The use of the word 'Scot' in relation to whisky made in India is inherently capable of causing confusion and deception, as it is evocative of 'Scotch Whisky', a well-known product of Scotland.

R. Jayasimha Babu, J. - This appeal is directed against the order of the Assistant Registrar of Trade Marks allowing the application filed by the Respondents 1 and 2 herein for rectification of the register by expunging the Trade Mark No. 273203 registered in the name of the appellant herein. The mark that has been registered was in Class 33 under No. 273203 consisting the words "Peter Scot". That mark had been registered with effect from 3-7-1971 in the name of the of the appellant herein. The application for rectification was filed on 17-4-1986 by the Respondent Nos. 1 and 2 herein namely (1) The Scotch Whisky Association and Johny Walker & Sons Limited, London. The application was on the ground that the trade mark offended Section 9 of the Trade and Merchandise Marks Act, 1958 as it was neither distinctive nor was capable of distinguishing the registered proprietor's goods; that the registration contravenes Section 11(a) of the Act as it contains the words 'Scot' which is likely to deceive or cause confusion and/or the said mark was and is disentitled to protection of the Court under Section 11(e) of the Act.

2. The trade mark 'Peter Scot' is used by the appellant for whisky manufactured by it. The second respondent is a manufacturer of Scotch Whisky in the United Kingdom. The first respondent is the Association of manufactures of Scotch Whisky, that Association being one whose principal object is to protect the interests of its members worldwide.

3. The Respondent Nos. 1 and 2 had also filed a civil suit against the appellant in the High Court of Judicature at Bombay alleging that the whisky sold by the appellant under name 'Peter Scot' has resulted in the passing off of the goods of the appellant as that of the manufacturer of Scotch Whisky in Scotland who are well known for the Scotch Whisky manufactured by them and which is universally known as Scotch Whisky. During the pendency of that suit, this present application for rectification of the register was filed on the grounds mentioned earlier.

4. In support of the application, the Respondent Nos. 1 and 2 filed affidavit of Oneian Glan Barclay of British Nationality and in house solicitor to the 1st respondent Association, as also 20 third party affidavit. It has been observed by the Assistant Registrar of Trade Marks in his order that though the appellant had taken several extensions of time for filling it's evidence, it did not do so and no material whatsoever was produced by the appellant before him. It may also be noted here that neither Barclay nor any of the depondents of the other affidavits was sought to be cross-examined by the appellant, before the Assistant Registrar, although under Section 99 of the Trade Marks Act, it was open to the Registrar to take oral evidence in lieu of or in addition to, such evidence by affidavit. The appellant did not choose to call upon the respondents to make available the deponents of the affidavits for cross-examination and the appellant did not cross-examine those depondents before the Assistant Registrar. The Assistant Registrar therefore proceeded to decide the matter on the basis of the affidavit filed by the respondents, after observing that unfortunately, there is absolutely no evidence whatever from the registered proprietors to assail or counteract or rebut that applicant's evidence. In the absence of any material or evidence in rebuttal, he had held that the evidence of the applicant before him stood unquestioned, unrebutted, unassailed and even unmitigated and he had no other go except to receive the voluminous affidavits and documentary evidence filed by the applicants on its face value.

5. One of the affidavits filed by the respondents before the Assistant Registrar was that of one Peter Jeffrey Warrenn. He has stated in his affidavit that he and his father were in the employment of the appellant therein, between 1965 and 1973; and that his father who was called Peter Warren and he were responsible for build