable
80 E Kerly on Trade Marks 9th End
p 284 and Reuiter vs Hublens  referred to
3 Section 32b relates to facts existing both at the time of and after registration
If the mark at the time of registration was likely to deceive or cause confusion or would otherwise be disentitled to protection of a court and therefore was under section 11 a and e prohibited from being registered the rule as to conclusiveness of the validity of the registration in section 32 cannot be invoked and that would also be so if the trade mark at the date of commencement of rectification proceedings was such as to offend against the provisions of section 11
80F H The sales of foreign bells with numeral 50  after 1953 were so few that they could hardly be considered as evidence for showing a likelihood of confusion or deception
In fact the purchasers used to call those bells not by the numerals but by the manufacturers  names
As regards bells said to have been manufactured by one of the appellant companies since 1947 and bearing the numeral 50  no evidence was led to show either the extent of manufacture or sale between 1947 1953 or thereafter from which the High Court could be asked to draw any inference as to the likelihood of deception or confusion
As against the voluminous sales of the respondent for the years 1949 1962 there was no corresponding evidence on behalf of the appellants indicating sales of their bells with number 50  from which any likelihood of confusion or deception could be deduced
Therefore section 11a was not attracted816 C G H 82 D F 4 The true construction of section 11e is that even assuming that the trade marks in question were not distinctive and for that reason not registerable as not falling within section 9 that fact by itself would not mean that they became disentitled to protection in a court
That is although a mark cannot be registered because it is not distinctive as provided by section 9 such a mark is not for that reason only one the registration of which is prohibited by section 11 because the section lays down positive objection to registration and not mere lack of qualification by using the words disentitled to protection
Therefore unless the trade mark offends the provisions of section II that is offends any of the matters in cls
a to d of section 11 or is disentitled to protection in a court under section 11e the rule 72 as to conclusiveness of the validity of registration embodied in section 32 applies
In the present case in fact there was no evidence of any fraud having been committed by the respondent at the time of the registration
There was neither averment by the appellants nor evidence that Lucas or any other foreign concern had obtained registration of trade marks of 50  or Fifty  nose concerns merely used various numerals for distinguishing one type of bell from another manufactured by them and there was no question of any piracy by the respondent
The trade mark had also become distinctive with respective to the respondent
82 F H 84 D F Imperial Tobacco Co Ltd vs De Pasquali  Co 35 RPC 186 referred to
5 The principle underlying section 32c is that property in a trade mark exists so long as it continues to be distinctive of the goods of the registered proprietor in the eyes of the public or a section of the public
If the proprietor is not in a position to use the mark to distinguish his goods from those of others or has abandoned it or the mark has become so common in the market that it has ceased to connect him with his goods then there would be no justification for retaining the mark on the register
Under section 32c the marks have to be distinctive at the commencement of the proceedings  that is the proceedings in which the conclusive character of the  Registration arises
Therefore it may be the date when a suit for infringement is filed by the proprietor of the trade mark or the date on which the rectification proceedings ire filed as a result of the suit
Rights in a trade mark could be abandoned by the owner but when such abandonment is sought to be inferred from the proprietors neglect to challenge infringement the character and extent of the trade of the infringers and their position would have to be reckoned in considering whether the registered proprietor was barred by such neglect 84 F H 85 A C D E In the present case the progressive increase of the sales of the respondent s bells from 1949 together with the evidence of witnesses of the respondent shows that the said trade marks distinguished the goods of the respondent from those of other manufacturers
Also whether the crucial date is taken as 1959 or 1961 the date of suit or the date of rectification proceedings the evidence on record indicates that the trade marks were distinctive
The respondent has all along been zealously trying to maintain its right against all infringements
There were no repeated breaches which went unchallenged by the respondent when known to the respondent
Mere neglect in a few cases to proceed did not necessarily constitute abandonment because it was in respect of infringements which were not sufficient to affect the distinctiveness of the mark
There was no evidence to show that the use by others of the word Fifty  or the numeral 50  was substantial and the plea that there was common use of the trade marks must fail
Therefore it is impossible to sustain the contention founded on section 32c
86 A E Re
Farina and Rowland vs Mitchell  applied
6 The power to rectify under section 56 is discretionary and when such discretion was properly exercised a court of appeal would refuse to interfere
But in the present case the single Judge did not appreciate the principles of sections 11 and 32 and hence the Division Bench was justified in setting aside his order