Abdul Caffor Et Al. V. Ahamed Et Al.,

1942 Present: Hearne and Jayetileke JJ.

ABDUL CAFFOR et al v. AHAMED et al.

10-D. C. (Inty) Colombo, No.8 (Misc).

Trade Mark-Application for registration opposed-Grounds of opposition Refusal by Registrar on ground not taken-Appeal to District Court Failure to obtain leave to take new ground-Trade Marks ordinance (Cap. 121), s. 12 (8).

In an application for the registration of a trade mark, it is within the discretion of the Registrar acting on material that has been disclosed before him to refuse registration of a trade mark if, on such material, another ground of opposition could properly have been taken by those who opposed the registration.

In the event of an appeal to the District Court the Judge of that Court is entitled to examine only the gr6unds of opposition originally taken by the opponents unless at the instance of the Registrar or the opponents leave is obtained to argue the appeal before the District Court on a ground which was not included in the grounds of opposition on which the Registrar was originally invited to refuse the application.

APPEAL from an order of the District Judge of Colombo.

This was an application for the registration of a trade mark by the appellants, Rahaman Bros., which was successfully opposed by the respondents. The appellants and the respondents, who are traders in Colombo, had for some time been importing Chinaware manufactured by the Societe Ceramique, which marked its goods with the figure of a lion. In 1934, the appellants devised Ii mark of their own. The main

feature of which was a lion which they applied to their goods, although the lion mark was not pictorially identical with the lion mark on the goods of the Societe Ceramique. In 1938, the appellants applied for the registration of their trade mark. The respondents opposed the application on the grounds (1) that the applicants were not the proprietors of the trade mark, (2) that they had used a similar trade mark since May, 1938, and (3) that the use of the mark by the appellants was calculated, to deceive the public.

The registrar held that the appellant was not the proprietor of the mark which they had applied to register on the ground that it so closely resembled the mark of the Societe Ceramique as to be calculated to deceive. On appeal, the District Court affirmed the decision of the Registrar. .

H. V., Perera, K.C. (with him S. J. V. Chelvanayagam), for the applicants, appellants.-The Registrar refused to register the trade mark of the applicants on the ground that it so closely resembled the mark of a Dutch Company, Societe Ceramique, as to be calculated to deceive. It was not a ground of opposition taken in the opponent's notice of objections. It was merely pleaded as evidence in support of their main objections. In the opponent's main grounds of opposition their own mark is in question and not that of the Societe Ceramique, whose mark, it should be noted, is not registered in Ceylon.

In regard to the objections actually taken by the opponent, there is no evidence to support them. In regard to the new ground of opposition it should not have 'been upheld by the Registrar, because it was not raised within the statutory period of two months laid down in rule '44 of the made Marks Ordinance (Subsidiary Legislation, Vol. II., p. 25).

[JAYETILEKE .J.-Under section 9 of the Trade, Marks Ordinance (Cap. 121), has not the Registrar first to satisfy himself that the interests of the public are protected ?]

Section 9 has to be read, subject to later sections, e.g., sections 10, 12 (8) and 17. The objection that a mark' is calculated to deceive has to be specifically pleaded. As regards the stage at which objections may be raised, the case reported in 26 R. P. C. is of assistance.

Assuming that the Registrar was entitled to take cognizance of a new ground of opposition, leave of court should have been obtained to take it at the

Click Here to Read the rest of this document