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HIGH COURT OF CALCUTTA
A. N. Ray
THE SINGER MANUFACTURING CO. - Appellant
Versus
THE REGISTRAR OF TRADE MARKS - Respondent
Appeal 11 Of 1963
Decided On : AUGUST 24, 1964
TRADEMARK - REGISTRATION - DISTINGUISHABILITY - COMMON NAME - SURNAME - LIKELIHOOD OF CONFUSION - SECTION 9 OF THE TRADE AND MERCHANDISE MARKS ACT, 1958.
Fact of the Case:
The appellant, Singer Manufacturing Company, appealed against the decision of the Deputy Registrar of Trade Marks, Calcutta, which allowed the registration of the trademark 'Sagar' for sewing machines in favor of the respondent, Vidya Sagar Trading as Paul Brothers. The appellant contended that 'Sagar' was a common name and surname and, therefore, not registrable without evidence of distinctiveness, that there was confusion between 'Sagar' and 'Singer,' and that the order should not have been made because the respondents were guilty of inaccurate statements.
Finding of the Court:
The court found that the word 'Sagar' was primarily an ordinary word in the vernacular languages meaning 'sea' or 'ocean' and that it was not a common name or surname. The court also found that there was no evidence of confusion between 'Sagar' and 'Singer' and that the respondents were not guilty of inaccurate statements.
Issues: 1. Whether the word 'Sagar' was a common name or surname and, therefore, not registrable without evidence of distinctiveness. 2. Whether there was confusion between 'Sagar' and 'Singer.' 3. Whether the order should have been made because the respondents were guilty of inaccurate statements.
Ratio Decidendi: 1. The court held that the word 'Sagar' was not a common name or surname and, therefore, it was registrable without evidence of distinctiveness. The court relied on the fact that there was no evidence that 'Sagar' was a surname or a proper name and that the word 'Sagar' was primarily an ordinary word in the vernacular languages meaning 'sea' or 'ocean.' 2. The court held that there was no evidence of confusion between 'Sagar' and 'Singer.' The court relied on the fact that the purchasers of sewing machines were not ignorant or illiterate persons, that they were usually skilled and observant persons, and that sewing machines were purchased with deliberation by a knowing class of persons who looked to their purchase as a long-living investment for long service. 3. The court held that the order should have been made because the respondents were not guilty of inaccurate statements. The court relied on the fact that the appellant had not raised the issue of inaccurate statements before the Deputy Registrar and that there was no evidence to support the appellant's contention.
Final Decision: The appeal was dismissed with costs.
( 1 ) THIS is an appeal from the decision and order of the Deputy Registrar of Trade Marks, Calcutta, dated October 23, 1962. The appellant is the Singer Manufacturing Company. The decision of the Deputy Registrar of Trade Marks is that designation of goods in Application No. 170032 for registration of a trademark consisting of a label containing the word 'sagar' in the form of Class 7 in respect of Sewing Machines and parts thereof be limited to 'sewing machines sold complete'.
( 2 ) ON July 11, 1955, Attorneys on the respondents made an application for registration of the Trade Mark Sagar is Class 7 in respect of Sewing Machines as appearing at page 1 of the Paper Book in the name of Vidya Sagar Trading as Paul Brothers, whose trade or business is 83, Lower Chitpur Road, Calcutta-7 by whom the said mark is used and who claims to be the proprietor thereof. The application was filed on July 19, 1955. On October 14, 1955 the Registrar of Trade Marks, Bombay, wrote to the said applicant's Attorneys that they should file an affidavit from the applicant as to the acquired distinctiveness in respect of the word 'sagar' which is surname as well as a personal name. On March 1, 1956 the affidavit was affirmed by Vidya Sagar along with exhibits Nos. 1 to 154. On February 19, 1957 the Singer Manufacturing Company delivered the grounds of opposition. On September 27, 1957 Vidya Sagar affirmed another affidavit stating the grounds tor the application. In that affidavit the grounds of opposition on behalf of the Singer Manufacturing Company were dealt with. On November 20, 1961 the Singer Manufacturing Company delivered further grounds of opposition. On 27th January, 1962 Paul Brothers filed another counterstatemen'.
( 3 ) AFFIDAVIT evidence was relied on by both parties at the hearing before the Deputy Registrar. The evidence in support of the application consisted of the affidavit of Vidya Sagar affirmed on August 17, 1959 with Exhibits A-1 to A-115, (Sic) B-1 to B-5 and C-1 to C-4 which are to be found at page 74 following of the Paper Book. The other affidavits in support of the application are to be found at page 82 following of the Paper Book. The affidavit evidence in support of the opposition consisted of the affidavit of Joseph Thompson and Exhibits A, B, C, D and E sworn on May 16, 1958 which are to be found at page 44 following and the other affidavits in support thereof are to be found at page 53 following of the Paper Book. There is further affidavit of Joseph Thompson sworn on December 19, 1959 which is to be found at page 167 of the Paper Book.
( 4 ) THE decision and order of the Deputy Registrar is impeached by counsel for the appellant on three grounds. First, that the word 'sagar' is a proper name and as such it cannot be registered without evidence of distinctiveness and that there is no distinctiveness in the word 'sagar' which is said by the appellant to be a proper name; secondly, that there is confusion between the name 'sagar' and the name of the appellant 'singer'; thirdly, that the order should not have been made because the respondents are guilty of inaccurate statements.
( 5 ) UNDER Section 9 of the Trade and Merchandise Marks Act, 1958 a trade mark shall pot be registered in Part A of the register unless it contains or consists of at least one of the essential particulars mentioned in sub-clauses thereof Sub-clause (d) is as follows:"one or more words having no direct reference to the character or quality of the goods and not being according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India. "sub-clauses (a), (b), (c) and (e) of Section 9 are not material for the purposes of the present appeal. Under Sub-section (2) of Section 9 it is stated that a name, signature or word, other than such as fall within the descriptions in Clauses (a), (b), (c) and (d) of Sub-section (1) shall no
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