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PETITIONER:

NATIONAL SEWING THREAD CO. LTD.

Vs.

RESPONDENT:

JAMES CHADWICK & BROS. LTD.(J.& P. COATS LTD., Assignee)REG

DATE OF JUDGMENT:

07/05/1953

BENCH:

MAHAJAN, MEHR CHAND

BENCH:

MAHAJAN, MEHR CHAND

BOSE, VIVIAN

JAGANNADHADAS, B.

CITATION:

1953 AIR 357 1953 SCR 1028

CITATOR INFO :

APL 1956 SC 202 (8)

E 1965 SC1442 (6)

R 1968 SC 384 (4,5)

RF 1986 SC1272 (88,89,94,95)

RF 1987 SC2323 (10)

R 1989 SC2113 (31)

ACT:

Trade Marks Act, 1940, ss. 8, 76-Application for

registration of trade mark -Dismissal by Registrar -Appeal

to High Court . Judgment of Single Judge --Whether

appealable to Division Bench Letters Patent (Bombay) cl.15-

Government of India Act, 1915, s. 108-Constitution of India,

1950, s. 225-Power of Registrar to reject application if

mark is likely to deceive or cause confusion Decision in

passing off action, whether conclusive.

HEADNOTE:

Section 76(l) of the Trade Marks Act, 1940, provides that

an appeal shall lie from any decision of the Registrar under

the Act or the rules made thereunder, to the High Court

having jurisdiction, but the Act did not make any provision

with regard to the procedure to be followed by the High

Court in the appeal or as to whether the order of the High

Court was appealable: Held that the High Court had to

exercise its appellate jurisdiction under s. 76 of the Act

in the same manner as it exercised its other appellate

jurisdiction, and when such jurisdiction was exercised by a

Single Judge, his judgment was appealable under el. 15 of

the Letters Patent.

National Telephone Co. v. Postmaster General ([1913] A.C.

546),R. M. A. R. A. Adaikappa Chettiar v. Ra.

chandrasekhara Thevar (74 I.A. 264), Secretary of State v.

Chellikani Rama Rao

(I...L.R. 39 Mad. 617) referred to.

The power conferred by s. 108 of the Government of India

Act, 1915, on the High Courts, of making rules for the

exercise of their jurisdiction by Single Judges or by

Division Courts could be exercised not only in respect to

such jurisdiction

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as the High Courts possessed when the Act of 1915 came into'

force; but also in respects of jurisdictions I conferred on

the High Court by subsequent legislation, e.g., s, 76 of the

Trade Marks Act.

Under the rules (if construction enunciated in s. 8 of the

General Clauses Act and s. 38 of the Interpretation Act,

which are of general application, the reference to s.108 of

the Government of India Act, 1915, in el. 15 of the Letters

Patent should, after the enactment of the Constitution of

1950, be read as reference to the corresponding provisions

of art. 225 of the Constitution.

The ambit of the power conferred on the High Courts by a.108

of the Government of India Act, 1915, is not limited by

s.106(l) of the said Act or by el. 16 of the Letters Patent

of the Calcutta High Court.

Indian Electric Works v. Registrar of Trade Marks (A.I.R.

1947 Cal. 49) overruled.

Secretary of State v. Mask & Co. (67 I.A. 222) and the Gur-

dwara Case (63 I.A. 180) distinguished.

The respondents, a company registered in England, manu-

factured sewing thread with the device of an Eagle with

outspread wings known as the "Eagle Mark" as their trade

mark, and since 1896 this thread was being sold in the

Indian markets on an extensive scale. The appellants, a

company registered in India, began in 1940 to sell sewing

thread with the device of a bird resembling an eagle with

wings fully spread out with the words "Eagle Brand" as their

mark. On the objection of the respondents the appellants

subsequently changed the name to "Vulture Brand" without

changing the mark in other respects. The respondents

instituted an action against the appellants for passing off,

but that was dismissed. The appellats subsequently applied

for registration of their trade mark but their application

was disraissed by the Registrar on-the ground that the

appellants' mark so nearly resembled the respondents' mark

as to be likely to deceive the public and cause confusion.

This order was reversed by a Single Judge of the High Court

of Bombay but restored on appeal by a Division Bench:

Held (i) that the judgment of the Division Bench upholding

the order of the Registrar rejecting the application, on the

ground that the mark was likely to deceive and cause

confusion, was right;

(ii) that the considerations relevant in a passing off

action are somewhat different from those which are relevant

in an application for registration of a trade mark under the

Trade Marks Act, and the earlier judgment of the High Court

in the action for passing off was not conclusive on the

matter.

JUDGMENT:

CIVIL APPELLATE JURISDICTION: Civil Appeal No. 135 of 1952.

Appeal from the Judgment and Order dated the 19th March,

1951, of the High Court of Judicature at

1030

Bombay in Appeal No. 95 of 1950 arising from the Order dated

the 28th August, 1950, of the said High Court exercising its

Ordinary Original Civil Jurisdiction in Civil Miscellaneous

No. 2 of 1950.

Bishan Narain (Sri Narain Andley with him) for the

appellants.

M. C. Setalvad, Attorney-General for India, and C. K.

Daphtary, Solicitor-General for India (J. B. Dadachanji,

with them) for the respondents.

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Registrar of Trade Marks in person.

1953. May 7. The Judgment of the Court was delivered by

MAHAJAN J.-This is an appeal on a certificate under section

109(c), Civil Procedure Code, from the judgment of the High

Court of Judicature at Bombay reversing the judgment of Mr.

Justice S. C. Shah in Civil Miscellaneous No. 2 of 1950 and

restoring the order of the Registrar of Trade Marks refusing

to register the appellants' trade mark.

The two questions that were canvassed before us and that

fall for our determination are (1) whether the judgment of

Mr. Justice Shah was subject to appeal under clause 15 of

the Letters Patent of the Bombay High Court and (2) whether

Mr. Justice Shah was right in interfering with the

discretion exercised by the Registrar in refusing

registration of the appellants' mark.

The relevant facts shortly stated are these. The appellants

are a limited liability company incorporated under the

Indian Companies Act, 1913, having their registered office

at Chidambaram, South Arcot District, in the Province of

Madras and carrying on the business of manufacturing cotton

sewing thread. The respondents are also a limited liability

company registered under the English Companies Act. They

have their registered office at Eagley Mills, Bolton,

(England) where they manufacture 'sewing thread. One of the

trade marks used by them on such thread consists of the

device of an Eagle with

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outspread wings known as "Eagle Mark". This mark was first

advertised in the Calcutta Exchange Gazette of 5th June,

1896. Since then sewing thread bearing this mark is being

regularly imported into and sold in the Indian markets on an

extensive scale.

Round about the year 1940 the appellants started selling

cotton sewing thread under a mark consisting of the device

of a bird with wings fully spread out perched on a cylinder

of cotton sewing thread, with the words " Eagle Brand " and

the -name of the appellant company printed on the mark. The

respondents objected to the mark, upon which the appellants

substituted the words " Vulture Brand " in the place of the

words " Eagle Brand". Thereafter in the year 1942 the

appellants applied to the Registrar of Trade Marks, Bombay,

for registration of their amended mark as a trade mark, in

class 23, in respect of cotton sewing thread claiming that

the mark had been in use by them since the year 1939.

Though on the objection of the respondents the appellants

had named the Eagle in their mark a " Vulture " in every

other respect the mark remained unchanged. The respondents

to redress their grievance started a passing off action in

the District Court of South Arcot against the appellants.

That action failed on the ground that the evidence offered

on their behalf was meagre and they failed in proving that

there was any probability of purchasers exercising ordinary

caution being deceived in buying the defendants' goods under

the impression that they were the plaintiff's goods. The

result was that the grievance of the respondents remained

unredressed.

As above stated, in 1942, the appellants made an application

to the Registrar of Trade Marks at Bombay for the

registration of their mark "Vulture Brand " under the Trade

Marks Act, 1940. The respondents gave notice of their

opposition to that application under section 15(2), Rule 30,

of the Trade Marks Act, 1940. By his order dated 2nd

September, 1949, the Registrar of Trade Marks allowed the

respondents' opposition and rejected the application

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made by the appellants. He came to the conclusion that the

appellants' mark so nearly resembled the mark of the

respondents as to be likely to deceive or cause confusion.

He further held that to describe the mark of the appellants

as " Vulture Brand" when the device was that of an eagle was

misleading and liable to cause confusion. The appellants

preferred an appeal against the order of the Registrar to

the High Court of Bombay as permitted by the provisions of

section 76 of the Trade Marks Act. Mr. Justice Shah allowed

the appeal, set aside the order of the Registrar and

directed the Registrar to register the mark of the

appellants as a trade mark. From the judgment of Mr.

Justice Shah an appeal was preferred by the respondents

under clause 15 of the Letters Patent of the Bombay High

Court. The appeal was allowed and the order of the

Registrar was restored with costs throughout. Hence this

appeal.

In our judgment both the questions canvassed in this appeal

admit of an easy answer in spite of a number of hurdles and

difficulties suggested during the arguments. It is not

disputed that the decision of Mr. Justice, Shah does

constitute a judgment within the meaning of clause 15 of the

Letters Patent. That being so his judgment was subject to

appeal under that clause, the material part of which

relevant to this enquiry is:-

" And We do further ordain that an appeal shall lie to the

said High Court of Judicature at Bombay from the judgment of

one Judge of the said High Court or one Judge of any

Division Court, pursuant to section 108 of the Government of

India Act."

It was said that the provisions of this clause could not be

attracted to an appeal preferred to the High Court under

section 76 of the Trade Marks Act and further that the

clause would have no application in a case, where the

judgment could not be said to have been delivered pursuant

to section 108 of the Government of India Act, 1915. Both

these objections in our opinion are not well-founded.

Section 76 (1) provides:

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"Save as otherwise expressly provided in the Act an appeal

shall lie, within the period prescribed by the Central

Government, from any decision of the Registrar under this

Act or the rules made thereunder to the High Court having

the jurisdiction."

The Trade Marks Act does not provide or lay down%' any

procedure for the future conduct or career of that appeal in

the High Court, indeed section 77 of the Act provides that

the High Court can if it likes make rules in the matter.

Obviously after the appeal had reached the High Court it has

to be determined according to the rules of practice and

procedure of that Court and in accordance with the

provisions of the charter under which that Court is

constituted and which confers on it power in respect to the

method and manner of exercising that jurisdiction. The rule

is well settled that when a statute directs that an appeal

shall lie to a Court already established, then that appeal

must be regulated by the practice and procedure of that

Court. This rule was very succinctly stated by Viscount

Haldane L.C. in National Telephone Co., Ltd. v. Postmaster-

General in these terms:-

"When a question is stated to be referred to an established

Court without more, it, in my opinion, imports that the

ordinary incidents of the procedure of that Court are to

attach, and also that any general right of appeal from its

decision likewise attaches."

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The same view was expressed by their Lordships of the Privy

Council in R.M.A.R.A. Adaikappa Chettiar v. Ra.

Chandrasekhara Thevar (2), wherein it was said:-

"Where a legal right is in dispute and the ordinary Courts

of the country are seized of such dispute the Courts are

governed by the ordinary rules of procedure, applicable

thereto and an appeal lies if authorised by such rules,

notwithstanding that the legal right claimed arises under a

special statute which does not, in terms confer a right of

appeal."

(1) [19I3] A.C. 546. 134

(2) (1947) 74 I,A. 264,

1034

Again in Secretary of State for India v. Chellikani Rama Rao

(1), when dealing with the case under the Madras Forest Act

their Lordships observed as follows:--

"It was contended on behalf of the appellant that all

further proceedings in Courts in India or by way of appeal

were incompetent, these being excluded by the terms of the

statute just quoted. In their Lordships' opinion this

objection is not well-founded. Their view is that when

proceedings of this character reach the District Court, that

Court is appealed to as one of the ordinary Courts of the

country, with regard to whose procedure, orders, and decrees

the ordinary rules of the Civil Procedure Code apply."

Though the facts of the cases laying down the above rule

were not exactly similar to the facts of the present case,

the principle enunciated therein is one of general

application and has an apposite application to the facts and

circumstances of the present case. Section 76 of the Trade

Marks Act confers a right of appeal to the High Court and

says nothing more about it. That being so, the High Court

being seized as such of the appellate jurisdiction conferred

by section 76 it has to exercise that jurisdiction in the

same manner as it exercises its other appellate jurisdiction

and when such jurisdiction is exercised by a single Judge,

his judgment becomes subject to appeal under clause 15 of

the Letters Patent there being nothing to the contrary in

the Trade Marks Act.

The objection that Mr. Justice Shah's judgment having been

delivered on an appeal under section 76 of the Trade Marks

Act could not be said to have been delivered pursuant to

section 108 of the Government of India Act is also without

force and seems to have been based on a very narrow and

limited construction of that section and on an erroneous

view of its true intent and purpose. Section 108 of the

Government of India Act, 1915, provides :-

" Each High Court may by its own rules provide as it thinks

fit for the exercise, by one or more Judges, or by division

courts constituted by two or more Judges

(1) (1916) I.L.R. 39 Mad. 617.

1035

of the High Court, of the original and appellate juris-

diction vested in the Court."

The section is an enabling enactment and confers power on

the High Courts of making rules for the exercise of their

jurisdiction by single Judges or by division courts. The

power conferred by the section is not circumscribed in any

manner whatever and the nature of the power is such that it

had, to be conferred by the use of words of the widest

amplitude. There could be no particular purpose or object

while conferring the power in limiting it qua the

jurisdiction already possessed by the High Court, when in

the other provisions of the Government of India Act it was

contemplated that the existing jurisdiction was subject to

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the legislative power of the Governor-General and the

jurisdiction conferred on the High Court was liable to be

enlarged, modified and curtailed by the Legislature from

time to time. It is thus difficult to accept the argument

that the power vested in the High Court under subsection (1)

of section 108 was a limited one, and could only be

exercised in respect to such jurisdiction as the High Court

possessed on the date when the Act of 1915 came into force.

The words of the sub-section "vested in the court" cannot be

read as meaning "now vested in the court". It is a well-

known rule of construction that when a power is conferred by

a statute that power may be exercised from time to time when

occasion arises unless a contrary intention appears. This

rule has been given statutory recognition in section 32 of

the Interpretation Act. The purpose of the reference to

section 108 in clause 15 of the Letters Patent was to incor-

porate that power in the charter of the Court itself, and

not to make it moribund at that stage and make it rigid and

inflexible. We are therefore of the opinion that section

108 of the Government of India Act, 1915, conferred power on

the High Court which that Court could exercise from time to

time with reference to its jurisdiction whether existing at

the coming into force of the Government of India Act, 1915,

or whether conferred on it by any subsequent legislation.

1036

It was argued that simultaneously with the repeal of section

108 of the Government of India Act, 1915, and of the

enactment of its provisions in section 223 of the Government

of India Act of 1935 and later on :in article 225 of the

Constitution of India, there had not been any corresponding

amendment of clause 15 of the Letters Patent and the

reference to section 108 in clause 15 of the Letters Patent

could not therefore be taken as relating to these

provisions, and, that being so, the High Court had no power

to make rules in 1940 when the Trade Marks Act was enacted

under the repealed section and the decision of Mr. Justice

Shah therefore could not be said to have been given pursuant

to section 108. This objection also in our opinion is not

well-founded as it overlooks the fact that the power that

was conferred on the High Court by section 108 still

subsists, and it has not been affected in any manner

whatever either by the Government of India Act, 1935, or by

the new Constitution. On the other hand it has been kept

alive and reaffirmed with great vigour by these statutes.

The High Courts still enjoy the same unfettered power as

they enjoyed under section 108 of the Government of India.

Act, 1915, of making rules and providing whether an appeal

has to be heard by one Judge or more Judges or by Division

Courts consisting of two or more Judges of the High Court.

It is immaterial by what label or nomenclature that power is

described in the different statutes or in the Letters

Patent. The power is there and continues to be there and

can be exercised in the same manner as it could be exercised

when it was originally conferred. As a matter of history

the power was not conferred for the first time by section

108 of the Government of India Act, 1915. It had already

been conferred by section 13 of the Indian High Courts Act

of 1861. We are further of the opinion that the High Court

was right in the' view that reference in clause 15 to

section 108 should be read as a reference to the

corresponding provisions of the 1935 Act and the

Constitution. The canon of construction of statutes

enunciated in section 38 of the

1037

Interpretation Act and reiterated with some modifications in

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section 8 of the General Clauses Act is one of general

application where statutes or Acts have to be construed and

there is no reasonable ground for holding that that rule of

construction should not be applied in construing the

charters of the different High Courts. These charters were

granted under statutory powers and are subject to the

legislative power of the Indian Legislature. Assuming

however, but not conceding, that strictly speaking the

provisions of the Interpretation Act and the General Clauses

Act do not for any reason apply, we see no justification for

holding that the principles of construction enunciated in

those provisions have no application for construing these

charters. For the reasons given above we hold that the High

Court was perfectly justified in overruling the preliminary

objection and in holding that an appeal was competent from

the judgment of Mr. Justice Shah under clause 15 of the

Letters Patent.

Reliance was Placed by the appellants in the High Court and

before us on the decision of the High Court of Judicature of

Calcutta in Indian Electric Works v. Registrar of Trade,

Marks(1) wherein a contrary view was expressed.

After a full consideration of the very elaborate and

exhaustive judgment delivered in that case by both the

learned Judges of the Bench that heard the appeal and with

great respect we think that that case was wrongly decided

and the decision is based on too narrow and restricted a

construction of section 108 of the Government of India Act,

1915, and that in that decision full effect has not been

given to the true intent and purpose of clause 44 of the

Letters Patent.

Both the learned Judges there took the view that the

authority given by section 108(l) of the 1915 statute to

make rules for the exercise by one or more Judges of the

Court's appellate jurisdiction was limited to the

jurisdiction then vested in the Court by section

(1) A.I.R. 1947 Cal. 49.

1O38

106 (1) of the Act and by clause 16 of the Letters Patent.

It was held that such rules thus could not relate to

jurisdiction conferred by an Act passed after the

commencement of the 1915 statute nor to an appeal heard by

the Court pursuant to such an Act, since the jurisdiction to

hear such appeal having been conferred by the particular Act

could not be said to have been conferred upon, or vested in,

the Court by section 106(1) and by clause 16 of the Letters

Patent. This argument suffers from a two-fold defect. In

the first place it does not take into consideration the

other provisions of the Government of India Act, 1915,

particularly the provision contained in sections 65 and 72.

By section 65(1) of the Government of India Act, 1915, the

Governor-General in Legislative Council was given power to

make las for all persons, for all courts, and for all places

and things, within British India. By section 72 he was also

given power for promulgating ordinances in cases of

emergency. By the Charter Act of 1915 therefore the High

Court possessed all the jurisdiction that it had at the

commencement of the Act and could also exercise all such

jurisdiction that would be conferred upon it from time to

time by the Legislative power conferred by that Act.

Reference to the provisions of section 9 of the Indian High

Courts Act of 1861 which section 106 (1) of the Government

of India Act, 1915, replaced makes this proposition quite

clear. In express terms section 9 made the jurisdiction of

the High Courts subject to the legislative powers of the

Governor-General in Legislative Council. Section 106 only

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conferred on the High Court " jurisdiction -and power to

make rules for regulating the practice of the court, as were

vested in them by Letters Patent, and subject to the

provisions of any such Letters Patent, all such

jurisdiction, powers and authority as were vested in those

courts at the commencement of the Act. " The words "

subject to the legislative powers of the Governor-General "

used in section 9 of the Charter Act of 1861 were omitted

from the section, because of the wide power conferred on the

Governor-General by section 65 of the Government of India

Act, 1915. The

1039

jurisdiction conferred on the High Courts from the very

inception was all the time liable to and subject to

alteration by appropriate legislation. It is therefore not

right to say that section 108 (1) of the Government of India

Act, 1915, empowered the High Courts to make rules only

concerning the jurisdiction that those courts exercised when

that Act was passed; on the other hand power was also

conferred on them to make rules in respect of all

jurisdiction then enjoyed or with which they may be vested

hereafter.

Clause 16 of the Letters Patent on which reliance was placed

by the learned Judges of the Calcutta Court is in these

terms:-

" The High Court shall be a Court of appeal from the civil

Courts of Bengal and from all other Courts subject to its

superintendence and shall exercise appellate jurisdiction in

such cases as are subject to appeal to the said High Court

by virtue of any laws or regulations now in force."

This clause is also subject to the legislative power of the

appropriate Legislature as provided in clause 44 of the

Letters Patent. This clause is in these terms:

" The provisions of the Letters Patent are subject to the

legislative powers of the Governor-General in Legislative

Council."

That being so the last words of the clause " now in force "

on which emphasis was placed in the Calcutta judgment lose

all their importance, and do not materially affect the

point. The true intent and purpose of clause 44 of the

Letters Patent was to supplement the provisions of clause 16

and other clauses of the Letters Patent. By force of this

clause appellate jurisdiction conferred by fresh legislation

on the High Courts stands included within the appellate

jurisdiction of the court conferred by the Letters Patent.

A reference to clause 15 of the Letters Patent of 1861,

which clause 16 replaced, fully supports this view. This

clause included a provision to the following effect :-

" or shall become subject to appeal to the said High Court

by virtue of such laws and regulations

1040

relating to Civil Procedure as shall be hereafter made, by

the Governor in Council,"

in addition to the words " laws or regulations now in

force". The words above cited wore omitted from clause 16

of the later charter and only the words "laws or regulations

now in force" were retained, because these words were

incorporated in the Letters Patent and were made of general

application as governing all the provisions thereof by a

separate clause. The Judges who gave the Calcutta decision

on the other hand inferred from this change that the

appellate jurisdiction of the High Court as specified in

clause 16 was confined only to the jurisdiction to hear

appeals from the the civil Courts mentioned in that clause

and appeals under Acts passed and regulations in force up to

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the year 1865. In our opinion the learned Judges were in

error in thinking that the appellate jurisdiction possessed

by the High Court under the Letters Patent of 1865 was

narrower than the jurisdiction it possessed under clause 15

of the Letters Patent of 1861. Whatever jurisdiction had

been conferred on the High Court by clause 15 of the Letters

Patent of 1861 was incorporated in the Letters Patent of

1865 (as amended) and in the same measure and to the same

extent by the provisions of clauses 16 and 44 of that

charter.

We are further of the opinion that the Calcutta decision is

also erroneous when it expresses the view that the range and

ambit of the power conferred on the High Court by section

108 of the Government of India Act of 1915 was limited by

the provision of section 106 (1) of the Act or by the

provisions of clause 16 of the Letters Patent. There is no

justification for placing such a construction on the plain

and unambiguous words of that section. Section 108 is an

enactment by itself and is unrestricted in its scope, and

covers a much wider field than is covered by section 106 of

the Government of India Act. The only association it has

with section 106 is that in sequence it follows that sec-

tion. It confers a power on the High Court to make rules in

respect not only of the jurisdiction that it

1041

enjoyed in 1915 but it also conferred power on it to make

rules in respect of jurisdiction which may hereafter be

conferred on it by the enactments enacted by the Governor-

General in Legislative Council.

On the line of thought adopted in the Calcutta decision the

learned Judges were forced to the conclusion which seems

somewhat strange that the jurisdiction conferred by the

Letters Patent on the Calcutta High Court is much more

limited and restricted than has been conferred on some of

the new High Courts in India by their Letters Patent.

Illustratively, Clause I I of the Letters Patent of Patna

High Court issued in 1916 provides as follows:-

" And We do further ordain that, the High Court of

Judicature at Patna shall be a Court of Appeal from the

Civil Courts of the Province of Bihar and Orissa and from

all other Courts subject to its superintendence, and shall

exercise appellate jurisdiction in such cases as were,

immediately before the date of the publication of these

presents, subject to appeal to the High Court of Judicature

at Fort William in Bengal by virtue of any law then in

force, or as may after that date be declared subject to

appeal to the High Court of Judicature at Patna by any law

made by competent legislative authority for India

The Letters Patent of the Labore High Court, the High Court

of Rangoon and the Letters Patent of the Nagpur High Court

also contain identical clauses. It is clear from these

clauses that in respect of cases subject to appeal to these

High Courts the civil appellate jurisdiction is flexible and

elastic. Mr. Justice Das in the Calcutta decision under

discussion took the view that omission of the words

underlined in clause 11 from clause 16 of the Letters Patent

of the Calcutta High Court made the civil appellate

jurisdiction of that court under clause 16 as rigidly fixed,

and that it could be exercised only over courts and only in

respect of cases mentioned therein. When the attention of

the learned Judge was. drawn to the provisions of clause. 44

of the Letters Patent he

1042

was constrained to say that inflexibility bad to a great

extent been modified by preserving the powers of Indian

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Legislative authority in section 9 of the High Courts Act,

by the amended clause 44 of the Letters Patent and by

section 223 of the. 1935 Act. The learned Judge however

felt that there was still a difference of a vital character

between the Letters Patent of the Calcutta High Court and of

the newly constituted High Courts inasmuch as cases subsequ-

ently declared by any Indian enactment to be subject to

appeal to the Calcutta High Court could not strictly

speaking come within its appellate jurisdiction under clause

16 although the High Court exercised appellate jurisdiction

over these. We have not been able to appreciate this

distinction and it seems to us it is based on some

misapprehension as to the true intendment of clause 44 of

the Letters Patent. The purpose and intent of clause 44 of

the Letters Patent was to declare that in addition to the

jurisdiction conferred by clause 16 it would also exercise

the appellate jurisdiction which from time to time would be

conferred on it by subsequent enactments. It is

inconceivable that larger appellate jurisdiction and greater

powers in the matter of making rules would have been

conferred upon the newly constituted High Courts than upon

the High Court of Calcutta. The words "pursuant to section

108 of the Government of India Act 1915" occurring in clause

15 of the Letters Patent do not in any way restrict the

scope of the right of appeal conferred by that clause to

appeals that come to the High Court under its appellate

jurisdiction under clause 16 of the Letters Patent only. On

the other hand we think that these rules have application to

all appellate jurisdiction exercised by that court whether

existing or conferred upon it by subsequent legislation.

The learned Judges in the Calcutta case negatived the

applicability of the principle enunciated in 1913 Appeal

Cases 546 and applied by the Privy Council in several cases

to the matter before them, on the following reasoning set

out by Mr. Justice Das:--

1043

"The incidents and powers attached to the Registrar as a

tribunal fall far short of those which were attached, to the

tribunal in the Gurdwara case (1) and to which Sir George

Rankin particularly and pointedly referred Having regard to

the plain language of clause 16, and in the absence therein

of like words which appeal in the concluding portions of the

correspond clauses of the Letters Patent of the other High

Court to which I have already referred and which make their

appellate jurisdiction flexible and elastic it is impossible

to hold that section 76 of the Trade Marks Act has merely

extended the appellate jurisdiction of this Court under

clause 16 by the addition of a new subject-matter of appeal

so as to attract the general principle enunciated in 1913

Appeal Cases 546 ......... The truth is that the Trade Marks

Act has created new rights, e.g., a right to get a trade

mark registered and has given certain new advantages con-

sequent upon such registration. It has created new

Tribunals for its own purposes and it has conferred a new

appellate jurisdiction on this Court. It has authorized

this Court to make rules regulating the conduct and

procedure of the proceedings under the Act before it. This

Court has framed separate set of rules accordingly. This

very fact makes it impossible to attract the ordinary rules

of procedure regarding appeals in this Court and indicates

that an appeal under section 76 of the Act involves the

exercise of a new appellate jurisdiction regulated by new

rules".

This reasoning in our opinion is faulty on a number of

grounds. The first error lies in the assumption that the

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Gurdwara Act did not create new rights and did not create

new appellate jurisdiction in the High Court which it did

not possess before. The Gurdwara Act created peculiar

rights in religious bodies and negatived the civil rights of

large bodies of Mahants and other persons. Stick rights

were unknown before in civil law. The High Court as an

established court of record was constituted a court of

appeal from the decisions of the Gurdwara Tribunal. The

principle enunciated in 1913 Appeal Cases 546 was applied by

(1) 63 I.A. 180.

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Sir George Rankin to appeals heard by the High Court under

its newly created appellate jurisdiction, and we speak with

great respect, in our opinion, very correctly. We have not

been able to appreciate the special peculiarities of the

rights created by the Trade Marks Act which place the

appellate jurisdiction conferred on the High Court by

section 76 on a different level from the jurisdiction

created by the special provisions of the Gurdwara Act. The

rights created by the Trade Marks Act are civil rights for

the protection of persons carrying on trade under marks

which have acquired reputation. The statute creates the

Registrar a tribunal for safeguarding these rights and for

giving effect to the rights created by the Act, and the High

Court as such without more has been given appellate

jurisdiction over the decisions of this tribunal. It is not

easy to understand on what grounds it can be said that the

High Court while exercising this appellate jurisdiction has

to exercise it in a manner different from its other

appellate jurisdiction. It seems to us that this is merely

an addition of a new subject matter of appeal to the

appellate jurisdiction already exercised by the High Court.

The second error lies in the assumption that the

appellate jurisdiction exercised by the High Court of

Calcutta is much more limited than that possessed by the

other High Courts. The matter has been discussed at length

in an earlier part of this judgment.

We have also not been able to appreciate the emphasis laid

to negative the applicability of clause 15 of the Letters

Patent by reference to the provisions of section 77 of the

Act. The provisions of that section are merely enabling

provisions and, as already pointed out, it is open to the

High Court to make use of them or not as it likes. There is

nothing in the provisions of that section which debars the

High Court from hearing appeals under section 76 of the

Trade Marks Act according to the rules under which all other

appeals are heard, or from framing rules for the exercise of

that jurisdiction under section 108 of the Government of

India Act, 1915, for hearing those

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appeals by single judges or by division benches. Even if

section 77 had not been enacted it could not be said that

the High Court would then have no power to make rules for

the hearing of appeals under section 76. There are a number

of legislative enactments which have conferred appellate

jurisdiction on the High Court without more and the High

Court exercises appellate jurisdiction conferred by these

enactments by framing its own rules under the powers it

already possesses under its different charters and under the

various statutes which have conferred power on it.

It was suggested that the reasoning of the High Court is

supported by the rule laid down in Secretary of State v.

Mask and Co.(1). In our opinion that rule has neither any

relevancy in this case nor is it in any manner in conflict

with the rule laid down in 1913 Appeal Cases 546 or in the

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later Privy Council decisions above referred to. There, by

section 188 of the Sea Customs Act the jurisdiction of the

civil courts was excluded, and an order made by the

Collector on an appeal from an order of the Assistant

Collector was made final. A suit was filed to challenge the

order of the Collector on the ground that the finality

declared by section 188 was no bar to such a suit in a civil

court. That contention was negatived on the ground that

when a liability not existing in common law is created by a

statute which at the same time gives a special and

particular remedy for enforcing it, with respect to that

class it has always been held that the party must adopt the

form of remedy given by the statute. The Trade Marks Act

has not created any special forum for the hearing of an

appeal as had been created by the Sea Customs Act. On the

other hand, the Trade Marks Act has conferred appellate

jurisdiction on an established court of law. Further, the

Sea Customs Act had made the order of the Collector passed

on an appeal final. There is no such provision in the Trade

Marks Act. It has only declared that an appeal shall lie to

the High Court from the order of the Registrar and has said

nothing more about it. Clearly, therefore, to this case the

rule

(1) 67 I.A. 222.

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enunciated in 1913 Appeal Cases 546 had application, and the

rule stated in Mask's case (1) had no bearing on this

point.

As regards the merits of the case, we are in entire

agreement with the decision of the High Court and with the

reasons given in that decision. The relevant part of

section 8 of the Trade Marks Act is in these terms:

"No trade mark nor part of a trade mark shall be

registered which consists of, or contains, any scandalous

design, or any matter the use of which would by reason of

its being likely to deceive or to cause confusion or

otherwise, be disentitled to protection in a court of

justice".

Under this section an application made to register a

trade mark which is likely to deceive or to cause confusion

has to be refused notwithstanding the fact that the mark

might have no identity or close resemblance with any other

trade mark. The Registrar has to come to a conclusion on

this point independently of making any comparison of the

mark with any other registered trade mark. What the

Registrar has to see is whether looking at the circumstances

of the case a particular trade mark is likely to deceive or

to cause confusion.

The principles of law applicable to such cases are well-

settled. The burden of proving that the trade mark which a

person seeks to register is not likely to deceive or to

cause confusion is upon the applicant. It is for him to

satisfy the Registrar that his trade mark does not fall

within the prohibition of section 8 and therefore it should

be registered. Moreover, in deciding whether a particular

trade mark is likely to deceive or cause confusion that duty

is not discharged by arriving at the result by merely

comparing it with the trade mark which is already registered

and whose proprietor is offering opposition to the

registration of the mark. The real question to decide in

such cases is to see as to how a purchaser, who must be

looked upon as an average man of ordinary intelligence,

would react to a

(1) 67 I.A. 222.

1047

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particular trade mark, what association he would form by

looking at the trade mark, and in what respect he would

connect the trademark with the goods which* he would be

purchasing.

So far as the present case is concerned the goods sold under

the respondents' trade mark are well-known and are commonly

asked for as II Eagley " or " Eagle ", and the particular

feature of the trade mark of the respondents by which the

goods are identified and which is associated in the mind of

the purchaser is the representation of an Eagle appearing in

the trade mark. If the trade mark conveys the idea of an

Eagle and if an unwary purchaser is likely to accept the

goods of the appellants as answering the requisition for

Eagle goods, then undoubtedly the appellants' trade mark is

one which would be likely to deceive or cause confusion. It

is clear to us that the bird in the appellants' trade mark

is likely to be mistaken by an average man of ordinary

intelligence as an Eagle and if he asked for Egg`e goods and

he got goods bearing this trade mark of the appellants it is

not likely that he would reject them by saying that this

cannot be an Eagle. Two years prior to the application for

registration, the respondents described this particular bird

an Eagle and called their brand Eagle Brand, The same bird

was later on described by them a vulture and the explanation

offered was that they so described owing to an honest and

bona fide mistake. We have no hesitation in holding that

the appellants' camouflaging an Eagle into a vulture by

calling it such is likely to cause confusion. Whatever else

may be said about the bird in the appellants' trade mark, it

certainly does not represent a vulture or look like a

vulture of any form or shape. What has been named by the

plaintiffs as a vulture is really an eagle seated in a

different posture. That being so, the High Court was

perfectly right in the view that Mr. Justice Shah was in

error in interfering with the discretion possessed and

exercised by the Registrar, and that the appellants had

failed to discharge the onus that rested heavily on them to

prove that the trade mark which they wanted the Registrar

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to register was not likely to deceive or cause confusion.

The learned counsel for the appellants contended that the

question whether his clients' trade mark was likely to

deceive or cause confusion had been 'Concluded by the

earlier judgment of the Madras High Court in the passing off

action and already referred to in an early part of the

judgment. It is quite clear that the onus in a passing off

action rests on the plaintiff to prove whether there is

likelihood of the defendant's goods being passed off as the

goods of the plaintiff. It was not denied that the general

get up of the appellants' trade mark is different from the

general get up of the respondents' trade mark. That being

so, it was held by the Madras High Court in the passing off

action that on the meager material placed on record by the

plaintiffs they had failed to prove that the defendants'

goods could be passed off as the goods of the plaintiffs.

The considerations relevant in a passing off action are

somewhat different than they are on an application made for

registration of a mark under the Trade Marks Act and that

being so the decision of the Madras High Court referred to

above could not be considered as relevant on the questions

that the Registrar had to decide under the provisions of the

Act.

For the reasons given above we are of the opinion that this

appeal must fail and we accordingly dismiss it with costs.

Appeal dismissed.

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Agent for the appellants: R. A. Govind.

Agent for the respondents: Rajinder Narain.

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