The Registrar's power to rectify the Register of Trade Marks under Section 56(2) of the Trade and Merchandise Marks Act, 1958, is limited to cases where a "person aggrieved" has applied for rectification and has specified the grounds for such rectification.

Headnote:
TRADE AND MERCHANDISE MARKS ACT, 1958 - SECTION 56(2) - RECTIFICATION OF REGISTER - JURISDICTION OF REGISTRAR - PURITY OF REGISTER - MISDESCRIPTION OF DEVICE - DECEPTION OR CONFUSION - SECTION 11(A) - HONEST CONCURRENT USER - SECTION 12(3).
Fact of the Case:

The respondents filed an application for rectification of the Register of Trade Marks seeking the removal of the word "Bull" from the caption "Bull Dog" appearing in the registered proprietor's mark, on the grounds that the device in the registered proprietor's mark was not that of a "Bull Dog" but was that of a lion and that consequently the registration of the said Trade Mark No. 131148 offended against the provisions of Section 11 of the Trade and Merchandise Marks Act, 1958.
Finding of the Court:

The Court held that the Registrar had no jurisdiction under Section 56(2) of the Trade and Merchandise Marks Act, 1958, to make any order for rectification of the Register except on the grounds specified in the application for rectification by a "person aggrieved" and to the extent such rectification was prayed for. The Court further held that the Deputy Registrar was in error in his conclusion that the expression "Bull Dog" on the petitioner's mark was likely to deceive or create confusion within the meaning of Section 11(a) of the Act. The Court also held that the misdescription of the device was not such a misdescription that would deceive or cause confusion in the minds of the consumers within the meaning of Section 11(a) of the Act.
Issues: 1. Whether the Registrar had jurisdiction under Section 56(2) of the Trade and Merchandise Marks Act, 1958, to make any order for rectification of the Register except on the grounds specified in the application for rectification by a "person aggrieved" and to the extent such rectification was prayed for? 2. Whether the Deputy Registrar was right in concluding that the expression "Bull Dog" on the petitioner's mark was likely to deceive or create confusion within the meaning of Section 11(a) of the Act? 3. Whether the misdescription of the device was such a misdescription that would deceive or cause confusion in the minds of the consumers within the meaning of Section 11(a) of the Act?
Ratio Decidendi: 1. The Court held that the Registrar had no jurisdiction under Section 56(2) of the Trade and Merchandise Marks Act, 1958, to make any order for rectification of the Register except on the grounds specified in the application for rectification by a "person aggrieved" and to the extent such rectification was prayed for. The Court relied on the plain language of Section 56(2) and the fact that the Registrar's power to rectify the Register under that provision was limited to cases where a "person aggrieved" had applied for rectification and had specified the grounds for such rectification. 2. The Court held that the Deputy Registrar was in error in his conclusion that the expression "Bull Dog" on the petitioner's mark was likely to deceive or create confusion within the meaning of Section 11(a) of the Act. The Court found that there was no evidence before the Deputy Registrar to show any such deception or confusion in the minds of the public in regard to the petitioner's bidis and that the Deputy Registrar had failed to consider the fact that the petitioner's bidis had been in the market for over 50 years and were known as "Bull Dog" bidis. 3. The Court held that the misdescription of the device was not such a misdescription that would deceive or cause confusion in the minds of the consumers within the meaning of Section 11(a) of the Act. The Court found that the device was clearly of a dog, but that the Deputy Registrar had erred in finding that it was a device of a particular type of dog. The Court also found that the consumers of the petitioner's bidis were not likely to be confused by the misdescription of the device.
Final Decision: The petition was allowed with costs and the cross-objections of the respondents were dismissed with costs. The Registrar was directed to bear his own costs both of the petition as well as the cross-objections.

Judgment

1. This is a petition by way of an appeal against the order passed by the Deputy Registrar of Trade Marks (Mr. M. L. Kapoor) on 8th July, 1960 to the effect that the Register of Trade Marks be rectified by deleting the word "Bull" from the caption "Bull Dog" appearing in Drvanagri characters in the Registered Proprietors mark, in an application for rectification filed by the respondents herein on 21st November. 1956 in respect of trade mark No. 131148 originally registered in the name of Kesharimal Pyarehand Porwal trading as Pyarchand Kesharial Porwal, Kamptee, District Nagpur. but at present standing in the name of the petitioner. This application for rectification was based on the grounds, that the respondents were proprietors of registered trade marks Nos. 504 and 132940, that they were injured in their business and embarrassed by the registration of trade mark No. 131148, that the entry of Trade Mark No. 131148 in the Register had been made without sufficient cause, that the said entry wrongly remained on the Register, that the said trade mark was deceptive inasmuch as it bore the caption "Bull Dog" although the device contained therein was that of a lion and that the registration of the said Trade Mark No. 131148 offended against the provisions of Section 11 of the Trade and Merchandise Marks Act, 1958, and the relief that was claimed in the application was the removal of Trade Mark No. 131148 from the Register. In the statement ot case accompanying the application for rectification, it was stated that the respondents had actually opposed the registration of trade mark No. 131148 but "on account, of unavoidable circumstances the applicants (respondents) for rectification were unable to file evidence in support of the opposition and the opposition was consequently treated as abandoned and mark No. 131148 was registered."

2. The Petitioner by his counter-statement filed on 22nd February, 1957 resisted the respondents application for rectification and alleged that his application for registration of his trade mark No. 131148 was actually opposed by the respondents, that he had filed his counter-statement in that opposition, that the respondents had failed, to lead evidence in support of their said opposition and had ultimately informed the Registrar that they did not desire to file any evidence, that subsequently, the respondents of their own accord had withdrawn their opposition and thereupon trade mark No. 131148 was duly registered, that the registered proprietor of that mark had been using the said mark ever since 1910 and had built up a vast trade and reputation and that his trade mart had been rightly registered. The petitioner denied that the device in his registered mark was not that of a "Bull Dog" or that it was a device of a lion and asserted that his trade mark did not offend against the provisions of Section 11 of the Trade and Merchandise Marks Act, 1958 as alleged. He also contended that the respondents had acquiesced in the registration and use of his mark and were accordingly estopped by their conduct from proceeding with their application for rectification.

3. In support of the application for rectification an affidavit dated 23rd May, 1957 of Desaibhai Laldas who happens to be the manager of the respondent firm was filed in course of which it was inter alia stated that the respondents were proprietors of trade marks Nos. 504 and 132940 both registered in Class 34 in respect of bidis, that trade mark No. 504 consisted of a label containing the device of a lion as its essential feature, that the respondents had been using their aforesaid marks for more than past 30 years and that the bidis of the respondent firm bearing their aforesaid marks were known as "Sher Chhap Bidis". In the said affidavit it was admitted that the respondents had opposed the registration of trade mark No. 131148 of the registered proprietor but that they were unable to file evidence in support of the opposition and consequently

Click Here to Read the rest of this document