ABDUL CAFFOR et al. v. AHAMED et al

109-NLR-NLR-V-43-ABDUL-CAFFOR-et-al.-v.-AHAMED-et-al.pdf


460
Abdul Caff or v. Ahamed.
1942Present : Hearne and Jayetileke JJ.
-ABDUL CAFFOR 'et al v. AHAMED et al.
10—D. C. (Inty) Colombo, No. R (Misc).
Trade Mark:—Application for registration opposed—Grounds of opposition—Refusal by Registrar on ground not taken—Appeal to District Court—Failure to obtain leave to take new ground—Trade Marks Ordinance(Cap. 121), s. 12 (.8).
In an application for the registration of a trade mark, it is withinthe discretion of the Registrar acting on material that has been disclosedbefore him to refuse registration of a trade mark if, on such material,another ground of opposition could properly have been taken by thosewho opposed the registration.
In the event of an appeal to the District Court the Judge of that Courtis entitled to examine only the grdunds of opposition originally takenby the opponents unless at the instance of the Registrar or the opponentsleave is obtained to argue the appeal before the District Court on aground which was not included in the grounds of opposition on which theRegistrar was originally invited to refuse the application.
^PPEAL from an order of the District Judge of Colombo.
This was an application for the registration of a trade mark by theappellants, Rahaman Bros., which was successfully opposed by therespondents. The appellants and the respondents, who are traders inColombo, had for some time been importing Chinaware manufacturedby the Societe Ceramique, which marked its goods with the figure of alion. In 1934, the appellants devised a mark of their own. The main
1 5 (’r. App. i?. oJ.
Abdul Caffor v. Ahamed.
461
feature of which was a lion which they applied to their goods, althoughthe lion mark was not pictorially identical with the lion mark on thegoods of the Societe Ceramique. In 1938, the appellants applied for theregistration of their trade mark. The respondents opposed the applica-tion on the grounds (1) that the applicants were not the proprietors of thetrade mark, (2) that they had used a similar trade mark since May, 1938,and (3) that the use of the mark by the appellants was calculated todeceive the public.
The registrar held that the appellant was not the proprietor of themark which they had applied to register on the ground that it so closelyresembled the mark of the Societe Ceramique as to be calculatedto deceive. On appeal, the District Court affirmed the decision of theRegistrar.
H. V. Perera, K.C. (with him S. J. V. Chelvanayagam), for theapplicants, appellants.—The Registrar refused to register the trade markof the applicants on the ground that it so closely resembled the markof a Dutch Company, Societe Ceramique, as to be calculated to deceive.It was not a ground of opposition taken in the opponent’s notice ofobjections. It was merely pleaded as evidence in support of their mainobjections. In the opponent’s main grounds of opposition their ownmark is in question and not that of the Societe Ceramique, whose mark,it should'be noted, is not registered in Ceylon-.
In regard to the objections actually taken by the opponent, there isno evidence to support them. In regard to the new ground of oppositionit should not have" been upheld by the Registrar, because it was notraised within the statutory period of two months laid down in rule 44of the Trade Marks Ordinance (Subsidiary Legislation, Vol. II., p. 25).
[Jayetilekf. J.—Under section 9 of the Trade Marks Ordinance(Cap. 121), has not the Registrar first to satisfy himself that the interestsof the public are protected ?]
Section 9 has to be read, subject to later sections, e.g., sections 10,12 (8) and 17. The objection that a mark is calculated to deceive hasto be specifically pleaded. As regards the stage at which objectionsmay be raised, the case reported in 26 R. P. C. is of assistance.
Assuming that the Registrar was entitled to take cognizance of a newground of opposition, leave of court should have been obtained to take itat the stage of appeal. The provisions of section 12 (8) have not beencomplied with. See Kerly on Trade Marks (5th ed.), p. 98; James et al. v.Soper'. The District Judge was wrong in upholding the new objectionon the ground that it was covered by the first main ground of oppositiontaken by the respondents.
A third party (in the present case, Societe Ceramique) will not be pre-judiced if our mark is registered, because he would have the remedyof an action for infringement. There is not a single case where a personsuccessfully opposed an application for registration of a trade mark on theground that the applicant’s mark was similar to a third party’s markwhich was not on the register.
43/331 (1930) 31 N. L. R. 362. *
462HEARNE J.—Abdul Cafior v. Ahamed.
N. K. Choksy (with him D. W. Fernando), for the opponents, re-spondents^—No new ground of objection was taken by the opponents.It cannot be said oh the material in this case that the applicant wastaken by surprise.
Even if our objection was too late, the Registrar had the power to actunder section 9, provided that the applicant had full notice of it. Section 9imposes a peremptory duty on the Registrar to protect the publicfrom being deceived. It is not merely a question inter partes; it is aquestion between the applicant on the one hand and the public on theother.
Any person—not merely a person who would be aggrieved by theregistration—may oppose the registration by showing that it oughtnot to be registered. See Kerly on Trade Marks (5th ed.). pp. 80-82.94, 261 ; 46 R. P. C. 99.
The Registrar has a discretion quite above and apart from the statutoryprovisions of section 9.
[Jayetileke J.—Are you not out of Court owing to non-compliancewith the requirements of section 12 (8) ?]^
That section is not applicable where the Registrar acts independentlyof the powers vested in him by section 9. The Registrar has a generaldiscretion—Kerly pp. 209, 312-14, 148 (footnote), 79; 32 Halsbury’s Lawsof England (2nd ed.) 570, 573.
H. V. Perera, K.C., in reply.—The Registrar has to exercise his dutyin the way laid down by the law. One has to give some meaning to“ground of objection”; it must be pleaded in advance. There is afundamental distinction between a ground of objection and evidenceled in support of it ; the latter cannot be treated as an independentground of objection. The law stated in section 9 is not of higher validitythan the law stated in section 12.
Cur. adv. vult.
July 22, 1942. Hearne J.—
This is an appeal by Rahaman Bros, of China street and First Crossstreet, Pettah, who were the applicants for registration of a trade markwhich was successfully opposed by S. M. Assena Marikar & Co.; therespondents to this appeal.
The appellants and the respondents, who are traders in Colombo, hadfor some time been importing Chinaware manufactured by the SocieteCeramique, which marked its goods with the figure of a liori. The markwas not registered ini Ceylon but it became well known in the local market.In 1934, the appellants devised a mark of their own, the main featureof which was a lion, which they applied to their goods, and in 1938the respondents similarly applied to their goods “ the device of a lion ”.In neither case was the lion mark pictorialfy identical with the lion markon the goods of the Societe Ceramique but there can be no doubt thatboth the appellants and the respondent's hoped by the marks they hadrespectively adopted to pass off- goods, not/ of /he manufacture of theSociete Ceramique, as goods of the manufacture of that Company. In1938, the appellants applied for registration of their mark. This wasrefused and on appeal to the District Court the Registrar’s decision wasupheld. An appeal has now been tak£n to this Court.
HEARNE J.—Abdul Caffor v. Ahamed.463
It.i the notice of opposition the following grounds were set out by therespondents. (1) “ That the applicants, Rahaman Bros., are not theproprietors of the trade mark and have never imported goods bearing it.”(2) “ That we have used that mark with slight additions on goods inClass 16 from May, 1938.”(3)“ That the use of the mark by Rahaman
Bros, on goods in the same class is calculated to deceive the publicand will seriously interfere with our trade.”
In regard to (1) it was not the claim of the appellants that they hadimported goods with the identical mark which they were using on theirgoods and the second portion of (1) lacks relevance. (2) is not an inde-pendent ground of opposition. It is an asertion~of fact which must-beread with (3). The grounds of opposition were, therefore, twofold :firstly, that the appellants were not the proprietors of the mark which theysought to register and, secondly, that, as the respondents had used the samemark with slight additions since May, 1938, the use of the mark by theappellants was calculated to deceive the public into thinking that theappellants’ goods were the goods of the respondents and so cause injurs'to the latter’s trade. In view of what transpired during the proceedings,it is to be noted that the respondents did not during the statutory periodof two months from the date of the advertisement of the application forregistration or at any time apply to the Registrar to amend or add to theirgrounds of opposition. In their counter-statement, the appellantsstated that they had been using their mark since 1934 and had no know-ledge that the respondents had been using a similar mark since 1938.
The respondents, as they were required to do, then placed evidencein the form of affidavits in support of their opposition. The affidavitsstated that prior to 1902 the respondents had imported from Hollandc; China and other earthenware goods ” manufactured by the SocieteCeramique, that these goods had “ Lion Brand and Device ” distinctivelymarked on them and that the “ lion mark ”, so it was understood,i: had been registered in British India ”.
It will be seen that no mention was made of the mark which, it had beenalleged in the notice of opposition, the respondents had used since 1938,and also that the material contained in the affidavits has no bearing at allon the question of the proprietorship of the mark which the appellantsdesired to register. It is their mark which was devised by them and“ has been used by them since 1934 ” and it is none the less their markbecause the Societe Ceramique puts a similar mark on its goods. Thepartial imitation by one Company of the mairk of another may entailcertain legal consequences, but it does not make the mark of the formerthe mark of the latter. It follows, therefore, that there was no evidenceto support either of the two grounds of opposition taken by therespondents. The registration of the appellants’ mark was opposed“ because it was not their mark ” and clearly it is. The fact that theSociete Ceramique uses a similar mark is not evidence to the contrary..It was also opposed because it would cause confusion with the mark,not of the Societe Ceramique, but with that of the respondents, and, inregard to this, there is no evidence at all.- .
The Registrar held that the appellants were not the proprietors of themark which they had applied to register for the reason thatit so
464
HEARNE J.—Abdul Caffor v. Ahamed.
closely resembled the mark of the Societe Ceramique as to be calculatedto deceive I have already indicated that the lion mark devised andused by the appellants since 1934 is their mark and the finding of theRegistrar, that it is not, cannot be supported. On the other hand, I agreethat the use by the appellants of their mark would mislead the public.Had the respondents taken as a ground of opposition that the appellants,by the use of their mark, would deceive the public into thinking that thegoods offered by them for sale were .the goods of the Societe Ceramique,then assuming the respondents, were entitled to take this as a ground ofopposition although they were neither the agents nor the representativesof the Societe Ceramique, the application for registration, in my opinion,would have been foredoomed to failure.
But the respondents did not make this a ground of opposition and theRegistrar, therefore, refused registration on a ground of oppositionthat was not set out in the respondents’ notice.
Now.it is, in my opinion, within the discretion of the Registrar, actingon material that has been disclosed at the hearing before him, to refuseregistration of a trade mark if, on such material, another ground ofopposition could properly have been taken by those who opposed registra-tion. But in the event of an.appeal to the District Court the Judge ofthat Court will examine only the grounds of opposition originally takenby the opponents, unless at the instance of the Registrar or the opponentsleave is obtained to argue the appeal before him, on a ground which wasnot included in the grounds of opposition on which the Registrar wasinvited to refuse the application for registration—section 12 (8) of theTrade Marks Ordinance (Cap. 121).
When, in this case, an appeal was preferred to the District Courtno leave was obtained, and the function of the Court was limited to anexamination of the grounds of opposition originally taken by therespondents, the materials adduced in support of those grounds, and suchfurther materials as may have been adduced in support of the samegrounds —section 12(7). This, however, was not appreciated. The
Judge dismissed the appeal on the ground that “ the device of a lionin the trade mark sought to be registered would so closely resemble themark of the Societe Ceramique as to be calculated to deceive ”. Thiswas not one of the, grounds of opposition. It would have been madea ground of opposition before the Registrar but. it was not. Leavecould have been obtained to make it a ground of opposition before theDistrict Court, but the leave of the Court was not sought. .
The appeal is allowed with costs in this Court and the District Courtand before the Registrar. As the original grounds of opposition wereunsupported by relevant evidence and as no' permission was obtainedto take a fresh ground, the logical order to make—and I accordingiymake it—is that the Registrar be required to- register the appellants’mark.’/
The consequence of this order/will he that there will appear in theregister and on the appellants’ .goods a mark which may and probably
MOSELEY S.P.J.—The King v. Burke.
465
will enable the appellants to pass off their goods as the goods of the'Societe Ceramique. But the matter is not beyond legal remedy. An“ aggrieved party ” may apply to have the mark expunged from theregister, subject to the provisions of section 40.
Jayetileke J.—I .agree.
Appeal allowed-