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PETITIONER: NATIONAL BELL CO. & ANR.

       Vs.

RESPONDENT: METAL GOODS MFG. CO. (P) LTD. & ANR.

DATE OF JUDGMENT: 18/03/1970

BENCH: SHELAT, J.M. BENCH: SHELAT, J.M. VAIDYIALINGAM, C.A.

CITATION:  1971 AIR  898            1971 SCR  (1)  70  1970 SCC  (1) 665  CITATOR INFO :  RF         1981 SC1786  (139)

ACT: Trade  and  Merchandise Marks Act (43 of  1958),  ss.  9(3), 11(a) and (e), 32(b) and (c) and 56--’Distinctive’,  meaning of--Numeral  as trade mark--’Aggrieved person, and  ’without sufficient  cause’  in  s.  56--Scope  of--’Disentitled   to protection’, meaning of--Abandonment of right in trade mark, when  inferred--Rectification  of  register--Discretion   of Court.

HEADNOTE: For a number of years prior to 1952 cycle bells manufactured by Lucas And other foreign concerns bearing the numbers ’50’ and  other numerals were in the Indian market.  After  1952, the  import  of  foreign bells was  prohibited,  and  though foreign made bells with the numerals ’50’ were being sold as late as 1958, the sales were from the stock remaining out of the earlier imports and were few and far between.  In  1953, the  respondent  company got registered two trade  marks  in respect of cycle bells being the numeral ’50’ and the figure ’Fifty’.   The  appellant companies were  manufacturers  and also  dealers  in cycle bells and were selling  their  cycle bells  with  the  numeral  ’50’  inscribed  on  them.    The respondent  therefore,  filed  suits in  1959,  against  the appellants,  alleging infringement of its trade  marks.   In 1961, the appellants applied for stay of trial of the  suits and  filed applications in the High Court for  rectification of  the  register  by  cancelling the  trade  marks  of  the respondent  under s. 56 of the Trade and  Merchandise  Marks Act,  1958.   A single Judge of the High Court,  refused  to expunge the trade mark ’Fifty’ but ordered the  cancellation of the trade mark ’50’.  In appeals to the Division Bench of the High Court, the order cancelling the trade mark ’50’ was set aside. In  appeals to this Court, it was contended that :  (1)  the trade  marks in question were common and not distinctive  at the  date of their registration as required by s. 9(3),  and therefore, ought never to have been registered; (2) that the numeral  ’50’  is not distinctive; (3) that the use  of  the trade  mark  was likely to deceive or  cause  confusion  and

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hence  the registration should be cancelled under  s.  32(b) and s. II (a); (4) that the respondent had imitated the  use of  the  marks  by Lucas and  other  foreign  concerns  that therefore  they would be disentitled to protection under  s. 11(e)  and hence the registration should be cancelled  under s.  32(h);  and (5) that the trade marks were  not,  at  the commencement  of  the proceedings,  distinctive  ’and  hence liable to be cancelled under s. 32(c). HELD : (1) Under s. 32(b) and (c) the original  registration of the trade mark has, after the expiration of 7 years  from the  date  of registration to be taken to be  valid  in  all respects including in rectification applications under s. 56 unless  it is proved : (1) the trade mark was registered  in contravention of the provisions of s. 11 or offends  against the   provisions  of  that  section  on  the  date  of   the commencement  of the proceeding or (2) that the  trade  mark was not, at the commencement of the proceedings  distinctive of  the goods of the registered proprietor.   Section  11(a) prohibits  the  registration of trade mark  which  would  be likely to deceive or cause confusion, and s. 11(e) prohibits the registration of trade marks if they were such that  they were  otherwise  disentitled  to  protection  in  a   court. Section 71 56(2)  confers a right on any person aggrieved by  an  entry made in the register without sufficient cause or by an entry wrongly remaining in the register, to apply for expunging or varying such an entry.  Since ’an aggrieved person’ includes a person who has, before registration, used the trade  mark, and  a person against whom an infringement action is  taken, and the words ’without sufficient cause’ relate to the  time of  original  registration,. the appellant could  apply  for cancellation  on the ground that the trade mark in  question was not distinctive within the meaning of s. 9(3). But in view of the language of s. 32, no contention could be raised  in  the present case, that the trade mark  ’50’  and ’Fifty’ were not distinctive under s. 9(3), that is, adapted to  distinguish  the cycle bells of the respondent,  at  the date of registration, as, seven years had elapsed since  the date of the Registration. [78 D-F; 79 B-H] Paine & Co. v. Doniells & Sons" Breweries Ltd. (1893) R.P.C. 217, 232, referred to. (2) It is not an inflexible rule that except in the case  of textile goods. a mark consisting of a numeral is necessarily not distinctive and is not registerable. [80 E] Kerly  on  Trade  Marks, 9th End. p.  284,  and  Reuiter  v. Hublens, (1954) Ch. 50, referred to. (3) Section 32(b) relates to facts existing both at the time of  and  after  registration.  If the mark at  the  time  of registration  was  likely to deceive or cause  confusion  or would  otherwise be disentitled to- protection of  a  court, and therefore, was, under s. 11 (a) and (e) prohibited  from being  registered,  the  rule as to  conclusiveness  of  the validity of the registration in s. 32 cannot be invoked  and that  would  also be so, if the trade mark at  the  date  of commencement  of  rectification proceedings was such  as  to offend against the provisions of s. 11. [80F-H] The sales of foreign bells with numeral ’50’ after 1953 were ’so few that they could hardly be considered as evidence for showing a likelihood of confusion or deception.  In fact the purchasers  used to call those bells, not by  the  numerals, but  by the manufacturers’ names.  As regards bells said  to have  been  manufactured by one of the  appellant  companies since 1947 and bearing the numeral ’50’, no evidence was led to  show  either the extent of manufacture or  sale  between

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1947-1953  or thereafter from which the High Court could  be asked  to  draw  any  inference  as  to  the  likelihood  of deception or confusion.  As against the voluminous sales  of the  respondent  for  the  years  1949-1962,  there  was  no corresponding   evidence   on  behalf  of   the   appellants indicating sales of their bells with number ’50’ from  which any  likelihood of confusion or deception could be  deduced. Therefore, s. 11(a) was not attracted.[816-C, G-H; 82 D-F] (4) The true construction of s. 11(e) is that even  assuming that  the trade marks in question were not  distinctive  and for that reason not registerable as not falling within s. 9, that  fact,  by  itself, would not  mean  that  they  became disentitled  to protection in a court.  That is, although  a mark  cannot be registered because it is not distinctive  as provided  by s. 9, such a mark is not for that  reason  only one,  the  registration  of which is prohibited  by  s.  11, because,  the  section  lays  down  positive  objection   to registration,  and not mere lack of qualification, by  using the words disentitled to protection.  Therefore, unless  the trade  ’mark  offends  the provisions of  s.  II,  that  is, offends  any of the matters in cls. (a) to (d) of s. 11,  or is disentitled to protection in a court under s. 11(e),  the rule 72 as  to  conclusiveness  of  the  validity  of   registration embodied in s. 32 -applies. In the present case, in fact, there was no evidence of any,- fraud having been committed by the respondent at the time of the  registration.   There  was  neither  averment  by   the appellants  nor evidence, that Lucas or any  ,other  foreign concern had obtained registration of trade marks of ’50’  or ’Fifty’.   ’nose concerns merely used various  numerals  for distinguishing one type of bell from another manufactured by them  and  there  was  no question  of  any  piracy  by  the respondent.   The  trade mark had also  be,come  distinctive with respective to the respondent. [82 F-H; 84 D-F] Imperial  Tobacco  Co. Ltd. v. De Pasquali & Co.  35  R.P.C. 186, referred to. (5) The principle underlying s. 32(c) is that property in  a trade mark exists so long as it continues to be  distinctive of the goods of the registered proprietor in the eyes of the public or a section of the public.  If the proprietor is not in a position to use the mark to distinguish his goods  from those  of others or has abandoned it or the mark has  become so  common in the market that it has ceased to  connect  him with  his  goods then there would be  no  justification  for retaining  the  mark on the register.  Under  s.  32(c)  the marks  have  to be distinctive at the ’commencement  of  the proceedings’,   that  is  the  proceedings  in   which   the conclusive   character   of   the’   Registration    arises. Therefore,  it may be the date when a suit for  infringement is filed by the proprietor of the trade mark or the date  on which  the rectification proceedings ;ire filed as a  result of  the suit.  Rights in a trade mark could be abandoned  by the  owner,  but  when  such abandonment  is  sought  to  be inferred   from   the  proprietors  neglect   to   challenge infringement  the character and extent of the trade  of  the infringers  and their position would have to be reckoned  in considering .whether the registered proprietor was barred by such neglect [84 F-H; 85 A-C, D-E] In  the present case, the progressive increase of the  sales of  the  respondent’s  bells from  1949  together  with  the evidence of witnesses of the respondent shows that the  said trade  marks distinguished the goods of the respondent  from those  of  other manufacturers.  Also, whether  the  crucial

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date is taken as 1959 or 1961, the date of suit or the  date of   rectification  proceedings,  the  evidence  on   record indicates  that  the  trade  marks  were  distinctive.   The respondent  has all along been zealously trying to  maintain its  right,  against  all  infringements.   There  were   no repeated breaches which went unchallenged by the  respondent when  known to the respondent.  Mere neglect in a few  cases to  proceed  did  not  necessarily  constitute  abandonment, because,  it was in respect of infringements which were  not sufficient to affect the distinctiveness of the mark.  There was no .evidence to show that the use by others of the  word ’Fifty’  or  the numeral ’50’ was substantial and  the  plea that  there  was common use of the trade  marks  must  fail. Therefore,  it  is  impossible  to  sustain  the  contention founded on s. 32(c). [86 A-E] Re.   Farina,  (1879) 27 W.R. 456 and Rowland  v.  Mitchell, (1897) 14 R.P.C. 37, applied. (6)  The power to rectify under s. 56 is  discretionary  and when  such  .discretion was properly exercised, a  court  of appeal would refuse to interfere.  But, in the present case, the  single Judge did not appreciate the principles of  ss., 11  and 32, and hence, the Division Bench was  justified  in setting aside his order. [86 F] 73

JUDGMENT: CIVIL  APPELLATE  JURISDICTION: Civil Appeal Nos.  1952  and 1953 of 1966. Appeals from the judgment and order dated February 25,  1965 of the Punjab High Court, Circuit Bench at Delhi in  Letters Patent  Appeals  Nos. 38-D and 42-D, and 39-D  and  43-D  of 1963. S. T. Desai and Naunit Lal, for the appellants (in both  the appeals). C. B. Agarwala, K. P. Gupta and R. C. Chadha, for respondent No. 1 (in both the appeals). The Judgment of the Court was delivered by Shelat,  J.  These  two  appeals,  under  certificate,   are directed  against the common judgment and order of the  High Court  of  Punjab, dated February 25, 1965, passed  in  four Letters Patent appeals filed by the two  appellant-companies and the respondent company against the judgment and order of a learned Single Judge of the High Court. The said appeals were the outcome of two applications  filed in the High Court under s. 111 of the Trade and  Merchandise Marks  Act;  XLIII of 1958 (referred to hereinafter  as  the Act)  for  rectification of the register in respect  of  two registered  Trade Marks, Nos. 161543 and 161544,  registered on November 20, 1953 in respect of cycle bells  manufactured by the respondent company.  Registered Trade Mark No. 161543 was  the  numeral  ’50’ and Trade Mark No.  161544  was  the figure ’Fifty’. The two appellant companies carry on business in  Kapurthala in Punjab, one of them the National Bell Co. Ltd. claimed to be  manufacturing bells with numerals ’33’, ’50’,  ’51’  and ’40’  inscribed on them since 1957, and the other M/s  Gupta Industrial Corporation since 1947 with numerals, ’20’,  ’50’ and  ’60’ inscribed on cycle bells manufactured by it.   The two applications for rectification arose out of suits  filed in  the  District Court, Lucknow by  the  respondent-company against  the  two  appellant  companies  on  the  ground  of infringement of its said registered trade marks, the numeral ’50’ and the figure ’Fifty’.  On April 24, 1961 the District

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Court stayed the said suits at the instance of the appellant companies giving them time for filing the said rectification applications in the High Court. The  grounds alleged in the applications were (1)  that  the numeral  ’50’ and the word ’Fifty’ were common to the  trade at the time of the original registration and were  therefore not distinctive of the bells manufactured by the respondent- company, Sup.  CI- 6 74 (2)that  many other manufacturers in the market  were  using the  numeral ’50’ and the word ’Fifty’ on or in relation  to cycle bells, and therefore, the distinctiveness of the  said marks   in  relation  to  the  bells  manufactured  by   the respondent-company,  if  any, had been lost,  (3)  that  the respondent-company  did  not get the registration  of  these marks with any bona fide intention of using them in relation to their cycle bells and that in fact there had been no bona fide use of the said trade marks in relation to their  goods before the date of the applications.  They also alleged that the respondent-company had fraudulently declared at the time of   registration   that  they  were  the   originators   or proprietors  of the said two marks ’50’ and  ’Fifty’.   Both sides  led  evidence,  oral  and  documentary,  the   latter including several price-lists from the possession of some of the dealers in cycle spare parts. The  learned Single Judge, who in the first  instance  tried the  applications, found on a consideration of the  evidence that  cycle bells with different numerals and in  particular the  numeral ’50’ were being sold in the market  before  the respondent-company put its cycle bells with the numeral ’50’ and  the figure ’Fifty’ inscribed on them in the market  and continued to be sold right upto 1952 when import of  foreign manufactured  cycle bells was prohibited, and  that  despite such  prohibition those cycle bells were being sold  in  the market  as  late as 1958, presumably from old  stocks  still lingering  in the market, though not from any  new  imported stock.   The learned Single Judge also found that there  was no  evidence  of  the  original  registration  having   been fraudulently obtained by the respondent-company, that  there was no averment by the appellant companies that Lucas or any other  concern had obtained registration of any mark  either of  the  numeral  ’50’  or  the  figure  ’Fifty’,  and  that therefore, cl. (a) of S. 32 did not apply.  He further found that cl. (b) of S. 32 also did not apply.  He held, however, that the trade mark, namely, the numeral ’50’ was not at the commencement of the proceedings distinctive of the goods  of the  respondent company as (a) numerals are prima facie  not distinctive   except  in  the  case  of  textile  goods   as recognised  by  Part HI of the Trade and  Merchandise  Marks Rules,  1959,  and  (b)  that the  numeral  ’50’  was  being commonly   used   by  several  dealers   and   manufacturers subsequent  to the registration thereof by  the  respondent- company, and that therefore, the registered trade mark,  the numeral  ’50’, was hit by cl. (c) of S. 32.  So far  as  the trade mark of the figure ’Fifty was concerned, he held  that there  was  no evidence that it was used  by  other  parties either  prior  to or after the registration thereof  by  the respondent-company  and in that view declined to rectify  or expunge  the trade mark ’Fifty’ as seven years  had  already elapsed  by  the  time the  rectification  proceedings  were launched  and  could not, therefore, be  challenged  on  the ground of absence of distinctiveness as laid down in s. 32. 75 The  learned  Single Judge, on the basis  of  his  aforesaid

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conclusions, cancelled the trade mark- No. 161543, i.e.,  of the numeral ’50’. In the appeals filed against the said judgment the  Division Bench of the High Court held (1) that though the use of  the numeral ’50’ in relation to cycle bells dated back at  least 30  years as in the case of Lucas and certain other  foreign concerns,  the  imports of such goods  stopped  from  ;about 1952, though some bells were being sold till 1958 presumably from the remaining previous stock, (2) that the numeral ’50’ in  connection  with  those foreign  made  bells  was  never intended as a trade mark but was used only as an  indication of  the type or quality, and (3) that statements Exs.   R-2, R-3  and R-4 produced by the respondent-company showed  that sales  of  its bells with the trade marks ’50’  and  ’Fifty’ inscribed on them had risen from the value of Rs. 19,644  in 1949-50  to Rs. 14.83 lacs in 1961-62.  The  Division  Bench agreed  with the Trial Judge that cl. (a) of s. 32  did  not apply as there was no question of the original  registration having  been  fraudulently procured in 1953.  It  also  held that  the  trade marks in question could  not  be  cancelled merely  on  the ground that if their registration  had  been opposed  they  would  not have  been  registered,  and  that therefore, the question for determination was whether it was liable to cancellation in view of s. 32(c), which lays  down that  the section would not apply in cases where  the  trade mark in question was not distinctive at the commencement  of the proceedings.  According to the Division Bench, the  word "commencement of proceedings" in cl. (c) of s. 32 meant  the commencement   of  the  infringement  suits  filed  by   the respondent-company as the proceedings for cancellation  were the off shoots arising from those suits, that therefore, the situation  in respect of s. 32(c) had to be assessed in  the light  of the state of affairs existing in 1959.   According to the Division Bench, the earliest use of the-mark ’50’  by any concern other than Lucas and other foreign manufacturers was  in  1953 by M/s Indian Union  Manufacturers  Ltd.   The respondent-company,  however, had filed a suit against  that company  in  1954  which  resulted  in  a  compromise  dated February 5, 1955 whereunder the said company recognised  the exclusive right of the respondent-company to the use of  the word%  ’Fifty’,  ’Thirty’ and the numerals  ’50’  and  ’30’, while  the  respondent-company recognised the right  of  the said company to the exclusive use of the words and  numerals ’Thirty one’, ’Forty one’ and ’Fifty one’ and ’31’, ’41’ and ’51’, that the respondent-company had also in 1956 similarly taken action against K. R. Berry & Co. of Jullundur for  use by  that company of the mark ’Five 50’.  The suit,  however, had  to  be  withdrawn  in  1958  on  account  of  lack   of jurisdiction  of the Banaras court where it was  filed  that though no fresh suit was 76 filed  against  that  company,  the  respondent-company  had opposed  an application by that company for registration  of the  mark  ’Five  Fifty’  before  the  Registrar  and   that application  was then pending in 1962, and lastly, that  the respondent-company  had filed in 1959 the two suits  against the  appellant  companies out of which  these  rectification proceedings  arose.   The Division Bench  held  that  though there  was some evidence of the use of the numeral  ’50’  by certain  other concerns after 1953, no importance  could  be attached to such breaches as there, was hardly any  evidence as  to  when the infringers started  manufacturing  and  the extent of their manufacture and sales, and that the  correct principle   applicable  in  such  cases  was  that   a   few unchallenged, scattered infringements by a number of traders

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did  not render a registered trade mark common.  As  regards the earlier use of the word ’Fifty’ and the numeral ’50’  by Lucas  and other foreign concerns, the Division  Bench  held that  they  were  not the registered trade  marks  of  those companies  and that those concerns had used those  marks  as merely  type  marks.   Though the idea  of  using  ’50’  and ’Fifty’ was not the original idea of the  respondent-company when it obtained registration in 1953, the foreign  concerns had  ceased  importing the goods and though sales  of  those bells  continued until 1958, such sales were from the  stock still  remaining  unsold.  Such sales could not  he  in  any appreciable bulk.  Even if the idea of using, the two  marks might have been conceived by the respondent-company from the marks used by Lucas and other foreign concerns, there was no question of any piracy or infringement of those marks as the respondent-company  was  the  first  to  convert  what  were originally type marks into registered trade marks.   Lastly, it  held  that  the  statements of  sales  produced  by  the respondent-company  demonstrated  that its  sales  had  been steadily increasing and that some concerns, finding the  use by  the  respondent-company of its marks  ’50’  and  ’Fifty’ highly  successful,  had  sought in  recent  years  to  take advantage of am popularity of the cycle bells of respondent- company by imitating its marks.  This fact, however,,  could not  mean  that either in 1959 when  the  respondent-company filed  the suits or in 1961 when  rectification  proceedings commenced,  the  marks  had ceased  to  be  .distinctive  in relation  to  the goods of the respondent-company  or  were, therefore,  liable to cancellation under s. 56 by reason  of cl.  (c) of s. 32.  Accordingly, the Division Bench  allowed the. respondent-company’s appeals and set aside the order of the learned Single Judge cancelling the registration of  its trade  mark  No. 161543 in respect of the numeral  ’50’  and dismissed the appeals of the appellant companies. Mr.  S. T. Desai for the appellant companies contended  that the two trade marks in question were liable to  cancellation on the grounds that (1) they were common and not distinctive at the 77 date  of their registration, and therefore, ought  never  to have  been  registered, (2) that in any event,  the  numeral ’50’  is prima facie not distinctive unless shown to  be  of such extensive use as to make it distinctive, (3) that there was clear evidence that the respondent-company had  imitated the use of these marks by Lucas and other manufacturers, and that   therefore,  these  marks  would  be  disentitled   to protection  in a court of law, and (4) that the  said  marks were   not,   at  the  commencement   of   the   proceedings distinctive,  that is, adapted to distinguish the  goods  of the  respondent-company.  Mr. Agarwala, on the other  hand,, argued  that,  (1) the two marks having been  registered  in 1953  and  seven  years since then  having  elapsed  at  the commencement of these proceedings, the question whether they were distinctive at the time of registration was not open to dispute,  (2) that that being so, there was no  question  of any alleged piracy by the respondent-company of the marks of Lucas and other concerns, and therefore, the marks could not be said to be disentitled to protection by a court, (3) that the marks had not lost their distinctiveness at the date  of these  proceedings  under  s. 56, and (4)  that  the  Letter Patent  Bench was, therefore, justified in dismissing  these proceedings by the appellant-companies. A  mark under s. 2(j) includes a word, letter or numeral  or any  combination there-of.  A trade mark, as difined  in  S. 2(v)  means in relation to Chapter X (i.e. for offences  and

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penalties provided in that chapter) a registered trade  mark or  a mark used in relation to the goods for the purpose  of indicating  or so as to indicate a connection in the  course of trade between the goods and some person having the  right as proprietor to use the mark, and in relation to the  other provisions of the Act a mark used or proposed to be used  in relation to the goods for the purpose of indicating or so as to indicate a connection in the course of trade between  the goods and some person having the right, either as proprietor or  as  registered  user, to use the  mark  and  includes  a certification  trade  mark  registered  as  such  under  the provisions of Chapter VIII.  Under s. 9, a trade mark is not registerable in Part A of the register unless it contains or consists  of  at  least one ,of  the  essential  particulars mentioned  therein.  One of these particulars in "any  other distinctive  mark".  Cl. (3) of S. 9 defines the  expression "distinctive" in relation to the goods in respect of which a trade mark is proposed to be registered, as meaning "adapted to distinguish goods with which the proprietor of the  trade mark  is  or may be connected in the course  of  trade  from goods  in  the  case of which no  such  connection  subsists either generally or, where the trade mark is proposed to  be registered subject to limitations, in relation to use within the  "tent  of the registration." In determining  whether  a trade mark is distinctive, regard is to be had whether it is inherently distinctive or is 78 inherently  capable of distinguishing and by reason  of  its use  or  any other circumstances it is in  fact  adapted  to distinguish or is capable of distinguishing the goods.  S. 1 1  prohibits  certain  trade marks  from  being  registered. These are marks the use of which would be likely to  deceive or cause confusion, or the use of which would be contrary to any law or which comprises or contains scandalous or obscene matters   or  any  matter  likely  to  hurt  the   religious susceptibilities of any class or section of the citizens, or "(e) which would otherwise be disentitled to protection in a court".   On  registration of a trade mark,  the  registered proprietor  gets under s. 28 the exclusive right to the  use of  such trade marks in relation to the goods in respect  of which  the trade mark is registered and to obtain relief  in respect  of any infringement of such trade mark.   Under  s. 31,  registration is prima facie evidence of  its  validity. The  object of the section is obviously to facilitate  proof of title by a plaintiff suing for infringement of his  trade mark.   He has only to produce the certificate of  registra- tion  of  his  trade  mark and that  would  be  prima  facie evidence  of  his title.  Such registration is  prima  facie evidence  also  in rectification applications under  s.  56, which  means that the onus of proof is on the person  making such application.  Being prima facie evidence, the  evidence afforded by the registration may be rebutted, but in view of s. 32 that can be done if seven years have not elapsed since the  original  registration.  Even where  such  rebuttal  is possible,  i.e., where seven years have not elapsed, and  it is  shown  that the mark in question  was  not  registerable under  s. 9 as no evidence of distinctiveness was  submitted to  the Registrar, the registration would not be invalid  if it  is  proved that the trade mark had been so used  by  the registered  proprietor or his predecessor-in-interest as  to have become distinctive at the date of registration. Sec.  32, with which we are immediately concerned, reads  as follows :               "Subject  to the provisions of section 35  and               section 46, in all legal proceedings  relating

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             to  a trade mark registered in Part A  of  the               register (including applications under section               56),  the original registration of  the  trade               mark  shall,  after the  expiration  of  seven               years  from the date of such registration,  be               taken to be valid in all respects unless it is               proved-               (a)   that  the  original   registration   was               obtained by fraud; or               (b)  that  the trade mark  was  registered  in               contravention of the provisions of section  11               or offends 79               against the provisions of that section on  the               date of commencement of the proceedings; or               (c)  that  the  trade mark  was  not,  at  the               commencement  of the proceedings,  distinctive               of the goods of the registered proprietor." We  are not concerned with cl. (a) as no such case was  even averred in the applications as pointed out both by the Trial Judge  and the Division Bench.  As regards cl. (b), it  will be at once noticed that the clause relates to facts existing both  at the time of and after registration.  If a  mark  at the  time  of registration was such that it  was  likely  to deceive  or cause confusion or its use would be contrary  to any  law or contained or consisted of scandalous or  obscene matters or matter likely to hurt religious  susceptibilities or  which would otherwise be disentitled to protection of  a court, and therefore, was under s. 1 1 prohibited from being registered,  cl.  (b)  would  apply,  and  the  rule  as  to conclusiveness of the validity of the registration cannot be invoked.   That would also be so, if the trade mark  at  the date of the rectification proceedings was such as to  offend against  the provisions of s. 11.  But, unlike cl. (b),  cl. (c)  relates  to facts which  are  post-registration  facts, existing at the date of the commencement of the proceedings. If  the  trade  mark  at such date  is  not  distinctive  in relation to the goods of the registered proprietor, the rule as  to  conclusiveness enunciated in s. 32 again  would  not apply.  It would seem that the word ’distinctive’ in cl. (c) is presumably used in the same sense in which it is  defined in  s.  9(3), as the definition of that  expression  therein commences with the words "for the purposes of this Act"  and not  the  words  "for the purposes  of  this  section,"  the intention  of the legislature, thus, being to  give  uniform meaning  to that expression all throughout the Act.   S.  56 deals  with the power to cancel or vary registration and  to rectify  the register.  Sub-s. 2 thereof confers a right  to any  person  "aggrieved" by an entry made  in  the  register without sufficient cause or by an entry wrongly remaining in the  register  to  apply to the tribunal  for  expunging  or varying  such an entry.  The expression  "aggrieved  person" has  received  liberal  construction  from  the  courts  and includes  a  person who has, before registration,  used  the trade  mark  in question as also a person  against  whom  an infringement action is taken or threatened by the registered proprietor  of  such  a  trade  mark.   The  words  "without sufficient  cause" in the section have clearly  relation  to the time of the original registration.  Therefore, a  person can apply for cancellation on the ground that the trade mark in  question was not at the date of the commencement of  the proceedings distinctive in the sense of s. 9(3).  The burden of  proof, however, in such a case is, as aforesaid, on  the applicant applying under s. 5 6. 80

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The  contention was that numerals, such as ’50’,  are  prima facie  not  considered distinctive and to  be,  registerable there must be evidence of extensive use.  The contention was sought  to  be  fortified by showing that  contrary  to  the practice in England, rules 139 and 140 of the Rules of  1959 permit numerals to be registered as trade marks only in  the case of textile goods.  But that is permitted on account  of a  long standing practice in that particular trade of  using numerals  with a view to distinguish goods of  a  particular manufacturer  or  a particular type or  quality.   It  will, however,  be  noticed that although in the  8th  edition  of Kerly on Trade Marks, page 135, it was stated that  numerals are  considered  to  be  prima  facie  not  distinctive  and registerable only upon proof of their extensive use, the 9th edition  of the same work does not reproduce  that  passage. On  the contrary, at p. 284, the learned editor states  that numerals  are  capable of registration and that  such  marks exist.   For this change the learned editor relies,  on  the registered trade mark, "4711" for eau-de-Cologne, which  was the subject-matter of dispute in Reuter v. Mutblens(1).   In that  case, however, no contention was raised as to  whether the trade mark consisting of a numeral could be  distinctive or  not  and the court, therefore, was not  called  upon  to decide  such  a  point.   But the  parties  appear  to  have proceeded  on the assumption that the numeral "471 1  "  was validly registered as a trade mark for that particular brand of   eau-de-Cologne   by  reason  of   its   having   gained distinctiveness by extensive use.  It is, therefore, not  an inflexible  rule  and that was also conceded by  Mr.  Desai, that  a  mark  consisting of a numeral  is  necessarily  not distinctive and is not registerable, except only in the case of textile goods, in spite of proof of extensive use. S. 32 in clear terms provides that the original registration of  a trade mark, after expiry of seven years from the  date of  its  registration  shall be taken to  be  valid  in  all respects  in all legal proceedings including those under  s. 56,  except  in  the three  categories  of  cases  mentioned therein.  It follows, therefore, that no objection that  the trade mark in question was not distinctive and therefore was not  registerable under s. 9 can be entertained if  such  an objection is raised after seven years have lapsed since  the date of its registration as in the present came, nor can  an objection  be entertained that no proof  of  distinctiveness was  adduced  or insisted upon at the time of  the  original registration.   This  is clear also from the fact  that  the three exceptions set out in s. 32 against conclusiveness  as to  the validity of the registration relate to,  (1)  fraud, (2)   contravention   of   s.  11,  and   (3)   absence   of distinctiveness  at the commencement of the  proceedings  in question   and  not  at  the  time  of   registration.    No contention, therefore, (1) [1954] Ch. 50. 81 can  be raised that the trade marks, ’50’ and ’Fifty’,  were not  distinctive,  i.e., adapted to  distinguish  the  cycle bells   of  the  respondent-company  at  the  date  of   the registration,  and  therefore,  were  not  registerable   as provided  by  s.  9 (cf.  Paine & Co. v.  Daniells  &  Sons’ Breweries Ltd.(1). But  the argument was that the appellant companies were  en- titled  to  show under cls. (b) and (c) in s. 32,  (1)  that these  marks were registered in contravention of S.  11,  or that they offended against the provisions of that section on the  date of the commencement of these proceedings, and  (2) that   they  were  not  distinctive  at  the  date  of   the

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commencement of these proceedings. S.11, as already noticed,, does not, as s. 9 does, lay  down the  requisites for registration, but lays down  prohibition against certain marks from being registered.  Cls. (b),  (c) and (d) of s. 1 1 obviously do not apply in the present case but reliance was placed on cls. (a) and (e), i.e., that  the use of these trade marks would be likely to deceive or cause confusion  and that they were such that they were  otherwise disentitled  to protection in a court.  The burden of  proof being on the appellant companies, the question is : has that burden been satisfactorily discharged ? The evidence  relied on  by  them  was  that of  dealers  in  cycle  spare  parts including  bells, certain price-lists produced through  them and the two representatives of the two appellant  companies. That  evidence,  no doubt, shows, (1) that for a  number  of years prior to 1952 bells manufactured by Lucas and  certain other  foreign concerns with various numerals such as  ’30’, ’50’  and  61’  inscribed either on the belts  or  on  their cartons  were in the market, (2) that even after 1952  bells with  inscriptions  thereon, such as "Berry  50",  "National 50",  manufactured by one of the appellant companies,  "Five 50",  "Padam 50", "Balco 50" etc. were sold in  the  market, (3) that Gupta Industrial Corporation, one of the  appellant companies, claimed to have started the manufacture of  bells since  1947, calling them "Gupta 50" and the  National  Bell Company  likewise  began  to  produce  bells,  calling  them "National 50" since 1957.  But both the learned Single Judge and the Division Bench clearly found, (1) that there was  no evidence   of  any  fraud  having  been  committed  by   the respondent-company at the time of the registration; (2) that there was no averment by the appellant companies, much  less any  evidence, that Lucas or any other foreign concerns  had obtained registration of trade, marks either of the  numeral ’50’  or  the  word ’Fifty’, that  the  indication,  on  the contrary,  was that those concerns used the different  nume- rals,  ’30’, ’61’, ’50’ etc. for distinguishing one type  of bell from the other manufactured by them; and (3) that about a year prior (1) [1893] R.P.C. 217, 232. 82 to  the registration of the trade marks in question in  1953 foreign   bells   were  prohibited  from   being   imported. Obviously, therefore, the evidence as to purchases and sales by  the dealers examined by the appellant companies  related to  bells  which had remained unsold from out of  the  stock earlier  imported.  As regards the bells called  "Gupta  50" said  to  have  been manufactured by one  of  the  appellant companies since 1947, no evidence was led to show either the extent  of  manufacture  or sale between 1947  and  1953  or thereafter from which the High Court could be asked to  draw any   inference  as  to  the  likelihood  of  deception   or confusion.  Though there was some evidence that foreign made bells  Such as Lucas "30", "50" and "61" were being sold  as late as 1958, such sales must have been few and far  between as  they could only be from the remaining stock out  of  the earlier  imports.  Such sales could hardly be considered  as evidence  showing a,likelihood of confusion or deception  as contemplated by s. 1 1 (a).  In fact, the evidence was  that purchasers  used to call those bells not by  their  numerals but  simply  as Lucas’ bells and those manufactured  by  the respondent company, as "Asia bells", and in some cases "Asia 50".   As  against the voluminous sales by  the  respondent- company  shown by the statements filed by it for  the  years 1949-50   to  1961-62,  there  was  no  such   corresponding evidence,-   indicating  the  sales  of  other  bells   with

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numerals,  such  as "50" inscribed on them  from  which  any likelihood  of  confusion  or deception  could  be  deduced. Regarding deception, there was indeed no evidence whatsoever in that regard.  There was no question of piracy also on the part of the respondent company as argued by counsel as there was nothing to show that Lucas or any other foreign concerns used this numeral except for distinguishing one type of bell from another manufactured by them.  In our view, cl. (a)  of s. 11, therefore, is clearly not attracted. The next question is whether the trade mark "50" or  "Fifty" is one which would otherwise be disentitled to protection in a  court as laid down in cl. (e) of s. 1 1 so as to  attract cl.  (b) of s. 32. While construing cl. (e) of S. II, it  is necessary  to repeat that it deals with prohibition and  not with requisites of registration.  Therefore, although a mark cannot  be  registered,  for instance,  because  it  is  not distinctive,  as  provided by S. 9, such a mark is  not  for that reason only one the registration of which is prohibited by  s.  1  1. The section lays down  positive  objection  to registration and not to mere lack of qualification.  This is clear  from  cl.  (e) of s. 11, which  uses  the  expression "disentitled  to  protection", and not the  expression  "not entitled  to  protection".   The  former  contemplates  some illegal or other disentitlement inherent in the mark itself. (see Kerly, 9th ed. 344). 83 In  Imperial Tobacco Co. Ltd. v. De Pasqualil &  Co.(1)  the appellant company was the proprietor of two trade marks con- sisting of "Regimental Cigarettes" and "Regimental Tobacco". The company brought an action for infringement of its  trade marks  and for passing off against the respondent  who  sold cigarettes  under the name of "Pasquali’s the  Regiment"  in packets  and  boxes decorated with regimental  crests.   The respondent moved to have the trade marks expunged contending that the word "Regimental" was only a laudatory adjective in on  use.  It was proved that for many years it had been  the practice of regiments to have their crests stamped on  their mess cigrettes which were known as "Regimental  Cigarettes". The  appellant  company, on the other hand,  contended  that under  s. 41 of the Trade Marks Act, 1905 (equivalent to  s. 32  of our Act) their trade mark could not be  expunged  and that  s.  1  1  (equivalent also to our  s.  11  )  read  in conjunction  with  s. 41 was not relevant  to  the  question whether  or  not a trade mark was registerable.   The  Trial Court held against the appellant company stating that if the appellant  company’s  contention was correct,  the  combined effect  of  ss.  1  1  and 41  would  be  to  perpetuate  as distinctive  a  trade  mark  that  was  incapable  of  being distinctive  and that such a contention was  erroneous.   On appeal,  the Court of Appeal reversed the judgment and  held that s. 11 was a qualification of s. 9, that ss. 1 1 and  41 must  be construed together, that the more fact that a  mark did  not comply with the requisites of s. 9 (i.e. not  being distinctive and therefore not registerable) did not bring it within s. II,  that the marks did not offend against  s.  11 and that under s. 41 their registration was valid.  At  page 203  of  the Report,Swinfen Eady, M.R. observed that  s.  11 contained a prohibition as to what it shall not be lawful to register  and it followed upon s. 9 which provided  for  the essentials  of  a  trade  mark.   S.  9  laid  down  what  a registerable trade mark must contain and unless it contained one  or the other requisites there set out, it was  not  re- gisterable  and it was only registerable trade  marks  which were  entitled to registration.  But even if a mark were  to fall within, S. 9, that alone was not necessarily sufficient

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to  entitle  it  to registration  because  it  might  offend against  s.  11.  S. 11, being a qualification of s.  9  and being  a  provision laying down a prohibition’, it  did  not contemplate  any enquiry on the question whether the,  trade mark complied with one or the other requisites enumerated in s. 9, e.g., whether it had the quality of being  distinctive or  not.  Dealing with s. 41, he observed that it  formed  a new  departure  in  dealing with trade  marks  and  differed widely from the earlier Acts.  The present section expressly enacted that the original registration shall, after a  lapse of seven years, be taken to ’be valid in all respects,  that is to say, whether the mark originally consisted of or (1) 35 R.P.C. 185. 84 contained  one  or the other essential proofs or  not,  that cannot be enquired into after the lapse of seven years.   It had to be taken to be valid in all respects and what had  to be taken to be valid in all respects was the registration of the trade mark unless it offended against the provisions  of s.  1  1.  That section was a prohibitive section  as  to  a matter which was disentitled to protection in a court,  that is, it was intended to exclude from registration what would, otherwise  be  included or covered under s. 9.  It  did  not extend   to  a  mark  disentitled  to   protection   because originally not containing one of the essential  particulars. It applied to a different set of circumstances such as  that its  use  was likely to deceive or confuse etc.   The  words "disentitled  to protection", he further observed, were  not equivalent  to "not entitled to protection", which  was  the expression  used in the earlier Acts.  In other words,  they did  not  mean  that  a  trade  mark  was  not  entitled  to protection  because  it ought not originally  to  have  been registered as a valid trade mark falling within s. 9. The construction of cl. (e) of s. 11 contended for on behalf of the appellant companies is, therefore, not correct.   The true construction of cl. (e) is that even assuming that  the trade  marks in question were not distinctive and  for  that reason  not  registerable as not falling within s.  9,  that fact  by itself would not mean that they became  disentitled to the protection in a court.  That being the true import of s. 1 1 (e), the rule as to conclusiveness of the validity of registration  embodied in s. 32 applies even to those  cases where if full facts had been ascertained at the time of  the registration  that registration would not have been  allowed provided  of  course  that it does not  offend  against  the provisions  of  s.11, i.e., by there being a  likelihood  of deception or confusion or     its bring contrary to any  law or containing obscene matter etc. or    which          would otherwise, i.e., in addition to the matters in cls.(a) to (d)  in  s.  1 1 be disentitled to protection  in  a  court. Conse  quently, the appellant companies cannot  bring  their case  for cancellation of the trade marks in question  under cl. (b) of s. 32. There  then  remains the question whether cl. (c) of  s.  32 applies,  i.e.,  that  the  trade  marks  were  not  at  the commencement of the proceedings distinctive of the goods  of the  respondent company.  The distinctiveness of  the  trade mark in relation to the goods of a registered proprietor  of such a trade mark may be lost in a variety of ways, e.g., by the  goods not being capable of being distinguished  as  the goods  of such a proprietor or by extensive piracy  so  that the  marks become publici juris.  The  principle  underlying cl. (c) of s. 32 is that the property in a trade mark exists so  long as it continues to be distinctive of the  goods  of the  registered  proprietor in the eyes of the public  or  a

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section  of  the  public.  If the proprietor  is  not  in  a position to use the mark to 85 distinguish his goods from those of others or has  abandoned it  or the mark has become so common in the market  that  it has ceased to connect him with his goods, there would hardly be  any justification in retaining it on the register.   The progressive increase in the sales of ’Asia Fifty’ and  ’Asia 50’  bells  from  1949-50  and  onwards  together  with  the evidence  of  witnesses examined by the  respondent  company shows  that the said trade marks distinguished the goods  of the respondent company from those of other manufacturers  in the field.  Under s. 32 (c) the marks have to be distinctive at  the commencement of the proceedings.  Prima  facie,  the expression "commencement of the proceedings" would mean  the commencement of proceedings in which the question as to  the conclusive character of the registration, as laid down in S. 32,  arises.   Such  a  question may arise  in  a  suit  for infringement  of  the  trade mark in  which  the  registered proprietor  may  rely  on s. 32 to prove his  title  to  the registered  trade mark as also in rectification  proceedings filed  as  a  result of such a suit or  otherwise,  and  the period of seven years would have to be calculated  according to the particular proceedings in which the conclusive nature of  the  validity  of registration is  relied  on.   In  the prevent case, whether the crucial date for the purpose of s. 32(c) is taken to be 1959 when the suits were filed or  1961 when  the  appellant companies took out  the.  rectification proceedings  it  makes no difference as it is  not  possible from  the evidence on record to say that the trade marks  in question  were  not or had ceased to  be  distinctive.   The indication, on the contrary, is that they were  distinctive. That is to be found from the zeal with. which the respondent company  tried to maintain its right in them.  The  evidence shows  that when the respondent company found in  1954  that M/s  Indian  Union  Manufacturers Ltd.,  Calcutta  had  been inscribing  the word ’Fifty’ on its bells, it at once  filed an infringement action.  The action ended in a compromise by which the said company acknowledged the respondent company’s rights in its trade marks of ’Fifty’ and ’50’.  Again,  when the  attention  of the respondent company was  drawn  to  an advertisement  "Five  50",  it addressed  a  notice  to  the manufacturers  of those- bells.  The case of the  respondent company was that Gupta Industrial Corporation started  using the  word  ’Fifty’ on its bells in 1958 and not in  1948  as contended  by Mr. Desai.  In the absence of any evidence  as to  the  extent of manufacture and sale of  those  bells  it would  not  be possible to say with any certainty  that  the respondent company did not come to know about it till  1958, and  therefore, presumed that Gupta Corporation had  started using the word ’Fifty’ on its bells in that year.  According To the appellant National Bell Co., it went into  production only  in 1957 and in 1959 the respondent  company  commenced action  against  it.   A  similar  notice  of   infringement followed  by a suit was also given to M/s Berry &  Co.,  but the suit became infructuous on account 86 of lack of the jurisdiction of the Court of Banaras where it was filed.  This evidence negatives any abandonment of trade marks or letting infringements go unchallenged or misleading the  other manufacturers that the respondent  company  would not interfere it they were to use the same marks.  Rights in a mark can, of course, be abandoned by its owner but so long as  he  remains the registered proprietor of  the  mark  and carried  on  the business to which the mark is  attached,  a

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plea  of  abandonment is difficult to  sustain.   It  would, however,  be a different matter if it is shown  that  there, were repeated, undisturbed infringements.  The evider in the present case does not show that there were repeated breaches which  went  unchallenged though known  to  the  proprietor. Mere  neglect  to proceed does  not  necessarily  constitute abandonment  if it is in respect of infringements which  are not  sufficient  to affect the distinctiveness of  the  mark even if the proprietor is aware of them. (see Re.  Farina(1) Where  neglect  to challenge infringements is  alleged,  the character  and  extent of the trade of  the  infringers  and their  position have to be reckoned in  considering  whether the  registered proprietor is barred by such  neglect.  [see Rowland v. Mitchell(2) ]. The plea of common use must  fail, for,  to  establish it the use by other  persons  should  be substantial.  Though evidence was produced by the  appellant companies to show that there were other bells in the  market with ’Fifty’ or ’50’ inscribed on them, no evidence was  led to show that the use of the word ’Fifty’ or the numeral ’50’ was  substantial.  In these circumstances, it is  impossible to sustain the contention founded on cl. (c) of S. 32. Under   s.   56,  the  power  to  rectify   is   undoubtedly discretionary.   Where  such discretion  has  been  properly exercised, a court of, appeal would refuse to interfere.  In the   present  case,  however,  the  Trial  Court  did   not appreciate  the principle embodied in ss. 32 and 1  1,  with the  result  that  the  Division  Bench  was  justified   in interfering  with  the  discretion exercised  by  the  Trial Court. In  our  view,  the  contentions  urged  on  behalf  of  the appellant companies cannot be sustained and consequently the two  appeals fail and are dismissed with costs.  There  will be one hearing fee. V.P.S.                            Appeals dismissed. (1)  (1879) 27 W.R. 456. (2)  (1897) 14 R.P.C. 37. 87