Judgement

MAHAJAN, J :

This is an appeal on a certificate under S. 109(c), C. P. C. from the judgment of the High Court of Judicature at Bombay reversing the judgment of S. C. Shah J. in Civil Misc. No. 2 of 1950 and restoring the order of the Registrar of Trade Marks refusing to register the Appellants trade mark.

2. The two questions that were canvassed before us and that fall for our determination are (1) whether the judgment of Shah J. was subject to appeal under Cl. 15 of the Letters Patent of the Bombay High Court and (2) whether Shah J. was right in interfering with the discretion exercised by the Registrar in refusing registration of the Appellants mark.

3. 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 outspread wings known as "Eagle " Mark. This mark was first advertised in the Calcutta Exchange Gazette of 5-6-1896 . Since then sewing thread bearing this mark is being regularly imported into and sold in the Indian markets on an extensive scale.

4. 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 Respondent 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 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 result was that the grievence of the Respondents remained unredressed.

5. 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 S. 15(2), R. 30, Trade Marks Act 1940. By his order dated 2-9-1949 the Registrar of Trade Marks allowed the Respondents opposition and rejected the application 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 provision of S. 76, Trade Marks Act. Shah J. allowed the appeal, set aside the order of the Registrar and directed the Registrar to register the mark of the Appellant s as a Trade Mark. From the judgment of Shah J. an appeal was preferred by the Respondents under Cl. 15 of the Letters Patent of the Bomba