JUDGMENT:

1. Leave granted.

2. This appeal by special is directed against the judgment and order dated 12th October, 2007 passed by a Division Bench of the High Court of Judicature at Madras in Trade Mark Second Appeal (TMSA) No. 2 of 1998 affirming the judgment and order dated 25th September, 1998 passed in T.M.A. No.3 of 1989 whereby and whereunder an appeal preferred by the appellant herein under Section 109 of the Trade and Merchandise Marks Act, 1958 arising out of an order dated 12th May, 1979 by respondent No.3 was dismissed.

3. Appellant is a company incorporated under the Companies Act, 1956. It manufactures whisky under the mark Peter Scot . Manufacture of the said product allegedly was started by the company in May, 1968. An application was filed by it for registration of its mark before the respondent No.3. Appellant was informed that its application was accepted and allowed to proceed with the advertisement, subject to the condition that the mark would be treated as associated with Reg. T.M. No.249226-B.

4. A proceeding was initiated as regards registration of the trade mark. No opposition was filed by the respondent. Only one M/s. Mohan Meakins filed an opposition. The said trade mark was registered.

5. Respondent Nos. 1 and 2 came to know of the appellant s mark on or about 20th September, 1974. They filed an application for rectification of the said trade mark on 21st April, 1986. We may also notice that a suit for passing off has also been filed by the 1st respondent and others in the Bombay High Court being C.S. No. 1729 of 1987, which is stated to be still pending.

6. Appellant having been called upon showing its cause, by way of an affidavit affirmed by one Mr. Petern Warren explaining the manner in which the word “Peter Scot” was coined, stating :-

“While I was employed in Khoday, the whisky we produced was sold under at least two marks, namely RED KNIGHT and PETER SCOT. The brand name “Peter Scot: was coined primarily with my father in mind i.e. using his forename, “Peter”, and his nationality, “Scot”. Another factor behind the coining of this brand name was the internationally known British explorer, Captain Scott, and his son Peter Scott, who is widely known as an artist, naturalist and Chairman of the World Wildlife Fund. Although the name “Scott” is spelt with two “t”s, it is phonetically the same as “Scot”.

7. Before the 3rd respondent, respondents 1 and 2 filed affidavits affirmed by 20 different persons in support of their application for modification. One of the affidavits to which, we would advert to a little later was affirmed by Ian Barclay, who is an in-house Solicitor of the said respondents. Several issues were framed by the 3rd respondent in the said proceedings which were as under

“(1) Whether the applicants are persons aggrieved” under Section 56;

(2) Whether the Application for rectification is not maintainable due to any mis-joinder of Applicants;

(3) Whether the impugned mark was not distinctive of the goods of the registered proprietors at the commencement of the rectification proceedings;

(4) Whether the impugned registration contravenes Section 11 at the commencement of rectification proceedings; and

(5) Whether the mark is liable to be rectified and if so, in what manner.”

8. While opining that the 1st respondent has no locus standi to maintain the said application for rectification, it upheld the locus standi of the 2nd respondent. As regards Issue No.2 is concerned, it held that the mis-joinder of the applicants is not fatal. Issue No.3 which was to the effect that whether the impugned mark was not distinctive of the goods of the registered proprietors at the commencement of the rectification proceedings, it was answered in favour of the appellant.

9. Issue No.4 which primarily concern us was discussed by the 3rd respondent at some details. It was held that the mark has been used deceptively for long time and, although there is also unexplainable and inexcusable delay on the pa