( 1 ) THIS is an appeal under Section 109 of the Trade and Merchandise Marks Act of 1958.

( 2 ) THE appellant is the Imperial Tobacco Co. of India Limited having its registered office at Virginia House, 37 Chowringhee, Calcutta. The respondents are the Registrar and Deputy Registrar of Trade Marks.

( 3 ) THE facts are briefly as follows: on 29. 2. 60, the appellant made the first application for registration of a trade mark before the Registrar applying for registration as a trade mark of a label bearing the device of snowdat hills in outline and the word 'simla' written prominently in various panels of the label. The specification of the goods in the application read as "manufactured tobacco. " This application was for registration of the trade mark in part 'a' of the Registrar in case 34. The application stated : "the said trade mark is proposed to be used. " The point is that on 21. 2. 60 there was no use of the said trade mark and it was only proposed to be used at that point of time. By his letter dated 9. 12. 60, the Registrar of Trade Marks informed the appellant as follows: "word 'simla' which forms the essential and distinguishing feature of the mark is a famous geographical name and is not registrable except on very strong evidence of distinctiveness. No such evidence is possible as the mark is proposed to be used. You should therefore show cause why the application should not be refused.

( 4 ) THE appellant replied to this show cause notice on 8. 2. 61 pleading that since the filing of their application for registration, the appellant had used "simla" trade marks continuously and extensively throughout India having sold 6,98,94000 cigarettes under the trade mark "simla" throughout their branches of Calcutta, Gouhati, Patna, Kanpur, Jabalpur, Visakhapatnam, Madras and Coimbatore during the period April 1960 to December 1960 and that the appellant has also incurred advertisement expenses to the extent of Rs. 3,74,749/- during that period for popularising Simla cigarettes. It was the plea of the appellant in that letter of 8. 2. 61 that Simla Trade Mark had required distinctiveness by continuous and extensive user and that the word "simla" connoted and denoted goods manufactured and sold by the appellant.

( 5 ) IN answer to this plea, the Registrar of Trade Marks replied on 27. 2. 61 stating that in order to be registrable, the mark should have acquired distinctiveness on the date of making the application for registration. Therefore, the distinctiveness acquired after the date of the application would not support the application and could not be considered for the purpose of registration. The Registrar by that letter also informed the appellant whether the appellant desired to withdraw the application or desired to have a hearing at Calcutta.

( 6 ) THEN followed a complete silence for more than two years. The appellant remained quiet until 17. 7. 63 when it represented that since the evidence of acquired distinctiveness could not be considered because it was acquired after the date of the application for registration, the appellant had no other alternative but to withdraw the previous application. But the Appellant stated that they were arranging to file a fresh application for registration of the Simla trade mark on the basis of the extensive user of the mark and acquired distinctiveness. The present application for registration of trade mark was the second one. It was filed on 17. 2. 63 before the Registrar. It was also on that date that the first application for registration was withdrawn. In other words, on 17. 7. 63 the Appellant was withdrawing their first application for registration and filing their second application for registration.

( 7 ) IN this second application for registered filed on 17. 7. 63, the Appellant wanted registration in Part A of the Register of the accompanying trade mark in Class 34 in respect of Manufactured Tobacco in the name of the Appellant. The grounds stated i