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Present : Schneider and Garvin JJ.
DE SILVA v. LEVER.202—D. G. Colombo, 1,217.Costs—Proceedings wider Trade Marks Ordinance—Stamp duty—CivilProcedure CodeP Schedule III*
In proceedings under the Trade Marks .Ordinance the class inwhich the costs should be taxed is determined by the value of thesubject-matter of the action, and not by the class in which theproceedings arc stamped.
HE appellant was the respondent to an application for theregistration of a trade mark. After inquiry the application
was refused by the District Court and costs were awarded to therespondent. A bill of costs was submitted to the Secretary whotaxed the bill upon the basis that the costs should be computed uponthe scale fixed by Class I., Schedule III. of the Civil Procedure Code.On application made to the District Judge to revise the taxation,he confirmed the order of the Secretary from which the respondentappealed.
Garvin, for respondent-, appellant. ■
March 16, 1927. Schxkioek J.—
The respondent to this appeal applied for the registration of atrade mark. His application was opposed by the, appellant; andin accordance with the provisions of the Trade Marks Ordinance,No. 14 of 1888, the matter was brought before the District Couxi; ofColombo. The appellant succeeded thei*e, and was awarded costs.His costs, it is stated, were taxed according to the scale in Class I.in Schedule IIL of the Civil Procedure Code, v'.c., in the lowest scaleof costs for proceedings in District Courts. The appellant beingdissatisfied as to the scale adopted by the taxing officer, the questionwas referred to the District Judge under section 214 of the ProcedureCode. He upheld the ruling of his officer. This appeal is fromthat order of the District Judge. The simple question is, in whatclass of those classes given in Schedule III. the costs should be taxedin proceedings in Court brought before it under section 11 of theTrade Marks Ordinance. The reason stated for adopting thelowest class is that as the stamp duty on the proceedings were paid• in the lowest class, the class for other costs should also be in thelowest class. I am not disposed to take that view. The reasonwhy the minimum stamp duty has beeri paid is that the TradeMarks Ordinance in sections 82 and 83 contained an express provision
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JH Silva v.
that tlie stamp duties chargeable in the District Court and SupremeCourt on proceedings under the Trade Marks Ordinance shall bethe minimum chargeable iu those Courts in civil proceedings underthe provisions of the Ordinance for the time being in force relatingto* stamps. The decision of the appeal turns upon the questionwhether that express provision is sufficient indication that thelegislature intended that all other costs in such proceedings shouldbe in the lowest class of costs in Schedule III. of the Procedure Code.
I am unable to take that view. The rates or scales of costs andcharges in Schedule III. of the Civil Procedure Code, and the tablescontaining the duties on law proceedings ir; Schedule B of theStamp Ordinance, No. 22 of 1909, which is the Ordinance now inforce, are not based upon identical monetary limits. One commonelement there is, that is that the division between class and class inboth enactments turns upon a monetary limit, but the classificationsof the limits are different. The Stamp Ordinance is silent as towhat the sum of money mentioned at the head of each class repre-sents. Obviously it refers to the same thing as the Civil ProcedureCode does. The Civil Procedure Code (Schedule III.) says that thesum is the value of " the cause of action, title to land or property/'or of the “ Estate or subject-matter of the action." Costs do notmean stamp duty alone. That duty in most actions is not even themore considerable part of the costs. In section 208 the ProcedureCode enacts that under the denomination of costs are to be“ included the whole of the expenses necessarily incurred by eitherparty on account of the action and in enforcing the decree passedtherein, such as the expense of stamps, of summoning the defendantsand witnesses, and of other processes, or of procuring copies ofdocuments, fees and charges of Advocates and Proctors, charges ofwitnesses, and expenses of commissioners either in taking evidenceor in local investigations, or in investigations into accounts; and^11 other expenses of procuring and adducing necessary evidence."The costs of an action, other than the expense of stamps, beingmuch the more considerable part, it is not likely that if the Legis-lature intended to restrict all costs to the lowest class to be foundin both enactments, it would not have manifested that intention byexpressly saying so. The omission seems rather to favour theinference that it did not desire to make any special provision asregards costs other than the. expense of stamps. If the specialprovision in the Trade Marks OfrcKnance did not exist, it is apparentthat a value would have to be placed tlf£b& the subject-matter of theproceedings in Court which is an action as defined in the Code.Ordinarily that value is expressly pleaded, by the plaintiff or petitioner .seeking relief (section 6, Civil Procedure Code). It is open to theother party to adopt that valuation or challenge it. In the latter•case the Court will have to determine that dispute as well. There
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appears to be no good reason why the ordinary method of valuingr.he subject-matter of an action should not be followed in regard toproceedings in Court under the Trade Marks Ordinance. A trademark is property. It has a commercial value. It is bought and sold.Its value may differ as regards the parties to the proceedings.It may be ol' greater or less value to the appellant than it is to therespondent. Niceties of law frequently arise in connection withthe proceedings in Court. Parties frequently retain leading Counselto appear for them in Court. The questions involved may he ofsufficient importance and value as to give the parties a right ofappeal to the Privy Council. It would be a distinct hardship tolimit the costs which are awarded to the successful party to thelowest scale in Schedule III., that is. to costs in a case “ underBs. 200. ” Costs taxed in that class would deprive him of a largepart of his actual expenses of the litigation. The Stamp Ordinance,while silent as to the duties chargeable in proceedings under theTrade Marks Ordinance, has special provisions as to the dutieschargeable in certain special cases. For instance, it is enacted(Schedule B—Part II.—Miscellaneous) that proceedings under thePatents Ordinance and Matrimonial “ Suits M shall be charged “ asof the value of Rs. 5,000/’ The sum mentioned suggests that itwas intended not to deprive the parties of the right of appealingto the Privy Council. Even in those cases I would not be disposedto hold that the other costs should not be taxed in a different classthan the Bs. 5,000 class. It is worth noticing that, where theintention was to legislate specially as regards all costs, the Legislaturehas expressly stated that. Wedged in between the provision asregards the duties chargeable in proceedings * under the PatentsOrdinance, and the provision as regards Matrimonial Suits is aspecial provision regarding proceedings under the Small TenementsOrdinance. It is there enacted not only that the stamp duty shallbe charged as if the action were of the value of Bs. 50, but that “ allcosts and fees are to be taxed as of suits in that class/’
I therefore conclude that there is no express enactment limitingthe costs, other than stamp duty, to any particular class in ScheduleIII. in proceedings under the Trade Marks Ordinance, and thereis no reason for inferring that such a limitation is to be gathered byimplication from the special- provision regarding stamp duties inthe Trade Marks Ordinance. I hold that proceedings under theTrade Marks Ordinance should be valued as in ordinary actions, andthe class of.costs determined upon such valuation. In the specialcircumstances of this case I direct that the appellant should firstplace a value upon the registration of the trade mark applied for bythe respondent, and if the respondent does not accept that value,that the Court shall determine, upon evidence if necessary, whatvalue should be placed upon the subject-matter of the litigation.
De Silva v.Lever
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De Silva v.J,evvr
I set aside the order of the District Judge regarding the taxationof costs, and remit the record for proceedings as indicated above.The appellant will have his costs of this appeal, and of the proceed-ings which resulted in the appeal.
This appeal raises a question as to the basis upon which costsawarded in a proceeding under section 11 of the Trade MarksOrdinance, No. 14 of 1888, should be assessed.
The appellant was the respondent to an application for registrationof a trade mark. After inquiry the application was refused andcosts awarded to the respondent. A bill of costs was duly submittedto the Secretary who has taxed the bill upon the basis that thesecosts should be computed upon the scale fixed by class I., ScheduleIII., of the Civil Procedure Code. On application made to theDistrict Judge to revise the taxation he confirmed the taxationmade by the Secretary. The principal ground upon which thisorder is founded is that in the 'District Judge’s view the provisionsof section 32 of the Trade Marks Ordinance indicate that it was th'eintention of the Legislature that the costs of such an applicationshould be in the lowest class. Now section 32 provides that inproceedings in Court taken under the provisions of the Trade MarksOrdinance the minimum stamp duty chargeable in civil proceedingsin the District Court, under the Ordinance for the time being inforce relating to stamps, shall be charged. It does not say anythingin regard to the basis upon which costs in the case of such applicationshould be taxed. The Judge, however, arrived at his conclusion bythe application of a rule which he states as follows:—“ That stampsand costs are all of the same class.” By this presumably the DistrictJudge means that the class of Schedule B, Part II., of the StampOrdinance within which an action falls for the purpose of assessmentof stamp duty determines the class of Schedule III. of the Civil Pro-cedure Code on the scale of which the costs of such an action are to becomputed. That this is not invariably the case is evident from acomparison of Part II. of the schedule to the Stamp Ordinancerelating to duties on law proceedings in the District Court andSchedule III. of the Civil Procedure Code which specifies the scale ofcosts and charges payable in District Court cases. In eacli case theclasses are fixed' with reference to the value of the subject-matterof the action but the several classes into which the respectiveschedules are divided are not determined on exactly the same basis.Class I. of the Stamp Ordinance relates to actions where the subject-matter is Rs. 300 and under. Class I. in the schedule of the Civil.Procedure Code referred to relates to actions in which the claim isunder Rs. 200 and similar differences exist throughout the wholeclassification. To take a concrete case an action where the subject-matter is of the value of Rs. 650 falls for purposes of stamp duty
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within Class III. and for purpose of computation of costs within 1927.Class II. of the schedule. The mere fact therefore that the Legisla- Gabvin j.ture has thought fit to limit the stamp duty payable in these proceed- ^ings to the duties chargeable in Class I. of Part II. of the Stamp Ordi-V
nance is not of itself a sufficient reason for holding that the Legisla-ture intended that the costs awarded in such a proceeding must becalculated in accordance with the scale in Class I. of Schedule m.to the Civil Procedure Code. The question must be determinedwith reference to Chapter II. of the Civil Procedure Code. Section'214t provides that all bills of costs shall be taxed according to the*cale specified in Schedule HE. A reference to Schedule HI. makesit'quite clear that the particular scale upon which the costs in agiven case must be computed depends upon the value of the subject-matter of-the action. The test therefore for determining the basisupon which costs are to be computed is not the class of action asdetermined' for the purpose of the stamp duties chargeable but theclass of Schedule HI. into which the action falls by reason of thevalue of . the subject-matter. The right-asserted in these proceedingsis the right to register a certain trade mark and the value of thatright must be decisive of the scale upon which the costs in such aproceeding are to be computed. The applicant has not set out in-his petition the value of the right claimed by him nor is there anystatement by the opponent as to the value he sets upon the right•claimed. This is doubtless due to the circumstance that for purposes-of stamp .duty all these proceedings are treated as coming .withinthe , lowest class. It is necessary that this right should be valuedand the case must be remitted to the Court below for this purpose.
Since the above was written I have had the advantage of seeingthe judgment proposed by my brother with which I agree.
DE SILVA v. LEVER