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This Product is Licensed to Mr. V. Ponnusamy, Advocate, Karur

Citation :- CDJ 1963 PHC 039

Court : High Court of Punjab Case No : Letters Judges: THE Parties :

and Haryana

Patent Appeal No. 360 of 1960

HONOURABLE MR. JUSTICE S.S.DULAT & THE HONOURABLE MR. JUSTICE S.B.CAPOOR

Chanan Ram Behari Lal, Giddarbaha Versus Registrar of Trade Marks, Bombay and Lachhman Dass Behari Lal, For the Appearing Parties: Gurbachan Singh, J.N. Seth, V.C. Mahajan, K.L. Kapur, K.S. Shavaksha, Anoop

Giddiarbaha
Appearing Advocates :

Singh, M.R. Agnihotri, J.N. Kaushal, Advocates.

Date of Judgment : 27-03-1963 Head Note :-

Trade Marks Act, 1940 - Section 10, Section 46 Comparative Citation: 1982 (2) PTC 204
Judgment :-

( 1. ) The parties to this appeal are two firms both engaged, in the business of manufacturing and selling snuff and both have their business premises, in Giddarbaha which is a small town in the Ferozpore District. The appellants firm is called Chanan Ram Behari Lal and the respondent-firm Lachhman Das Behari Lal, the two Behari Lals, being however two different persons. In June 1949 the appellant-firm made two applications to the Registrar of Trade Marks for the registration of two trade marks. One of these contained in it a railway train with the words 'Tufan mail' and the second similary contained the device of a railway train with the words 'Tufan mail snuff'. The Registrar found that a very similar trade mark had already been registered in the name of K.S. Saheb snuff factory of Madras and he therefore, pointed out that the two trade marks sought to be registered by the appellant-firm were confusingly similar to the trade mark already registered at No. 13183. On this objection being raised, the appellant-firm agreed to delete the device of the train from their marks and had the amended trade marks registered and these were allotted two separate numbers. This registration took effect from the 16th June, 1949. (2.) On the 4th January, 1950, the respondent-firm Lachhman Dass Behari Lal applied for the registration of a trade mark consisting of four penals one of which had the device of a railway train with the words 'Royal Frontier Mail' while two penals contained the words Royal Frontier mail snuff'. In that application the respondent- firm stated that they had been using the mark in connection with their snuff ever since the 15th July, 1936. The Registrar of Trade Marks, although aware of the previous registration of a somewhat similar trade mark in the name of K.S. Saheb Snuff Factory, felt that the respondent's trade mark could also be registered, as it was an old trade mark which had been honestly and concurrently used by the respondent-firm within the meaning of section 10, sub-section (2) of the Trade Marks Act, 1940. The Register, thereupon, after, of course due publication proceeded to register the respondent's trade mark. This decision was made on the 6th August, 1953 but was to take effect from the 4th January, 1950, being the date of the application. (3.) It appears from the evidence, and the fact is now admitted, that the snuff sold under name 'Royal Frontier Mail' has been extremely popular, and this popular brand is associated in the business circles with the device of a train. The appellant-firm, as I have mentioned, had attempted to obtain registration of a trade mark with the device of a Railway train in it but had failed, and, since the trade marks actually allowed registration did not contain the picture of a train, those trade marks were found by the appellant-firm practically useless, and in the form, that they were registered they were not in fact used. This continuous non user ultimately resulted in the cancellation of those trademarks by an order of this court, but before that happened, litigation between the appellant-firm and the
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respondent-firm had started. This began with a notice by the respondent-firm to the appellant-firm stating that the appellant- firm was using a trademark containing the device of a train and purporting to be actually registered which in fact it was not. The appellant-firm did not desist. Claiming that they had been using that mark since 1943, and in the result, a criminal prosecution was launched against the appellant-firm under section 482 and allied section of the Indian Penal Code and actually resulted in a conviction. On the 10th March, 1959, therefore a petition was filed in this court by the appellant-firm for the cancellation of the respondent's trade marks being under section 46 of the Trade Marks Act, 1940. In the petition the appellant-firm alleged that the trade marks registered in favour of the respondent-firm could not have been lawfully registered and should therefore be cancelled. The grounds mentioned were four (1) that the device of railway train and an engine was already registered in the name of K.S. Saheb snuff Factory of Madras ; (2) that the petitioners were refused registration of such a trade mark in 1949 before the respondent-firm had applied for registration; (3) that the petitioners had no notice before the registration of the trademark in the respondent's favour and (4) that the registration of the trade mark in favour of the respondent was in contravention of the provisions of the Trade Marks Act, 1940. (4.) In the petition it was stated that firm Lachman Dass Behari Lal got their trade marks registered by misrepresentation without disclosing the true facts but the misrepresentation relied upon was not clearly specified. When, therefore, the Registrar of Trade Marks who was the first respondent in the case (firm Lachman Dass Behari Lal being the second respondent), filed his reply, he pointed out that the appellant's grievance was not clearly understandable and he stated that the respondent-firm's trade mark had been registered, as it was stated by that firm that the trade mark had been in use since the 5th July 1936, and he further stated the appellant-firm's trade marks were refused registration, as their claim of concurrent user had not been seriously pressed. The second respondent, that is firm Lachhman Dass Behari Lal, denied the allegations made by the appellant-firm. Application was later filed on behalf of the appellant-firm Chanay Ram Behari Lal, and it was then made clear that the misrepresentation made by the respondentfirm and alleged to be false consisted in the allegation that the trade mark in question had been used since the 5th July, 1936. It was stated in that connection that in fact the allegedly old trade mark had never been used by respondent-firm till 1950. When the trial started, three issues were framed, but it soon became clear that only one issue was of consequence being the first issue in the case which ran ...... Whether the registration of the trade mark No. 141860 was obtained by the respondent by fraud or misrepresentation. (5.) Both parties produced a good deal of evidence in respect of this issue. When the case was argued before the learned single Judge, it was admitted that the petition could succeed only if it was proved that the respondent-firm had obtained the registration of their trade mark by fraud or misrepresentation. This was because more then seven years had expired from the date of the original registration in which case, according to section 24 of the Trade Marks Act, 1940, the registration was immune from attack except on the ground of fraud or on the ground that the trade mark offended against the provisions of section 8 of the Act, and it was conceded that section 8 was inapplicable. The learned Single Judge therefore addressed himself to the question of fraud, the question being whether the appellant-firm were able to prove that the registration had been obtained by practising fraud on the Registrar, and that in turn depended on the question whether the representation, that the trade mark had been used since, 1936, was in fact false. As I have said, the specific allegation made in this connection was that, as a matter of fact, the respondent-firm had begun using their trade mark only in 1950 and, if that was so, then their representation made to the Registrar, that they had been using that trade mark since 1936, would be necessarily false. During the trial however, and because of certain evidence the appellant-firm slightly shifted their position and the stand taken was that the trade mark began to be used by the respondent-firm only in year 1947. The learned Single Judge went into the whole evidence and found that the appellant-firm had failed to prove that the respondent-firm statement, that they had been using the trade mark since 1936, was false. He held, therefore, that the burden of the first issue which had rightly been placed on the appellant-firm, had not been discharged. The learned Single Judge also observed that the conduct of the appellant-firm had not been helpful as the firm had delayed taking action for a number of years although knowing since 1950, at any date, that the respondent-firm were using the trade mark in question. In the result the petition was dismissed by the Learned Judge with costs. Hence this appeal. (6.) Mr. Gurbachan Singh admits before us that the burden of the issue concerning fraud was rightly placed on him but suggests that, as the fact to be proved was in a sense negative, that burden was light and he was entitled to succeed if he could show that there was no credible evidence to establish that the respondent-firm had actually been using the disputed trade mark since 1936. This comes almost to saying that the burden of proof was in substance on the opposite party which cannot, of course, be accepted. The issue is clear cut and it is one mainly of fact. The respondent-firm had stated before the Registrar that they had been using the particular trade mark since July 1936, and in order to succeed the appellant has to show that this statement was in fact false, for only then can the alleged fraud be established. The main question to be considered, therefore, is whether there is clear evidence to show that the statement made by the respondent-firm was false. Mr. Gurbachan Singh has taken us through the entire evidence. He relies strongly on the circumstance that certain post cards were sent by the respondent-firm to a business man of Khanna, who has given evidence as P.W. 13, Shri Sat Pal) and in those post cards no mention was made of this particular brand of Naswar namely, 'Royal Frontier
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Mail' or even 'Fronteir Mail' although the post cards purported to contain a lost of all the brands of naswar dealt with by the respondent-firm. These post cards relate to the years 1945, 1946 and 1947. It is perfectly true that these postcards (P.W. I./A to P.W. 131F), some of which are printed, purport to contain a list of all kinds of naswar and the implication seems to be that they contain a complete list of all the brands handled by the respondent-firm, and it is also true that the 'Royal Frontier Mail' brand does not figure in those postcards. It is, however, clear from the evidence of Sat Pal himself that these post cards do not in fact contain an exhaustive list of all the brands of Neswar sold by the respondent-firm during the relevant period. Sat Pal says clearly in his affidavit that firm Lachhman Dass Behari Lal were manufacturing and selling four brands of naswar during the period 1946 to 1950, those four brands being (1) Seven Photos (2) Bijli, (3) 'Golden Special' and (4) 142' of these four brands manufactured by the respondent-firm, according to Sat Pal, two that is, 'BIJLI' and Golden Special 'do not appear at all in the post cards so much relied upon by Mr. Gurbachan Singh. To say therefore that because the 'Royal Frontier mail' is not mentioned in the post cards it would be concluded that brand was not being manufactured and sold by the respondent-firm cannot be correct for on that argument it would be concluded that the brands 'Bijli' and 'Golden special' were also not being manufactured or sold during the period in question, which is wholly contrary to Sat Pal's direct evidence. The fact appears to be that these postcards contained only the brands which were likely to interest the person to whom they were addressed. It is not surprising in the circumstances that the Learned Single Judge was not impressed by this particular contention and did not deal with it at length. (7.) Reliance is then placed on the circumstances that the account books of the respondent-firm between 1936 and 1947 were withheld in order to avoid revealing that the 'Royal Frontier Mail' brand was not in existence prior to 1947. The explanation offered is that those account books were not preserved after 1952 and were, therefore, not available, and these seem to me nothing surprising in the explanation, for there would have been much point in preserving old account-books for such length of time. (8.) Some evidence has been called to show that since 1943 the appellant-firm has been a trade mark called 'Tufan Mail' which contains the device of a train, and that this would not have been tolerated by the respondent-firm had they been using a similar trademark since 1936. The appellant's allegation in this connection is not accepted by the respondent but assuming that the appellant has been 'using the "Tufan Mail" trade mark since 1943, it does not follow that the respondent-firm' were not using the 'Royal Frontier Mail trade mark since 1936. It is admitted now that since 1947, in any case, the respondent-firm were using the disputed trade mark and yet the appellant-firm did not protest for a number of year, although they claim to have been using a similar trade mark since 1943, so that mere silence or inactivity on the part of one or the other firm does not lead to any positive conclusion. Both parties called a number of witnesses and they orally stated for the appellant that the respondent-firm had not been using the 'Royal Frontier Mail' mark prior to 1947 or even prior to 1950, while the witnesses for the respondent-firm stated that they had been using the particular trade mark since 1936. Before the learned single Judge neither party appears to have placed much reliance on this oral testimony and for obvious reasons, and before us to such was not sought to be made of that evidence. (9.) There is, however one piece of evidence which the learned single Judge has accepted and which is supported by a number of important documents. The evidence in that connection is given by Hari Dev (R.W. 9) who owned a printing press in Ferozepur during 1938. He states that a number of labels of the "Frontier Mail" trade mark were printed by him at the instance of the respondent-firm in May 1938, and for the printing charges he submitted certain bills and also issued receipts in respect of the payments. The bills are Exhibits R.W. 9/1, R.W. 9/2 and R.W. 9/3 and the receipts R.W.9/4 and R.W. 9/5. If these bills and receipts are genuine, it would be clear that the respondent-firm were using the disputed trademark in 1938 in any case. Hari Dev's evidence has been carefully considered by the learned single judge and accepted as true. Hari Dev has no interest in the dispute between the parties. The bills and the receipts are in his hand and could not have been manufactured by the respondent-firm. (10.) Mr. Gurbachan Singh has attacked the evidence of Hari Dev on the ground that these bills and receipts alone could have been found and perserved while other documents like account-books relating to the relevant period were destroyed, the suggestion, of course, being that Hari Dev may have been persuaded later to fabricate these documents to help the respondent-firm. The crossexamination of Hari Dev, however, reveals no reason why he should have prepared to make such fabrication or offer perjured testimony in court. Mr. Gurbachan Singh in this connection points out that the respondent-firm actually produced another piece of fabricated evidence in order to support their case being a copy of a newspaper called 'Atalique' purporting to be of the month of January, 1937 which contains an advertisement in respect of the 'Royal Frontier Mail' Naswar. This document was held by the learned Single Judge as fabricated because an expert, Mr. Pratap Singh Kothari, gave evidence that the newsprint used for this particular copy was not manufactured till 1954. The respondent-firm called no evidence to formarly prove this particular copy of the 'Atalique' and this probably happened to as it was realised that the fabrication would be detected. What this circumstance therefore shows is that the respondent-firm, tried to support their allegation of fact by the production of fabricated evidence, but I do not see how that attempt, reprehensible although it undoubtedly was, can by itself establish that the allegation sought to be thus supported was in fact false. Nor can it be said that the circumstances of the attempted production of false evidence in this connection can destroy the value
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of Hari Dev's testimony who has nothing to do with the copy of the 'Attalique' nor any interest in the respondent-firm. It is significant that the learned Single Judge, when he considered the evidence of Hari Dev, was fully aware that another piece of evidence that had been produced was a fabricated, but inspite of that, he was persuaded that Hari Dev's evidence was true. As the record stands, there is really nothing to discredit the testimony of Haridev and I find it impossible therefore, to say that the learned single Judge was wrong in accepting it. It has to be remembered in this connection that the respondent-firm were some handicapped in the matter of evidence by the passage of time, and it is not so very suprising that only one dependable piece of evidence could be produced. (11.) Mr. Gurbachan Singh contends that the learned Single Judge was unduly influenced by the fact of delay and that he perhaps thought mere delay on the part of the appellant-firm was fatal of their case. The learned Single Judge does mention the fact of delay prominently, but he certainly does not say that even if fraud were proved, any delay on the part of the appellant-firm would disentitle them to relief. What has been found is that the appellants have not proved that the respondents' allegation, that they had been using the disputed trade mark since 1936, was false and, considering the evidence it seems to me hardly possible to say that decision should be reversed. (12.) Reference was made in the course of arguments to a number of decided cases but those were mentioned merely to illustrate what framed in the context of the Trade Mark Act means. Actually, however there is no such controversy before us and there was really none before the learned Single Judge both parties being agreed that if the allegation of fact made by the respondent-firm before the Registrar was false, then fraud would stand proved. It is circumstances not necessary to refer to those cases. As I have said, the issue involved in this appellant and the finding is, in my opinion, justified by the state of the evidence. This appeal must, therefore, fail and I would dismiss it.
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