KUMARAVEK NADAR et al , Appellants and SOKKALAL RAM , Respondent

052-NLR-NLR-V-47-KUMARAVEK-NADAR-et-al-Appellants-and-SOKKALAL-RAM-Respondent.pdf


Kutnaravel Nadar v. Sokkalal Ram.
149
1939Present: Soertsz A.C.J. and Wijeyewardene J.KUMARAVEL NADAR el al., Appellants, and SOKKALAL RAM,
Respondent.
116—D. C. Colombo, 6,138.
Trade Marl's—Action for infringement by proprietor of trade mark—Prioruser of similar trade mark by defeti/lant-—Honest concurrent user also—Effect of—Trade Marks Ordinance (Cap. 121), ss. 40, 19.
1 •J . N. A 60949 (4/46)
•IOU
SUKRTSZ A.C.J.—Kumaravel Nadar v. Hokkalal Ham.
The proprietor of a registered trade mark is not entitled to prevent theuser of a similar trade mark by a person who has had continuous userof it from an anterior date within the meaning of section 40 of the TradeMarks Ordinance. Nor can he oppose its registration by the otherperson where there has been honest concurrent user within the meaningof section 19 of the Ordinance.
A
PPEAL from a judgment of the District Court of Colombo. Theplaintiff filed this action against the defendants in November,
1936, alleging that the defendants had infringed two trade marks (P 1and P 2) registered by him in 1930 and 1934 in respect of beedies andpassed off beedies not of the plaintiff’s manufacture as and for the plaintiff’sbeedies. The defendants filed answer pleading prior user and honestconcurrent user, under sections 40 and 19 of the Trade Marks Ordinance(Cap. 121). According to the facts as found by the Supreme Court theplaintiff's and the defendants’ marks resembled each other, but thedefendants had registered their mark (D 1) in Madras in 1915 and usedcontinuously in Ceylon the device on the trade mark D 1 from January,1916, whereas the plaintiff had had no user of the devices on P 1 and P 2prior to that date. It was algo found that the defendants’ mark hadbeen in circulation side by side with the plaintiff’s mark for a long time,■when the plaintiff went and registered his mark under the CeylonTrade Marks Ordinance.
H. V. Perera, K.C. (with him N. K. Choksy and C. C. Rasa-Ratnam)for the defendants, appellants.
R. L. Pereira, K.C. (with him S. Aiyar and V. A. Kandiah), for theplaintiff, respondent.
Cur. adv. vuU.
June 19, 1939. Soertsz A.C.J.—
I have had the advantage of reading the judgment prepared by mybrother Wijeyewardene, and I agree with the conclusions to which hehas come and the order he proposes. A separate judgment seems hardlynecessary, but as we are reversing the trial Judge on what are, after all,questions of fact, I thought I should state briefly my reasons for takingviews different from his.
The learned Judge tried this case with great care and patience, and hehas in a very full judgment given his reasons for holding as he did, but Ifind that he has misdirected himself on several matters of importance.For instance, if he has not overlooked entirely, he has, at least, failedto give due weight to the indisputable fact that the defendants registeredtheir mark as far back as 1915 in the book kept by the Chamber ofCommerce in Madras. That mark is identical with D1 save for thefact that the letter press on it is in the Maharatti language, while in D 1it is “partly in Maharatti and partly in Tamil. It is true that in someparts of his judgment the trial Judge refers to this registration by thedefendants in 1915, but when he comes to assess the value of the Indianregistrations, this is what lie says : “ for the purpose of a decision of thematters in dispute between the parties as .regards registration in Ceylon,the existence of the registration by the defendants of their portrait labelwith any Chamber of Commerce in Madras or Calcutta does not, therefore.
BOKRTttZ A.U.J.—K.umaravel -Nadar v. Sokkafal Ham.
151
give them any legal rights except affording evidence of user as claimedby them. As regards the registration with the Chamber of Commerce,the evidence is that the defendants registered their trade mark with theChamber of Commerce in Calcutta in 1925, and that the plaintiff registeredhis label in Madras at an anterior date in 1917
This, in my view, is a serious mistake of fact. It pays no attentionto the defendants’ registration in Madras in 1915. It also contains aproposition of law too unqualified to be sound. I refer to the statementthat the Indian registrations gave no legal rights to the parties and onlyafforded evidence of user. That is hardly a correct statement. It istrue that those registrations gave no such legal rights as registrationunder a Trade Marks Statute or Ordinance gives, but in regard to thecommon law actions available to the parties, those registrations had animportant bearing on their legal position.
So far as we are concerned, in this ease too, the Indian registrationshave an important bearing on the legal rights of the parties in view ofthe defences of prior and honest concurrent user set up by the defendants,and, in that way, it is not unconnected with the case of infringementalleged by the plaintiff.
I will first deal with the question of infringement. If I were examiningthis matter in the abstract, so to speak, I should say that the defendants’label so resembled the plaintiff’s as to be calculated to deceiveand is, therefore, an infringement ofhis mark. But in
this case, the question of infringement cannot be disposedof in that manner. We have very cogent documentary evidenceto show that several manufacturers of Beedies used markssimilar to the plaintiff’s and defendants’ marks, the distinctive featurein each case being the particular portrait impressed upon it. Bach manu-facturer had his portrait or the portrait of some member of his familyon his mark, but in other respects there was great similarity between thelabels. The plaintiff’s case is that his Beedies were known as Sokalaland Ram Sait Beedies, and also as photo mark Beedies. On the evidence,it is impossible to hold that he has established the fact that his Beediesexclusively had come to be known as Photo Beedies. It is hardlylikely that they were so known in view of the number of manufacturerswhose marks included a portrait.
It seems well established, however, that the plaintiff’s Beedies wereknown after his name as Ram Sait or Sokalal Beedies, just as thedefendants’ were known as Kumaravel Beedies—for that was his name—■and this fact, in my opinion, shows that dealers and consumers wereguided in their ^transactions by the portrait on the mark. If they wantedRam Sait or Sokalal beedies, they looked to see whether the plaintiff’sportrait as they knew it appeared on the mark. And so in regard tothe other beedies, they appear to have guided themselves by the portrait.The result is that although the plaintiff’s and the defendants’ marksresembled each other so much that they were likely to deceive, theydid not, in faot, deceive the parties concerned. And that, I think,explains the absence of evidence of actual deception. Kerly at page294 of the Sixth Edition of his Book on Trade Marks cites a number ofauthorities for the proposition that “ the absence of evidence of actual
SOERTSZ A.C..r.—tiua/atavel Na^lar v Sokkatel Rtrm.
deception is a circumstance which varies greatly in weight according tothe nature of the ease …. Where the marks have been circulat-ing side by side in the market where deception is alleged to be probable,iho fact that no one appears to be misled is very material unless theabsence of such evidence is satisfactorily explained ”. In this case,there is an absence of such evidence without satisfactory explanation,and my view', therefore, is that if these marks had been circulating sideby side for a long time without any complaint of deception, there couldnot have been deception. That brings me to a consideration of thequestion whether such collateral circulation of the two marks existed.
As I have stated, it is indisputable that in 1915 the defendants regis-tered their mark in Madras, and there is documentary evidence to showthat from 1916 onwards defendants’ beedies were being imported bydealers here. The defendants’ case is that those beedies bore this mark.That case is consistent with probability. The learned Judge, however,takes the view that there is nothing to show that the defendants’ beediesthat came to Ceylon before 1928 or so were beedies with this mark.He says that it is possible those beedies had some other mark. Heoverlooks the clear evidence there is to the effect that till 1925 thedefendants had no other mark. The plaintiff has not led any evidenceto show that they had. If then the mark the defendants registered inMadras in 1915 was their only mark till 1925, it is reasonable to supposethat that was the mark used to cover the defendants’ beedies that cameinto Ceylon between 1915 and 1925. That the defendants used this markon beedies they sent out from 1928 onwards is found by the learnedJudge to be well-established. In my view, therefore, the defendantsha ve made out a strong ease that their mark had been in circulationside by side with the plaintiff’s mark for a long time, when the plaintiffwent and registered his mark under the Ceylon Trade Marks Ordinance.Quite apart from the bearing this fact has on the question of infringe-ment, it establishes the other defence set up by the defendants that theyhave had honest concurrent user. Besides the evidence I have referredto already, there are many other documents that prove concurrent userby the defendants of this mark without any protest or complaint by theplaintiff. That he was well aware of this state of things is beyondquestion. He and the defendants had their factories in close proximityto each other and their goods were despatched from one RailwayStation.
The very strong impression I have received from a careful considera-tion of this case is that the plaintiff, once he forestalled the defendantsin the matter of local registration under the Ordinance, made up his mindthat he was entitled by virtue of his registration to oust the defendantsfrom their right to the mark they had been using. But that, of course,is not so.
Another matter on which the trial Judge has misdirected himselfis this.
When the defendants sought to register their mark after the plaintiffhad registered liis, the Registrar refused to register it on the ground ofresemblance and intimated to them that he was prepared to hear themon the point. The defendants failed to pursue the matter and the
WIJEYEWARDENB J.—JCumardvel Nadar v Sokkalal Bam.
153
Registrar treated the defendants’ application as abandoned. The-learned trial Judge has, if I may say so, rightly held that the defendantsare not barred by that fact from setting up their present defenoe, butit is clear from his judgment that he has been greatly influenced by thedefendants’ failure to pursue the matter with the Registrar. lake wisethe learned Judge comments upon the attitude of the defendants in regardto their application to register the Falcon Brand Mark, their undertakingto delete that portion of that mark that contains the portrait, and heappears to think that their attitude in these matters indicates a con-sciousness of guilt. In that view of the matter, he is inevitably led to theconclusion that such user of this mark as there was by the defendantsfrom 1928 was not an honest concurrent user. Here again it is obviousthat the Judge has overlooked or ignored the well-established fact thatthe defendants had this mark registered in 1915 and that, therefore,their claim to have used it from that time onwards is inherently probable.That claim is, as I have observed, based on evidence oral and documentary.
As I have come to these conclusions on the question of infringementand of honest concurrent user, I do not think it necessary to considerthe plea of prior user.
For these reasons I agree that the appeal should be allowed in themanner stated by. my brother in his order.
WUEYEWARDENE J.
The plaintiff filed the present action- against the defendants .in theDistrict Court of Colombo in November, 1936, alleging that the defendantshad infringed his registered trade marks in respect of beedies and passedoff beedies not of the plaintiff’s manufacture as and for the plaintiff’sbeedies. Beedies it may be mentioned are small Indian cigars madeof Indian tobacco and manufactured mainly in India. They are sold atabout Rs. 26 per 36,000 beedies.
In the plaint the plaintiff stated—
that he was the proprietor of the two trade marks No. 4,919
(vide PI) and No. 5,929 (vide P2) registered by him in Ceylonon June 15, 1930, and September 26, 1934, respectively underthe “ Trade Marks Ordinance, No. 15 of 1925 ” (LegislativeEnactments, Vol. 3, Chapter 121) ;
that he had extensively used these trade marks on packets of
beedies manufactured and sold by him since the years 1926and 1934 and as a result his beedies bearing the marks inquestion had become known in the market as Photo MarkBeedies, Ram Sait Beedies and Sockalal Beedies ;
that he was “ accustomed to paste upon the beedies manufactured
and sold by him a number of small square labels and colouredalternatively rose, green, yellow and gilt ” and the beediesbearing the square labels so coloured were known in the marketas the plaintiff’s beedies ;
that the defendants were selling beedies not of the plaintiff’s
manufacture with wrappers bearing a mark consisting of a
164
WIJEYEWARDENE J.—Kumaravel Nadar v. SokkalcU Ram.
device resembling the device on his trade marks and that theyhad pasted upon their beedies small square labels colouredsimilar to his labels ;
that the defendants had advertised, invoiced and sold at Colombobeedies not of his manufacture as Photo Mark Beedies.
Immediately after the institution of the action the plaintiff asked forand obtained an interim injunction from the District Judge of Colomborestraining the defendants, their agents and servants from infringing histrade marks and from passing off beedies not of the plaintiff’s manu-facture as and for the plaintiff’s beedies. In December, 1936, thedefendants applied for the dissolution of the interim injunction, and onthis application the District Judge held an inquiry. After the inquiryhad proceeded for some days, the plaintiff agreed at the suggestion ofthe Judge to the suspension of the interim injunction “ without prejudiceto the rights of the parties”. The Judge accordingly suspended theinterim injunction on February 8, 1937.
The first four defendants filed answer on February 15, 1937, statingthat they were carrying on business in partnership and that the fifthdefendant was merely an employee under them. They denied that theyhad infringed the plaintiff’s trade marks, imitated the get up of theplaintiff’s beedies or passed off their beedies as plaintiff’s beedies. Theyfurther pleaded—
(а)that the plaintiff was not entitled to the exclusive use of the
portrait as a trade mark ;
(б)that the device and matter surrounding the portrait on plaintiff’s
trade marks were common to the beedie trade and were non-distinctive and that therefore the plaintiff was not entitled toprevent the use of such matter and devices by the defendants ;
that they have been continuously using their trade mark from a
date anterior to the user or registration of the plaintiff’s trademarks in terms of section 42 of the Trade Marks Ordinance(vide Legislative Enactments, Vol. 3, Chapter 121, section 40) ;
that they have had honest concurrent user of their trade mark
and were therefore entitled to claim the benefit of section 21of the Trade Marks Ordinance (Leg. En., Vol. 3, Cap. 121,sec. 19).
The fifth defendant filed a separate answer supporting the otherdefendants. The plaintiff filed a replication on June 25, 1937, and anamended replication on July 19, 1937.
The trial before the District Judge commenced on June 30, 1937.The Judge permitted quite a large number of issues to be framed, someissues overlapping the others. The hearing of evidence concluded onDecember 17, 1937, and the counsel addressed the Judge in Februaryand early March, 1938. The learned District Judge delivered judgmenton June 17, 1938, granting the plaintiff the relief claimed in the plaintagainst all defendants.
The first four defendants have preferred the present appeal againstthat judgment. The plaintiff is the main respondent to this appeal.
WUE YEW ARDEN E J.—Kumaravel Nadar v. Sokkaial Ram.
155
The fifth defendant has been made a respondent presumably to ensurethe proper constitution of the appeal as required by the provisions of theCivil Procedure Code, 1889 (Leg. En., Vol. 2, Cap. 86).
The trade mark No. 4,919 appearing on PI which is the connectedapplication for registration contains in the centre a portrait of the plaintiffwho is a man of South India wearing a North Indian turban and an opencoat without a tie. There is a halo serving as a background. On eitherside of the figure is a pillar above which is draped a curtain. At eachof the four comers of the coloured design surrounding the portrait, thepillars and the curtain is a plane, and between each set of planes is afigure like an elongated dumb-bell. The outstanding colours used tocomplete the picture are black and yellow. On all sides of the portraitthere are legends in Marathi and Tamil.
The trade mark 5,929 appearing in P2 which is the relative Certificateof Registration for use in Legal Proceedings consists of the device of acircle containing a portrait as depicted in trade mark 4,919.
The trade markNo. 5,903 of the defendants (vide PI) contain sin the centrea portrait of the first defendant, who is himself a man of South India,wearing a North Indian turban and an open coat without a tie. Thereare also the halo serving as a background, the pillars, the drapery, theplanes and the elongated dumb-bells placed in the same position as in theplaintiff’s trade mark 4,919. There are also some legends on all sides ofthe portrait in Marathi and Tamil. The predominating colours are blackand yellow.
There are, no doubt, some differences in detail between the competingtrade marks and the portraits of course differ as they are portraits ofdifferent persons. It is most probable that a person of ordinary intel-ligence having the plaintiff’s and defendants’ trade marks side by sideand observing them with some care will note these points of difference.But the true test to be applied in cases of this kind is to be found in thefollowing extract (vide The Law of Trade Marks by Kerly, 5th edition,page 274) from the report of Lord Herschell’s Committee appointed bythe Board of Trade to inquire into the duties, organisation and arrange-ments of the Patent Office under the English Act of 1883.
“ Two marks, when placed side by side may exhibit many and variousdifferences yet the main idea left on the mind by both may be the same ;so that a person acquainted with the mark first registered and not havingthe two side by side for comparison might well be deceived, if the goodswere allowed to be impressed with the second mark, into a belief that hewas dealing with goods which bore the same mark as that with which hewas acquainted.
“ Take for example a mark representing a game of football; anothermark may show players in different dress and in very different positionsand yet the idea conveyed by each might be simply a game of football.It would be too much to expect that persons dealing with trade markedgoods and relying, as they frequently do, upon marks should be able toremember the exact details of the marks upon the goods with whichthey are in the habit of dealing ”.
Reported cases on the subject of the infringement of trade markscannot possibly be of much assistance on the question of the quantum
156
WIJEYEWARDENE J.—Kuinaravel Nadar v. Sok kalal Sam.
of resemblance which a court may regard as necessary for holding in aparticular case that a mark is calculated to deceive. It is purely aquestion of fact whether any particular mark, whatever the variationsmay be between it and the registered mark of the rival trader, is calculatedto induce the belief that the goods to which the offending mark has beenapplied are the goods of the rival trader. Slight variations or differencesin detail which are not likely to affect the general impression created onthe minds of the purchasers should be disregarded and if, in fact, CO21-sidered should be considered as so many “ badges of fraud ”.
The evidence in this case establishes beyond doubt that the pur-chasers of beedies are mostly ignorant people and these people may beconsidered in certain circumstances as likely to associate with theplaintiff’s goods an impression of the portrait of a man surrounded byrays of Hght.
The question that arises in the present case is, however, not free fromdifficulty in view of the fact that the competing trade marks have beenin use in India and Ceylon for a considerable time and the plaintiff hasfailed to adduce evidence of any probative value to prove actual decep-tion. It was not practically impossible for the plaintiff to have ledevidence to prove that purchasers have been actually deceived if therewas, in fact, such deception. This failure on the part of the plaintiffraises, therefore, a strong presumption against the probability of de-ception.
The plaintiff has sought to support his claim for the exclusive use ofhis trade marks on the ground that his beedies have become known inthe market as Photo Beedies. It should, however, be noted that in theplaint itself the plaintiff alleged that his beedies were known not onlyas Photo Beedies but also as Ram Sait Beedies and Sockalal Beedies.It is more likely that the plaintiff’s beedies would be known by the lasttwo names as the words Ram Sait and Sockalal appear on the devicein order that they may be distinguished from other beedies containingthe portraits of their respective manufacturers. The defendants them-selves have registered their trade mark containing the first defendant’sportrait in Madras in 1915 and in Calcutta in 1925. The defendantshave further produced labels D7, D8, D9, DIO, Dll and D12 as evidenceof the fact that labels containing portraits of other beedie manufacturershave been used on packets of beedies sold by those manufacturers.The document P60 throws considerable doubt on the plaintiff’s casethat his beedies have gained a reputation in the market as Photo Beedies.Some few years ago small dealers attempted to import beedi tobaccofrom India and manufacture the cigars locally in order to avoid the pay-ment of high Customs duty on beedi cigars. These local manufacturerstried to pass off their beedies as manufactured in India by some Indianmanufacturers. The plaintiff learnt that some Ceylon manufacturerswere wrongly using his label on local manufactured beedies and sent thecircular P60 warning “all Printers, Beedi sellers and Beedi smokingpatrons In this circular he referred to his own beedies as SockalalRam Sait Beedies and not as Photo Beedies. I am unable to acceptthe plaintiff’s case that his beedies have become known as Photo Beediesor that the defendants’ trade mark containing the portrait of the first
WIJKYEWARDENE J.—Kumaravei Nadar v, Sukkaial Ram.
157
defendant would be likely to suggest the use of the name Photo Beediesfor the defendants’ beedies. I think the evidence establishes the factthat the various portrait beedies were known in the market by the namesof the manufacturers whose portraits appeared in the labels.
If I had to reach a decision in this case solely on the question whetherthe defendants’ trade mark so clearly resembled the plaintiff’s trade markas to be calculated to deceive, I would not, in any event, have grantedto the plaintiff the relief asked for in the plaint without some substantialmodifications.
I think it desirable at this stage to refer to the steps taken by thedefendants to register in Ceylon certain marks including the mark inquestion before the institution of this action.
The first defendant applied under section 12 of the Trade MarksOrdinance [vide Leg. En., Vol. 3j Cap. 121, sec. 10) to the Registrar byP10 of February 6, 1934, for the registration of his portrait label consti-tuting the trade mark 5,903. This label has on it the words “ IthuwaAsal Sait ” which means “ This is the true Sait ”. I do not think thelearned District Judge is justified in drawing the inference that thedefendants intended thereby to create the impression dishonestly thatthe portrait was the plaintiff’s portrait. It is more likely that the wordswere intended to convey the meaning that the Sait on their label was atrue Sait and not a spurious Sait as appearing on the plaintiff’s label orother portrait labels.
Finding on his register the plaintiff’s trade mark No. 4,919 which hethought resembled the mark in question the Registrar informed the firstdefendant that he was prepared to hear him before making an orderon his application (vide P14). After some proceedings before theRegistrar in which the plaintiff took no part (vide D42) the first defendant,by his letter D43 of August 11,1936, moved to withdraw his application forregistration “ without prejudice to his rights ”. When -this letter wasreceived at the Office of the Registrar the following endorsement wasmade on P10 by a clerk of the Registrar :—“ treated as abandonedThere is no specific evidence on the point whether the clerk who made theendorsement was an officer in the Registrar-General’s Departmentauthorised by general or special order of the Governor to perform sucha duty under the Trade Marks Ordinance (vide Leg. En., Vol. 3, Cap. 121,sec. 69). It may be added that the defendants’ application P10 was notadvertised and that no notice of opposition was given by the plaintiff.The defendants made another application No. 6,391 (P13 of January11, 1936) for the registration of the Falcon Brand Trade Mark whichconsisted of three separate devices. The device at the top is said to bethat of falcons and the one below it was a circular device containing aportrait of the first defendant. The plaintiff opposed this applicationon the ground that the circular device resembled his trade mark 5,929.The defendants, thereupon, moved to delete the circular device from thisapplication No. 6,391 “ without prejudice to their rights under theregulation of the relative Trade Marks Ordinance in the proceedings ofour trade mark applications Nos. 5,915 and 6,"392 along with the substi-tuted steps ” and the plaintiff agreed to it (vide P15, P15a, P15 b,D21, D22, D23). The defendants made a further application No. 6,392
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WJJEYEWARDENE J.—Kuniaravel Nadar v. Sokkalal Sam.
(P16 of January 11, 1936) for the registration of their “ Gilt ” labelwhich consisted of three devices the first two of which contained aportrait of the first defendant. The Registrar wrote PI 7a of January29, 1936, stating that he would not take action on this applicationpending his decision on the plaintiff’s application No. 6,915 for theregistration of his Palai Sait Trade Mark. After some correspondencethe defendants moved to amend the trade mark. The Registrar in-formed them that no action would be taken by him pending the decisionin the present action. (Vide D68 of July 6, 1937).
During the course of this case the defendants made applicationsNos. 6,778, 6,779, 6,780 (vide D69, D70, D71) on July 1, 1937, for theregistration of three marks containing a portrait of the first defendant.The Registrar wrote P71, P72, P73 stating that he considered themarks to be registered resembled the marks already on his register andoffering to hear the defendants before making an order. The defendants,thereupon, wrote P71a of August 6, 1937, pointing out that they hadapplied to Court in the present case for the registration of these marksand asking the Registrar to defer taking action pending the decision ofthe Court.
It was not sought to be argued before this court that the proceedingsbefore the Registrar operated as a bar against the defence in the presentcase. It was, however, suggested that the proceedings showed dishonestconduct on the part of the defendants though it was not stated speci-fically what this dishonest conduct was. I fad to see how the withdrawalof some of the applications by the defendants would justify a court indrawing any inference prejudicial to the defendants in view of their longuser of the trade mark. It is not unlikely that the defendants thought itprudent not to proceed with their applications before the Registrar butto resist any claim by the plaintiff in a court of law relying on their longuser without running the risk of an adverse finding by the Registrar.
In adjudicating on the remaining pleas of the defendants it is necessaryto consider the relevant evidence in detail.
The evidence given for the defence by the fourth defendant and otherwitnesses may be summarised as follows :—
The first defendant, a brother of the fourth defendant, began tomanufacture beedies in Mukudal in India about 1907 and nearly 10years later admitted his brother into the business. The business hasbeen carried on in Mukudal continuously ever since 1907. There areseveral factories for the manufacture of beedies in the neighbourhoodof Mukudal belonging to various traders. Most of the beedies includingthe beedies of the plaintiff and the defendant are despatched fromone common Railway Station. The agents in Ceylon of all the IndianBeedi merchants occupied a room in Adamally Buildings, Colombo.The Agents of the various firms met there and got an opportunity ofknowing the various brands of beedies sold in the market. In 1915the defendants registered their trade mark in the Madras Chamber ofCommerce. This mark clearly resembles P10 in all particulars exceptthe letter press. The letter press on the Madras mark is entirely inMarathi while that on P10 is partly in Marathi and partly in Tamil.
WIJEYEWARDENE J.—Klaunravrl Nadar v. Sokkalal Ram.
1S9
111 1925 the defendants registered in the Caloutta Chamber of Com-merce three trade marks {vide Dl). One trade mark is identicalwith P10 except for the fact that P10 contains a number 1,201. Thisis the number given by the Calcutta Chamber of Commerce to thetrade marks of the defendants. This particular device which resemblesP10 and has been registered in Madras and Calcutta has been knownas Kumaravel brand as it contains the portrait of E. P. Kumaravel,the first defendant. The two remaining brands registered in Calcuttaare the Steamship Brand and the Railway Engine Brand. The brandwhich the defendants sold extensively in Ceylon from the commence-ment of the business was the Kumaravel brand though they exportedfrom about 1929 smaller quantities of the other.brands known as .theFalcon Brand, Palai Sait Brand and Burma Sait Brand. They neverexported the Steamship Brand or the Railway Engine Brand to Ceylon.The defendants’ books of account in respect of the business from 1915contain references to various quantities of beedies exported to Ceylon.The document D2 is based on the Day Book D26 and the ledger D27.This shows that as early as January 3, 1916, the defendants despatchedbeedies to Ceylon on the orders of T. M. K. Mohamed Cassim Rawtherwho has given evidence for the defence and that the various consign-ments sent to this witness in 1916 totalled 1,278,000 beedies. Thedocuments D102, D104 show transactions in 1917, D108 and Dilltransactions in 1928, D114 and D117 transactions in 1929, D120 andD126 transactions in 1930. The defendants’ press copy booksproduced at the trial contain copies of letters dating from 1919 andwritten by the defendants in respect of the beedies despatched bythem. The press copy book D181 contains D182 of January 28, 1920,and D209 of February 4, 1920, being copies of letters written to thewitress T. M. K. Mohamed Cassim Rawther regarding certain beeditransactions. The press copy book D183 contains D184 a copy of aletter written to another customer in Colombo on November 5, 1924.The press copy book D185 contains D186 of October 1, 1926, writtento one S. A. Manicampillay a purchaser of beedies in Kandy. Thereare several other press copy books D210 containing letter D211 ofDecember 27, 1929, D190 containing letter D191 of March 22, 1930,D194 containing letter D195 of November 27, 1930. The fourthdefendant has been in Ceylon from 1930 in connection with the businessand has canvassed orders for the defendants. He has produced orderspersonally canvassed by him from 1930 for Kumaravel beedies {videD176 and D178 of October 2, 1930 ; D174 of January 10, 1931 ;D172 of July 20, 1931, and D168 of October 24, 1934). The documentD61 of January 12, 1931, is a bill form issued by the firm of S. S.Subbiah & Co.,- a firm of beedi dealers of whom K. S. Suppiah Nadarthe plaintiff’s attorney was a partner. This form shows that in 1931the firm of S. S. Subbiah & Co., were dealing in Sockalal beedies as wellas the Kumaravel beedies in question. It is admitted that thedocuments anterior to 1925 do not contain any specific reference toKumaravel beedies but merely to beedies. The defence explains thatup to 1925 the defendants traded in one brand of beedies, viz., theKumaravel brand of different sizes which alone was registered in
160 WUEYEWARDENE J.—Kumaravel Nadar v. Sokkalal Bam.
Madras in 1915. When they registered a number of brands in Calcuttain 1925 it became necessary to refer in the defendants’ books andletters to the various brands specifically and the original brand whichcontained the portrait of Kumaravel was then called the Kumaravelbrand to distinguish it from other brands as Burma Sait Brand, FalconBrand, &e. The witnesses have also stated that for. various periods oftime commencing from 1915 and subsequent years they have beenordering Kumaravel beedies from the defendants and selling them inCeylon. The Customs Tare Register D218 kept by the Collector ofCustoms has been produced to show that as early as 1928 Kumaravelbeedies have been imported into Ceylon and that besides the plaintiffand the defendant several other Indian manufacturers have despatchedbeedies to Ceylon bearing labels containing their respective portraitsfor some years prior to 1937. Vyramanathan Nadar, one of theplaintiff’s witnesses, has admitted that about 1928 or 1929 the defend-ants objected to the firm of D. S. & Co., of which the witness wasmanager, using a portrait label containing the word Kumaran as itresembled the Kumaravel portrait label of the defendants and that thefirm of D. S. & Co., gave a written undertaking to the defendantsthat the Kumaran label would be discontinued. In January, 1933,the defendants registered their Kumaravel portrait label in Madura.
The plaintiff himself has not given evidence but has sought to establishby the evidence of witnesses that his beedies bearing the trade marksin question have been in use in India since 1909. This evidence, it may beStated is in conflict with the evidence given by the plaintiff himself in anearlier case (vide D63) that he began to use trade marks about 1913.A trade mark has been registered by him in Madras in 1917 and is said tohave been registered in Calcutta in 1927. The letter press od the Madrastrade mark is entirely in Marathi while the Calcutta trade mark is said tohave a letter press partly in Marathi and partly in Tamil, thus bearing aclose resemblance to PI. Books of account have also been produced.These books disclose the fact that tho earliest item on which the plaintiffcan rely to prove the despatch of his beedies to Ceylon is in July, 1916.
The books of account produced in support of the plaintiff’s case to showthat his beedies have been on sale from 1912 or even earlier are, however,subject to the infirmity that there is no Satisfactory evidence to establishthe fact that the references in these books to transactions prior to 1917are in respect of plaintiff’s beedies. I hesitate to accept the statementthat these books contain entries with regard to plaintiff’s transactionsbefore 1917 especially in view of the evidence given by the plaintiffhimself in an earlier case in the Tinnevelly Courts in 1930. A copy ofthat portion of the plaintiff’s evidence given in that case and relied onby the present appellant has been produced and marked D63. Accordingto D63, the plaintiff began to use a trade mark in 1913 and began to keepaccounts only in 1917 or later. Even if these books of account areaccepted they do not show that the plaintiff had despatched beedies toCeylon earlier than the defendants. The earliest entry in this book isunder date July, 1916, while the defendants’ books show that they haddespatched beedies to Ceylon on January 3, 1916. In this connection
WIJEYKWARDENE J.—Kumo'ovel Nadar v. Sokkalal Ham.
161
it may be noted that some of the dates in the plaintiff's account bookshave not. been given correctly in the English translations with referenceto the Christian era..
I am unable to resist tho conclusion that tho judgment of the learnedDistrict Judge has been seriously affected by a mistake made by himwith regard to the registrations in Indian Chambers of Commerce.Though very early in the judgment he refers in general terms to thoseregistrations yet when ho proceeds to deal with the evidence of user,he seems to approach the consideration of that evidence in the beliefthat tho earliest registration by the defendants is in Calcutta in 1925eight years later than the plaintiff’s registration in Madras in 1917,thus losing sight of the important fact that the defendants had effectedtheir registration in Madras in 1915 two years before the plaintiff.There are some other wrong inferences which must have affected hisjudgment. He reads the document D102 as showing that the defendantsexported to Ceylon in 1916 their beedies bearing the Steamship brand.If this inference of the learned Judge is correct it destroys the case forthe defence that only Kumaravel portrait beedies were exported toCeylon at least up to 1925 or 1926 that no Steamship Brand beediesM ere ever exported to Ceylon and that reference to beedies in the defend-ants’ document prior to 1925 should be taken as a reference to Kumaravelportrait beedies. An examination of tho document D102 discloses thefact that the learned Judge has misread a statement in the documentthat beedies have been sent by a steamer and concluded that thedefendants have exported beedies bearing the Steamship Brand. Such amistake was bound to affect his judgment materially as he would notin the circumstances attach any importance to the numerous documentsproduced by the defendant and'relating to transactions prior to 1925.
This is essentially a case in which the oral evidence should be carefullytested in the light of the documentary evidence. Purchasers of beedies—most of whom are petty dealers and are ignorant and illiterate men—cannot be expected to state with accuracy the particular year in whichthey began dealing in beedies a long time ago or the periods during whichthey were engaged in such transactions unless they have some contem-poraneous documents to help them. The dealers in beedies are mostlypetty tradesmen and it is extremely doubtful whether they have even thecapital which they have claimed to possess. I do not think I am doingthese witnesses an injustice when I express the opinion that it will behighly unsatisfactory to base a finding of fact on the oral testimony ofwitnesses of this class in a case of this nature, unless where such testimonyreceives some support from the documents produced in the action.
In considering the evidence for the plaintiff it is also necessary to bearin mind the fact that the pleadings of the plaintiff throw some doubton the truth of the plaintiff’s case as ultimately presented by theCounsel—that he had used the trade marks PI, P2 from 1912. Theplaint was filed in November, 1936. Paragraph 6 of the plaint reads :—
“ The plaintiff has extensively used the said trade marks and also
the said figures and also the device of a circle containing the said
162
WIJEYEWARDEN E J.—Kumaravel Nadar t>. Sokkalal Sam.
portrait of the plaintiff as a Trade Mark on the packets of Beedi
manufactured and sold by him since the year 1926 and 1934….’’
In support of the prayer for an interim injunction an affidavit was filedalong with the plaint. In this affidavit too a statement was made to theeffect that PI and P2 have been used from 1926 and 1934. On December18, 1936, counsel appearing for the defendants showed cause against theissue of the injunction and stated in open Court that the defendants hadregistered their marks in Madras in 1915. In the course of this inquirywith regard to the issue of injunction, the plaintiff’s counsel moved onFebruary 8, 1937, to amend the plaint by altering the figure “ 1926 ”in paragraph 5 of the plaint to “ 1915 ”. Even with this amendmentit would have meant that the plaintiff’s case was that he had used thelabels PI and P2 “ since the years 1915 and 1934 ” respectively. OnJune 25, 1937, the plaintiff filed his replication and then he seized theopportunity to make a further amendment by stating vaguely withregard to dates—“ the features in the said trade marks are distinctiveand are and have been adopted even prior to and since 1915 to distinguishthe plaintiff’s goods”.
The actual trial began on June 30, 1937. After the framing of theissues the plaintiff’s Counsel moved again to amend the amended para-graph 5 of the plaint by inserting “ 1912 ” for 1915 in that paragraph.
It will thus be seen that the plaintiff came into Court with the state-ment that he used PI from 1926, and it was long after the defendantsmentioned the fact that their mark had been registered in 1915 that theplaintiff pleaded first that he had used the trade mark from 1915 andfinally fixed the commencement of the user in 1912.
The defendants registered the portrait trade mark in Madras in 1915.Their account books show that they exported beedies to Ceylon onJanuary 3, 1916, and continued to transact business to Ceylon from thatdate. The press copy books furnish documentary proof of the beeditransactions from 1919, and the orders, proof of the defendants’ businessfrom 1931. The Customs Tare Register furnishes proof from anindependent source of the import of beedies to Ceylon in 1928.
It is admitted that the defendants as beedi traders entered into anagreement D201 in 1917 and joined an association of beedi traders in1923 (vide D200). The defendants further registered their trade marksin Calcutta in 1925 two years before the plaintiff’s registration inCalcutta. All these documents and circumstances afford very strongcorroborative proof of the oral testimony given for the defence that thedefendants were doing their beedi business actively and continuously inCeylon from at least January 3, 1916. I am not prepared to accept thecontention of the plaintiff that there is no satisfactory proof of the factthat the beedies dealt with by the defendants were beedies bearing thedevice containing a portrait of Kumaravel. The mark registered by thedefendants in Madras in 1915 was the device containing a portrait ofKumaravel and it was only in 1925 that the defendants registered inCalcutta this mark together with some other marks. I see no reason forholding that the defendants desisted from using the only mark which
WIJEYEWARDENE J.—Kumaravel tVctdar t Snkkalal Ram.15.1
they had registered in 1915 and began to use from J915 marks whichthey registered only in 1925. I accept also the evidence that theseportrait beedies of the defendant were the beedies referred to as “ beeches ’ ’in the earlier documents and they alone came to be mentioned in thedefendants’ documents as “ Kumaravel beedies ” in later years when thedefendants began to use other marks. It seems to me quite likely thatif any brand of the defendants was going to be called after the firstdefendant, it would be the brand bearing a device containing his portraitand not a device containing a steamship, a railway engine or a falcon.The oral evidence led for the defence receives strong corroboration fromthe documents produced by the defendants. The witnesses called bythe plaintiff leave the impression in my mind that most of them were notunprepared to give such evidence as they thought would help the plaintiff’scase, without regard to the truth of their statements. Most of thesewitnesses have stated that though they dealt in beedies for a long timethey came to know about the Kumaravel beedies only during the lasttwo* or three years. This evidence no doubt is meant to support theplaintiff’s case as set out in paragraph 9 of the plaint which contains theaverment that “ the plaintiff has recently discovered ” that the defendantsare selling beedies with a mark similar to PI and P2. The DistrictJudge himself is not prepared to act on this evidence and in fact expressesthe view that the defendants must have sold these beedies from 1930 or afew years earlier.
On a careful survey of the evidence I have formed an opinion differentfrom the learned District Judge on the facts of the case with regard to thepleas of prior user and honest concurrent user. It is, no doubt, thegeneral rule that where a question turns on the manner and demeanourof witnesses this Court will accept the findings of the Judge who had theadvantage of seeing the witnesses. But in this case there are very strongcircumstances which warrant this Court in differing from the DistrictJudge. The judgment itself was delivered about six months after theevidence was recorded. The District Judge appears to me to have lostBight of some important documentary evidence with regard to theregistration of the defendants’ trade mark in Madras when he came to theconsideration of the oral evidence and has in fact permitted himself to bemisdirected with regard to certain material facts. In this connectionit would not be inappropriate to cite the following passage from thejudgment of Bertram C.J., in Falalloon v. Cassim.1:—
“ While a Court of Appeal will always attach the greatest possible,weight to any finding of fact of a Judge of the first instance basedupon oral testimony given before that Judge it is not absolved by theexistence of these findings from the duty of forming its own view of the factsmore particularly in a case where the facts are of such complication thattheir right interpretation depends not only on-any personal impressionwhich a Judge may have formed by listening to the witnesses, but alsoupon the documentary evidence and upon the inferences to be drawnfrom the behaviour of these witnesses, both before and after thematters on which they gave evidence
1 (19IS) 20 JV. h. R. 332 at jwje 335.
164
WIJ EYKWARDENK J .—Kumaravel Nadar v. Sokkalal Ram.
I hold that the evidence in this case establishes the fact that thedefendants have used continuously in Ceylon the device on the trademark D1 from January, 1916, and that the plaintiffs had no user of thedevices on PI and P2 prior to that date.
Though my finding on the prior user by the defendants renders itunnecessary for me to discuss the question of honest concurrent user,
I think I should deal briefly with the matter as it was fully argued beforethis court.
The evidence shows that the defendants registered the trade marks in1915 earlier than the plaintiffs and that portrait trade marks are fairlycommon in the Beedi trade. I am satisfied on the evidence that thedefendants’ user of the portrait mark has been honest within the meaningof the section 21 of the Trade Marks Ordinance (Legislative Enactments,Vol. 3, Chapter 121, section 19) though, no doubt, the defendants wereaware of the existence of the portrait mark of the plaintiff. As statedby me earlier I am unable to draw any inference of dishonesty againstthe defendants from the proceedings before the Registrar in connectionwith the applications made by the defendants. The defendants havehad continuous user of their trade mark for a considerable period/ TheDistrict Judge himself who accepts and acts on the evidence led for theplaintiff considers that the defendants must have used their trade markfrom about 1928. The delay of the-plaintiffs in instituting the presentaction raises a strong presumption that the commercial user of thesetrade marks side by side has not produced any confusion in the minds ofthe purchasers. The defendants have built up a considerable trade inbeedies during these years and it would result in serious hardship to thedefendants if the registration of their mark is refused to them,while the hardship that may be caused to the plaintiffs by the registrationof the defendants’ trade mark is proportionately small. Even if thedefendant failed to prove prior user I would have considered myself boundin the circumstances of this case to extend to the defendants the benefitof section 21 of the Trade Marks Ordinance and direct the Registrar toregister the trade marks without any such conditions or limitations aswould materially prejudice the defendants.
With regard to the damages claimed by the defendants on account ofthe injunction wrongfully obtained against them, I consider a sum ofRs. 300 as adequate compensation as the defendants may have by theirconduct with regard to the applications for registration created the beliefin the plaintiff that his claim would not be seriously resisted and therebyinduced the plaintiff to file the present action.
I set aside the judgment of the lower Court and order that decree beentered—
(а)dismissing the plaintiff’s action with costs of appeal and of the
District Court payable to the appellants,
(б)awarding Rs. 300 as damages to the appellants, and
(c) directing the Registrar to proceed with the applications Nos. 6,7786,779 and 6,780 made to him regardless of the opposition of theplaintiff.
Appeal allowed.