Abdul Cader V. The Madras Palayakat Company, Ltd.,

1933 Present: Garvin S.P.J. and Maartensz A.J.

ABDUL CADER v. THE MADRAS PALAYAKAT
COMPANY, LTD.

147-D. C. Colombo, 1,910.

Trade Mark-Application for registration-Opposed on the ground that it so nearly resembles another as to be calculated to deceive-Burden of proof-Test to be applied-Leading characteristics-Ordinance No. 25 of 1925, ss. 11 and 19.

Where an application for registration of a trade mark is opposed on the ground that the applicant's trade mark so nearly resembles the opponent's as to be calculated to deceive, and it is established that they resemble each other,-

Held, that the burden of proving that there is no reasonable probability of deception is on the applicant.

The question whether the two trade marks so nearly resemble each other as to be calculated to deceive must be determined by considering what is the leading characteristic of each and whether the main impression which would remain with any person seeing them at different times is the same.

APPEAL from a judgment of the District Judge of Colombo.

This was an application to register a trade mark consisting of a device, containing within it the initials " M. S. M. A." and the numerals and sign 60 X 60, under the provisions of the Trade Marks Ordinance, No. 15 of 1925.

The respondent company claiming to be the owner of trade mark No. 5,013 opposed the application on the grounds-

(a) that the mark propounded so nearly resembled mark No. 5,013 already on the register as to be calculated to deceive.

(b) the registration of the mark propounded would seriously interfere with the use by the opponents of their mark which they and their predecessors in title have lawfully used in Palayakat sarongs.

(c) that the goods on which the mark propounded is to be used are of such a nature that the mark as appearing on the said goods will be calculated to deceive.

The Registrar-General held that the application to register the trade mark should be allowed.

The opponent appealed to the District Judge, who allowed the appeal.

R. L. Pereira, K.C. (with him Tisseverasinghe and N. K. Choksy), for applicant, appellant.-The opponent cannot object to the mark propounded because it contains the figures " 60 X 60". That has been disclaimed in the opponent's registration. As they have no right to its exclusive use they cannot complain at its inclusion in our mark. Nor can our mark be said to be "calculated to deceive" because of the incorporation of that feature.

The applicant's affidavits prove that the propounded mark is known as the " mango mark". This is supported by the tapering to a point of the lines enclosing the letters and figures, at both ends of the enclosing lines.

The affidavits of the opponents clearly prove that the opponent's sarongs are known as " 60 X 60" sarongs, and they complain that if the applicants' mark is registered, the applicants sarongs will also come to be similarly called. This cannot be a ground for refusing registration of a trade mark in the absence of proof that fraud was intended to be committed. The finding of the Registrar is that there is no proof of an intention to defraud. In these circumstances registration cannot be refused on this ground. Moreover, as " 60 X 60" is not exclusively the mark of the opponents, they cannot oppose registration by reason of the inclusion of these figures even if the effect would be that the applicant's goods may also be called " 60 X 60" sarongs. The only substantial ground on which the opposition is based is this and so the opposition must fail.

Counsel referred to 24 N. L. R. 396; (1916) 2 A. C. referred to therein; Payton v. Snelling1[(1901) A. C. at 308.].

Hayley, K.C. (with him H. V. Perera and H. E. Garvin), for respondents.-The Registrar is entitled to take into consideration the fact that the opponent's goods are known as " 60 X 60 " sarongs even though they may have disclaimed rights to

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