48Abdul Cader v. The Madras Palayakat Company, Ltd.
1933Present: Garvin S.PJ. and Maartensz A.J.
ABDUL CADER v. THE MADRAS PALAYAKATCOMPANY, LTD.
147—D. C. Colombo, 1,910.
Trade Mark—Application lor registration—Opposed on the ground that itso nearly resembles another as to be calculated to deceive—Burden ofproof—Test to be applied—Leading characteristics—Ordinance No. 15of 1925, ss. 11 and 19.
Where an application for registration of a trade mark is opposedon the ground that the applicant’s trade mark so nearly resembles theopponent’s as to be calculated to deceive, and it is established thatthey resemble each other,—
Held, that the burden of proving that there is no reasonable proba-bility of deception is on the applicant.
The question whether the two trade marks so nearly resemble eachother as to be calculated to deceive must be determined by consider-ing what is the leading characteristic of each and whether the mainimpression which would remain with any person seeing them at differenttimes is the same.
^J^PPEAL from a judgment of the District Judge of Colombo.
This was an application to register a trade mark consisting of a device,containing within it the initials “ M. S. M. A. ” and the numerals andsign 60 X 60, under the provisions of the Trade Marks Ordinance, No. 15of 1925.
The respondent company claiming to be the owner of trade markNo. 5,013 opposed the application on the grounds—
that the mark propounded so nearly resembled mark No. 5,013
already on the register as to be calculated to deceive.
the registration of the mark propounded would seriously interfere
with the use by the opponents of their mark which they andtheir predecessors in title have lawfully used in Palayakatsarongs.
that the goods on which the mark propounded is to be used are of
such a nature that the mark as appearing on the said goodswill be calculated to deceive.
The Registrar-General held that the application to register the trademark should be allowed.
The opponent appealed to the District Judge, who allowed the appeal.R. L. Pereira, K.C. (with him Tisseverasinghe and N. K. Choksy),for applicant, appellant.—The opponent cannot object to the markpropounded because it contains the figures “ 60 X 60 ”. That has beendisclaimed in the opponent’s registration. As they have no right toits exclusive use they cannot complain at its inclusion in our mark.Nor can our mark be said to be “ calculated to deceive ” because ofthe incorporation of that feature.
GARVIN SJPJ.—Abdtfl Coder v. The Madras Palayakat Company, Ltd. 49
The applicant’s affidavits prove that the propounded mark is knownas the “ mango mark ”. This is supported by the tapering to a pointof the lines enclosing the letters and figures, at both ends of the enclosinglines.
The affidavits of the opponents clearly prove that the opponent’ssarongs are known as “60 X 60” sarongs, and they complain that ifthe applicants’ mark is registered, the applicants sarongs will also cometo be similarly called. This cannot be a ground for refusing registrationof a trade mark in the absence of proof that fraud was intended to becommitted. The finding of the Registrar is that there is no proof of anintention to defraud. In these circumstances registration cannot berefused on this ground. Moreover, as “ 60 }< 60 ” is not exclusivelythe mark of the opponents, they cannot oppose registration by reasonof the inclusion of these figures even if the effect would be that theapplicant’s goods may also be called “ 60 X 60 ” sarongs. The onlysubstantial ground on which the opposition is based is this and so theopposition must fail.
Counsel referred to 24 N. L. R. 396; (1916) 2 A. C. referred to therein;Payton v. Snelling1.
Hayley, K.C. (with him H. V. Perera and H. E. Gannn), for respond-ents.—The Registrar is entitled to take into consideration the fact thatthe opponent’s goods are known as “ 60 X 60 ” sarongs even though theymay have disclaimed rights to their exclusive user. They do not ceaseto be part of the opponent’s mark merely because exclusive rights tothem have been disclaimed.
The illiterate persons who buy this class of goods have to be considered.
The “ nett impression ” of both marks is very similar.
The juxtaposition of the various parts of the applicant’s mark corre-sponds with that of the corresponding parts in the opponent’s mark.
The Court is entitled to take into consideration the parts of a pro-pounded mark, which are common features, in comparing it with theopponent’s mark. (In re Christiansens Mark, 3 R.P.C. at 61 and 64.)
February 22, 1933. Garvin S.P.J.—
I agree. The most prominent feature of the opponent’s registeredtrade mark is that part of it which is composed of the initials M.P.COY., written in a curve with the convexity upwards, below it theword MADRAS written in a curve with the convexity downwardsand in the oval enclosed within the two curves the figures 60 X 60, thus :
1 (1901) A. C. at 308.
50 MAARTENSZ A.J.—Abdul Coder v. The Madras Palayakat Company, Ltd.
So also in the mark which the appellant is seeking to put upon theregister the feature which arrests the eye is that part of it which consistsof the initials M. S. M. A., the figures 60X60, and the word MADRASgrouped together in identically the same manner and written in similarletters, thus:
In each case there are curved lines which enclosed these letters, whichenable the appellant to point to certain differences but these lines area relatively insignificant feature; what arrests the eye are the lettersand figures in their relative positions.
The opponent has no exclusive right of user in the figures 60 X 60nor in the word MADRAS but he has incorporated them in his trademark and placed them in such a relationship to the initials of his firmand to each other and in such a manner that the composition presentsa definite and distinctive picture.
The Trade Marks Nos. 4,857 and 5,089 serve to illustrate two of thenumerous different and other ways in which the figures 60 might beincorporated in a trade mark. Similarly the word Madras, if theappellant had any special reason for wishing to incorporate it in a trademark, might have been written or placed differently.
He has deliberately chosen to place them in similar figures andcharacters and in identically the same position in relation to his initialsand each other as the opponent has done, in what the District Judgerefers to as “little more than an attempt to copy the opponent’s markwith just such necessary variations in detail to be able to say it isdifferent ”.
The appellant in these proceedings, claiming to be an owner andproprietor of a trade mark consisting of a device containing within itthe initials “ M. S. M. A.” and the numerals and sign “ 60 X 60 ” appliedto the Registrar under the provisions of the Trade Marks Ordinance,No. 15 of 1925, for the registration thereof on November 23, 1930.
The respondent company claiming to be the owner of Trade MarkNo. 5,013 opposed the application on the following grounds, namely: —(a) “ The mark propounded so nearly resembles Trade Mark No. 5,013already in the register as to be calculated to deceive. Thesaid Trade Mark No. 5,013 of which the opponents are theregistered proprietors was advertised in the Government GazetteNo. 7,793 dated July 24, 1930, at page 1949 of Part I. thereof.
<b) The registration of the mark propounded would seriously interferewith the use by the opponents of their said mark No. 5,013which they and their predecessors in title have lawfully used
MAARTENSZ A.J.—Abdul Cader v. The Madras Palayakat Company, Ltd. 51
in Palayakat Sarongs, goods coming under class 38, first asan unregistered trade mark and later as a registered trademark since 1925.
The goods on which the mark propounded is to be used are oi sucha nature that the mark as appearing on the said goods will becalculated to deceive ”
The applicant filed a counter notice denying the allegations in thenotice of opposition and asserting that the essential difference betweenthe two trade marks were plain enough and that there was no possibilityof deception.
The applicant’s mark is said to be “ the representation of half sectionof a mango fruit with the seed section in the middle well depicted inthick bold outline and called and known as the mango mark
The device is an oval shaped figure with pointed ends, within it is asimilar figure smaller in size. Between the lines on top are the lettersM. S. M. A. being the applicant’s vilasam, between the lines at the bottomis the word Madras. In the middle of the smaller oval there are thefigures and sign 60 X 60.
The Registrar of Trade Marks in the Gazette Notice stated that the“ registration of the trade mark would give no right to the exclusive useof the letter X and the numerals 60
The applicant applied to register the trade mark in class 38 in respectof sarongs and camboys.
The opponent’s device consists of two curved ribbons placed so as toform two nearly complete ovals one within the other. In the upperribbon appear the letters “ M. P. COY. ” being a short form of theopponent’s business name which is the Madras Palayakat Company. Inthe lower ribbon the word “ Madras ”. In the smaller oval appearthe figures and sign 60 X 60. Above the upper ribbon and below thelower ribbon there is a decorative design.
Affidavits from various traders in cloth were filed by both sides.
The opponent company claimed and supported its claim by affidavitsof other traders in camboys and sarongs, that the figures 60 X 60 wereidentified with the camboys and sarongs manufactured by the companyand that its goods were known in the trade as 60 X 60 camboys.
The opponent denied the truth of the statement made in the applicant’saffidavit that the figures 60 X 60 are common to the trade and used toindicate the size of the yarn used in the manufacture of palayakatsarongs and camboys.
The Registrar-General held that the applicant’s application to registerhis mark should be allowed. He was of opinion that if the commonfeature to which the opponent company had no exclusive rights wereleft out of consideration the marks could not be said to be similar as“ the general outline of the applicant's mark is quite different from thatof the opponents ”.
He also held that there was no proof of the intention of the applicantto pass off his goods as those of the opponent company.
The figures 60 X 60 he observed appeared in two other marks onrecord and was of opinion that, whether they were registered with theopponent’s consent or not, they therefore lost their distinctive character.
52 MAARTENSZ AJ.—Abdul Coder v. The Madras Palayakat Company, Ltd.
The Registrar expressed no opinion regarding the credit to be attachedto the affidavits filed on either side. The opponent appealed to theDistrict Court.
The learned District Judge allowed the appeal. He was of opinionthat “quite apart from the consideration of the lettering 60 X 60”it was for the applicant to establish that the proposed design does notso nearly resemble that of the opponent company as to be calculated todeceive.
The District Judge then proceeded to consider the differences indetail of the two designs when looked at together and the similarity inthe design apart from each other particularly when the figures 60 X 60are taken into consideration as forming part of the two designs, and cameto the conclusion that the proposed mark was “ little more than anattempt to copy the opponent’s mark with just such necessary variationsin detail to be able to say it is something different ”.
His finding is as follows: —
“ It appears clear that there are such resemblances between theproposed mark and his (the opponent’s) mark that if regis-tration is allowed it is likely to lead to deception.”
The applicant has appealed to this Court from the finding of theDistrict Judge.
There is one ground of appeal relied on by the applicant which mightconveniently be disposed of first. That is the argument that thefigures 60 X 60 have been used in other marks for the same class ofgoods and that therefore the applicant is entitled to use the numeralsand. figures as part of his mark.
The trade marks referred to appear in Gazette No. 7,741 dated October18, 1929, and Gazette No. 7,799 dated August 22, 1930. They arerespectively numbered 4,857 and 5,069.
The assistant manager of the opponent company in his affidavit atpage 45 of the record affirmed as follows: —
“ These figures are only used in one Trade Mark No. 7,799 by S. H.Badsha Sahib and Co., and this registration was not opposedas there was a concurrent user and the mark was registeredwith our consent. The proprietor of the Trade Mark No. 7,741is N. V. R. L. Letchuman Aiyar who was a partner in theMadras Palayakat Company and is a large shareholder in thepresent company, and the said mark was withdrawn from themarket in 1929, and is not now being used. Apart from theopponent company and S. H. Badsha Sahib and Co., no otherparty is lawfully using the 60 X 60 device and no other partieshave any right to the same and I deny tlfat the device is commonto the trade.”
Apart from the explanation furnished by the opponent company’smanager as to how these marks came to be registered without opposition,I can understand no opposition being offered as the marks are so entirelyunlike the opponent’s mark that even with the figures 60 X 60 no onecould be deceived into believing that sarongs and camboys bearing themark were sarongs and camboys sold by the opponent company.
MAARTENSZ AJ.—Abdul Coder v. The Madras Palayakat Company, Ltd. 53
The main contention in appeal was that the opponent’s oppositionto the registration of the proposed mark was founded on the figures60 X 60 in the opponent’s device and that having no exclusive rightto the figures they cannot oppose the registration of a device containingthe same figures.
The opponent company has filed nine affidavits from different tradersin cloth expressed in similar terms indicating that they were all preparedfrom one draft.
In every one the deponent describes himself and the number of yearshe has been doing business and affirms—
that the opponent’s sarongs are referred to in his orders as 60
mark sarongs and that this reference is well known in thetrade to mean a reference to sarongs manufactured by theopponent company and bearing their registered trade marieconsisting among other things of the figures 60 x 60 with acertain device.
that sarongs bearing this mark are well known in Ceylon and
have acquired an excellent reputation and that customers indescribing what kind of sarongs they want refer to sarongsbearing the mark as 60 mark sarongs, and the mark is dis-tinctive of the opponent company’s sarongs.
< 3) that he has been shown a copy of this mark the applicant seeks toregister and is of opinion that it is so similar to the opponent’scompany’s registered mark that its use will cause considerableconfusion and is likely to cause deception especially as in viewof the fact that traders and customers are most likely torefer to the mark propounded in the same way as they referto the opponent’s mark. In addition to which the generalarrangement of the design, the lettering and the get-up of thewhole mark is strikingly similar to the opponents’ mark.
that “in cases where purchasers look at the general design theyare most likely to be deceived ”.
In addition to these affidavits there is one by another dealer in clothto prove the same facts in somewhat different terms and an affidavitby the assistant manager of the opponent company who affirmed thatthe 60 mark was distinctive of the opponent company’s sarongs andproduced invoices showing that the company’s sarongs have been soldunder the description “ 60 X 60
The applicant filed six affidavits in addition to his own denying thatthe figures 60 X 60 were distinctive of the opponent’s goods, that thetwo marks resembled each other, and asserting that the applicant’smark belongs to the applicant and has been in the market for someyears.
They all affirmed that the figures 60 X 60 indicate the grade ortexture of the yam used and are used by all traders.
The statements made in the applicant’s affidavit were denied by theassistant manager of the opponent company in a counter affidavit.
Neither the Registrar of Trade Marks nor the District Judge hasexpressed any opinion as to the probative value of these affidavits.
54 MAARTENSZ A.J.—Abdul Coder v. The Madras Palayakat Company, Lid.
It is quite impossible that one set of affidavits should be preferred tothe other.
Mr. Hayley for the opponent contended that the burden of provingthat the mark is not calculated to deceive is on the applicant and thatthere being no way of determining which set of affidavits containedthe truth, we must accept the opponent’s affidavit.
In support of this contention he cited the dictum of Lord Watson inthe case of Eno v. Dunn1, that the “prohibitory clauses (referring tosection 72, sub-section (2) of the Act of 1883—section 11 of our Ordinanceembodies with certain alterations section 72 of the Act of 1883) castupon the applicant the duty of satisfying the Comptroller, or the Court,that the trade mark which he proposes to register does not come withintheir scope. In an inquiry like the present the applicant does nothold the same position which he would have occupied if he had beendefending himself against an action for infringement. There, theonus of showing that his trade mark was calculated to mislead rests,not on him, but upon the party alleging infringement; here, he is inpetitorie, and must justify the registration of his trade mark by showingaffirmatively that it is not calculated to deceive. It appears to me tobe a necessary consequence that, in dubio, his application ought to bedisallowed ”.
I do not think the dictum has the far-reaching effect attributed to it,and I am of opinion that we cannot, on the strength of it, hold that theopponent has proved that the figures 60 X 60 have become identifiedwith the sarongs and camboys manufactured by the company.
The effect of this decision I shall deal with later on. However thatmay be the opponent company has not by registering its mark acquiredthe exclusive right to the use of the sign and numerals and cannotprevent the applicant using them unless it can establish that the wayin which the applicant 'proposes to use them results in the applicant’smark so nearly resembling his mark as to be calculated to deceive.
The relevant sections restricting the registration of a trade mark aresections 11 and 19 of the Trade Marks Ordinance, No. 15 of 1925.
Section 11 enacts:—“It shall not be lawful to register as a trademark or part of a trade mark any matter, the use of which would byreason of its being calculated to deceive or otherwise be disentitled toprotection in a court of justice or would be contrary to law or morality,or which in the opinion of the Registrar or the court is likely to offendthe religious or racial susceptibilities of any community, or any scandalousdesign.”
Section 11 reproduces section 11 of the Trade Marks Act of 1905 withthe addition of the words “ or which in the opinion of the Registrar orthe court is likely to offend the religious or racial susceptibilities of anycommunity.”
Section 19 reproduces section 19 of the same Act with a difference asregards the date in the case of old marks. It provides that:—“Exceptby order of the court or in the case of trade marks in use before thetwenty-fifth day of March, one thousand eight hundred and eighty-nine,no trade mark shall be registered in respect of any goods or description of
' (1890) 15 A. C., p. 252.
MAARTENSZ A J.—Abdul Coder v. The Madras Palayakat Company, Ltd. 85
^oods which is identical with one belonging to a different proprietorwhich is already on the register with respect to such goods or descriptionof goods or so nearly resembling such a trade mark as to be calculatedto deceive.”
If we discard the evidence afforded by the affidavits, and I think wemust discard that evidence, there remains the simple question whetherthe applicant’s trade mark so nearly resembles the opponent’s trademark as to be calculated to deceive.
If they so resemble each other then the burden of proving that thereis no reasonable probability of deception is cast on the applicant. VideEno v. Dunn (supra). That is the effect of Lord Watson’s decisionreferred to earlier.
The applicant has not discharged that burden and I need only decidethe question whether the opponent’s mark so nearly resembles theapplicant’s mark as to be calculated to deceive.
The question should be determined “ by considering what is theleading characteristic of each. The one might contain many or evenmost of the same elements as the other, and yet the leading, or it may be,the only impression left on the mind might be very different; whilston the other hand a critical comparison of the marks might discloseunseen points of difference, and yet the idea which would remain withany person seeing them apart at different times might be the same.”
I have quoted from the Report of Lord Herschell’s Committeereproduced in Kerly on Trade Marks at page 271. The principles arestated to be in accordance with the leading case of Johnstone v. OrrEwing ’, and the Taendstikker Case ‘, cited as Re Christiansen’sTrade Mark. In the latter case the question arose as to the resemblancebetween two match box labels.
The two labels resembled each other in all the details common to thetrade mark. The only difference was that the word Nitedals was usedin the registered mark and the word Medals in the corresponding spacein the proposed mark.
The Court of Appeal reversing the decision of Chitty J. refused toallow the registration of the proposed mark.
Lord Esher in his judgment said:—“The trade mark is the wholething—the whole picture on each. You have, therefore, to consider thewhole. Mr. Justice Chitty has looked at the distinguishing features.He, I think, only looked at it to see whether, with that distinction, thewhole was like or unlike. That is what he did, but the argument raisedby Mr. Romer, and which was not only shadowed but plainly putforward by his skilful cross-examination, was this: the moment thereis any distinction in any part, the things are at once unlike. That ishis point. Therefore he cross-examined the people thus: -r-The lampsor the medals are alike, and they are common? Yes. The work atthe bottom is common to the trade, and it is the same in both? Yes ;but it is common to the trade. Therefore, he says, everything but thewords medals and nitedals is common, and those two are different, andtherefore the whole is different. It seems to me he has fallen into this
* (1882) r a. c., p. m.
*7 R. P. C., p. 260.
56 MAARTENSZ AX—Abdul Coder v. The Madras Palayakat Company, Ltd.
fallacy—he takes each thing by itself, and says either it is common orit is the same, and leaves out altogether the mode in which the thingsare put together in the two pictures.”
Lindley L.J. was of the same opinion.
Kerly sums up the effect of the judgments at page 273 thus:—“ Sothat where common marks are included in the trade marks to be com-pared, or in one of them, it appears, from the judgments just quoted,that the proper course is to look at the marks as wholes, and not todisregard the parts which are common, although Cairns L.C. in theOrr Ewing Case expressed a different opinion. ”
Farrow’s Case‘ is cited by Kerly as a good illustration of Lord Esher’sRule. There both the applicant and the opponent were mustardmerchants, and both used square boxes covered with yellow labelsprinted in black and red, for these boxes were common to the trade.The applicant placed upon his labels a picture of a charging buffalo,and the opponent a picture of a bull’s head: both pictures were con-tained within silver rings, and these rings were also common to thetrade. Stirling J. said that the buffalo and the bull’s head, as printedin the Trade Mark Journal, were very different, but when they wereplaced upon the coloured labels, the applicant’s label too closelyresembled that of the opponent to be admitted to the register.
According to the rule in the TaendstiJcker Case, in comparing thetwo marks which are the subject of this appeal we cannot disregardthe numerals and sign 60 X 60, whether it is common to the trade ornot or the word Madras.
The two marks have in common the initials or vilasam of the manu-facturer on the top of the device, the word Madras at the bottom placedwithin double lines, and the numerals and sign 60 X 60 in the oval shapedfigure formed by the inner lines of the two double lines.
The lettering in the applicant’s mark is somewhat larger and thickerthan the lettering in the opponent’s registered mark but the numeralsand sign are almost identical in size and thickness.
The leading characteristics in each are the numeral and sign in an ovalfigure between the word Madras and certain letters. The only differenceis in the letters, even in the letters the first letter 14 is common to both.
No doubt the two marks placed side by side would at once show upthe difference in the two devices, the main difference being the wayin which the ends terminate; but the idea which would remain withany person seeing them apart at different times would be the numeralsand sign 60 X 60 in an oval shaped figure between certain letters.
I am of opinion therefore that the applicant’s mark so .nearly resemblesthe opponent’s mark as to be caluculated to deceive and would dismissthe appeal with costs.
(1886) 3 Reports of Patent Cases, p. 54.