Padma Khastgir, J.
1. This appeal has been filed under the Trade and Merchandise Marks Act, 1958 by Gopal Hossiery, a registered partnership firm. The petitioner started the business in 1936 as manufacturers and dealers of hosiery goods. The respondent No. 3, Om Prakash Mehaswari carries on business under the name and style of Joykali Hossiery as manufacturer of Banians at No. 17, Pagaia Patti, Calcutta. It is the petitioner's case that the word 'Gopal' is a leading feature in petitioner's trade name and other principal trade marks and through considerable expenses and labour and by various modes of publicity, the business transaction by the petitioner for the last four decades have increased considerably. The Gopal Hossiery Products are sold by the petitioner throughout India and abroad and the total turnover of the petitioner's is 60 lakhs of rupees per year. Hence it is the petitioner's case that the good will and reputation attached to the word 'Gopal' in hosiery trade is very valuable to the petitioner. The word Gopal has been registered under the Act bearing Registration Nos. 158, 690 and the word Gopal in combination with other words have also been registered in favour of the appellant.
2. The petitioner have also protected the integrity of its other trade marks by taking appropriate legal actions against unscrupulous and dishonest hossiery dealers who tried to imitate and/or pass off petitioner's products.
3. On the 9th June, 1975 the respondent No. 3 made an application before the Registrar of Trade Marks for registration of a Trade Mark label containing prominently in the centre the word 'shreegopal' in Bengali character in the said label. The goods in respect of which registration was sought for were hosiery goods and the respondent claimed that it has been using the said mark from April, 1962. The said application was advertised in the Trade Marks Journal subject to the disclaimer of the word 'Joykali', 'Shree' and 'Kalighat'. It is the petitioner's case that it has come to know for the first time about the use of the word Shreegopal from the said advertisement thereafter the petitioner duly lodged their opposition on the ground that this mark would be deceptively similar to the petitioner's well known registered Trade Mark 'Gopal' and because of the long established reputation associated with the petitioner's trade mark and trade name any use of the closely resembling subject trade mark would inevitably lead to confusion and deception to the unsuspecting members of the public. According to the petitioner, the use of the respondents of the said name with the knowledge of the petitioner's products and its reputation is a blatant dishonest conduct on the part of the respondent No. 3 who deliberately copied the petitioner's well known trade mark hence the respondent No. 3 was not entitled to get any registration thereof. The petitioner has also disputed the claim of the respondent No. 3 of the user of such trade mark since the year of 1962, us palpably false and exaggerated. The petitioner relied on the provision of Sections 9(4), 11(A), (E), 12(1) and 18(1) of the Act and strongly opposed the registration on the ground that such application was tainted with fraud, on the contrary the respondent's case is that he honestly adopted the said trade mark and has been using it since the year of 1962. Hence on the ground of honest concurrent user under Section 12, Sub-section (3) of the Act the respondent should get registration. It has also been stated by the respondent No. 3 that the word 'Gopal' has been used as a component feature in other trade marks by various other hosiery traders and relied on some affidavits tiled in support of the respondent's claim. The appellant relied on various documentary evidence i.e. Auditor's Certificate. Advertisement cuttings. Bills for advertisement publicity literatures, original order for goods and various record of court proceedings. Although the respondent No. 3 relied on Books of Accounts but the appellant herein has challenged the entries contained therein on various grounds. So far the supporting affidavits are concerned the affidavit of Bulaki Das does not contain any address, the affidavits of other three deponents do not contain full address.
4. Mr. Arun Dutta appeared in support of this application with Mr. Nirmal Roychowdhury, Barrister-at-law. The first submission of Mr. Dutta on behalf of the appellant is that the Registrar did not serve any notice on the appellant. Secondly Mr. Dutta submitted that the affidavits relied on by the applicant before the Registrar are devoid of particulars and also some of the affidavits do not give the addresses of the deponents. Hence in the absence of the material particulars as also the addresses it was not possible for the appellant to verify the statements contained therein. The finding of the Registrar of honest and concurrent user by the applicant for 13 years have not been established by cogent evidence. No satisfactory evidence whatsoever has been given by the applicant before the Registrar as to why this particular name has been chosen. The onus was on the applicant to establish that the proposed mark for registration was not deceptively similar. Mr. Dutta strongly relied on Rule 54 framed under the Trade and Merchandise Marks Act and submitted that no copies of the affidavits have been delivered to the appellant. The case of honest and concurrent user has not been established. Hence the exercise of power under Section 12(3) is improper. Mr. Dutta submitted that the only consideration which swayed the mind of the Registrar was the subsistence of the applicant's mark for 13 years without interference from the vigilant opponent. According to Mr. Dutta no case of honest user has been made out by the applicant. The only ground on which such discretion has been exercised by the learned Registrar is continuous user. Apart from the said consideration no other consideration is there on which the Registrar's decision can be upheld. Mr. Dutta submitted that it is the bounden duty of the Court to protect the interest of the public at large even and in spite of any hardship or inconvenience that may be caused to one party if the trade mark is not registered. According to Mr. Dutta the resemblance of the two marks are similar visually and phonetically. Applying all the tests of identity it would appear in this particular case that both the marks are visually and phonetically identical. Considering that the general buyers of this goods are the ordinary public the Registrar should not have allowed the registration of the said mark. As the mark of the applicant is deceptively similar the applicant should not have been allowed to fake advantage of the reputation and in spite of the finding of the Registrar that there is a likelihood of confusion and deception the Registrar has allowed the registration which according to Mr. Dutta is patently wrong. Under Section 11, Sub-section (a) a mark should not be registered the use of which would likely to be deceptive or cause confusion. Under Section 12, Sub-section (1) save as provided in Sub-section (3) no trade mark was to be registered in respect of any goods or description of goods which is identical or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods, Hence once having found that the goods of the applicant may cause confusion the Registrar should not have allowed the registration of the same. According to Mr. Dutta evidence of the applicant does not prove honest and concurrent user. Mr. Dutta relied on the cases , , 83 Cal WN 288 and Kerli on Trade Mark 10 Edn., para, 10-80.
5. Mr. Bhaskar Gupta with Mr. Ranjit Mitter appeared on behalf of the respondents and submitted that Section 11, Sub-section (a) is subject to Section 12, Sub-section (3) which provides that in case of honest concurrent use or of other special circumstances, which, in the opinion of the Registrar make it proper to do so he may permit the registration by more than one proprietor, the trade marks of which are identical or nearly resemble each other (whether any such mark is already registered or not) in respect of the same goods or description of goods subject to such conditions and limitations, if any, as the Registrar may think fit to impose. Hence the discretion is entirely with the Registrar, in case of honest concurrent use or other special circumstances. The Registrar can register a mark which are identical or nearly resemble each other. The discretion of the Registrar should not be lightly interfered with. In the case , it has been held by the
Division Bench of the High Court in the matter of London Rubber Co. Ltd. v. Durex Products that the opinion of the Registrar who is expressly laid to judge if the case of the honest concurrent use makes it proper to permit registration, of course the opinion of the Registrar can be reversed in an appeal but the statute has made his opinion the first standard on the question unless that standard is obviously not discharged the High Court should hesitate on a disputed question of fact to take a contrary view on the ground merely that a different view is possible. That case further held that there is no express statutory emphasis that the use should be large and substantial. It is not necessary for the applicant's trade to be large than that of the opponent. The use has to be a business use. It has to be a commercial use. It is not possible to lay down any hard and fast rule on the volume of the use. It is possible in a case of a similar trader who with a very limited clientele honestly and regularly sold certain goods under the particular trade mark for a longer time although such use or sale may by comparison be extremely small compared to a very big international business dealing with similar goods with similar trade mark. If there is honest concurrent use the small trader is entitled to protection of his trade mark. The trade mark is a kind of property and is entitled to protection under the law, irrespective of its value in money so long it has some business or commercial value not merely the interest of the public but also the interest of the owner are the subject and concern of trade mark legislation.
6. On appeal in the said case the Supreme Court in
upheld the decision of the Division Bench and held that the question of volume of use is always a relevant question in considering the honest concurrent use under Section 10, Sub-section (2) it depends on the facts of each case. No hard and fast rule can be laid down regarding the volume of use for that purpose. Ordinarily it would be sufficient if it is shown and there was a commercial use of the mark. The trade mark is a kind of property is entitled to protection under the law irrespective of its value in money so long it has some business or commercial value. The Supreme Court further held that the question of discharging the burden of establishing that there was no reasonable probability of confusion cannot arise in a case of honest concurrent use.
7. It has been held in number of cases, that except where the Registrar has clearly gone wrong or as has been observed by Justice P. B. Mukharji the discretion of the Registrar should not be interfered with. More-over it would appear from the submission made by Mr. A. K. Dutta that no allegation has been made against the Registrar to the effect that the Registrar has applied wrong principles of law to the facts of this case. His finding of fact cannot be gone into by this court unless this court comes to the conclusion that in appreciation of evidence and in application of the principles of law the Registrar has obviously or clearly gone wrong. This Court should not interfere with the finding of the Registrar only on the ground that on proper appreciation of evidence this Court might have come to a different conclusion. Although Mr. Dutta has attacked the affidavit evidence adduced in support of the application for registration on the ground that they are devoid of particular and some of the affidavits do not contain even the addresses of the deponent but Mr. Dutta's client did not choose in their affidavit to challenge the facts stated therein on the ground that they are false or give particulars of clandestine sales. Moreover under the Rules Mr. Dutta's client was entitled to ask for particulars and or give interrogatories to his opponent, which his client has decided not to do so. Mr. Dutta strongly submitted that the books of account are irregular the evidence in support of the applicant's petition is unreliable and thus on facts by not duly appreciating and weighing the said factual aspects the Registrar has come to a wrong conclusion. This court should not interfere with the appreciation of evidence by the Registrar until and unless this court comes to the conclusion that there has been a wrong decision apparently on the face of the record. From the facts in this case it would not appear that the Registrar has not applied the correct test and the correct principles of law. At the initial hearing stage no notice is required to be given to the opponent only after the initial scrutiny at the second stage the Registrar gives notice and necessary orders for advertisements and thereupon notice of opposition are filed Under Rule 57 when affidavits are filed, exhibits shall be sent to the other parties at their request and expenses and/or if such copies or impressions cannot be conveniently furnished the originals shall be left with the Registrar in order that they may be open to inspection. In this particular case there is no evidence that the appellant before me applied for those copies at his own cost under Rule 57 the appellant was entitled to take inspection from the Registrar if so desired. Hence now the appellant cannot object and try to act aside the findings of the Registrar on the ground of non-service of the affidavits and for non-inspection of the same. It is not the case of the appellant before me that in spite of demands being made they have been deprived of the copies. Moreover it has dealt with those affidavits in his opposition. As indicated earlier identity of the mark is not enough while exercising the discretion under Section 12, Sub-section (3). The Registrar is entitled to take into consideration fully the use, bona fide use, years for which there has been use and so many other factors into consideration. The Registrar who is conversant with the trade is in a better position to assess the evidence tendered before him and come to a conclusion keeping in mind the well established principles of law in trade marks. The question whether a trade mark resembles another or not or it is likely to deceive or cause confusion to the public is a question of fact which has to be decided by the Registrar of trade mark and who usually come to decision on the basis of their own understanding of the matter. The Registrar before coming to the conclusion, has to take into consideration, the surrounding circumstances, both phonetic and visual resemblances, nature of the goods and all other relevant matters based on evidence. The Registrar has been given power under the statute to consider whether a trade mark should be registered or not and if such discretion is exercised properly by the Registrar the High Court should not interfere with such discretion unless it is satisfied that the Registrar has not applied the correct principles of law and the tests in coming to his conclusion. Mr. Dutta has challenged the finding of the Registrar not on the ground that the Registrar has failed to take into consideration that both the marks are identical and similar but his main attack is that there has been wrong appreciation of evidence by the Registrar. The statute has given power to the Registrar to register an article which are identical or nearly resemble each other on the ground of honest concurrent use and other special circumstances. The Registrar after appreciation of evidence has come to the conclusion that although the marks are similar but because of honest concurrent use the applicant was entitled to registration of its mark. Each case will have to be decided in the facts and circumstances of its own. Reference to other decisions are helpful for the purpose of finding out the principles of law and the test to be applied in coming to the conclusion that the marks are similar or identical and/or likely to deceive the general public, but the application of these principles will depend on the facts and circumstances of each case.
8. In the case T. G. Balaji Chettiar v.
Hindusthan Lever Ltd. it has been held:
"that it is obvious that the burden of proving that marks in respect of which the 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 application will have to be refused and that burden or onus become heavier still when the Assistant Registrar has exercised his discretion and come to the conclusion that the marks in question are deceptively similar or identical with the respondent's mark and the appellant's marks are sure to deceive or cause confusion. Unless the Registrar has gone clearly wrong in his perceptive approach his decision ought not to be lightly interfered with."
9. Hence this case also upholds the principle that unless the Registrar has clearly gone wrong in his approach his decision ought not to be lightly interfered with. Although Mr. Dutta has strongly submitted that the evidence before the Registrar was not sufficient this Court will not impose its own decision on the assessment of the facts by the Registrar in view of the fact that the Registrar in his approach of exercising his discretion has not gone wrong. In this particular case it would appear that Gopal Hossiery is not the only concern which is using the word 'Gopal'. From the affidavit filed by Om Prokash Maheswari it would appear that the word 'Gopal' has been registered not only by Gopal Hossiery but also the word 'Gopal' is registered by Madan Gopal Hossiery, 'Hari Gopal' by Babu Hossiery, 'Madan Gopal' by Madan Gopal Hossiery, 'Gopal Nabin' by S. K. Industries. Hence it would appear that in the past also registration has been effected by others apart from Gopal Hossiery over the word 'Gopal'. In this case it will not appear that the copies of documents and affidavits referred to in evidence were not given to the opponent in spite their complaint or that Rule 54 was not complied with. In this case there is no evidence that the appellant Gopal Hossiery asked for such particulars and/or they were refused such particulars in spite of the demands being made. The Registrar has come to the finding that the applicant has been in concurrent use since 1962. In that particular case the learned Judge come to the conclusion that there had been complete lack of commercial honesty as required under Clause 12 (3) and the applicant in the conduct of the proceeding was guilty of over-reaching. There was suppression of material documents. Hence the appeal was allowed.
10. There can be no quarrel as to the principles as laid down in (Ciba Ltd. v. M. Ramalingam)
"It is true that the primary duty of the court is towards the public and to maintain the purity of the Register. The object of maintaining the trade mark register is that public should know whose goods they are buying and with whom particular goods are associated, It is essential therefore that the Register should not contain trade marks which are identical and which so closely resemble each other that an unwary purchaser may be likely to be deceived by thinking that he is buying the goods of a particular person or a particular firm or a particular industry whereas he is buying the goods of another person or firm or industry."
In the case , the Division Bench of this
High Court held that:
"The position clearly is that the Registrar in the first place and even when the matter comes to the Court, the court has to decide that itself quite apart from the evidence of cases of actual confusion or the opinions of experts as to the likelihood of confusion, as to the inherent probability of the confusion. In making a decision on this question the Registrar and the Court has to take into consideration all the surrounding circumstances the extent of one resemblance, visual or phonetic, the nature of the market of the goods, the character, education, the general mental equipment of the persons who are likely to purchase these goods and all other matters which are relevant."
11. In the case reported in 83 Cal WN 288 it has also been observed by the learned Judge that concurrent user need not always depend upon the volume of user but the user must be honest, the user must be concurrent, user must be from a commercial point of view.
12. The applicant has been in trade for 13 years, the sales started in 1964 with 35,000 turnover which went up to Rupees 5 lacs in 1975. The Registrar came to the definite finding that the figures had been substantiated by documentary evidence before the Registrar. The Registrar found no reason to dispute such particulars. The long use for 13 years in the market without any interference by the vigilant opponent who in fact have taken steps against other traders who tried to pirate its goods is a relevant factor which weighed in the mind of the Registrar in coming to the conclusion whether there was honest and concurrent use. The Registrar has come to a definite finding that there is no danger or likelihood of affecting public and purity of the Register. In his order the Registrar has set out the tests that he has applied in coming to the conclusion. Although the Registrar has found that the goods are similar and the mark of one resembles the other but the Registrar has also come to the conclusion that there has been honest and concurrent use by the applicant. No grounds have been made out to interfere with the discretion exercised by the Registrar.
13. Hence I am of the view that this appeal should not be allowed. Hence I dismiss this appeal with costs.