The Registrar has the discretion to refuse registration of a trademark under Section 14 of the Trade Marks Act, even if the mark does not fall within the prohibitions of Sections 8 or 10, and the Registrar may consider equitable principles, such as the existence of an agreement between the parties, in exercising that discretion.

Headnote:
TRADEMARK - REGISTRATION - DISCRETION OF REGISTRAR - AGREEMENT BETWEEN PARTIES - FALSE STATEMENTS IN APPLICATION - EFFECT ON REGISTRATION.
Fact of the Case:

The respondent applied for registration of his trademark "HAUTIN" for use on bidis. The Registrar directed registration limited to two districts. The respondent appealed, and the court remanded the matter for reconsideration. The Registrar again directed registration limited to the city of Trichinopoly, finding that an agreement between the parties limited the respondent's use of the mark to that city. The respondent appealed, and the court remanded the matter again, directing the Registrar to consider whether the respondent had disentitled himself to registration by making false statements in his application.
Finding of the Court:

The court held that the Registrar had the discretion to refuse registration under Section 14 of the Trade Marks Act, even if the mark did not fall within the prohibitions of Sections 8 or 10. The court also held that the Registrar could consider the agreement between the parties in exercising his discretion, and that the respondent's false statements in his application could disentitle him to registration.
Issues: 1. Whether the Registrar had the discretion to refuse registration under Section 14 of the Trade Marks Act, even if the mark did not fall within the prohibitions of Sections 8 or 10. 2. Whether the Registrar could consider the agreement between the parties in exercising his discretion. 3. Whether the respondent's false statements in his application could disentitle him to registration.
Ratio Decidendi: 1. The court held that the Registrar had the discretion to refuse registration under Section 14 of the Trade Marks Act, even if the mark did not fall within the prohibitions of Sections 8 or 10, because Section 14 conferred a wide discretion upon the Registrar to refuse registration or to register subject to limitation, and that discretion was not limited or confined in any way by the provisions of Section 8 or Section 10. 2. The court held that the Registrar could consider the agreement between the parties in exercising his discretion, because equitable principles could not be totally excluded from the exercise of the Registrar's discretion, and the agreement was relevant to the question of whether the respondent's case was founded in truth. 3. The court held that the respondent's false statements in his application could disentitle him to registration, because respect for truth was important and it was necessary to encourage respect for truth in India, and because the principle that a party who comes to court with a false case may be refused relief was based on general equitable principles and had been recognized in English law.
Final Decision: The court set aside the order of the lower court remanding the matter to the Registrar and directed the lower court to hear the appeal and cross-objections and make a final decision.

Judgment

1. This appeal is a continuation of a rather chequered and on the whole unfortunate litigation. As far back as 21-8-1942, the respondent made an application to the Registrar of Trade Marks for registration of his trade mark "HAUTIN" which he wanted to use in connection with the sole of bidis. On 31-12-1948, the Registrar directed the registration of the trade mark, but limited it to Trichinopnly and Tanjore districts.

The respondent instead of being content with that decision, committed the folly of appealing against that decision, and the appeal came before Snail, J. and that learned Judge on 4-9-1950, remand-ed the matter back to the Registrar and asked him to consider whether he should not register the respondents trade mark without limitation.

Against that decision the appellant, who has opposed the registration, came in appeal to this Court and the main ground of appeal was that Shah, J, had refused to deal with his cross-objections as in the opinion of the learned Judge the cross-objections were barred. This Court delivering its judgment on 13-9-1951 took the view that Shah, J. was in error in coming to the conclusion that the cross-objections of the appellant were not maintainable, but instead of sending the matter back to Shah, J. this Court sent the matter back to the Registrar and asked him to consider the whole matter de novo.

2. Now, throughout these proceedings a certain agreement, on which the appellant relied, had as--assumcd considerable importance. This was an agreement dated 7-11-1937, and the effect of this agreement was that the respondent had admitted the right and title of the appellant to this particular mark HAUTIN, had admitted the fact that he had wrongfully made use of this mark and agreed to confine the user of his bidis with this mark to the city of Trichinopoly and even conceded the right to the appellant to withdraw this concession even as far as the city of Trichinopoly was concerned.

The Registrar had held this agreement proved. When the matter came before us, the respondent contended that he had not been given an opportunity to lead evidence to satisfy the Registrar that the agreement was not a genuine agreement. Therefore, when we sent the matter back to the Registrar we directed him to take all the necessary evidence that might be led by the parties with regard to the genuineness of this agreement.

The Registrar again came to the conclusion that the agreement was genuine, and basing his decision largely on this agreement he directed that the mark should be registered only for the city of Trichino-poly. The Registrar also came to the conclusion that if any higher Court were to take the view that the agreement was not genuine, then the respondent had established by evidence of user that he had a right to registration in eight districts, and the Registrar expressed his opinion that if the agreement was not held proved, he would have registered the trade mark in respect of the eight districts.

Against this decision the respondent went in appeal to Tendolkar, I. the appellant filed cross-objections and Tendolkar, J. remanded the matter back to the Registrar and the decision of Tendolkar, J. was substantially based on two grounds. The learned judge took the view that the Registrar had decided mainly on the question of the genuineness of the agreement. According to the learned judge what the Registrar should have considered was whether the trade mark was likely to deceive or cause confusion.

That was the only circumstance the Registrar should have taken into consideration and therefore the learned Judge thought that the Registrar should reconsider the matter ignoring the existence of the agreement. It also appears that the Registrar in the course of his long judgment adverted to the fact that in the statement of the case submitted by the respondent along with his application he had referred to the extent of the sale of his bidis and also the large amount that he had spent on advertisement and in

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