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PETITIONER: NATIONAL SEWING THREAD CO.  LTD.

       Vs.

RESPONDENT: JAMES CHADWICK & BROS.  LTD.(J.& P. COATS LTD., Assignee)REG

DATE OF JUDGMENT: 07/05/1953

BENCH: MAHAJAN, MEHR CHAND BENCH: MAHAJAN, MEHR CHAND BOSE, VIVIAN JAGANNADHADAS, B.

CITATION:  1953 AIR  357            1953 SCR 1028  CITATOR INFO :  APL        1956 SC 202  (8)  E          1965 SC1442  (6)  R          1968 SC 384  (4,5)  RF         1986 SC1272  (88,89,94,95)  RF         1987 SC2323  (10)  R          1989 SC2113  (31)

ACT:     Trade  Marks  Act,  1940,  ss.  8,  76-Application  for registration  of trade mark -Dismissal by Registrar  -Appeal to   High  Court  .  Judgment  of  Single  Judge   --Whether appealable to Division Bench Letters Patent (Bombay)  cl.15- Government of India Act, 1915, s. 108-Constitution of India, 1950,  s.  225-Power of Registrar to reject  application  if mark  is  likely to deceive or cause confusion  Decision  in passing off action, whether conclusive.

HEADNOTE: Section  76(l) of the Trade Marks Act, 1940,  provides  that an appeal shall lie from any decision of the Registrar under the  Act  or the rules made thereunder, to  the  High  Court having jurisdiction, but the Act did not make any  provision with  regard  to the procedure to be followed  by  the  High Court  in the appeal or as to whether the order of the  High Court  was  appealable:  Held that the  High  Court  had  to exercise  its appellate jurisdiction under s. 76 of the  Act in  the  same  manner as it exercised  its  other  appellate jurisdiction, and when such jurisdiction was exercised by  a Single  Judge, his judgment was appealable under el.  15  of the Letters Patent. National  Telephone Co. v. Postmaster General  ([1913]  A.C. 546),R.    M.   A.   R.  A.  Adaikappa   Chettiar   v.   Ra. chandrasekhara  Thevar (74 I.A. 264), Secretary of State  v. Chellikani Rama Rao (I...L.R. 39 Mad. 617) referred to. The  power  conferred by s. 108 of the Government  of  India Act,  1915,  on  the High Courts, of making  rules  for  the exercise  of  their  jurisdiction by  Single  Judges  or  by Division  Courts could be exercised not only in  respect  to such jurisdiction 1O29

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as the High Courts possessed when the Act of 1915 came into’ force; but also in respects of jurisdictions I conferred  on the High Court by subsequent legislation, e.g., s, 76 of the Trade Marks Act. Under  the rules (if construction enunciated in s. 8 of  the General  Clauses  Act and s. 38 of the  Interpretation  Act, which are of general application, the reference to s.108  of the Government of India Act, 1915, in el. 15 of the  Letters Patent  should, after the enactment of the  Constitution  of 1950,  be read as reference to the corresponding  provisions of art. 225 of the Constitution. The ambit of the power conferred on the High Courts by a.108 of  the  Government of India Act, 1915, is  not  limited  by s.106(l) of the said Act or by el. 16 of the Letters  Patent of the Calcutta High Court. Indian  Electric Works v. Registrar of Trade  Marks  (A.I.R. 1947 Cal. 49) overruled. Secretary of State v. Mask & Co. (67 I.A. 222) and the  Gur- dwara Case (63 I.A. 180) distinguished. The  respondents,  a company registered  in  England,  manu- factured  sewing  thread with the device of  an  Eagle  with outspread  wings  known as the "Eagle Mark" as  their  trade mark,  and  since  1896 this thread was being  sold  in  the Indian  markets  on an extensive scale.  The  appellants,  a company  registered in India, began in 1940 to  sell  sewing thread  with the device of a bird resembling an  eagle  with wings fully spread out with the words "Eagle Brand" as their mark.   On the objection of the respondents  the  appellants subsequently  changed  the name to "Vulture  Brand"  without changing  the  mark  in  other  respects.   The  respondents instituted an action against the appellants for passing off, but that was dismissed.  The appellats subsequently  applied for  registration of their trade mark but their  application was  disraissed  by  the Registrar on-the  ground  that  the appellants’  mark so nearly resembled the respondents’  mark as  to be likely to deceive the public and cause  confusion. This order was reversed by a Single Judge of the High  Court of Bombay but restored on appeal by a Division Bench: Held  (i) that the judgment of the Division Bench  upholding the order of the Registrar rejecting the application, on the ground  that  the  mark  was likely  to  deceive  and  cause confusion, was right; (ii)  that  the  considerations relevant in  a  passing  off action are somewhat different from those which are  relevant in an application for registration of a trade mark under the Trade Marks Act, and the earlier judgment of the High  Court in  the  action for passing off was not  conclusive  on  the matter.

JUDGMENT: CIVIL APPELLATE JURISDICTION: Civil Appeal No. 135 of 1952. Appeal  from  the Judgment and Order dated the  19th  March, 1951, of the High Court of Judicature at 1030 Bombay in Appeal No. 95 of 1950 arising from the Order dated the 28th August, 1950, of the said High Court exercising its Ordinary Original Civil Jurisdiction in Civil  Miscellaneous No. 2 of 1950. Bishan   Narain  (Sri  Narain  Andley  with  him)  for   the appellants. M.   C. Setalvad, Attorney-General for India, and    C.   K. Daphtary,  Solicitor-General for India (J.  B.   Dadachanji, with them) for the respondents.

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Registrar of Trade Marks in person. 1953.  May 7. The Judgment of the Court was delivered by MAHAJAN J.-This is an appeal on a certificate under  section 109(c), Civil Procedure Code, from the judgment of the  High Court of Judicature at Bombay reversing the judgment of  Mr. Justice S. C. Shah in Civil Miscellaneous No. 2 of 1950  and restoring the order of the Registrar of Trade Marks refusing to register the appellants’ trade mark. The  two  questions that were canvassed before us  and  that fall  for our determination are (1) whether the judgment  of Mr.  Justice Shah was subject to appeal under clause  15  of the Letters Patent of the Bombay High Court and (2)  whether Mr.   Justice  Shah  was  right  in  interfering  with   the discretion   exercised   by  the   Registrar   in   refusing registration of the appellants’ mark. The relevant facts shortly stated are these.  The appellants are  a  limited  liability company  incorporated  under  the Indian  Companies Act, 1913, having their registered  office at  Chidambaram,  South Arcot District, in the  Province  of Madras and carrying on the business of manufacturing  cotton sewing thread.  The respondents are also a limited liability company  registered under the English Companies  Act.   They have  their  registered  office  at  Eagley  Mills,  Bolton, (England) where they manufacture ’sewing thread.  One of the trade  marks  used by them on such thread  consists  of  the device of an Eagle with 1031 outspread wings known as "Eagle Mark".  This mark was  first advertised  in  the Calcutta Exchange Gazette of  5th  June, 1896.   Since then sewing thread bearing this mark is  being regularly imported into and sold in the Indian markets on an extensive scale. Round  about  the year 1940 the appellants  started  selling cotton  sewing thread under a mark consisting of the  device of a bird with wings fully spread out perched on a  cylinder of cotton sewing thread, with the words " Eagle Brand "  and the -name of the appellant company printed on the mark.  The respondents objected to the mark, upon which the  appellants substituted the words " Vulture Brand " in the place of  the words  "  Eagle  Brand".  Thereafter in the  year  1942  the appellants applied to the Registrar of Trade Marks,  Bombay, for  registration of their amended mark as a trade mark,  in class  23, in respect of cotton sewing thread claiming  that the  mark  had  been in use by them  since  the  year  1939. Though  on the objection of the respondents  the  appellants had  named  the Eagle in their mark a " Vulture "  in  every other respect the mark remained unchanged.  The  respondents to  redress their grievance started a passing off action  in the  District Court of South Arcot against  the  appellants. That  action failed on the ground that the evidence  offered on  their behalf was meagre and they failed in proving  that there was any probability of purchasers exercising  ordinary caution being deceived in buying the defendants’ goods under the  impression that they were the plaintiff’s  goods.   The result  was that the grievance of the  respondents  remained unredressed. As above stated, in 1942, the appellants made an application to   the  Registrar  of  Trade  Marks  at  Bombay  for   the registration of their mark "Vulture Brand " under the  Trade Marks  Act,  1940.   The respondents gave  notice  of  their opposition to that application under section 15(2), Rule 30, of  the  Trade  Marks Act, 1940.  By  his  order  dated  2nd September,  1949, the Registrar of Trade Marks  allowed  the respondents’ opposition and rejected the application 1032

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made by the appellants.  He came to the conclusion that  the appellants’  mark  so  nearly  resembled  the  mark  of  the respondents  as to be likely to deceive or cause  confusion. He further held that to describe the mark of the  appellants as " Vulture Brand" when the device was that of an eagle was misleading  and liable to cause confusion.   The  appellants preferred  an appeal against the order of the  Registrar  to the  High Court of Bombay as permitted by the provisions  of section 76 of the Trade Marks Act.  Mr. Justice Shah allowed the  appeal,  set  aside  the order  of  the  Registrar  and directed   the  Registrar  to  register  the  mark  of   the appellants  as  a  trade mark.  From  the  judgment  of  Mr. Justice  Shah  an appeal was preferred  by  the  respondents under  clause  15 of the Letters Patent of the  Bombay  High Court.   The  appeal  was  allowed  and  the  order  of  the Registrar  was restored with costs throughout.   Hence  this appeal. In our judgment both the questions canvassed in this  appeal admit of an easy answer in spite of a number of hurdles  and difficulties  suggested  during the arguments.   It  is  not disputed  that  the  decision  of  Mr.  Justice,  Shah  does constitute a judgment within the meaning of clause 15 of the Letters  Patent.  That being so his judgment was subject  to appeal  under  that  clause,  the  material  part  of  which relevant to this enquiry is:- "  And We do further ordain that an appeal shall lie to  the said High Court of Judicature at Bombay from the judgment of one  Judge  of  the  said High Court or  one  Judge  of  any Division Court, pursuant to section 108 of the Government of India Act." It was said that the provisions of this clause could not  be attracted  to  an appeal preferred to the High  Court  under section  76  of  the Trade Marks Act and  further  that  the clause  would  have  no application in  a  case,  where  the judgment  could not be said to have been delivered  pursuant to  section 108 of the Government of India Act, 1915.   Both these objections in our opinion are not well-founded. Section 76 (1) provides: 1033 "Save  as otherwise expressly provided in the Act an  appeal shall  lie,  within  the period prescribed  by  the  Central Government,  from any decision of the Registrar  under  this Act  or the rules made thereunder to the High  Court  having the jurisdiction." The  Trade  Marks  Act does not provide or  lay  down%’  any procedure for the future conduct or career of that appeal in the  High Court, indeed section 77 of the Act provides  that the  High  Court can if it likes make rules in  the  matter. Obviously after the appeal had reached the High Court it has to  be  determined according to the rules  of  practice  and procedure   of  that  Court  and  in  accordance  with   the provisions  of  the  charter  under  which  that  Court   is constituted and which confers on it power in respect to  the method and manner of exercising that jurisdiction.  The rule is  well settled that when a statute directs that an  appeal shall  lie to a Court already established, then that  appeal must  be  regulated by the practice and  procedure  of  that Court.   This  rule was very succinctly stated  by  Viscount Haldane L.C. in National Telephone Co., Ltd. v.  Postmaster- General in these terms:- "When a question is stated to be referred to an  established Court  without  more, it, in my opinion,  imports  that  the ordinary  incidents  of the procedure of that Court  are  to attach,  and also that any general right of appeal from  its decision likewise attaches."

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The same view was expressed by their Lordships of the  Privy Council   in   R.M.A.R.A.   Adaikappa   Chettiar   v.    Ra. Chandrasekhara Thevar (2), wherein it was said:- "Where  a legal right is in dispute and the ordinary  Courts of  the  country are seized of such dispute the  Courts  are governed  by  the ordinary rules  of  procedure,  applicable thereto  and  an appeal lies if authorised  by  such  rules, notwithstanding that the legal right claimed arises under  a special  statute which does not, in terms confer a right  of appeal." (1)  [19I3] A.C. 546. 134 (2) (1947) 74 I,A. 264, 1034 Again in Secretary of State for India v. Chellikani Rama Rao (1), when dealing with the case under the Madras Forest  Act their Lordships observed as follows:--     "It  was contended on behalf of the appellant that  all further  proceedings in Courts in India or by way of  appeal were  incompetent, these being excluded by the terms of  the statute  just  quoted.   In their  Lordships’  opinion  this objection  is  not well-founded.  Their view  is  that  when proceedings of this character reach the District Court, that Court  is appealed to as one of the ordinary Courts  of  the country, with regard to whose procedure, orders, and decrees the ordinary rules of the Civil Procedure Code apply." Though  the  facts of the cases laying down the  above  rule were  not exactly similar to the facts of the present  case, the   principle  enunciated  therein  is  one   of   general application and has an apposite application to the facts and circumstances of the present case.  Section 76 of the  Trade Marks  Act confers a right of appeal to the High  Court  and says  nothing more about it.  That being so, the High  Court being seized as such of the appellate jurisdiction conferred by  section 76 it has to exercise that jurisdiction  in  the same manner as it exercises its other appellate jurisdiction and  when such jurisdiction is exercised by a single  Judge, his  judgment becomes subject to appeal under clause  15  of the  Letters Patent there being nothing to the  contrary  in the Trade Marks Act. The  objection that Mr. Justice Shah’s judgment having  been delivered  on an appeal under section 76 of the Trade  Marks Act  could  not be said to have been delivered  pursuant  to section  108 of the Government of India Act is also  without force  and  seems to have been based on a  very  narrow  and limited  construction  of that section and on  an  erroneous view  of  its true intent and purpose.  Section 108  of  the Government of India Act, 1915, provides :- " Each High Court may by its own rules provide as it  thinks fit for the exercise, by one or more Judges, or by  division courts constituted by two or more Judges (1)  (1916) I.L.R. 39 Mad. 617. 1035 of  the  High Court, of the original  and  appellate  juris- diction vested in the Court." The  section is an enabling enactment and confers  power  on the  High Courts of making rules for the exercise  of  their jurisdiction  by single Judges or by division  courts.   The power  conferred by the section is not circumscribed in  any manner whatever and the nature of the power is such that  it had,  to  be  conferred by the use of words  of  the  widest amplitude.   There could be no particular purpose or  object while   conferring  the  power  in  limiting  it   qua   the jurisdiction  already possessed by the High Court,  when  in the  other provisions of the Government of India Act it  was contemplated  that the existing jurisdiction was subject  to

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the  legislative  power  of  the  Governor-General  and  the jurisdiction  conferred on the High Court was liable  to  be enlarged,  modified  and curtailed by the  Legislature  from time  to time.  It is thus difficult to accept the  argument that the power vested in the High Court under subsection (1) of  section  108  was  a limited  one,  and  could  only  be exercised in respect to such jurisdiction as the High  Court possessed on the date when the Act of 1915 came into  force. The words of the sub-section "vested in the court" cannot be read  as meaning "now vested in the court".  It is  a  well- known rule of construction that when a power is conferred by a statute that power may be exercised from time to time when occasion  arises unless a contrary intention appears.   This rule  has been given statutory recognition in section 32  of the  Interpretation  Act.  The purpose of the  reference  to section 108 in clause 15 of the Letters Patent was to incor- porate  that power in the charter of the Court  itself,  and not to make it moribund at that stage and make it rigid  and inflexible.   We are therefore of the opinion  that  section 108 of the Government of India Act, 1915, conferred power on the High Court which that Court could exercise from time  to time with reference to its jurisdiction whether existing  at the coming into force of the Government of India Act,  1915, or whether conferred on it by any subsequent legislation. 1036 It was argued that simultaneously with the repeal of section 108  of  the  Government  of India Act,  1915,  and  of  the enactment of its provisions in section 223 of the Government of  India  Act of 1935 and later on :in article 225  of  the Constitution of India, there had not been any  corresponding amendment  of  clause  15  of the  Letters  Patent  and  the reference to section 108 in clause 15 of the Letters  Patent could   not  therefore  be  taken  as  relating   to   these provisions, and, that being so, the High Court had no  power to  make rules in 1940 when the Trade Marks Act was  enacted under  the repealed section and the decision of Mr.  Justice Shah therefore could not be said to have been given pursuant to  section 108.  This objection also in our opinion is  not well-founded  as it overlooks the fact that the  power  that was  conferred  on  the  High Court  by  section  108  still subsists,  and  it  has  not been  affected  in  any  manner whatever either by the Government of India Act, 1935, or  by the  new Constitution.  On the other hand it has  been  kept alive  and reaffirmed with great vigour by  these  statutes. The  High  Courts still enjoy the same unfettered  power  as they  enjoyed under section 108 of the Government of  India. Act,  1915, of making rules and providing whether an  appeal has  to be heard by one Judge or more Judges or by  Division Courts  consisting of two or more Judges of the High  Court. It is immaterial by what label or nomenclature that power is described  in  the  different statutes  or  in  the  Letters Patent.   The power is there and continues to be  there  and can be exercised in the same manner as it could be exercised when  it was originally conferred.  As a matter  of  history the  power was not conferred for the first time  by  section 108  of the Government of India Act, 1915.  It  had  already been  conferred by section 13 of the Indian High Courts  Act of 1861.  We are further of the opinion that the High  Court was  right  in  the’ view that reference  in  clause  15  to section   108  should  be  read  as  a  reference   to   the corresponding   provisions   of  the  1935   Act   and   the Constitution.    The  canon  of  construction  of   statutes enunciated in section 38 of the 1037 Interpretation Act and reiterated with some modifications in

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section  8  of  the General Clauses Act is  one  of  general application where statutes or Acts have to be construed  and there is no reasonable ground for holding that that rule  of construction  should  not  be  applied  in  construing   the charters of the different High Courts.  These charters  were granted  under  statutory  powers and  are  subject  to  the legislative  power  of  the  Indian  Legislature.   Assuming however,  but  not  conceding, that  strictly  speaking  the provisions of the Interpretation Act and the General Clauses Act do not for any reason apply, we see no justification for holding  that the principles of construction  enunciated  in those  provisions have no application for  construing  these charters.  For the reasons given above we hold that the High Court was perfectly justified in overruling the  preliminary objection  and in holding that an appeal was competent  from the  judgment  of Mr. Justice Shah under clause  15  of  the Letters Patent. Reliance was Placed by the appellants in the High Court  and before us on the decision of the High Court of Judicature of Calcutta  in  Indian Electric Works v. Registrar  of  Trade, Marks(1) wherein a contrary view was expressed. After  a  full  consideration  of  the  very  elaborate  and exhaustive  judgment  delivered  in that case  by  both  the learned  Judges of the Bench that heard the appeal and  with great  respect we think that that case was  wrongly  decided and  the  decision is based on too narrow and  restricted  a construction of section 108 of the Government of India  Act, 1915,  and  that in that decision full effect has  not  been given  to  the true intent and purpose of clause 44  of  the Letters Patent. Both  the  learned  Judges  there took  the  view  that  the authority  given  by section 108(l) of the 1915  statute  to make  rules  for the exercise by one or more Judges  of  the Court’s   appellate   jurisdiction  was   limited   to   the jurisdiction then vested in the Court by section (1) A.I.R. 1947 Cal. 49. 1O38 106 (1) of the Act and by clause 16 of the Letters   Patent. It  was  held  that such rules thus  could  not   relate  to jurisdiction   conferred   by  an  Act  passed   after   the commencement  of the 1915 statute nor to an appeal heard  by the Court pursuant to such an Act, since the jurisdiction to hear such appeal having been conferred by the particular Act could not be said to have been conferred upon, or vested in, the Court by section 106(1) and by clause 16 of the  Letters Patent.   This argument suffers from a two-fold defect.   In the  first  place it does not take  into  consideration  the other  provisions  of  the Government of  India  Act,  1915, particularly the provision contained in sections 65 and  72. By  section 65(1) of the Government of India Act, 1915,  the Governor-General  in Legislative Council was given power  to make las for all persons, for all courts, and for all places and things, within British India.  By section 72 he was also given   power  for  promulgating  ordinances  in  cases   of emergency.   By the Charter Act of 1915 therefore  the  High Court  possessed  all the jurisdiction that it  had  at  the commencement  of  the Act and could also exercise  all  such jurisdiction  that would be conferred upon it from  time  to time  by  the  Legislative  power  conferred  by  that  Act. Reference to the provisions of section 9 of the Indian  High Courts  Act of 1861 which section 106 (1) of the  Government of  India Act, 1915, replaced makes this  proposition  quite clear.  In express terms section 9 made the jurisdiction  of the  High  Courts subject to the legislative powers  of  the Governor-General  in Legislative Council.  Section 106  only

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conferred  on  the High Court " jurisdiction -and  power  to make rules for regulating the practice of the court, as were vested  in  them  by  Letters Patent,  and  subject  to  the provisions   of   any   such  Letters   Patent,   all   such jurisdiction,  powers and authority as were vested in  those courts  at  the  commencement of the Act.   "  The  words  " subject to the legislative powers of the Governor-General  " used  in section 9 of the Charter Act of 1861  were  omitted from the section, because of the wide power conferred on the Governor-General  by section 65 of the Government  of  India Act, 1915.  The 1039 jurisdiction  conferred  on the High Courts  from  the  very inception  was  all  the  time  liable  to  and  subject  to alteration by appropriate legislation.  It is therefore  not right to say that section 108 (1) of the Government of India Act,  1915,  empowered the High Courts to  make  rules  only concerning the jurisdiction that those courts exercised when that  Act  was  passed; on the other  hand  power  was  also conferred   on  them  to  make  rules  in  respect  of   all jurisdiction  then enjoyed or with which they may be  vested hereafter. Clause 16 of the Letters Patent on which reliance was placed by  the  learned Judges of the Calcutta Court  is  in  these terms:- "  The High Court shall be a Court of appeal from the  civil Courts  of Bengal and from all other Courts subject  to  its superintendence and shall exercise appellate jurisdiction in such  cases as are subject to appeal to the said High  Court by virtue of any laws or regulations now in force." This clause is also subject to the legislative power of  the appropriate  Legislature  as provided in clause  44  of  the Letters Patent.  This clause is in these terms: "  The provisions of the Letters Patent are subject  to  the legislative  powers of the Governor-General  in  Legislative Council." That being so the last words of the clause " now in force  " on  which emphasis was placed in the Calcutta judgment  lose all  their  importance,  and do not  materially  affect  the point.   The  true intent and purpose of clause  44  of  the Letters Patent was to supplement the provisions of clause 16 and  other clauses of the Letters Patent.  By force of  this clause appellate jurisdiction conferred by fresh legislation on  the  High Courts stands included  within  the  appellate jurisdiction  of the court conferred by the Letters  Patent. A  reference  to clause 15 of the Letters  Patent  of  1861, which  clause 16 replaced, fully supports this  view.   This clause included a provision to the following effect :- "  or shall become subject to appeal to the said High  Court by virtue of such laws and regulations 1040 relating  to Civil Procedure as shall be hereafter made,  by the Governor in Council," in  addition  to  the words " laws  or  regulations  now  in force".   The words above cited wore omitted from clause  16 of the later charter and only the words "laws or regulations now  in  force"  were retained,  because  these  words  were incorporated in the Letters Patent and were made of  general application  as  governing all the provisions thereof  by  a separate clause.  The Judges who gave the Calcutta  decision on  the  other  hand  inferred from  this  change  that  the appellate  jurisdiction  of the High Court as  specified  in clause  16  was confined only to the  jurisdiction  to  hear appeals  from the the civil Courts mentioned in that  clause and appeals under Acts passed and regulations in force up to

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the  year 1865.  In our opinion the learned Judges  were  in error in thinking that the appellate jurisdiction  possessed by  the  High  Court under the Letters Patent  of  1865  was narrower than the jurisdiction it possessed under clause  15 of  the Letters Patent of 1861.  Whatever  jurisdiction  had been conferred on the High Court by clause 15 of the Letters Patent  of  1861 was incorporated in the Letters  Patent  of 1865  (as amended) and in the same measure and to  the  same extent  by  the  provisions of clauses 16  and  44  of  that charter. We are further of the opinion that the Calcutta decision  is also erroneous when it expresses the view that the range and ambit  of the power conferred on the High Court  by  section 108  of the Government of India Act of 1915 was  limited  by the  provision  of  section 106 (1) of the  Act  or  by  the provisions of clause 16 of the Letters Patent.  There is  no justification  for placing such a construction on the  plain and  unambiguous words of that section.  Section 108  is  an enactment  by itself and is unrestricted in its  scope,  and covers a much wider field than is covered by section 106  of the  Government of India Act.  The only association  it  has with  section 106 is that in sequence it follows  that  sec- tion.  It confers a power on the High Court to make rules in respect not only of the jurisdiction that it 1041 enjoyed  in 1915 but it also conferred power on it  to  make rules  in  respect of jurisdiction which  may  hereafter  be conferred  on it by the enactments enacted by the  Governor- General in Legislative Council. On the line of thought adopted in the Calcutta decision  the learned  Judges  were forced to the conclusion  which  seems somewhat  strange  that the jurisdiction  conferred  by  the Letters  Patent  on  the Calcutta High Court  is  much  more limited  and restricted than has been conferred on  some  of the  new  High  Courts in India  by  their  Letters  Patent. Illustratively,  Clause I I of the Letters Patent  of  Patna High Court issued in 1916 provides as follows:- "  And  We  do  further  ordain  that,  the  High  Court  of Judicature  at  Patna shall be a Court of  Appeal  from  the Civil  Courts of the Province of Bihar and Orissa  and  from all  other Courts subject to its superintendence, and  shall exercise  appellate  jurisdiction  in such  cases  as  were, immediately  before  the date of the  publication  of  these presents, subject to appeal to the High Court of  Judicature at  Fort  William  in Bengal by virtue of any  law  then  in force,  or  as may after that date be  declared  subject  to appeal  to the High Court of Judicature at Patna by any  law made by competent legislative authority for India The Letters Patent of the Labore High Court, the High  Court of  Rangoon and the Letters Patent of the Nagpur High  Court also  contain  identical clauses.  It is  clear  from  these clauses that in respect of cases subject to appeal to  these High Courts the civil appellate jurisdiction is flexible and elastic.   Mr.  Justice Das in the Calcutta  decision  under discussion  took  the  view  that  omission  of  the   words underlined in clause 11 from clause 16 of the Letters Patent of  the  Calcutta  High  Court  made  the  civil   appellate jurisdiction of that court under clause 16 as rigidly fixed, and that it could be exercised only over courts and only  in respect  of cases mentioned therein.  When the attention  of the learned Judge was. drawn to the provisions of clause. 44 of the Letters Patent he 1042 was  constrained  to say that inflexibility bad to  a  great extent  been  modified by preserving the powers   of  Indian

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Legislative  authority in section 9 of the High Courts  Act, by  the  amended  clause 44 of the  Letters  Patent  and  by section  223  of the. 1935 Act.  The learned  Judge  however felt that there was still a difference of a vital  character between the Letters Patent of the Calcutta High Court and of the newly constituted High Courts inasmuch as cases subsequ- ently  declared  by any Indian enactment to  be  subject  to appeal  to  the  Calcutta  High  Court  could  not  strictly speaking come within its appellate jurisdiction under clause 16 although the High Court exercised appellate  jurisdiction over  these.   We  have not been  able  to  appreciate  this distinction  and  it  seems  to  us  it  is  based  on  some misapprehension  as to the true intendment of clause  44  of the Letters Patent.  The purpose and intent of clause 44  of the  Letters Patent was to declare that in addition  to  the jurisdiction  conferred by clause 16 it would also  exercise the appellate jurisdiction which from time to time would  be conferred   on   it  by  subsequent   enactments.    It   is inconceivable that larger appellate jurisdiction and greater powers  in  the  matter  of making  rules  would  have  been conferred  upon the newly constituted High Courts than  upon the High Court of Calcutta.  The words "pursuant to  section 108 of the Government of India Act 1915" occurring in clause 15  of  the Letters Patent do not in any  way  restrict  the scope  of  the right of appeal conferred by that  clause  to appeals  that  come to the High Court  under  its  appellate jurisdiction under clause 16 of the Letters Patent only.  On the other hand we think that these rules have application to all  appellate jurisdiction exercised by that court  whether existing or conferred upon it by subsequent legislation. The  learned  Judges  in the Calcutta  case  negatived  the applicability  of  the principle enunciated in  1913  Appeal Cases 546 and applied by the Privy Council in several  cases to  the matter before them, on the following  reasoning  set out by Mr. Justice Das:--  1043     "The incidents and powers attached to the Registrar as a tribunal fall far short of those which were attached, to the tribunal  in the Gurdwara case (1) and to which  Sir  George Rankin particularly and pointedly referred Having regard  to the plain language of clause 16, and in the absence  therein of like words which appeal in the concluding portions of the correspond  clauses of the Letters Patent of the other  High Court to which I have already referred and which make  their appellate jurisdiction flexible and elastic it is impossible to  hold that section 76 of the Trade Marks Act  has  merely extended  the  appellate jurisdiction of  this  Court  under clause 16 by the addition of a new subject-matter of  appeal so  as to attract the general principle enunciated  in  1913 Appeal Cases 546 ......... The truth is that the Trade Marks Act  has  created new rights, e.g., a right to get  a  trade mark  registered and has given certain new  advantages  con- sequent   upon  such  registration.   It  has  created   new Tribunals  for its own purposes and it has conferred  a  new appellate  jurisdiction  on this Court.  It  has  authorized this  Court  to  make  rules  regulating  the  conduct   and procedure of the proceedings under the Act before it.   This Court  has framed separate set of rules  accordingly.   This very fact makes it impossible to attract the ordinary  rules of  procedure regarding appeals in this Court and  indicates that  an  appeal under section 76 of the  Act  involves  the exercise  of a new appellate jurisdiction regulated  by  new rules". This  reasoning  in  our opinion is faulty on  a  number  of grounds.   The first error lies in the assumption  that  the

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Gurdwara  Act did not create new rights and did  not  create new  appellate jurisdiction in the High Court which  it  did not  possess  before.   The Gurdwara  Act  created  peculiar rights in religious bodies and negatived the civil rights of large  bodies  of Mahants and other persons.   Stick  rights were  unknown  before in civil law.  The High  Court  as  an established  court  of  record was constituted  a  court  of appeal  from  the decisions of the Gurdwara  Tribunal.   The principle enunciated in 1913 Appeal Cases 546 was applied by (1)  63 I.A. 180. 1044 Sir  George Rankin to appeals heard by the High Court  under its newly created appellate jurisdiction, and we speak  with great  respect, in our opinion, very correctly. We have  not been  able  to appreciate the special peculiarities  of  the rights  created  by  the Trade Marks  Act  which  place  the appellate  jurisdiction  conferred  on  the  High  Court  by section  76  on  a different  level  from  the  jurisdiction created by the special provisions of the Gurdwara Act.   The rights  created by the Trade Marks Act are civil rights  for the  protection  of persons carrying on  trade  under  marks which  have  acquired reputation.  The statute  creates  the Registrar  a tribunal for safeguarding these rights and  for giving effect to the rights created by the Act, and the High Court  as  such  without  more  has  been  given   appellate jurisdiction over the decisions of this tribunal.  It is not easy  to understand on what grounds it can be said that  the High Court while exercising this appellate jurisdiction  has to  exercise  it  in  a  manner  different  from  its  other appellate jurisdiction.  It seems to us that this is  merely an  addition  of  a  new subject matter  of  appeal  to  the appellate jurisdiction already exercised by the High Court.     The  second  error  lies  in  the  assumption  that  the appellate  jurisdiction  exercised  by  the  High  Court  of Calcutta  is  much more limited than that possessed  by  the other High Courts.  The matter has been discussed at  length in an earlier part of this judgment.   We have also not been able to appreciate the emphasis laid to  negative the applicability of clause 15 of  the  Letters Patent  by reference to the provisions of section 77 of  the Act.   The  provisions of that section are  merely  enabling provisions  and, as already pointed out, it is open  to  the High Court to make use of them or not as it likes.  There is nothing  in the provisions of that section which debars  the High  Court  from hearing appeals under section  76  of  the Trade Marks Act according to the rules under which all other appeals are heard, or from framing rules for the exercise of that  jurisdiction  under section 108 of the  Government  of India Act, 1915, for hearing those                     1045 appeals  by single judges or by division benches.   Even  if section  77 had not been enacted it could not be  said  that the  High Court would then have no power to make  rules  for the hearing of appeals under section 76.  There are a number of  legislative  enactments which have  conferred  appellate jurisdiction  on  the High Court without more and  the  High Court  exercises appellate jurisdiction conferred  by  these enactments  by  framing its own rules under  the  powers  it already possesses under its different charters and under the various statutes which have conferred power on it.    It was suggested that the reasoning of the High Court  is supported  by  the rule laid down in Secretary of  State  v. Mask  and Co.(1). In our opinion that rule has  neither  any relevancy  in this case nor is it in any manner in  conflict with  the rule laid down in 1913 Appeal Cases 546 or in  the

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later Privy Council decisions above referred to.  There,  by section  188 of the Sea Customs Act the jurisdiction of  the civil  courts  was  excluded,  and  an  order  made  by  the Collector  on  an  appeal from an  order  of  the  Assistant Collector was made final.  A suit was filed to challenge the order  of  the  Collector on the ground  that  the  finality declared by section 188 was no bar to such a suit in a civil court.   That  contention was negatived on the  ground  that when a liability not existing in common law is created by  a statute  which  at  the  same  time  gives  a  special   and particular  remedy  for enforcing it, with respect  to  that class it has always been held that the party must adopt  the form  of remedy given by the statute.  The Trade  Marks  Act has  not  created any special forum for the  hearing  of  an appeal  as had been created by the Sea Customs Act.  On  the other  hand,  the Trade Marks Act  has  conferred  appellate jurisdiction  on an established court of law.  Further,  the Sea  Customs Act had made the order of the Collector  passed on an appeal final.  There is no such provision in the Trade Marks Act.  It has only declared that an appeal shall lie to the High Court from the order of the Registrar and has  said nothing more about it.  Clearly, therefore, to this case the rule (1)  67 I.A. 222. 1046 enunciated in 1913 Appeal Cases 546 had application, and the rule  stated  in  Mask’s case (1) had no  bearing   on  this point.     As  regards  the merits of the case, we  are  in  entire agreement  with the decision of the High Court and with  the reasons  given  in  that decision.   The  relevant  part  of section 8 of the Trade Marks Act is in these terms:     "No  trade  mark  nor  part of a  trade  mark  shall  be registered  which consists of, or contains,  any  scandalous design,  or any matter the use of which would by  reason  of its  being  likely  to  deceive or  to  cause  confusion  or otherwise,  be  disentitled  to protection  in  a  court  of justice".     Under  this  section an application made to  register  a trade mark which is likely to deceive or to cause  confusion has  to  be refused notwithstanding the fact that  the  mark might  have no identity or close resemblance with any  other trade  mark.  The Registrar has to come to a  conclusion  on this  point  independently of making any comparison  of  the mark  with  any  other  registered  trade  mark.   What  the Registrar has to see is whether looking at the circumstances of the case a particular trade mark is likely to deceive  or to cause confusion.    The principles of law applicable to such cases are  well- settled.  The burden of proving that the trade mark which  a person  seeks  to register is not likely to  deceive  or  to cause  confusion  is upon the applicant.  It is for  him  to satisfy  the  Registrar that his trade mark  does  not  fall within the prohibition of section 8 and therefore it  should be  registered.  Moreover, in deciding whether a  particular trade mark is likely to deceive or cause confusion that duty is  not  discharged  by arriving at  the  result  by  merely comparing it with the trade mark which is already registered and   whose  proprietor  is  offering  opposition   to   the registration  of the mark.  The real question to  decide  in such  cases  is to see as to how a purchaser,  who  must  be looked  upon  as an average man  of  ordinary  intelligence, would react to a (1)  67 I.A. 222. 1047

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particular  trade  mark, what association he would  form  by looking  at  the trade mark, and in what  respect  he  would connect  the  trademark with the goods which*  he  would  be purchasing. So far as the present case is concerned the goods sold under the respondents’ trade mark are well-known and are  commonly asked  for as II Eagley " or " Eagle ", and  the  particular feature  of the trade mark of the respondents by  which  the goods are identified and which is associated in the mind  of the purchaser is the representation of an Eagle appearing in the  trade mark.  If the trade mark conveys the idea  of  an Eagle  and  if an unwary purchaser is likely to  accept  the goods  of  the appellants as answering the  requisition  for Eagle goods, then undoubtedly the appellants’ trade mark  is one which would be likely to deceive or cause confusion.  It is  clear to us that the bird in the appellants’ trade  mark is  likely  to  be mistaken by an average  man  of  ordinary intelligence as an Eagle and if he asked for Egg‘e goods and he got goods bearing this trade mark of the appellants it is not  likely  that he would reject them by saying  that  this cannot be an Eagle.  Two years prior to the application  for registration, the respondents described this particular bird an  Eagle and called their brand Eagle Brand, The same  bird was later on described by them a vulture and the explanation offered  was that they so described owing to an  honest  and bona  fide mistake.  We have no hesitation in  holding  that the  appellants’  camouflaging an Eagle into  a  vulture  by calling it such is likely to cause confusion.  Whatever else may be said about the bird in the appellants’ trade mark, it certainly  does  not  represent a vulture  or  look  like  a vulture  of any form or shape.  What has been named  by  the plaintiffs  as  a  vulture is really an eagle  seated  in  a different  posture.   That  being so,  the  High  Court  was perfectly  right  in the view that Mr. Justice Shah  was  in error  in  interfering  with the  discretion  possessed  and exercised  by  the Registrar, and that  the  appellants  had failed to discharge the onus that rested heavily on them  to prove that the trade mark which they wanted the Registrar 1048 to register was not likely to deceive or cause confusion. The  learned counsel for the appellants contended  that  the question  whether  his  clients’ trade mark  was  likely  to deceive  or  cause  confusion had  been  ’Concluded  by  the earlier judgment of the Madras High Court in the passing off action  and  already  referred to in an early  part  of  the judgment.  It is quite clear that the onus in a passing  off action  rests  on the plaintiff to prove  whether  there  is likelihood of the defendant’s goods being passed off as  the goods of the plaintiff.  It was not denied that the  general get  up of the appellants’ trade mark is different from  the general  get up of the respondents’ trade mark.  That  being so, it was held by the Madras High Court in the passing  off action that on the  meager material placed on record by  the plaintiffs  they  had failed to prove that  the  defendants’ goods  could be passed off as the goods of  the  plaintiffs. The  considerations  relevant in a passing  off  action  are somewhat different than they are on an application made  for registration  of a mark under the Trade Marks Act  and  that being  so the decision of the Madras High Court referred  to above  could not be considered as relevant on the  questions that the Registrar had to decide under the provisions of the Act. For the reasons given above we are of the opinion that  this appeal must fail and we accordingly dismiss it with costs. Appeal dismissed.

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Agent for the appellants:    R. A. Govind. Agent for the respondents:   Rajinder Narain.                     1049