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Present: Dalton and Akbar JJ.
JAMES et al. v. SOFER.
219—D. C. (Inty.) Colombo, 1,541.'
Trade t maths—Opposition to registration—Grounds of objection nottaken before Registrar—Right to take in appeal—Ordinance No. 15of 1925, s. 14 (8).
A party opposing an application for the. registration of a trade mark is notentitled to raise at the hearing of an appeal from the decision of the Registrar aground of objection which he did not take before the Registrar but which wasknown to him at the time.
^^PPEAL for an order of the District Judge of Colombo.
H. V. Perera (with Garvin), for appellant.
Hayley, K.G. (with Choksy), for first and second respondenfs.February 19, 1930. Dalton J.—
The applicants, two persons carrying on a partnership under thename of A. F. Jones & Co., applied under the provisions of OrdinanceNo. 15 of 1925 (The Trade Marks Ordinance) in January, i927,for the registration of a trade mark in respect of tea, the markconsisting, amongst other things, of the device of a camel. Theapplication was opposed by tbs present appellant, M. D. Sofer.The opposition was in the prescribed form (document “ B ”)setting out the following grounds of opposition: —
The said trade mark resembles a trade mark I have used for
a long time and to register which 1 made application inJune, 1924, through Messrs. Harrison & Crossfield, Ltd.,Colombo. I enclose a print of my mark.
Application for registration re the said mark has been made
for goods in the same class as mine, to wit, tea.
The essential feature of the trade mark that is now proposedto be registered is the figure of af camel, which is also theexclusive feature of my mark.
A claim is made by me for the exclusive use of this designfor tea.
Affidavits were filed by applicants and the opposer, and afterhearing Counsel for both parties, the Registrar dismissed the" opposition and admitted applicants’ mark for registration. Onthe question of user he held that applicants, had proved that theyhad a longer use of the mark than the appellant.
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Appellant thereupon appealed to the District. Court, Colombo,under the provisions of section 14 (o) of .the Ordinance. Whenthe matter came before the District Court, Counsel for appellantstated he wished to raise further grounds of opposition, allegingthat such further grounds of opposition had been considered by theRegistrar in his decision and that he required no leave of the Courtto do so. * The learned District Judge held that it was immaterialwhether the Registrar had or had no.t considered grounds of objectionoutside those set out by the opposer,' that, the raising of furthergrounds is expressly governed by the provisions of section 14 (8)of the Ordinance,, and on the appeal appellant must be restrictedto the grounds of opposition set out in the document M B filedby him.
Thereupon Counsel for appellant asked for the leave of the Courtto state further grounds of opposition. Upon this application thelearned District Judge directed a written motion to be put in settingout the further grounds off objection which he wished .to raise sothat applicant should have notice so that he might know exactlywhat the further grounds of opposition were, and also decide whetheror not he would withdraw his application. Appellant thereuponfiled further grounds set out in document X. The effect of thefurther grounds was to show that there was a trade mark No. 2,166identical with applicant's mark on the register, that so long asthat mark remains on the register applicants cannqt proceedwith their application, and that their user of the mark sought tobe registered was unlawful. The learned Judge refused theirapplication, basing his refusal upon the decision of Swinfen Eadv
J.In the Matter of an Application for a Trade Mark by Kenrick andJefferson, Ltd.1. He thereupon proceeded with the appeal on thequestion of user. He has dealt with this question at considerablelength and has come to the same conclusion as the Registrar..The appeal was therefore dismissed with costs.
The opposer now appeals to this Court under the provisions ofsection 51 of the Ordinance, both from the conclusion of the District.Judge on the question of user and from his refusal to allow appellantleave to raise new grounds of objection.
On the question of user, as between the parties before us, I seeno reason whatsoever to differ from the finding of the Registrarand the District Judge upon this point. There is ample evidenceto support their finding and it must stand.
The principal ground of appeal is on the question of allowingor disallowing fresh grounds of objection. To deal with that it isnecessary to refer in more detail to what took' place before theRegistrar.
1 26 It. P C. 641.
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I have set out above the original grounds of objection of theappellant. To them the applicants filed a counter statement asprescribed setting out the alleged facts of their user of the device.That statement contains amongst others the following paragraph: —
(2) That we have made every endeavour to register this marksince 1920, but application was refused by the Registrarof Trade Marks as a mark, the essential particulars of whichwere the device of three camels and. the word “ Camels ”was already on record under No. 2,166 in class 42 in the.name of Peek Bros, and Winch, Ltd.
Tea amongst other foods falls within class 42.
The parties thereupon filed affidavits in support of their cases,and no mention is made by the opposer of mark No. 2,166 untilhis last affidavit D 3 where in the last paragraph he makes thefoiiowing statement: —
If as the applicants state in their counter statement Messrs.Peek Bros, and Winch have- already registered this trademark in their name for goods under class 42, 1 doubtwhether the' application by the applicants for registrationof this mark can be allowed without the consent andapproval of Messrs. Peek Bros, and Winch.
Before the matter came on for hearing then before the Registrarthe opposer was fully aware of the fact that mark No. 2,166 wason the. register. His grounds of opposition show that he was puttingforward a. claim to the exclusive user of the mark, the subject ofthe applicants’ application. It must have been obvious to himtherefore, that if mark No.. 2,166 was identical in all essentialparticulars with that, the subject of the present application, it wasnot only a. bar to applicants* claim, but also to his claim to registeritfor himself. Itakeit thereforehe must, with these facts
inhis knowledge,haveelected notto put forward any ground
ofobjection baseduponthe allegedExistence on the register of
the mark that applicants were seeking to register.
Any ground of objection based upon the allegation that the markresembles a mark or marks already on the register must be supportedby the requisite information set out. in Rule 45 of the Trade MarkRules, 1926. It is clear there was no such ground of objection raisedbefore the Registrar. Counsel for appellant urges however .thatthe Registrar dealt with this objection. When the Registrar’sjudgment was read to us at first there seemed to me to be someground. for this argument, but further examination shows that hewas merely dealing with an argument raised by Counsel at the endof his opening, an argument not based upon any of the grounds ofobjection.. The Registrar points out that that aspect of the casehad already been decided, not of course in the proceedings then
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going on before him, but wlien the application bad. been received.It is clear to me that he did not deal with any such ground ofopposition at the hearing before him because he could not do so.The provisions of section 14 (8) of the Ordinance are definite.He had further no material before him to deal with it, even if hehad the power to deal with it without it being raised in the groundsof objection. Counsel for appellant before the Begistrar in openinghis case did state that so long as mark No. 2,166 was on the registerthe application of the applicants could not be allowed, but that wasno part of his case. The Begistrar deals with this argument in hisdecision. He points out that when the present applicants appliedIn December, 1925, to register this mark, the Begistrar at that timeseems to have considered that .the mark was similar to and likelyto be confused with the mark No. 2,166 then and still on the register.Upon this applicants abandoned their application, not questioningthe opinion expressed then. They have however renewed then*application again and the Begistrar definitely points out that thisquestion of the similarity of mark No. 2,166 with the device theywish registered has been duly considered and the application hasbeen allowed to proceed. There is nothing before us to showthat that conclusion was wrong. It will be noted that no objectionhas been lodged by any owner of the mark No. 2,166, althoughthat would not relieve the Begistrar from the duty imposed uponhim under sections 11 and 19 of the Ordinance of not registeringcertain marks mentioned. The question of the identity of markNo. 2,166 with the mark that applicants seek to register did notarise in the proceedings before the Begistrar and does not arisebefore us. The appellant (opposer) had full opportunity if hewished to raise the question, and I think the District Judge wasquite right in- refusing to allow him to raise it on appeal before him.The reasoning applied by Swinfen Eady J. in the case cited abovehas exact application to this case. He said there that it would be •an exceedingly bad precedent if he were to say that, without anyexplanation at all, without any special grounds, an opponent wasat liberty to bring forward on appeal as a matter of course groundsof objection which he knew of before the Begistrar but deliberatelyabstained from raising. As in that case, so here, as I have pointedout above, there is some ground for the conclusion that theopposer deliberately abstained from raising this ground of objection.No explanation has been offered, no special ground has been putforward, apart from the argument that the Begistrar dealt witht-his objection which, as I have pointed out, is not correct. Theappeal is dismissed with costs.
Akbab J.—I agree.
JAMES et al. v. SOFER