The Court held that the applicant was entitled to the mark as an Importers Mark.

Headnote:
TRADE MARK - [KEYWORD] - [SUBJECT] - [ACT SECTION LIST] - [SUMMARY]
Fact of the Case:

The applicant, Parmanand Teckchand Lalwani, carrying on business under the name and style of Lalwani Brothers, filed an application for registration of the word ""Caltex"" per Se in respect of Class 14, but confined to ""Horological and other Chronometric instruments and parts there-of"" included in Class 14. The opponents, Caltex (India) Limited, filed their opposition in the matter of the said application. The Opponents contended that they were proprietors of the said mark in Class 4 and Class 19; that they had used that mark in India in respect of their goods since the year 1937; that they had carried on wide publicity; and that, therefore, the applicants proposed trade mark being identical with their own was likely to deceive or cause confusion in the trade. The opponents further contended that in any event the registration should be refused in the exercise of the discretion available in law whether the mark should be refused or not.
Finding of the Court:

The Deputy Registrar held that the opponents marks had acquired a reputation in connection with the goods for which they had been used and were on the Register. He further held that an opportunity had been given to the opponents to file an affidavit in rebuttal to the declaration of Degoumois, but they did not do so. There was no material lo doubt the statements contained in said declaration and that he accepted the same, and was thereupon satisfied that the mark applied for by the applicant was an Importers mark, and that the applicant was the owner thereof by selection in so far as India was concerned. He further held that the competing marks were identical but the competing goods were entirely different in character. He further held that there was no connection in the course of the trade between the competing goods as they were never sold at the same shop. He further held that the trade channels through which the respective goods passed were entirely different, and that, as a matter of fact, the opponents goods were exclusively available only at their own service stations or agencies where even similar goods of another trader were not permitted to be sold, much less the goods of others of a different character as those of the applicant in respect of which the mark was applied for a registration. He held that the reputation of the opponents was only in respect of the goods for which their marks were being used. He held that, therefore, despite the reputation of the opponents mark, the use of the applicants mark would not be likely to deceive within the meaning of Section 11 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as ""the Act""). The opponents had urged that the application had been actuated by dishonest intention and motive in selecting the mark, and that, therefore, the Registrar should exercise his discretion against registering the mark. The Deputy Registrar negatived that contention. He dismissed the opposition, the consequence whereof would be that the applicants mark would be registered.
Issues: 1. Whether there was any tangible danger of confusion between Caltex watches and Caltex petrol and various other oil products of the opponents? 2. Whether there was any dishonesty in the applicants adopting and introducing the trade mark ""Caltex"" in respect of watches in the Indian market? 3. Whether the learned Judge should have interfered in the exercise of the discretion by the Deputy Registrar in ordering the applicants mark to be registered? 4. Whether the applicant is the proprietor in his own right of the mark in India in respect of the watches? 5. Whether the applicant is entitled to the mark as an Importers Mark?
Ratio Decidendi: 1. The Court held that there was no tangible danger of confusion between Caltex watches and Caltex petrol and various other oil products of the opponents. 2. The Court held that there was dishonesty in the applicants adopting and introducing the trade mark ""Caltex"" in respect of watches in the Indian market. 3. The Court held that the learned Judge should have interfered in the exercise of the discretion by the Deputy Registrar in ordering the applicants mark to be registered. 4. The Court held that the applicant is the proprietor in his own right of the mark in India in respect of the watches. 5. The Court held that the applicant is entitled to the mark as an Importers Mark.
Final Decision: The Court allowed the appeal and the petition, set aside the order of the Deputy Registrar and declared that the opposition had succeeded, the necessary consequences whereof would be that the applicants application for registration would fail.

judgment -

Mody, J.

1. This appeal concerns a dispute over a Trade Mark. The Trade Mark is the word ""Caltex"" per Se.

2. One Parmanand Teckchand Lalwani, carrying on business under the name and style of Lalwani Brothers, filed an application for registration of the said Trade Mark in respect of Class 14, but confined to ""Horological and other Chronometric instruments and parts there-of"" included in Class 14. In the application, the applicant claimed to be proprietor of the mark on the ground that the mark bad been used since ""one and a half year."" On the 11th September 1958, Caltex (India) Limited filed their opposition in the matter of the said application. The Opponents contended that they were proprietors of the said mark in Class 4 and Class 19; that they had used that mark in India in respect of their goods since the year 1937; that they had carried on wide publicity; and that, therefore, the applicants proposed trade mark being identical with their own was likely to deceive or cause confusion in the trade. The opponents further contended that in any event the registration should be refused in the exercise of the discretion available in law whether the mark should be refused or not. On the 20th November 1958, the applicant filed his counterstatement. In the counterstatment, the applicant contended that there would be no confusion as the class of goods in which the mark would be registered would be different from the class of goods in respect of which the opponents were using the mark. The applicant further stated that the mark ""Caltex"" had since long been registered in Switzerland in the name of M/s. Degoumois and Co. for goods in class 14, and that the applicant had first adopted, introduced and used the mark on his goods in India since 1955.

3. After certain affidavits were filed by the parties, the matter of the said opposition reached hearing before the Deputy Registrar on 23rd October 1959. At that hearing, the applicants counsel raised a preliminary objection to the admissibility of the copies of certain affidavits which had been attached to other affidavits. The objection was upheld. As a consequence thereof, the Deputy Registrar allowed the opponents to file further evidence by way of affidavits in support of the opposition. Such affidavits were in fact filed by the opponents. Those affidavits consist of one affidavits by one Berry, an employee of the opponents and 36 affidavits by 36 other persons. All these 37 affidavits are on the point whether there was a tangible danger of confusion between the two marks. Under the leave given to him, the applicant also filed further affidavits in reply to the points raised by the said 37 affidavits. All these affidavits are of different dates in February 1960. One of them is of the applicant himself, four of his witnesses, and four of other persons.

4. The matter again reached hearing before the Deputy Registrar in June 1960. The opponents applied for leave to cross-examine the applicant in relation to his own affidavits filed by him. On that day the applicant was not available in Bombay. The opponents gave up their application for his cross-examination. The applicant applied for leave to cross-examine three of the opponents witnesses, who had made affidavits, namely, Berry, one B. M. Raipal and one L. N. Pujara. The application was granted. The three witnesses were cross-examined. The hearing proceeded thereafter. The Deputy Registrar Pointed out to the applicant the admission contained in paragraph 3 of his affidavit dated 22nd June 1959 to the effect that M/s. Degoumois and Co. were the owners of the trade mark for watches in Switzerland, and that the applicant had imported into India those watches from them. The applicant thereupon applied for an opportunity to produce evidence of his proprietorship of the mark applied for by him. The leave was granted. Thereafter the applicant filed declaration dated 24th August l 960 of one Jean V. Degoumois owner of the said firm of

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