PETITIONER:
THE REGISTRAR OF TRADE MARKS
Vs.
RESPONDENT:
ASHOK CHANDRA RAKHIT LTD.
DATE OF JUDGMENT:
15/04/1955
BENCH:
DAS, SUDHI RANJAN
BHAGWATI, NATWARLAL H.
SINHA, BHUVNESHWAR P.
CITATION:
1955 AIR 558 1955 SCR (2) 252
ACT
The Trade Marks Act 1940 (Act V of 1940) s. 13-Meaning and
scope of-Registration subject to disclaimer-S. 76-Appeal to
the High Court-When can the High Court interfere-Registrar,
discretion of-Proper approach in such a case.
HEADNOTE
The exercise of the power conferred on the Registrar by s.
13 of the Trade Marks Act is always a matter of discretion
to be exercised, not capriciously or arbitrarily but,
according to sound principles laid down for the exercise of
all judicial discretion.
The existence of the two jurisdictional facts referred to in
clauses (a) and (b) of s. 13 and the finding that the trade
mark contains parts or matters to the exclusive use of which
the proprietor is not entitled does not conclude the matter
and it must further be established that some good ground
exists for the imposition of a disclaimer and the tribunal
will exercise the discretionary power for good cause shown,
253.
For the proper understanding and carrying into effect the
provisions of s. 13 it is necessary to bear in mind that the
section confides a discretionary power in the ’tribunal’
which by virtue of s. 2(n) means the Registrar or, as the
case may be, the Court before which the proceeding concerned
is pending. Assuming but not deciding that in dealing with
an appeal under s. 76 of the Act from the decisions of the
Registrar under s. 13 of the Act the High Court is not
fettered by reason of the Registrar, on the hearing before
him, having exercised his discretion and the High Court may
exercise its own discretion, just as it could if the
proceedings had been taken initially before it, it must be
remembered that it is the Registrar to whom in the first
instance is committed the discretionary power. If that
authority has exercised his discretion in good faith and not
in violation of any law such exercise of discretion should
not be interfered with by the High Court merely on the
ground that, in the opinion of the High Court it could have
been exercised differently or even that the High Court would
have exercised it differently, bad the matter been brought
before it in the first instance. The proper approach in
such a case is for the High Court to consider whether the
Registrar has really gone so wrong as to make it necessary
to interfere with his discretion.
The real purpose of requiring a disclaimer is to define the
rights of the proprietor under registration so as to
minimise, even if it cannot wholly eliminate, the
possibility of extravagant and unauthorised claims being
made on the score of registration of the trade marks.
The proviso to s. 13 preserves intact any right which the
pro-. prietor may otherwise under any other law have in
relation to the mark or any part thereof. The disclaimer is
only for the purposes of the Act. It does not affect the
rights of the proprietor except such -as arise out of
registration. That is to say, the special advantages which
the Act gives to the proprietor by reason of the regis-
tration of his trade mark do not extend to the parts or
matters which he disclaims.
Held, that considering all the circumstances of the present
case the Registrar had not gone so wrong as to make it
necessary for the High Court to interfere with his
discretion. If it were to be regarded as a matter of
exercise of discretion by the High Court as to whether a
disclaimer should be imposed or not, it is quite clear that
the attention of the High Court was not drawn to an
important consideration, namely, the strong possibility of
the respondent company claiming a statutory right to the
word ’Shree’ by virtue of the registration of its trade mark
and subject others to infringement actions only on the
strength of the registration and without proof of facts
which it would have otherwise to establish in order to
succeed in a passing off action or a prosecution under the
Indian Penal Code and, therefore, the High Court cannot be
said to have properly exercised its discretion,
254
Sharp v. Wakefield (L.R. 1891 A.C . 173), Albert Baker Co.s
Application and Aerated Bread Company s Application In re
(L.R. [1908] 2 Ch. 86; 25 R.P.C. 513), In the matter of an
application by the Diamond T. Motor Car Co. ([1921] 38
R.P.C. 373 at 379), Eno v. Dun?& (L.R. [1890] 15 A.C. 252; 7
R.P.C. 311), In the matter of an application by F. Reddaway
& Co. Ltd. ([1926] 44 R.P.C,. 27), Smokeless Powder Co.’s
Trade In re (L.R. [1892] 1 Ch. 590; 9 R.P.C. 109), Greers
Ltd. v. Pearman and Gorder Ltd. ([1922] 39 R.P.C. 409),
Cadbury Brothers’ Application In re (L.R. [1915] 2 Ch. 307;
32 R.P.C. 456), De Cordova and others v. Vick Chemical Coy.
([1951] 68 R.P.C. 103), Pinto v. Badman (8 R.P.C. 181),
Apollinaris Company’s Trade Marks (L.R. [1891] 2 Ch. 186)
and Clement & Cie In re (L . R. [1900] 1 Ch. 114), referred
to.
JUDGMENT
CIVIL APPELLATE JURISDICTION: Civil Appeal No. 116 of 1953.
Appeal from the Judgment and Order dated the 23rd day of
August 1951 of the High Court of Judicature at Calcutta in
Appeal No. 112 of 1950 arising out of the order dated the
24th day of March 1950 of the Registrar of Trade Marks in
the matter of Registered Trade Mark No. 3815.
C. K. Daphtary, Solicitor-General for India (K. S.
Shavakasha and R. H. Dhebar, with him) for the appellant.
S. C. Isaacs, (P. K. Ghosh, with him) for the res-
pondents.
1955. April 15. The Judgment of the Court was delivered by
DAS J.-This is an appeal from the judgment and order
pronounced on the 23rd August 1951 by a Division Bench of
the High Court at Calcutta in Appeal No. 112 of 1950
reversing the decision of the Registrar of Trade Marks dated
the 24th March, 1950 whereby he had rectified the register
by inserting a disclaimer of the word "Shree" forming part
of the respondent company’s registered trade mark No. 3815.
The material facts are as follows: In the year 1897 one
Durga Charan Rakhit (since deceased) adopted as his trade
mark in respect of the ghee produced and marketed by him a
device which, with some slight modification not materially
altering its essential
255
features, was, on the application of the respondent company,
registered as its trade mark No. 3815. That mark was and is
a device consisting of the word "Shree" written on the top
in bold Bengali character, having below it an ornamental
figure with the word "Shree" written in the centre in small
Deva Nagri character, the word "TRADE" written in English in
an inclined manner on the left hand side of the ornamental
figure and the word "MARK" written in English in an inclined
manner on the right hand side of the ornamental figure and
the words "Shree Durga Charan Rakhit" written at the bottom
in Bengali characters. The ornamental figure referred to
above consists of a triangle over which is another inverted
triangle and in the centre the word "Shree’, in small Deva
Nagri character as mentioned above, the whole of the said
ornamental figure being enclosed in a circle outside which
are twelve ornamental petals. In the affidavit affirmed by
Malli Nath Rakhit, a director of the respondent company and
filed in these proceedings, this mark has throughout been
referred to as "the said mark SREE". The said Durga Charan
Rakhit having subsequently been adjudged insolvent all his
properties including the goodwill of his ghee business and
the said mark vested in the Official Assignee of Calcutta.
On the 15th January 1915 the goodwill of the said business
including the said mark was sold by the Official Assignee by
public auction and one Hem Dev Konch, a minor, was declared
as the highest bidder and purchaser. A notice of the said
sale was advertised in the Calcutta Exchange Gazette on the
25th January 1915 by an attorney acting on behalf of the
purchaser. On the 27th January 1915 the said sale was
confirmed by a Deed of assignment executed by the Official
Assignee. On the 22nd August 1917 Haripriya Konch, the
father and natural guardian of the minor purchaser, acting
as such and on behalf of the minor, conveyed to one Ashok
Chandra Rakhit, son of the said Durga Charan Rakhit, the
goodwill of the business including the right, title and
interest in the said mark and the said Ashok Chandra Rakhit
carried on the said business
256
and marketed ghee tinder the said mark. On the 15th
September 1926 the said Ashok Chandra Rakhit caused the fact
of his ownership of the said mark to be advertised in the
Calcutta Exchange Gazette and on the 22nd December 1926
caused to be registered with the Registrar of Assurances of
Calcutta a declaration of his ownership of the said mark.
In 1932 the respondent company was incorporated as a private
limited company under the Indian Companies Act, 1913 and the
said Ashok Chandra Rakhit assigned the goodwill of his said
business and his right, title and interest in the said mark
to the respondent company. In 1933 the respondent company’s
said mark was registered in the Trade Mark Registry at Hong-
Kong under the provisions of, the Hong-Kong Trade Marks
Ordinance, 1909 and the fact of such registration was
published in the Straits Settlements Government Gazette. In
1934 two persons, Rajendra Prasad and Dilliram, were, on
complaint, made on behalf of the respondent company,
convicted by the Chief Presidency Magistrate of Calcutta
under section 486, Indian Penal Code, for infringing the
said mark and such conviction was upheld by the Calcutta -
High Court. In 1935 one Chiranjilal Sharma was, on like
complaint, convicted by the Chief Presidency Magistrate for
infringement of the said mark. The volume of the respondent
company’s business in ghee done under the said mark is said
to be considerable, the annual turn over varying from Rs.
10,00,000/- to Rs. 15,00,000/-, and the annual cost of
advertisement being anything between Rs. 10,000/- and Rs.
39,000/-. It is also said that the ghee marketed by the
respondent company and its predecessors is well known by the
said mark and is always asked for under the name "Shree".
The Indian Trade Marks Act, 1940 having been brought
into force in 1942 the respondent company on the 21st August
1942 filed an application for the registration of its said
mark under the Act. By his letter dated the 29th November
1943 the Registrar proposed that there should be a
disclaimer of the word "shree" The respondent company by its
257
agents’ letter dated the 15th February 1944 intimated to the
Registrar that, it could not agree to the proposal as "the
trade mark Shree is very important in the device" and "the
ghee is commonly designated by the trade mark Shree". The
respondent company also submitted an affidavit affirmed by
one Bidyut Bikash Rakshit, a director of the respondent com-
pany, in support of its objection. The Registrar not having
then pressed his proposal for disclaimer the respondent
company’s said mark was duly registered as trade mark No.
3815.
It appears that subsequently the Registrar found that the
word "Shree" was used by Hindus as an auspicious symbol and
placed even on letter heads and that consequently it was not
adapted to distinguish within the meaning of the Act. In
course of time, therefore, a practice became established in
the Registry whereby the word "Shree" was either refused
registration as a trade mark or a disclaimer was enforced if
it were made a part of a trade mark. So inflexible bad been
this practice that barring this particular trade mark No.
3815 there was no other trade mark containing the word
"Shree" which had been registered without a disclaimer of
the word "Shree". Naturally this circumstance was bound to
be regarded as an invidious discrimination and, indeed,
pointed reference is said to have been made to it and it was
suggested that the Registry should deal impartially and
uniformly with all applications in matters relating to
practice. This aspect of the matter having ’been pressed
upon the Registrar he took steps under section 46(4) of the
Trade Marks Act, 1940 and on the 8th March 1947 issued a
notice calling upon the respondent company to show cause why
the register should not be rectified by entering a dis-
claimer of the exclusive right in regard to the word
"Shree". The respondent company showed cause by filing an
affidavit affirmed by Malli Nath Rakhit to which reference
has been made. After hearing learned counsel for the
respondent company the Registrar came to the conclusion that
the word "Shree" was
33
258
not adapted to distinguish and, for reasons stated in his
judgment delivered on the 24th March 1950, directed
rectification of the register by inserting a disclaimer of
the word "Shree" in the following terms:
"Registration of this Trade Mark shall give no right to the
exclusive use of the word ’Shree"’.
Feeling aggrieved by the aforesaid decision the respondent
company preferred an appeal to the High Court at Calcutta
under section 76 of the Act. The High Court also took the
view that "Shree" was a word which had numerous meanings and
that it would be impossible for any trader to contend that
he had an exclusive right to the use of ’Such a word. But
the High Court went on to hold that there was no ground
whatsoever for the order made by the Registrar as the
respondent company had never claimed that it had any right
to the exclusive use of the word "Shree". In the result,
the High Court allowed the appeal and set aside the order of
the Registrar rectifying the register. Being of the opinion
that the point involved was a novel one in this country and
was of importance and would affect the-attitude of the
Registrar in future cases, the High Court certified that it
was a fit case for appeal to this Court under Article
133(1)(c) of the Constitution. Hence the present appeal by
the Registrar.
The order of rectification of the register by inserting a
disclaimer was made by the Registrar under section 13 read
with section 46(4) of the Trade Marks Act, 1940. Section 13
runs as follows:
"13. Registration subject to disclaimer:-If a trade mark
contains-
(a)any part not separately registered as a trade mark in the
name of the proprietor, or for the separate registration of
which no application has been made, or
(b)any matter common to the trade, or otherwise of a non-
distinctive character,
the tribunal, in deciding whether the trade mark shall be
entered or shall remain on the register, may require, as a
condition of its being on the register, that
259
the proprietor shall either disclaim any right to the
exclusive use of such part or of all or any portion of such
matter, as the case may be, to the exclusive use of which
the tribunal holds him not to be entitled, or make such
other disclaimer as the tribunal may consider necessary for
the purpose of defining the rights of the proprietor under
the registration:
Provided that no disclaimer shall affect any rights of the
proprietor of a trade mark except such as arise out of the
registration of the trade mark in respect of which the
disclaimer is made".
At the outset it will be noticed that the power of the
tribunal to require a disclaimer is conditioned and made
dependent upon the existence of one of two things which are
set out in clauses (a) and (b) and which have been called
the jurisdictional facts. It is only on the establishment
of one of the two jurisdictional facts that the Registrar’s
jurisdiction regarding imposition of a disclaimer arises.
Before, however, he may exercise his discretion he must find
and hold that there are parts or matters included in the
trade mark to the exclusive use of which the proprietor is
not entitled and it is only after this finding is arrived at
that the Registrar becomes entitled to exercise his
discretion. In course of the argument it was at one time
contended that upon the establishment of the requisite
jurisdictional fact and upon the finding that the proprietor
was not entitled to the exclusive use of any particular part
or matter contained in the trade mark the Registrar became
entitled, without anything more, to require a disclaimer of
that part or matter. This extreme position, however, was
not maintained in the end and it was conceded, as indeed it
had to be, that the exercise of the power conferred on the
Registrar by this section always remained a matter of
discretion to be exercised, not capriciously or arbitrarily
but, according to sound principles laid down for the
exercise of all judicial discretion. (See the observations
of Lord Halsbury, L. C., in Sharp v. Wakefield(1). As
the law of Trade Marks adopted in our Act merely reproduces
the English Law with
(1) L.R. 1891 A.C. 173 at p. 179.
260
only slight modifications, a reference to the judicial
decisions on the corresponding section of the English Act is
apposite and must be helpful. Section 15 of the English Act
of 1905 which later on was reproduced in section 14 of the
English Act of 1938 and which corresponds to our section 13,
was considered by the High Court in . England in In re
Albert Baker Co.’s Application and In re Aerated Bread
Company’s Application(1) which is commonly called the A.B.C.
case. In that case Eve, J. found on the evidence that Albert
Baker Company were widely known as "A.B.C." or "A.B. & Co."
but that the letters "A.B.C." did not exclusively indicate
their goods and that those letters being common to the trade
they were not entitled to the exclusive use of those
letters. Nevertheless the learned Judge did not hold that
that finding alone concluded the matter. Said the learned
Judge:
"The first observation which it occurs to me to make is that
the object of the Legislature was to relieve traders from
the necessity of disclaiming, and I think it follows from
this that the condition is one for the imposition of which
some good reason ought to be established rather than one
which ought to be imposed, unless some good reason to the
contrary is made out. This conclusion is, I think, forti-
fied by the frame of the section, which is in an enabling
form empowering the tribunal to impose the conditions power
which, I conclude, the tribunal would only exercise for good
cause shewn".
It follows from what has been stated above that the
existence of one of the two jurisdictional facts referred to
in clauses (a) and (b) of section 13 and the finding that
the trade mark contains parts or matters to the exclusive
use of which the proprietor is not entitled does not
conclude the matter and it must further be established that
some good reason exists for the imposition of a disclaimer
and the tribunal will only exercise the discretionary power
for good cause shown.
(1) L.R. [1908] 2 Ch. 86; 25 R.P.C. 513,
261
The second thing to be borne in mind, if the provisions of
section 13 are to be properly understood and carried into
effect, is that the section confides a discretionary power
in the "tribunal" which, by virtue of section 2(n), means
the Registrar or, as the case may be, the Court before which
the proceeding concerned is pending. An application for the
rectification of the register may, under sub-sections (1)
and (2) of section 46, be made either to the Registrar or
the High Court and sub-section (4) of that section, under
which the present proceedings were initiated by the
Registrar, authorises both the High Court and the Registrar
to take proceedings suo motu. In view of the fact that
discretion is given also to the High Court under section 13
a question may be raised as to whether the observations made
by P. O. Lawrence, J. in In the matter of an application by
the Diamond T. Motor Car Co.(1) namely, that in dealing with
an appeal from the Registrar’s decision under section 8 (2)
of the English Act of 1919 the High Court is not fettered by
reason of the Registrar on the hearing before him having
exercised his discretion, apply to our High Court hearing
appeals under section 76 of our Act from decisions of the
Registrar given under section 13 of our Act and whether in
that situation our High Court may exercise its own
discretion just as it could if the proceedings had initially
been taken before it. Assuming, but without deciding, that
they do apply, it must, nevertheless, be remembered, adapt-
ing the language of Lord Macnaghten in Eno v. Dunn(1) that
it is the Registrar "to whom in the first instance is
committed the discretionary power". If that authority has
exercised his discretion in good faith and not in violation
of any law such exercise of discretion should not be
interfered -with by the High Court merely on the ground
that, in the opinion of the High Court, it could have been
exercised differently or even that the High Court would have
exercised it differently, had the matter been brought before
it in the first instance. The proper approach in
(1) [1921] 38 R.P.C. 373 at p. 879.
(2) L.R. [1890]15 A.C. 252 at p. 263: 7 R.P.C. 311 at p.
318,
262
such a case is for the High Court to consider, as said by
Lord Dunedin in In the matter of an application by F.
Reddaway & Co. Ltd.(1), "whether the Registrar had really
gone so wrong as to make it necessary to interfere with his
discretion".
The third thing to note is that the avowed purpose of the
section is not to confer any direct benefit on the rival
traders or the general public but to define the rights of
the proprietor under the registration. The registration of
a trade mark confers substantial advantages on its
proprietor as will appear from the sections grouped together
in Chapter IV under the beading "Effect of Registration".
It is, however, a notorious fact that there is a tendency on
the part of some proprietors to get the operation of their
trade marks expanded beyond their legitimate bounds. An
illustration of an attempt of this kind is to be found in In
re Smokeless Powder Co.’s Trade Mark(1). Temptation has
even led some proprietors to make an exaggerated claim to
the exclusive use of parts or matters contained in their
trade marks in spite of the fact that they had expressly
disclaimed the exclusive use of those parts or matters.
Reference may be made to Greers Ltd. v. Pearman and Corder
Ltd.(1) commonly called the "Banquet" case. The real
purpose of requiring a disclaimer is to define the rights of
the proprietor under the registration so as to minimise,
even if it cannot wholly eliminate, the possibility of
extravagant and unauthorised claims being made on the score
of registration of the trade marks.
The last feature of the section is its proviso. That
proviso preserves intact any right which the proprietor may
otherwise under any other law have in relation to the mark
or any part thereof. The disclaimer is only for the
purposes of the Act. It does not affect the rights of the
proprietor except such as arise out of registration. That
is to say, the special advantages which the Act gives to the
proprietor by reason of the registration of his trade mark
do not extend to the
(1) [1926] 44 R.P.C. 27 at p. 36.
(2) L.R. [1892] 1 Ch. 590; 9 R.P.C. 109.
(3) [1922] 39 R.p.C. 406,
263
parts or matters which he disclaims. In short, the
disclaimed parts or matters are not within the protection of
the statute. That circumstance, however, does not mean that
the proprietor’s rights, if any, with respect to those parts
or matters would not be protected otherwise than under the
Act. If the proprietor has acquired any right by long user
of those parts or matters in connection with goods manufac-
tured or sold by him or otherwise in relation to his trade,
he may, on proof of the necessary facts, prevent an
infringement of his rights by a passing off action or a
prosecution under the Indian Penal Code. Disclaimer does
not affect those rights in any way.
Keeping, then, in view the meaning and scope of section 13
of our Trade Marks Act, 1940 and its underlying purpose as
discussed above we proceed to consider whether in the
circumstances of the present case the Registrar had
exercised his discretion properly in inserting in the
register a disclaimer of the word "Shree". It has not been
disputed that the respondent company’s registered trade mark
No. 3815 is a distinctive device properly registrable under
section 6 of the Act. It is also a fact that it contains,
as its prominent part, the word "Shree" which is not sepa-
rately registered as a trade mark in the name of the
respondent company and, indeed, no application had been made
by it for the separate registration of that word. There
can, therefore, be no doubt as to the existence of the
jurisdictional fact referred to in clause (a) of that
section. Further, the Registrar found as a fact, for
reasons stated by him, that the word "Shree" was not adapted
to distinguish, which means that it did not pass the test
for registrability laid down in section 6 and in particular
in sub-section (3) thereof. The High Court also
unequivocally took the view that "Shree" is a word which had
numerous meanings and that it would be impossible for any
trader to contend that he had an exclusive right to the use
of such a word. It, therefore, follows that the respondent
company’s trade mark was concurrently held to have contained
matters of a non-distinctive character and consequently the
second juris-
264
dictional fact was also present in this case. It, never-
theless, appeared to the High Court that there was no ground
whatsoever for the order made by the Registrar. The High
Court read the decision of the Registrar as proceeding only
on what was described as an inflexible practice established
in the Registry whereby the word "Shree" was either refused
registration as a trade mark or a disclaimer was enforced if
it was a part of a trade mark and in this view the case
appeared to the High Court to be indistinguishable from the
case of In re Cadbury Brothers’ Application(1).
That case was decided under section 9 of the English Act of
1905. Clause (5) of section 9 was then expressed in
language which is somewhat different from clause (5) of
section 6 of our Act. Under section 9(5) of the English Act
of 1905 a name, signature or word or words otherwise than
such as fell within the description in the preceding
paragraphs I to 4 could not, except by the order of the
Board of Trade or by the Court, be deemed a distinctive
mark. ’Tudor’ being a surname did not fall within clause
(4) of that English Act and, therefore, the Registrar had no
power to register it as a distinctive mark under clause (5).
Such being the position, the then Registrar of Trade Marks
in England adopted a practice that wherever a mark contained
2a name which did not come within clause (4) and which he
had no power to register under clause (5), there must be a
disclaimer of that word without going into any investigation
as to its distinctiveness. The Registrar in that case
declined to register the mark only because it contained a
name which could not be registered alone by him under
section 9(5), without deciding whether that word was a
matter of a distinctive or non-distinctive character, in
pursuance of the inflexible practice that be had adopted,
namely, of refusing registration in the absence of a
disclaimer. This decision of the Registrar was overruled by
Sargant, J. The learned Judge, on the materials before him,
came to the conclusion that the word ’Tudor’ was not common
to the trade
(1) L.R. [1915] 2 Ch. 307; 32 R.P.C. 456.
265
and that the word as it had been used by the applicants in
relation to chocolates was not a matter of non-distinctive
character and that it had denoted their goods.
Consequently, the jurisdiction to impose a disclaimer did
not arise under clause (b) of section 15 of the English Act
of 1905. The jurisdiction, if at all, could, therefore,
arise only under clause (a), namely, that the trade mark
contained parts not separately registered by the proprietor
as trade marks. Having come to the conclusion that the word
’Tudor’ was a matter of distinctive character as it denoted
the goods of the applicant’s manufacture, the Court might
have disposed of the case on the short ground that, on that
finding, the applicant was entitled to the exclusive use of
that name in connection with chocolates and like goods and,
therefore, no question of requiring a disclaimer could, in
that situation, arise at all. Treating the matter, however,
as still one of discretion, the learned Judge had to take
into account the commercial case made on behalf of the
applicants, namely, that they would, by disclaiming any
right to the exclusive use of the word ’Tudor’, practically
be inviting the public to disregard such common law rights
as they had acquired to the use of the name ’Tudor’ and held
that to impose a disclaimer of that word, in spite of the
finding as to its distinctiveness in relation to the goods
of the applicants, would be to drive the applicants to take
innumerable passing off actions.
The facts of that case appears to us to be clearly
distinguishable from those of the case now before us. Here
the concurrent finding of the Registrar and the High Court
is that the word "Shree" is not adapted to distinguish and
is not a word to the exclusive use of which any trader may
claim the right. In the face of this finding the
consideration of the possibility that a disclaimer may drive
the respondent company to a crop of passing off actions was
not so relevant or urgent as it was in the Tudor case. In
view of the finding in the present case the respondent
company could well be left, as it was in fact left, to
protect its
34
266
rights by other proceedings, e.g) passing off actions or
prosecutions which, by reason of the proviso, were open to
be taken by it, if the necessary facts to support such
proceedings which were not before the Registrar could be
satisfactorily established.
Further, it is not quite correct to say that the Registrar,
like his English counterpart, had based his decision
entirely on what has been called his invariable practice.
It is no doubt true that the Registrar did, in this case,
lay considerable stress on that aspect of the matter and may
even be said to have somewhat over emphasized the practice
of his Registry but it is not correct to say that his
decision was entirely founded on that practice alone. The
materials before the Registrar, appearing on the affidavit
filed on behalf of the respondent company, clearly indicated
that the respondent company was claiming a proprietary right
to the name "Shree". Indeed, it called its mark as "the
said mark Shree" throughout the affidavit and claimed that
the said mark "Shree" was well known in the market and that
its ghee was asked for and sold under the said mark "Shree".
The two prosecutions launched by it and the other facts men-
tioned in the main affidavit and the two supporting
affidavits of two retail dealers and summarised at the
beginning of this judgment clearly indicate that it was
claiming the right to the exclusive use of the word "Shree"
and, indeed, in its agents’ letter of the 15th February 1944
objecting to any disclaimer of that word, it was referred to
"as trade mark Shree" and it was said to be "very important
in the devise". In other words, they put forward the claim
that "Shree" itself was also its trade, mark, apart from the
device as a whole and that it was an important feature of
its device. It is, therefore, not at all surprising that
learned counsel appearing for the respondent company before
the Registrar, when asked as to how his client could
possibly be affected by disclaiming the word "Shree", said
frankly that it was far easier to be successful in an
infringement action than in a passing off action. This
clearly indicated that the respondent company did not want
any other
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merchant to use the word "Shree" in his trade mark in
respect of ghee and that the respondent company thought that
the registration of its trade mark with the word "Shree"
contained in it would, per se, give it a right also to that
word and that its intention was to launch infringement
actions under the Act against any other trader who might
happen to use the word "Shree" either alone or as part of
his trade mark in respect of ghee. Further, the Registrar’
may well have thought that the fact that all other traders
who had got their trade marks containing the word "Shree"
registered had had to submit to a disclaimer of the word
"Shree" whereas the respondent company had got its trade
mark containing the word "Shree" registered without a
disclaimer was calculated to cause embarrassment to other
traders and might conceivably encourage the respondent
company to contend that the registration of its trade mark
by itself and without further evidence gave it a proprietary
right to the exclusive use of the word "Shree". The res-
pondent company may also find some encouragement from the
observations of Lord Radcliffe in De Cordova and others v.
Vick Chemical Coy.(1) namely, that if a word forming part of
a mark has come in trade to be used to identify the goods of
the owner of the mark, it is an infringement of the mark
itself to use that word as the mark or part of the mark of
another trader, for confusion is likely to result. These
considerations may reasonably have led the Registrar to
require a disclaimer. None of these considerations arose or
were adverted to in the Tudor case and this circumstance
quite clearly distinguishes the present case from that case.
It is true that where a distinctive label is registered as a
whole, such registration cannot possibly give any exclusive
statutory right to the proprietor of the trade mark to the
use of any particular word or name contained therein apart
from the mark as a whole. As said by Lord Esher in Pinto v.
Badman(2):
"The truth is that the label does not consist of
(1) [1951] 68 R.P.C. 103 at p. 106.
(2) 8 R.P.C. 181 at p. 191.
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each particular part of it, but consists of the combination
of them all".
Observations to the same effect will be found also in In re
Appollinaris Company’s Trade Marks(1), In re Smokeless
Powder Co. (supra), In re Clement and Cie(1) and In re
Albert Baker & Company (supra) and finally in the Tudor case
referred to above which was decided by Sargant, J. This
circumstance, however, does not necessarily mean that in
such a case disclaimer will always be unnecessary. It is
significant that one of the facts which give rise to the
jurisdiction of the tribunal to impose disclaimer is that
the trade mark contains parts which are not separately
registered. It is, therefore, clear that the section itself
contemplates that there may be a disclaimer in respect of
parts contained in a trade mark registered as a whole
although the registration of the mark as a whole does not
confer any statutory right with respect to that part.
As we have already stated the possibility of the proprietor
attempting to expand the operation of his trade mark cannot
be ignored or overlooked. It is a thing which must be taken
into consideration by the tribunal-be it the Registrar or
the Court-in deciding upon the way it should exercise the
discretionary power conferred on it. Reference has been
made by the High Court to the observations of Eve, J. in the
A.B.C. case referred to above and the question has been
posed as to whether any good cause had been shown for the
necessity of disclaimer in this case. The High Court
answers the question immediately by saying that it did not
think that any cause had been shown beyond the desirability
of having a uniform practice. This, as we have already
stated, is not quite correct, for apart from the practice
the Registrar did advert to the other important
consideration, namely, that on the evidence before him and
the statement of counsel it was quite clear that the reason
for resisting the disclaimer in this particular case was
that the company thought, erroneously no doubt but
(1) L.R. [1891] 2 Ch. 186.
(2) L.R. [1900] 1 Ch. 114.
269
quite seriously, that the registration of the trade mark as
a whole would, in the circumstances of this case, give it a
right to the exclusive use of the word "Shree" as if
separately and by itself it was also its registered trade
mark and that it would be easier for it to be successful in
an infringement action than in a passing off action. It was
precisely the possibility of such an extravagant and
untenable claim that called for a disclaimer for the purpose
of defining the rights of the respondent company under the
registration. This aspect of the matter does not appear to
have been pressed before or adverted to by the High Court.
Considering all the circumstances discussed above, we are
not of opinion that the Registrar had gone so wrong as to
have made it necessary for the High Court to interfere with
his discretion. If it were to be regarded as a matter of
exercise of discretion by the High Court as to whether a
disclaimer should be imposed or not, it is quite clear that
the attention of the High Court was not drawn to an
important consideration, namely, the strong possibility of
the respondent company claiming a statutory right to the
word "Shree" by virtue of the registration of its trade mark
and subject others to infringement actions only on the
strength of the registration and without proof of facts
which it would have otherwise to establish in order to
succeed in a passing off action or a prosecution under the
Indian Penal Code and, therefore, the High Court cannot be
said to have properly exercised its discretion.
The result, therefore, is that this appeal must be allowed
and the respondent company must pay the appellant’s costs in
this Court and in the High Court.
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