Case: National Bell Co. &amp; Anr Vs. Metal Goods Mfg. Co. (P) Ltd. &amp; Anr

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, e.g., 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 public juries. The principle underlying clause (c) of Section 32 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 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 present case, whether the crucial date for the purpose of Section 32 (c) 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. This 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 M/s. 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-companys 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 1956 the respondent-company commenced action against it. A similar notice of infringement followed by a suit was also given to M/s. Berry and Co., but the suit became infructuous on account of lack of the jurisdiction of the Court of Banaras where it was filed. This evidence negatives any abandonment of trade marks of letting infringements go unchallenged or misleading the other manufacturers that the respondent-company would not interfere if they were to use the same marks. Rights in a mark can, of course, be abandoned by its owner but so long as the remains the registered proprietor of the mark and carried on the business to which the mark is attached, a plea of abandonment if difficult to sustain. It would however, be a different matter if it is shown that there were repeated, undisturbed infringements. The evidence in the present case does not show that there were repeated breached which went unchallenged though known to the proprietor. Mere neglect to proceed does not necessarily constitute abandonment if it is respect of infringements which was not sufficient to affect the distinctiveness of the mark even if the proprietor is aware of them [See Re Farina ((1879) 27 WR 456)]. Where neglect to challenge infringement 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 Rowlant v. Mitchell. ((1897) 14 RPC 37)] The plea of common use must fail, for to establish it the use by other person 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 clause (c) of Section 32.18. 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 to appreciate the principle embodied in Section 32 and 11, with the result that the Division Bench was justified in interfering with discretion exercised by the Trial Court.

Decision (1 = appeal accepted, 0 = rejected): 0

Explanation:
0[ds]But both the learned Single Judge and the Division Bench clearly found, (i) 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-company, mush 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, 30, 61 and 50, etc. for distinguishing one type of bell from the other manufactures by them and (3) that about a year prior 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 regard 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 a likelihood of confusion or deception as contemplated by Section 11(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 statement filed by if 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, clause (a) of Section 11, therefore, is clearly not attracted.There then remains the question whether clause (c) of Section 32 applies, i.e., 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, e.g., 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 public juries. The principle underlying clause (c) of Section 32 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 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 present case, whether the crucial date for the purpose of Section 32 (c) 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. This 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 M/s. 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-companys 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 1956 the respondent-company commenced action against it. A similar notice of infringement followed by a suit was also given to M/s. Berry and Co., but the suit became infructuous on account of lack of the jurisdiction of the Court of Banaras where it was filed. This evidence negatives any abandonment of trade marks of letting infringements go unchallenged or misleading the other manufacturers that the respondent-company would not interfere if they were to use the same marks. Rights in a mark can, of course, be abandoned by its owner but so long as the remains the registered proprietor of the mark and carried on the business to which the mark is attached, a plea of abandonment if difficult to sustain. It would however, be a different matter if it is shown that there were repeated, undisturbed infringements. The evidence in the present case does not show that there were repeated breached which went unchallenged though known to the proprietor. Mere neglect to proceed does not necessarily constitute abandonment if it is respect of infringements which was not sufficient to affect the distinctiveness of the mark even if the proprietor is aware of them [See Re Farina ((1879) 27 WR 456)]. Where neglect to challenge infringement 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 Rowlant v. Mitchell. ((1897) 14 RPC 37)] The plea of common use must fail, for to establish it the use by other person 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 clause (c) of Section 32.18. 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 to appreciate the principle embodied in Section 32 and 11, with the result that the Division Bench was justified in interfering with discretion exercised by the Trial Court.