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HIGH COURT OF CALCUTTA
P. B. Mukharji
AKTIEBOLAGET JONKOPING VULCAN - Appellant
Versus
V. S. PALANICHAMY NADAR - Respondent
. Of .
Decided On : June 6, 1968
TRADE AND MERCHANDISE MARKS ACT, 1958 - SECTION 46(1)(B) - RECTIFICATION OF REGISTER - NON-USE OF REGISTERED TRADE MARK FOR STATUTORY PERIOD OF FIVE YEARS - SPECIAL CIRCUMSTANCES IN THE TRADE - IMPORT RESTRICTIONS AMOUNTING TO TOTAL PROHIBITION - INTENTION TO ABANDON OR NOT TO USE THE TRADE MARK - REGISTRATION OF IDENTICAL OR NEARLY RESEMBLING TRADE MARKS BY MORE THAN ONE PROPRIETOR - SECTION 12(3) - CONCURRENT REGISTRATION - CONDITIONS AND LIMITATIONS.
Fact of the Case:
The appellant, a Swedish Match Company, registered its trade mark 'Three Stars' in India in 1944. The respondent, Madras Match Company, started using a similar trade mark in 1951. In 1963, the Madras Match Company applied for registration of its trade mark and also served a notice on the appellant to desist from using its trade mark. The appellant filed an appeal against the decision of the Deputy Registrar of Trade Marks, who had allowed the application for rectification and expunged the appellant's trade mark from the Trade Marks Register.
Finding of the Court:
The court held that the appellant had not used its trade mark in India for the statutory period of five years and that there were no special circumstances in the trade that prevented it from doing so. The court also held that the appellant had the intention to abandon or not to use the trade mark, as evidenced by its failure to use the mark for such a long period of time and its failure to take any steps to protect its mark from infringement. The court further held that the Madras Match Company was entitled to concurrent registration of its trade mark under Section 12(3) of the Trade and Merchandise Marks Act, 1958, subject to certain conditions and limitations.
Issues: 1. Whether the appellant had used its trade mark in India for the statutory period of five years. 2. Whether there were any special circumstances in the trade that prevented the appellant from using its trade mark. 3. Whether the appellant had the intention to abandon or not to use the trade mark. 4. Whether the Madras Match Company was entitled to concurrent registration of its trade mark under Section 12(3) of the Trade and Merchandise Marks Act, 1958.
Ratio Decidendi: 1. The court held that the appellant had not used its trade mark in India for the statutory period of five years, as there was no evidence of any actual use of the mark in the Indian market. 2. The court held that there were no special circumstances in the trade that prevented the appellant from using its trade mark, as the appellant had chosen to register its mark at a time when there was a virtual prohibition on the import of foreign matches into India and had not taken any steps to use the mark in India for over 20 years. 3. The court held that the appellant had the intention to abandon or not to use the trade mark, as evidenced by its failure to use the mark for such a long period of time and its failure to take any steps to protect its mark from infringement. 4. The court held that the Madras Match Company was entitled to concurrent registration of its trade mark under Section 12(3) of the Trade and Merchandise Marks Act, 1958, subject to certain conditions and limitations, as the Madras Match Company had been using its mark for over 12 years and had a significant market share, while the appellant had not used its mark in India at all.
Final Decision: The court dismissed the appeal and allowed the Madras Match Company's trade mark to be registered concurrently with the appellant's trade mark, subject to certain conditions and limitations.
( 1 ) THIS is an appeal under Section 109 (2) of the Trade and Merchandise Marks Act, 1958, from the decision of the Deputy Registrar of Trade Marks dated the 22nd June 1966, allowing the application for rectification made by the respondent and expunging the appellant's trade mark No. 93017 in the Trade marks Register.
( 2 ) THE appellant is a Swedish Match Company of the name of Aktiebolaget Jonkoping Vulcan having its office in Sweden. The respondents are Gnanam Match Works of Sivakasi, Madras, along with the Registrar and Deputy Registrar of Trade Marks. For the sake of brevity I shall call the appellant as 'the Swedish Match Company' and the other respondent as 'the Madras Match Company'.
( 3 ) THE dispute is with regard to the use of a trade mark in respect of matches and match boxes. The impugned registration is that of the Swedish Match Company. It is a label containing the device of three stars in a row with the words "three Stars" on the top of the device of three stars. The registration was dated 24th February 1944 and has since been renewed. The mark of the madras Match Company is also a "three Stars" label which has been in actual use since 1951 in respect of safety matches.
( 4 ) THE present proceedings arose out of an application filed on the 5th September, 1963, by the Madras Match Company for rectification of the Register by expunging therefrom the entry relating to trade mark No. 93017 registered in Class 34 originally in the name of Jon-koping Och Vulcans Tandstickfabriksaktiebolag now changed into the appellant's name. In that application the respondent Madras Match Company claimed that they had been extensively using this trade mark of Three Stars on safety matches ever since 1951. The Madras Match Company also made an application for registration of their trade mark on the 4th June 1963. The close similarity between these two trade marks now the centre of dispute. The Swedish Match Company served the Madras Match Company with a notice dated the 8th August 1963 calling upon them to desist from using their "three Stars" label mark which was described as a colourable imitation of the Swedish Match Company's registered trade mark.
( 5 ) IN these proceedings the Madras Match Company are seeking the cancellation of registration of this trade mark of the Swedish Match Company on the ground, based on section 46 (1) (b) of the Trade and Merchandise Marks Act, 1958, that there had been no bona fide use of the registered trade mark by the Swedish Match Company for the statutory period of a continuous stretch of five or more years up to one month before the date of the application for rectification. On behalf of the registered proprietors of the trade mark, namely the Swedish Match Company, two points have been urged. The first is that the Madras Match Company is not a "person aggrieved" who can competently maintain an application for cancellation of the appellant's registered trade mark. The second is that the non-use of the registered trade mark of the Swedish Match Company during the material period was due to special circumstances in the trade. Those special circumstances are alleged to be import restrictions of foreign matches amounting to total prohibition, and not due to any intention on the part of the Swedish Match Company to abandon its trade mark. The defence of the Swedish Match Company is really based on provisions of Section 46 (3) of the Trade and Merchandise Marks Act, 1958.
( 6 ) I shall briefly dispose of the first point, namely the contention that the Madras Match Company is not a "person aggrieved" within the meaning of Section 46 (1) of the statute. The facts relevant for this purpose are briefly as follows:- The Madras Match Company has been in the trade with this trade mark of "three Stars" on their matches identical with the registered trade mark since the year 1951-52. The second fact is that the Swedish Match Company has served the Madras Match Company with a notice in
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