1965 Supreme(Mad) 110

Madras High Court
RAMAMURTI
T.G.Balaji Chettiar - Appellant
Versus
Hindustan Lever Ltd.Bombay - Respondent
Decided On : 03/26/1965

The burden of proving that the marks in respect of which registration is sought are entitled to go on the register is on the appellant and if there should be any doubt in the matter the applications will have to be refused, and that the burden or onus becomes heavier still when the Asst. Registrar has exercised his discretion and come to the conclusion that the marks in question are deceptively similar or identical with the respondents' marks and the appellant's marks are sure to deceive or cause confusion. Unless the Registrar has gone clearly wrong in his perspective of approach his decision ought not to be lightly interfered with.

Headnote:

TRADE AND MERCHANDISE MARKS ACT, 1958 - S. 11(a), 12(1), 12(3), 18 - REGISTRATION OF TRADE MARK - HONEST CONCURRENT USER - DECEPTIVE SIMILARITY - PROPRIETORSHIP OF TRADE MARK - BURDEN OF PROOF.

Fact of the Case:

The appellant, T.G. Balaji Chettiar, who is carrying on business in the manufacture and sale of soaps filed three applications for registration of a trade mark containing the word "surian", alleging that he has been carrying on the business in the manufacture and sale of soaps using this trade mark for a very long time, thereby implying that he is or has become the owner of proprietor of this trade mark and therefore entitled to registration. Application No. 149485 the second application was ordered to be registered and therefore we are not concerned with the same. Application No. 149486 was refused by the Bangalore Registry by the Ex-Officio Dy. Registrar, Bangalore on 23-8-1954 and Application No. 154321 was similarly rejected by the same officer on 27th July 1954. The appellant thereupon look the matter to the High Court of Mysore which by its judgment dated 4-12-1957 reversed the decision of the Deputy Registrar of Trade Marks, and directed him to dispose of the appellant's applications according to law and on merits, after the applications are duly advertised and after hearing oppositions, if any, to such registration. It is after this remand that the Asst. Registrar of Trade Marks, Madras, by his order dated 16-9-1960 rejected the two aforesaid applications of the applicant.

Finding of the Court:

The Court held that the appellant's application is liable to be dismissed in limine on the ground that he is not the proprietor of the trade mark within the meaning of S. 18. The Court also held that the use of the word Surian, the Tamil equivalent of 'Sun' is deceptively similar and sure to cause confusion and therefore registration will have to be refused on the ground that the use of the word Surian, the Tamil equivalent of 'Sun' is deceptively similar and sure to cause confusion. The Court further held that the appellant cannot claim registration on the basis of honest and concurrent user or other special circumstances within the meaning of S. 12 (3).

Issues: 1. Whether the applicant is the proprietor of the mark in question within the meaning of S. 18 of the Act? 2. Whether S. 11 (a) and S. 12 (1) operate as a bar to the registration of the appellant's marks ? 3. Whether the appellant is entitled to concurrent registration under S. 12 (3) of the Act.

Ratio Decidendi: 1. The burden of proving that the marks in respect of which registration is sought are entitled to go on the register is on the appellant and if there should be any doubt in the matter the applications will have to be refused, and that the burden or onus becomes heavier still when the Asst. Registrar has exercised his discretion and come to the conclusion that the marks in question are deceptively similar or identical with the respondents' marks and the appellant's marks are sure to deceive or cause confusion. Unless the Registrar has gone clearly wrong in his perspective of approach his decision ought not to be lightly interfered with. 2. A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles with the other mark as to be likely to deceive or cause confusion . In deciding this question it is sufficient to consider two registered trade marks of the respondents : (i) mark No. 87107 consisting of a label containing a device of the rising Sun and the legend 'Sun light' and (ii) Registered trade mark No. 147011 consisting of the word 'Sun' (solus). 3. The evidence adduced in this case regarding the applicant's concurrent user about duration, area and volume of trade is worthless. The appellant has given discrepant versions as to when he commenced using the trade marks in question. Further it is significant to notice that the trade marks which are sought to be registered are completely different from the trade marks which were originally mentioned at the time of the application in the years 1951-1952.

Final Decision: The appeal is dismissed with costs.