Kumaravel Nadar, V. Et Al V. Sokkalal

1939 Present: Soertsz A.C.J. and Wijeyewardene J.

KUMARAVEL NADAR et al., Appellants, and SOKKALAL RAM,
Respondent.

116- D. C. Colombo, 6,138.

Trade Marks-Action for infringement by proprietor of trade mark-Prior user of similar trade mark by defendant- Honest concurrent user also-Effect of ?Trade Marks Ordinance (Cap.121), ss. 40,19.

The proprietor of a registered mark is not entitled to prevent the user of a similar trade mark by a person who has had continuous user of it from an anterior date within the meaning of section 40 of the Trademarks Ordinance. Nor can he oppose its registration by the other person where there has been honest concurrent user within the meaning of section 19 of the Ordinance.

APPEAL from a judgment of the District Court of Colombo. The plaintiff filed this action against the defendants in November,1936, alleging that the defendants had infringed two trade marks (P 1and P 2) registered by him in 1930 and 1934 in respect of beedies and passed off beedies of the plaintiff?s manufacture as and for the plaintiff?s beedies. The defendants filed answer pleading prior user and honest concurrent user, under sections 40 and 19 of the Trade Marks Ordinance (Cap. 121). According to the facts as found by the Supreme Court the  plaintiff?s and the defendants marks resembled each other, but the defendants had registered their mark (D1) in Madras in 1915 and used continuously in Ceylon the device on the trade mark D1 from January, 1916, whereas the plaintiff had no used of the devices on P1 and P2 prior to that date. It was also found that the defendants mark had been in circulation side by side with the plaintiff?s mark for a long time,  when the plaintiff went and registered his mark under the Ceylon Trade marks Ordinance.

              H. V. Perera, K.C. (with him N. K . Choksy and C.C Rasa-Ratnam) for the defendants, appellants.

            R. L. Pereira, K. C.( with him S. Aiyar and V. A. Kandiah), for the Plaintiff, respondent.

Cur. adv. vult.

June 19, 1939. SOERTSZ A. D. J.-
   
I have had the advantage of reading the judgment prepared by my brother Wijeyewardene, and I agree with the conclusions to which he has come and the order he proposes. A separate judgment seems hardly necessary, but as we are reversing the trial judge on what are, after all, questions of fact, I thought I should state briefly my reasons for taking views different from his.

The learned Judge tried this case with great care and patience, and he has in a very full judgment given his reasons for holding as he did, but I  find that he has misdirected himself on several matters of importance. for instance, if he has not overlooked entirely, he has, at least, failed to give due weight to the indisputable fact that the defendants registered their mark as far back as 1915 in the book kept by the Chamber of Commerce in Madras. That mark is identical with D1 save for the  fact that the letter press on it is in the Maharatti language, while in D1 it is partly in Maharatti and partly in Tamil. It is true that in some parts of his judgment the trial Judge refers to this registration by the  defendants in 1915, but when he comes to assess the value of the Indian registrations, this is what he says: ?for the purpose of a decision of the  matters in dispute between the parties as regards registration in Ceylon, the existence of the registration by the defendants of their portrait label with any chamber of commerce in Madras or Calcutta does not, therefore,

give them any legal rights except affording evidence of user as claimed by them. As regards the registration with the chamber of commerce, the evidence is that the defendants registered their trade mark with the  Chamber of Commerce in Calcutta in 1925,and that the plaintiff registered his label in Madras at an anterior date in 1917?.

This, in my view, is a serious mistake of fact. It pays no at

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