J_1968_SCC_OnLine_Cal_48_AIR_1969_Cal_43_196869_73_CW_yashbhatnagar2355_gmailcom_20241219_111228_1_15

SCC Online Web Edition, © 2024 EBC Publishing Pvt. Ltd.
Page 1 Thursday, December 19, 2024

Printed For: Yash Bhatnagar, Dr. RML National Law University
SCC Online Web Edition: https://www.scconline.com
© 2024 EBC Publishing Pvt. Ltd., Lucknow.
-----------------------------------------------------------------------------------------------------------------------------------------------------------
1968 SCC OnLine Cal 48 : AIR 1969 Cal 43 : (1968-69) 73 CWN 347
Calcutta High Court

(BEFORE P.B. MUKHARJI, J.)
Aktiebolaget Jonkoping Vulcan … Appellant;

Versus
V.S.V. Palanichamy Nadar and others … Respondents.
A.F.O.O. No. 232 of 1966
Decided on June 6, 1968
Page: 44
JUDGMENT
1. This is an appeal under S. 109(2) of the Trade and Merchandise Marks Act, 1958
from the decision of the Deputy Registrar of Trade Marks dated the 22nd June, 1966,
allowing the application for rectification made by the
Page: 45
respondent and expunging the appellant's trade mark No. 93017 in the Trade Marks
Register. The appellant is a Swedish Match Company of the name of Aktiebolaget
Jonkoping Vulcan having its office in Sweden. The respondents are Gnanam Match
Works of Sivakasi, Madras along with the Registrar and Deputy Registrar of Trade
Marks. For the sake of brevity I shall call the appellant as ‘the Swedish Match
Company’ and the other respondent as ‘the Madras Match Company.’
2. The dispute is with regard to the use of a trade mark in respect of matches and
match boxes. The impugned registration is that of the Swedish Match Co. It is a label
containing the device of three stars in a row with the words “Three Stars” on the top of
the device of three stars. The registration was dated 24th February 1944 and has since
been renewed. The mark of the Madras Match Company is also a “Three stars” label
which has been in actual use since 1951 in respect of safety matches.
3. The present proceedings arose out of an application filed on the 5th September
1963 by the Madras Match Company for rectification of the register by expunging
therefrom the entry relating to trade mark No. 93017 registered in Class 34 originally
in the name of Jonkoping Och Vulcans Tandstickfabriksaktiebolag now changed into
the appellant's name. In that application the respondent Madras Match Company
claimed that they had been extensively using this trade mark of Three Stars on safety
matches ever since 1951. The Madras Match Company also made an application for
registration of their trade mark on the 4th June 1963. The close similarity between
these two trade marks is now the centre of dispute. The Swedish Match Company
served the Madras Match Company with a notice dated the 8th August 1963 calling
upon them to desist from using their ‘Three Stars’ label mark which was described as
a colourable imitation of the Swedish Match Co.'s registered trade mark.
-----------------------------------------------------------------------------------------------------------------------------------------------------------
4. In these proceedings the Madras Match Company are seeking the cancellation of
the registration of this trade mark of the Swedish Match Company on the ground,
based on S. 46(1)(b) of the Trade and Merchandise Marks Act, 1958, that there had
been no bona fide use of the registered trade mark by the Swedish Match Company for
the statutory period of a continuous stretch of five or more years upto one month
before the date of the application for rectification. On behalf of the registered
proprietors of the trade mark, namely the Swedish Match Company, two points have
been urged. The first is that the Madras Match Company is not a “person aggrieved”
who can competently maintain an application for cancellation of the appellant's
registered trade mark. The second is that the non-use of the registered trade mark of
the Swedish Match Company during the material period was due to special
circumstances in the trade. Those special circumstances are alleged to be import
restrictions of foreign matches amounting to total prohibition, and not due to any
intention on the part of the Swedish Match Company to abandon its trade mark. The
defence of the Swedish Match Company is really based on the provisions of S. 46(3) of
the Trade and Merchandise Marks Act, 1958.
5. I shall briefly dispose of the first point, namely the contention that the Madras
Match Company is not a “person aggrieved” within the meaning of Section 46(1) of
the statute. The facts relevant for this purpose are briefly as follows:— The Madras
Match Company has been in the trade with this trade mark of “Three Stars” on their
matches identical with the registered trade mark since the year 1951-1952. The
second fact is that the Swedish Match Company has served the Madras Match
Company with a notice in 1963 threatening them with legal consequences, if they did
not stop using their trade mark. The third fact is that the application for registration of
the trade mark filed by the Madras Match Company had actually been opposed by the
registered proprietor, viz., the Swedish Match Company.
6. I am satisfied on these facts that the respondent Madras Match Company is a
“person aggrieved” within the meaning of Section 46 of the Trade and Merchandise
Marks Act, 1958. In support of this conclusion I rely on the principle laid down In re
Powell's Trade Marks, (1894) 11 RPC 4 and In re Talbot's Trade Mark, (1894) 11 RPC
77 that any person whose legal rights are limited by the existence of the entry on the
register so that he could not lawfully do that which but for the existence of the mark
upon the register, he could lawfully do. Indeed, it has been held in In re Batt's Trade
Mark Case, (1889) 6 RPC 493 and In Marshall's application in (1843) 60 RPC 147
specially at page 151 that an applicant for registration whose trade mark has been
refused by reason of prior registration by the respondent of the same or similar or
identical mark for the same goods or description of the goods or whose application for
registration is opposed on the basis of prior registration of the same or similar mark by
the respondent, has been regarded as a “person aggrieved”. See also In re Appollinaris
Co.'s Trade Marks, (1891) 2 Ch 186 corresponding to 8 RPC 137 and In re Rivire's
Trade Marks, (1884) 26 Ch D 48. On the facts stated
Page: 46
above, I am therefore convinced that the Madras Match Company satisfies the tests
laid down by these authorities to come within the meaning of the expression “any
person aggrieved” in Section A6 of the Trade and Merchandise Marks Act, 1958.
7. I therefore uphold the decision of the Registrar on this point and hold that the
Madras Match Company is a “person aggrieved” and can maintain this application for
cancellation of the registration of the mark of the Swedish Match Company.
8. The main point for determination in this appeal is the defence of the Swedish
-----------------------------------------------------------------------------------------------------------------------------------------------------------
Match Company under Section 46(3) of the statute pleading “special circumstances” in
the trade as the cause of the non-use of the registered trade mark belonging to the
Swedish Match Company.
9. According to the traditions of trade mark appeals in this Court, here also a
massive number of trade mark decisions and authorities have been cited from the Bar
on this point. I shall notice a few of these decisions.
10. Before I do so it will be appropriate to quote the relevant language of Section
46(3) of the Trade and Merchandise Marks Act, 1958 which inter alia uses these
words:
“Any non-use of a trade mark which is shown to have been due to special
circumstances in the trade and not to any intention to abandon or not to use the
trade mark in relation to the goods to which the application relates”.
11. On an interpretation of the above language of Section 46(3) of the statute
certain points are abundantly clear. The actual non-use of the trade mark must be
shown to have been due to the special circumstances of the trade. Secondly, that non-
use must be not due to any intention to abandon or not to use the trade mark in
relation to the goods to which the application relates. Bearing these express words in
Section 46(3) of the statute it will be useful to look at the authorities mostly English,
which have been cited from the Bar on this point.
12. The expression “special circumstances in the trade” has been held to mean not
any special circumstances merely attendant on or attached to and particular individual
business. It must be a kind of special circumstance for all the trade in those particular
goods.
13. On behalf of the appellant, Mr. Sen relied on two main decisions. The first case
is Aktiebolaget Manus v. R.J. Fullwood & Bland Ltd., reported in (1949) 66 RPC 71.
This was a dispute with regard to the trade mark of the milking machine of Sweden.
Its essential feature was the word “Manus.” One of the contentions in that case was
that war restrictions provided the special circumstances in the trade. It was held that
the war restrictions did constitute “special circumstances in the trade” within the
meaning of S. 26(3), British Trade Mark Act 1958. At p. 79 of the Report Ever shed
L.J. made the following observations relating to ‘special circumstances in the trade’ in
these terms:
“But even if the word be extended so as to comprise also English manufacturers,
I am unable to accept the defendant's arguments: for though the phrase in
question may or may not be apt to cover the case of a calamity suffered exclusively
by a particular trader — e.g. if his factory were destroyed by fire or bombs — it is
not in my view necessary that the ‘special circumstances’ should be such as to
afflict all traders equally or indeed to afflict all of them at all. It is important to my
mind to note that the relevant phrase is used in contrast to that which immediately
follows — ‘and not any intention not to use or to abandon the trade mark.’ In that
context, it seems to me (without attempting any precise definition) that the words
must be taken to refer to circumstances which are “special” in the sense of being
peculiar or abnormal and which are experienced by persons engaged in a particular
trade as a result of the working of some external forces as distinct from the
voluntary acts of any individual trader. According to such a test, no less than (in my
view) the ordinary and commonsense meaning of the words the impact of war
conditions making impracticable the ordinary usages of international trade would
amount to ‘special circumstances’ in the trade; and if the non-user of his marks by
a particular trader was in fact due to the effect upon his business of those
conditions, then he would in my view be within the protection of sub-section (3).
The case was put by Somervell L.J., in the course of the argument of the
imposition of prohibitive tariffs practically effective to keep out of England
-----------------------------------------------------------------------------------------------------------------------------------------------------------
altogether machines manufactured abroad. It is clear that such a tariff would strike
hardest at those manufacturers who had no means of manufacturing in England and
would, as it would be intended to do, immensely benefit English manufacturers;
and whether or not the words “the trade” be given their widest significance, the
effect of such a tariff would in my judgment amount to ‘special circumstances in the
trade’.”
14. Now, this exposition of ‘special circumstances in the trade’ as being the cause
of the non-use of the trade mark emphasises the aspect that the non-use is due to
certain external forces such as the war or prohibitive tariff and not due to any
voluntary act or omission on the part of the trader. This case was a war time case.
Evershed L.J. at p. 74 points out that the dispute owes its origin to the
Page: 47
war and the severance that the war imposed for its duration of the relationship with
the parties in the litigation. It was as a result of that severance that the dispute arose
when one of the parties proceeded to manufacture milking machines and claimed the
right to continue the use of the name “Manus” to machines of their own manufacture
altogether independently of the registered traders and their business. But this case
was a case where there was a prior and previous use which was interrupted by the war
which was regarded as a special circumstance as being the cause of the non-use. That
point distinguishes the present appeal before me for there was no use whatever of the
trade mark of Swedish Match Co. at any relevant time in India for the Indian market
although it was registered with the Indian Registrar of Trade Marks.
15. The other case on which reliance was placed on behalf of the appellant was
Mouson & Co. v. Boehm, reported in (1884) 26 Ch D 398. This authority lays down
certain very important and significant principles. In the first place, it lays down the
principle that mere discontinuance of user for lack of demand, even coupled with non-
registration and non-assertion of the right, is not enough and it is necessary that there
must be evidence of a distinct intention to abandon. In other words, the two principles
are: first, mere non-user is not enough; and secondly, a distinct intention to abandon
must be shown. Therefore, if the requisite period of non-user for 5 years under the
Statute co-exists with an intention to abandon the use of the mark, then the mark can
be struck off. This was not a war time case or even a case of prohibitive tariff. It was a
case of fall or decline in the trade in the ordinary economic process of a number of
years. Chitty, J. at p. 405 said: “Now on the question of abandonment, St appears to
me that intention to abandon must be shown.” But he lays down also the principle at
the same page, viz.: “In substance therefore the question of abandonment is one of
intention to be inferred from the facts of the particular case.” The learned Judge was
satisfied in the facts of that particular case that this intention had not been proved.
Chitty, J. found the following facts there, viz. (1) retention of the mark; (2) the owner
did not break up the moulds; (3) he did not even erase the trade marks from his
books; (4) there were persons in the market who got the goods from him who were
endeavouring to effect sales; and (5) he did not give up the business to which the
trade mark belonged. See the observations of Chitty, J. on these specific points of
facts at p. 405 of the Report. Finally, at page 406 Chitty, J. actually found as follows:
“Here it appears to me that there was no absolute non-user for any sufficient
time, taken in connection with all the circumstances, to show an intention to
abandon. A man who has a trade mark may properly have regard to the state of the
market and the demand for the goods; it would be absurd to suppose he lost his
trade mark by not putting more goods on the market when it was glutted. There
-----------------------------------------------------------------------------------------------------------------------------------------------------------
was some user and the result therefore is that he has not abandoned his trade
mark.”
16. Mouson's case is important because in the first place, it lays down that mere
non-user which can be explained by many causes is not enough but it has got to be
supported by an intention to abandon the trade-mark or its use before the registered
trade-mark is cancelled. Secondly, it lays down the type and nature of evidence from
which the intention has to be inferred one way or the other. Here again the fact is that
the evidence in the present appeal before me does not show any user whatever and
that is the finding of the Registrar of Trade Marks.
17. At this stage I must notice one other case In the Matter of application of John
Taylor Peddie, reported in (1944) 61 RPC 31. One of the points decided there was that
the adoption and use by trader of a mark may be despite the knowledge of a similar
mark already in the Register and that a short period of concurrent use in combination
with other, special and exceptional circumstances may enable a trade mark to be
registered despite the presence in the Register of a closely resembling mark. That case
also decided that a bona fide Intention on the part of an applicant to use, when
circumstances permit, a mark temporarily; debarred from use because of prevailing
difficulties and uncertainties in trade is sufficient, apart from other circumstances, to
justify an application for registration. This however is a decision of Dr. Lindley, the
Comptroller General sitting as a Registrar of Trade Marks. This was a war time case
relating to the period 1941-1942. The course adopted in Peddie's application is
relevant having regard to the order that I propose to make at the end of this
judgment.
18. For the appellants Swedish Match Company the facts definitely are against their
contention. I shall briefly summarise the facts. The first fact is that they chose a time
to register their trade mark in India when according to their own affidavit, namely
piaragraph 5 of the affidavit of Anil Chandra Daphtary affirmed on the 6th October
1964, the severe import restrictions amounted practically to prohibition even from
1942. The registration, therefore, by the Swedish Match Company of their trade mark
in India
Page: 48
on the 24th February 1944 was at a time when there was almost total prohibition on
imports of foreign matches. To quote the language of Anil Chandra Daphtary this is
what he says:
“To my knowledge, the import of matches into India from the year 1942 has
been subject to severe import restrictions amounting practically to prohibition.”
19. To the same effect is the affidavit of Mr. Walter Emanuel Thulin, the Managing
Director of the appellant when he says in paragraph 11 of his affidavit affirmed on the
3rd September, 1964, “I state that, on account of Government's policy regarding the
import of matches of foreign manufacture, the matches of Jonkoping under their
Registered Three Stars label could not be sold in India during the relevant period”. The
second fact is that the Indian market was compeletely closed for all practical purposes
against any use by the appellant company of its foreign matches in the Indian market.
Registration therefore, of the Swedish Match Co.'s mark on the 24th February 1944,
knowing that there was a virtual prohibition of importation of all foreign matches was
unfortunate in its effect on its probable use. The only excuse, not proved, might have
been that the appellant thought that those restrictions in 1944 were temporary. But
such a thought is also without substance because according to its own affidavit quoted
-----------------------------------------------------------------------------------------------------------------------------------------------------------
above it had already gone on for more than two years. It was still possible I suppose
for the appellant to think that when the war would be over, for at the time when the
registration took place the last Second World War was on, there would be relaxation
with regard to these imports. However, reasonable that thought may be it can only be
a matter for speculation. The third fact is that throughout these long number of years,
until today 1968, a period of about 24 years this mark has been a dead mark. It was
an abortive registration. Except that it appears on the Indian Trade Mark register and
has been renewed from time to time during these years, this mark has never been in
use in the Indian market in respect of the matches of the Swedish Match Company for
which it was registered. There is no association in the mind of the Indian public that
this mark of the appellant Swedish Match Company is a mark associated with it.
20. If it wanted to show its intention not to abandon the mark, it could at least
have issued some publicity or advertisement from time to time but there has been no
publicity and no advertisement during these 24 years. There is no proof or no instance
of any sale or use of the appellant's matches with this trade mark, not even use in the
embassies and consulates of Sweden operating in India. There is not even use by way
of samples or otherwise. In fact, there is no evidence of any use almost anywhere in
the Indian market. Some vague suggestion has been made that this match with this
trade mark was used in Goa when it was a Portuguese territory. But use of the Indian
registered trade mark in territories outside India cannot help. It may be pointed out
here that there is no evidence that since the merger of Goa with India there has been
any use of this trade mark by the appellant on its matches even in Goa, as naturally
there could not be under the Indian prohibition.
21. Use abroad and advertisement abroad outside the place where the mark is
registered are not of any assistance to the appellant, even if it was established in fact
that there was such a foreign use, although even that fact has not been proved or
brought on record.
22. In the Matter of Ford-Werke AG.'s Application for a Trade Mark, reported in
(1955) 72 RPC 191, Lloyd-Jacob, J. at p. 195 observed as follows:
“No use in this country has been claimed but reliance is placed on user and
registration abroad, the association of the applicant Co. with a larger and more
extensive organisation of world-wide activities operating under a name of which the
word “Ford” forms part, the international aspect of the motor car industry, as well
as upon the features of the mark applied for as constituting circumstances which
establish a factual adaptability of this mark to distinguish the appellants' goods. In
my judgment, such factual adaptability must be in respect of the market in the U.K.
and of export therefrom; so that in the absence of information as to the conditions
obtaining in overseas territories, no material exists whereby experience abroad can
be accurately related to the British Market. This sub-section (Section 9(3)(a)(b)) of
the British Trade Marks Act 1938 does not therefore assist the applicants in the
present case.”
23. Similar observations are also to be found In re Neuchatel Asphalte Co.'s Trade
Mark case, reported in (1913) 2 Ch D 291. Sargant, J. in Neuchatel's case, 291 at pp.
301-2 of that report followed the observations of Lindley M.R. in Re Batt and Co.'s
trade mark case, reported in (1898) 2 Ch D 432 at p. 439, where the learned Master of
the Rolls observed “A question of law then arise which may be stated shortly as
follows: “Can a man properly register a trade mark for goods in which he does not deal
or intend to deal?” that must mean “deal or intend to deal in this country” — “meaning
by intending to deal having at the time of registration some definite and present
intention to deal in certain
Page: 49
-----------------------------------------------------------------------------------------------------------------------------------------------------------
goods or descriptions of goods and not a mere general intention of extending his
business at some future time to anything which he may think desirable. This question
we answer in the negative.”
24. Again, similar principle was emphasized by the Court of Appeal in England in
De Cordova v. Vick Chemical Co. dealing with the word “Vapo-Rub” reported in (1951)
68 RPC 103, Lord Radclise at p. 107 of that report observed as follows:
“Merely to find these books in Jamica is not enough if, as is evidently the case,
this particular part of their contents has not passed into the speech of Doctors, or of
druggists, or of dealers, or of the general public. For the Jamaican Register is a
source of title in its own right; and in considering any question that bears on
registration in Jamaica or on the nature or extent of the monopoly in Jamaica that is
granted by S. 39 of the Jamaica's Trade Marks Law, it is usage within the territorial
jurisdiction of this law-making authority that must be taken into account What is
not merely descriptive by Jamaican usage is not altered in character by what may
well be the different usage of the United Kingdom. To say this is only to say what
has been said more than once in Trade Mark cases in this country; see for instance,
Re, Reddaway and Co.'s application, (1925) 42 RPC 397 : (1927) 44 RPC 27, and
Impex Electrical Ltd. v. Wein Baum, (1927) 44 RPC 405.”
25. It will be appropriate to refer in a little greater detail to the Trade Marks case of
John Batt and Co., reported in (1898) 2 Ch D 432. It first lays down the principle that
a trader cannot properly register a trade mark for goods in which he does not deal or
in which he has not, at the time of registration, some definite and present intention to
deal. It further lays down the principle that where there had been no real user of a
trade mark before or since its registration, and it had been registered in a particular
class, without any bona fide intention to use it in that class, the Court, on the
application of another trader to register an identical mark in respect of that class could
rectify the Register by expunging the existing mark as an entry made without
sufficient cause. This principle is very much against the appellants, both in fact and in
law, in the present appeal. Here, there has been the following finding by the Registrar:
—
“In effect, there is no evidence before the Tribunal regarding the user of the
Registered mark at any time in this country.”
26. In John Batt's case the decision of Romer, J., was affirmed on appeal as the
facts are important and as the contentions are similar in the present appeal, I propose
to examine in still greater detail what was said in that decision. Romer, J., at p. 438 of
that Report made the following findings:—
“Looking at the evidence as a whole, which I do not intend to refer to in detail in
this judgment, X come to the following conclusions of fact on the evidence before
me; that there was no real user of this trade mark of a “Butter fly” at any time
before registration; that there has been no real user of the “Butter fly” trade mark
since registration in respect of any of the articles in Clause 42; and I further come
to the conclusion that at the date of this registration there was no bona fide
intention on the part of this firm to use that trade mark for any of the goods in that
class.
The result is that in my opinion that registration was wrong and ought to be
expunged from the whole class and I order that it be expunged accordingly.”
27. I find the tests of facts which Romer, J., applied in that case are similarly
applicable against the appellant in the present case before me. It is difficult to
imagine that the appellant had any bona fide intention to use the trade mark in Indian
Market when it knew that it was registering at a time when there was a virtual
-----------------------------------------------------------------------------------------------------------------------------------------------------------
prohibition of all importation of foreign matches according to them. On appeal, Iindley

M.R. made the observations which I have already quoted from the judgment of
Sargant, J., in Neufchatel's case, (1913) 2 Ch 291.
28. On principles I take the same view. The Trade Mark law from that point of view
is not extra-territorial; that use abroad in foreign countries under foreign registration
can be use within the meaning of the Indian Trade and Merchandise Marks Act of
1958. This statute is an Act which provides for registration and better protection of
trade marks and for the prevention of the use of fraudulent marks on merchandise.
That is its preamble. That preamble I read as confined to the territorial limits of India.
Section 1(2) of the statute extends it to the whole of India. The statute establishes
trade marks register for India. The definition of a trade mark in Section 2(v) speaking
of use in relation to goods must in my opinion be understood as use within the
territory of India and not use abroad. On the authorities quoted above and on the
principles that I have just mentioned I am of the opinion that under Section 46 of the
Trade and Merchandise Marks Act, 1958 the word “use” employed therein is used
within India. Naturally if it is not used in India that would be a ground for removal
from the Indian register. I cannot imagine that a foreign use or use abroad or outside
India could be pleaded as a sufficient ground for retaining a registered Trade Mark on
the Indian Trade Mark
Page: 50
register. I cannot import any extra-territorial notion to construe the Indian Trade and
Merchandise Marks Act 1958 to cover foreign use. I am of the opinion that registration
of a Trade Mark and its continuance on the register are exclusively within the scope
and ambit of domestic and national law. The “International convention for the
protection of Industrial property” originally of Paris 1883 and recently revised at Lisbon
in 1958 clearly recognises the principle specially in its Article 6 that when a Trade
Mark has been duly registered in the country of origin and is then registered in other
Convention Countries, each of these national marks is to be considered as
independent, and the renewal of registration in the country of origin does not involve
the obligation to renew in other Convention Countries. As I read the British law a
Trade Mark registration, whether of a British citizen or a foreigner, and whether with
Convention priority or not is consistently regarded as completely independent of any
foreign registration. I am therefore of the opinion, both on the interpretation of the
Indian Statute and on principle, that registration of the “Three Stars” Trade Mark of
the Swedish Match Company in foreign or Convention Countries, cannot help the
appellant in this appeal, on the question of Indian registration and its Statutory
Conditions under the Indian Trade Mark and Merchandise Marks Act, 1958.
29. It is, therefore, clear that the biggest handicap for the appellant is that in all
these cases which have been cited on its behalf there was some user and then there
was interruption of that user due to special circumstances. But in the present appeal
before me the appellant has not proved, as he could not, any user at all.
30. I shall now come to the question about the existence of the special
circumstances which the appellant pleads as the cause of the non-user of its Trade
Mark as well as its legal effect.
31. Strangely enough, no attempt has been made by the appellant or on its behalf
to produce any single order or notification of 1944 when it registered its mark to show
that there was a total or virtually total prohibition of the import of foreign matches into
India. Vague references have been made to the import policy and war conditions. No
doubt the Court will take judicial notice of the War and of the fact that a War was on at
-----------------------------------------------------------------------------------------------------------------------------------------------------------
the time when the registration was effected on the 24th February, 1944, by the
appellant company. But mere existence of the War will not be enough to show that
foreign matches could not come to India or that they were totally prohibited. The state
of fact that they could not enter the Indian Market or that they were totally prohibited
must be proved.
32. The present import trade control was first introduced in India as a war time
measure in the early stages of the Second World War. A notification to that effect was
issued on May 20, 1940 in exercise of the powers conferred by the then Defence of
India Rules. In the Import Trade Control Handbook of rules and procedure published
by the Government of India, Ministry of Commerce, 1967 it is stated that the primary
object of that measure of 1940 was to conserve foreign exchange resources with the
successful prosecution of War and to make the best possible use of the limited space
of ship available. It mentions that import of only 68 commodities, mainly consumer
goods, was subjected to control and subsequently with the growth of exchange
difficulties the control was extended to other commodities as well. It is also stated
there, on December 31, 1940 unmanufactured and manufactured steel was brought
under control followed by control of machine-tools on February 15, 1941 and
ultimately by August 23, 1941, most of the remaining commodities, particularly
capital goods and other goods required for industrial purposes, were brought within
the ambit of control. Finally on July 1, 1943, a consolidated notification was issued
pertaining to all the controlled items except machine-tools. But neither the appellant
nor the respondent has drawn my attention to any actual prohibition of import of
foreign matches in the year 1944 and particularly on the 24th February 1944 when the
appellant got its mark registered.
33. No doubt after the end of the War and the lapse of the Defence of India Rules in
September 1946, the policy of import trade control was kept alive by, the Emergency
Provisions (Continuance) Ordinance, 1946, replaced by the Imports and Exports
Control Act 1947 which came into force on the 25th March 1947. The present position
is governed by the Imports and Exports Control Act 1947 and the Imports (Control)
Order, 1955 as amended. Under this import control policy, what is usually referred to
as publication of the Red Book has come into practice. The Red Books as indicating the
Government's import policy under the above statute and orders show prohibitory
control over matches from 1950. But what I am concerned is not with the year 1950,
but with the date 24th February, 1944 and the year 1944 when the appellant's mark
was registered in India. In that year and at that time I do not find any notification to
substantiate or support the fact on which the appellant IB-relying that there was a
total or virtual prohibition of importation of foreign matches into India.
Page: 51
34. The Registrar in his decision shows that he directed a specific enquiry and
asked the appellant to adduce evidence of user of its registered trade mark in India at
any time since the date of its registration in 1944. But none was produced. On behalf
of the appellant certain charts have been produced to show that there was hardly any
import during this period. They are statistics and charts from the Director General of
Commerce, Intelligence and Statistics. The first chart from 1940 to 1946 does not
mention, however, Sweden as a country unless it comes within “other countries”. The
other sheet of the chart shows the years from 1957 to 1963 which indicates some
importation from Sweden of safety matches, 8 in 1957. I do not think that is any
-----------------------------------------------------------------------------------------------------------------------------------------------------------
evidence on which I can come to any finding on this point.

35. At this stage it will be convenient to refer to the decision in the matter of a
Trade Mark of James Crean & Sons Ltd., which is reported in (1921) 38 RPC 155. I
shall call this as the “Aladdin” soap case. There in that case at p. 161 Sargant, J.,
observed as follows:—
“It is admitted on behalf of Messrs Crean that there has been no bona fide use of
the trade mark in connection with the goods during those 5 years. But it is said that
they escaped from the consequences because they fulfilled the condition “unless in
either case such non-user is shown to be due to special circumstances in the trade
and not to any intention not to use or abandon such trade mark in respect of such
goods.” It is said that not only was it not shown that there was no intention not to
use or to abandon, but also that the non-user is shown by them to be due to special
circumstances in the trade viz., the difficulty which arose during the war of getting
moulds and plates and so on and pushing the trade in this soap.”
36. Now, this exactly is the whole point in the present appeal before me. Here also
it is admitted that there is no actual bona fide use of the trade mark during the
statutory period of 5 years under Section 5(1) of the Trade and Merchandise Marks Act
1958 of India. It is also said here that this non-use is due to special circumstances
which I have already mentioned.
37. Now, it would be material to notice the observations of Sargant, J., in (1921)
38 R.P.C. 155, and specially the observations of the learned Judge at pp. 161-2 which
are as follows:—
“But it seems to me that, in order that the saving clause of the section should
apply, it must be shown that the non-user was due to the special circumstances of
the trade and was not due to some other cause which would have operated whether
the special circumstances had arisen or not. That is to say although it might be that
the special circumstances of the trade taken by itself would have prevented the
user of the mark, yet if the non-user of the mark was in fact due to some other
circumstances and would have occurred whether the special circumstances had
followed or not, then the saving clause would not apply.”
38. Here, the Appellant pleads the special circumstances of total prohibition of the
import of foreign matches which he did not prove at the time when the mark was
registered. But even before that, his very application for registration on 24-2-44 shows
that the Appellant did not state that he was only proposing the mark which was not in
use at that time but stated in the application that the Appellant was actually using the
mark even at that time. But no proof of actual user has been given by the Appellant. If
therefore, he had not used the trade mark then the intervention of the alleged special
circumstances of prohibition of import of foreign matches cannot help the Appellant on
the principle enunciated by Sargant, J., in James Crean's case quoted above.
39. I should like to pursue a little further the observations of Sargant, J. at p. 162
of that Report in James Crean's case where the Learned Judge says as follows:—
“What have we here? We have got this that from the time when the sales to the
Co-operative Societies ceased, the Titan Co. had no sale at all of “Aladdin” soap and
no definite goodwill in respect of that soap. There was no business with regard to it.
From the time that Mr. Crean bought in June 1910, again there was no use
whatever by him of this particular trade mark: and, as was admitted, or rather put
forward by Messrs Crean in their evidence, that this was due to the desirability of
using and pushing the better-known trade marks of the Titan & Co. and the
difficulty of dealing With other subsidiary and less well-known trade marks. That
continued right down to the time of the war, and in my judgment, there is nothing
to show that the non-user of the “Aladdin” mark would not have been as complete if
there had been no war as it was in fact in the circumstances. There appears to have
-----------------------------------------------------------------------------------------------------------------------------------------------------------
been no desire during the whole of that period to endeavour to push or to make use
of the “Aladdin” trade mark not more than the other 27 or 28 trade marks which
were assigned together with the factory and business of the Titan & Co. to Messrs
Crean at the time when the purchase was made in the year 1910. It seems to me to
rely (sic) that Messrs Crean have been roused to action in respect
Page: 52
of this trade mark and have put forward these claims of intention to use, and of policy,
and so on merely because they have found that they have got on the Register a trade
mark which somebody else wants to use and that they are pursuing these obstructive
tactics which are not unusual in such cases. I have not the slightest reason to place
confidence whatever in the story that they told in the box as to their meaning to make
use of this trade mark and being debarred from doing so and by the difficulty of
obtaining moulds and dyes and so on. Their whole conduct appears to me to contradict
that view.”
40. The above observations apply with force both to the facts and the law of the
present appeal before me. The Registrar has rightly found “in effect there is no
evidence before the Tribunal regarding the user of the registered mark at any time in
this country.” It also appears that the Appellant has been quite indifferent by reason
of the fact that the Madras Match Co. had been using a similar mark of “Three Stars”
on their matches for over eleven years and it was not until 1963 that the Appellant
chose to write calling upon the Madras Match Co., to desist from using the mark of
Three Stars and that was done on 8-8-63 when three months before that by 4-5-63
the Madras Match Co., had already made its application No. 215348 — before the
Registrar in Madras for registration of their trade mark of Three Stars. It is the
Appellant's case that they only became aware of the Madras Match Co.'s mark in
August, 1963, but that only proves how indifferent the Appellant has been to the use
of this mark even if that statement is true.
41. In my view it is necessary to emphasise that when in proceedings under
Section 46(1)(e) non-use for the statutory period of five years is admitted as a fact
then the defence that the non-use is due to special circumstances under Section 46(3)
of the Trade and Merchandise Marks Act, 1958 must be proved by the party taking the
defence. The onus of proving it is upon that party taking the defence of “special
circumstances”. In Gramaphone Trade Mark case, In the matter of Columbia
Gramaphone Co. Ltd. reported in (1932) 49 RPC 621, Lord Hanworth, Master of the
Rolls at pp. 628-629 makes the point of onus clear in the following observations:—
“One more observation may be made. It would appear that, if it is proved that
there has been no bona fide user during the span of the five years, there is cast
upon the respondents the duty of overcoming the inference that is to be then drawn
and the duty that would be Imposed upon the Court in consequence; and the onus
is on the respondents of showing that the non-user is due to the circumstances of
the trade, and that those circumstances of the trade were a compelling factor to
which he yielded; and he would have no (sic) negative the intention not to use or to
abandon such trade mark in respect of such goods in his personal trade”.
42. This plea of “special circumstances” as the cause of the non-user is really a
defence in the nature of frustration in a contract. Special circumstances like frustration
should not be induced by the proprietor himself nor can it be individual or personal. It
must always be circumstances beyond his control and for which he is not responsible
in any way. Again, such “special circumstances” must be the direct cause of the non-
use. If the non-use is due to other causes apart from special circumstances then the
-----------------------------------------------------------------------------------------------------------------------------------------------------------
special circumstances cannot be availed to overcome the handicap of non-use of the

statutory period of five years. See Sargant, J.'s observations in James Crean's case,
(1921) 38 RPC 155 at pp. 161-2.
43. Mr. Sen, Learned Counsel on behalf of the appellant relied on two cases which I
shall notice now. One is ‘Lanette’ case The Gardinol Chemical Co.'s application for the
rectification of the register reported in (1950) 67 RPC 95. This was a case which was
an aftermath of the Second World War, This decision was given by Mr. Justice Vaisey.
The relevant observations appear at page 98 wherein the learned Judge said:—
“Thus after the 3rd September, 1939, the position of a person domiciled in
Germany, who was the proprietor of a trade mark registration in the United
Kingdom, was that he was unable to exercise any control over the use of his mark
and, if it were infringed during the period of the war, he would not be able to sue (if
at all) until after the termination of the War, for these reasons. If the registration
were valid at the outbreak of war, I consider that if any application were received by
the Registrar under the provisions of Section 26 of the Act (British Trade Act, 1938)
for; the removal of such a mark from the Register because of non-use during the
period of the war, it would be an improper exercise of the discretion conferred upon
him were he to accede to such application on that ground alone, for such an action
on his part might be wholly inconsistent with the terms of a future Peace Treaty,
and if taken as a precedent could form the basis of a wholesale removal of such
German-owned marks. Similarly, if a valid trade mark registration as postulated
were infringed on an extensive scale during the war, and the infringer were to seek
removal of the mark on the ground that it had by such unchallenged infringement
lost its distinctiveness,
Page: 53
I consider that it would be improper for the Registrar to allow the infringer or any
other person to plead the infringement as a basis for obtaining the removal of the
mark. On the other hand, if it were shown either that immediately before the outbreak
of war the registration was invalid, or that the mark was properly removed from the
Register under the provisions of Section 26, and that there was no war time use upon
which the registered proprietor could rely, then I consider that even at this date the
Registrar might, in appropriate circumstances, properly exercise his jurisdiction to
remove the mark, for there is no obvious reason to my mind why the bare transfer of
the mark into the Custodian's control should preserve the mark from an enquiry as to
whether or not it was improperly on the Register on the 3rd September, 1939. In
consequence, I deem it of the utmost importance in these proceedings to ascertain if
possible the status of the mark ‘Lanette’ at the outbreak of World War II.”
44. Now, this appears to me clearly against the appellant in its essential import and
application. In the first place, the time which is important to consider, is the time of
registration. That point of time is against the appellant for he chose the time, when
according to him, there could be no use and yet stated in his application for
registration on February 24, 1944 that the appellant did use this mark. The appellant
did not mention that he only proposed to use the mark nor did he mention that his
user had to stop by reason of import prohibition when he made that application for
registration. In the second place, this ‘Lanette’ case lays down the principle that the
Registrar has the discretion in these matters and the Court should not unreasonably
interfere with it. As I have stated before the Registrar has used his discretion here
properly, appropriately and legally and not beyond the bounds of the Statute.
-----------------------------------------------------------------------------------------------------------------------------------------------------------
45. The other case on which Mr. Sen relied is the ‘Black Flag’ case in the matter of
an application By David Thom and Co. Ltd. for rectification of the register reported in
(1946) 63 RPC 161. There the point raised was that the ‘Black Flag’ trade mark could
not be used because the owner was prevented by the war which made it impossible,
inter alia, to obtain import licences for certain ingredients required to manufacture the
goods and where it was held that non user was proved to be due to special
circumstances of the trade. Here again this was a war-time case. It was particularly
pointed out there at pages 166-67 that the new evidence which was not before the
Assistant Controller showed that as early as 13th July 1939, before the negotiations
for the purchase of the business of the ‘Black Flag’ were complete, the difficulties were
undisputed. Then at page 168 of the report it is expressly pointed out by the learned
Judge “I should have thought that the existence of special circumstances in the trade
as the result of such conditions of War as prevailed in the years 1940 and 1941 was
almost self-evident, and that the real question in this class of case was not whether
there were special circumstances but whether if there had not been those special
circumstances the proprietor of the mark could have taken any steps. On that point it
seems to me that the correspondence is quite conclusive and based upon that sort of
matter no doubt that the evidence has to be tested very carefully in this class of case”.
On such careful testing of evidence on this point it is plain in the facts of the present
appeal before me, special circumstances or no special circumstances, of import
prohibition, the appellant has not chosen to use the mark at any time in India and has
not proved that the appellant had so used.
46. I, therefore, do not think that either the Lanette's case, (1950) 67 RPC 95 or
the Black Flag case, (1946) 63 RPC 161 helps the appellant in the facts of this present
appeal.
47. The discretion of the Court or the Registrar under Section 46 of the Trade and
Merchandise Marks Act, 1958 entitles the Court or the Registrar, either to order the
rectification or not to do so, and the question is not so much between the applicant for
rectification on the one hand and the respondent on the other but between the public
and the respondent See Kerly, 9th Edition on the Law of Trade Marks and Trade
Names, paragraph 383 and the decisions noted there of Noblitt-Sparks Industry's
application, (1950) 68 RPC 168. It is therefore not necessary or relevant to examine
the conduct of the respondent Madras Match Company. Were I to do so, I would hold
in their favour because I see nothing against their act or conduct except perhaps that
they chose a mark which happened to be similar to the mark of the appellant Swedish
Match Co.
48. For these reasons, I am inclined to uphold the order and decision of the
Registrar and dismiss the appeal. I am of the opinion that the Registrar when he gave
the decision was right both on the facts and the law as he found there. But this
decision has to be modified in the light of the subsequent events which took place
after the decision of the Registrar. In order to do complete justice between the parties
to this appeal these subsequent events are relevant and have to be considered.
49. That event is the order of the Assistant Registrar of Trade Marks, Madras,
Page: 54
permitting the Madras Match Company, the respondent in this appeal, concurrent
registration with the appellant under Section 12(3) of the Trade and Merchandise
Marks Act 1958. A copy of that order has been placed before me, admitted by all the
parties in this appeal and which 1 direct should be kept with the records of this
appeal.
-----------------------------------------------------------------------------------------------------------------------------------------------------------
50. Now in this order of the Assistant Registrar of Trade Marks, Madras, he notices
that the Madras Match Company claimed registration under Section 12(3) of this
statute. Section 12(3) of the Trade and Merchandise Marks Act, 1958 provides as
follows:—
“In case of honest concurrent use or of other special circumstances which in the
opinion of the Registrar make it proper so to do he may permit the registration by
more than one proprietor of trade marks which are identical or nearly resemble each
other, whether any such trade mark is already registered or not in respect of the
same goods or description of goods subject to such conditions and limitations if any
as the Registrar may think fit to impose.”
51. Even the Counsel for the Madras Match Company before the Assistant Registrar,
Trade Marks, is recorded to have agreed to have concurrent registration. The reasons
which impelled the Assistant Registrar in that order to grant concurrent registration
under Section 12(3) to the Madras Match Company is summarised in his own words at
the conclusion of that order in these terms:—
“I am therefore of the opinion that this is a fit case in which the applicants
should be granted concurrent registration under Section 12(3). The applicants have
used their mark for over 12 years and their total sales exceed Rs. 30 lakhs. The
opponents, though they registered their mark 22 years ago, have not yet started
using it in India. The hardship to the applicants of refusing registration appears to
be out of proportion to any hardship to the opponents or inconvenience to the
public which can possibly result from granting it. In fact it is difficult for me to
imagine a more suitable case for the application of Sec. 12(3).”
52. At the time when this order was made, this present appeal to this Court had
not been filed. The present appeal in this Court was filed on the 20th September, 1966
against the order of the Deputy Registrar of the 22nd June, 1966. This course was
thought to be the best course having regard to the prospect of this appeal being filed
and to make an order which will not be prejudicial to any of the parties.
53. Now, the subsequent order of the Assistant Registrar directing concurrent user,
registration to the Madras Match Company is not under appeal either by the present
appellant before me or by the Madras Match Company. That order therefore has
become final. In essence there could be no concurrent use because it is admitted that
the appellant had no use in the Indian Market. But I suppose the Assistant Registrar
made this order as a via media and as a compromise course.
54. Be that as it may the position now is that while the appeal from the Registrar's
decision expunging the appellant Swedish Match Co.'s trade mark was pending and is
being disposed of, there has already been an order for registration of the Madras Match
Co.'s trade mark concurrently with the Swedish Match Co.'s registered mark. I need
hardly say that this subsequent order was made on the Madras Match Co.'s application
for registration of its mark.
55. From the practical point of view this concurrent registration will not prejudice
either the Madras Match Company or the Swedish Match Company. The appellant
Swedish Match Company will of course not be in a position to use its trade mark so
long as the import prohibition lasts and which according to them has already lasted for
24 years. At the same time, in that situation the Madras Match Co.'s mark even
though similar, has been registered and it will be in a position to carry on its business
unhampered by any competitive use in actual trade or business in the Indian market
from the Swedish Co. This Court has power just as much the Registrar has the power
in proceedings under Section 46 to impose appropriate limitations, conditions and
directions. This will be clear if Section 46 is read with Section 56(3) and Section 109
(6) of the Trade and Merchandise Marks Act 1958.
56. I, therefore, dispose of the Appeal by maintaining the concurrent registration
-----------------------------------------------------------------------------------------------------------------------------------------------------------
with the following directions:—

(1) The Appellants will not assign the trade mark registered under No. 93017 and
will not apply for registration of any other person as registered user of the said
trade mark.
(2) That the Appellants shall not permit any person other than their servants or
agents and no other employee (sic) to use the said trade mark in relation to
matches manufactured either by the appellants or on behalf of and under the
control of the Appellants.
(3) That in actual use in relation to matches, the Appellants' trade mark shall be
limited to the particular colours shown in the specimen which has been annexed
in the agreed terms and the manner therein shown.
(4) That the Appellants shall not in any way challenge the registration of the mark
of the Nadar respondents (the
Page: 55
Madras Match Co.) in Application No. 215348 by way of Appeal or otherwise. There will
be a similar direction upon the Nadar respondents not to challenge the validity of the
Appellants' registered trade mark No. 93017.
57. I am obliged to learned Counsel on either side for the very able arguments
advanced on many points raised in this appeal and also for the undertaking which has
been given on behalf of the Appellants by their counsel. I direct the terms submitted,
but not signed, by counsel on either side, be filed with the records of this appeal and
kept as a part of the same.
58. The terms also set out the specimen of the Madras Match Co.
59. In conclusion, therefore, the appeal is disposed of by allowing the Appellants'
trade mark, registered under No. 93017, to remain on the Register subject to aforesaid
directions and undertakings.
60. In view of my decision and having regard to my findings, the Appellants will
pay to the Nadar Respondents costs settled at a sum of Rs. 6000/- only within a
month and in default pay interest thereon at 6 per cent per annum.
61. I shall only add this further direction and limitation in the order that in default
of carrying out the undertaking as reported in the terms set out above or for violating
any of the directions of this Court set out above, the Appellant Co.'s trade mark will be
cancelled forthwith. That will be one of the conditions of this order. The Registrar will
be paid his costs of the Appellant Co. and I settle the Registrar's cost at 60 G.Ms. to
be paid by the Appellants to the Registrar within two months from date.
TVN/D.V.C.
62. Judgment accordingly.
———
Disclaimer: While every effort is made to avoid any mistake or omission, this casenote/ headnote/ judgment/ act/ rule/ regulation/ circular/
notification is being circulated on the condition and understanding that the publisher would not be liable in any manner by reason of any mistake
or omission or for any action taken or omitted to be taken or advice rendered or accepted on the basis of this casenote/ headnote/ judgment/ act/
rule/ regulation/ circular/ notification. All disputes will be subject exclusively to jurisdiction of courts, tribunals and forums at Lucknow only. The
authenticity of this text must be verified from the original source.

J_1968_SCC_OnLine_Cal_48_AIR_1969_Cal_43_196869_73_CW_yashbhatnagar2355_gmailcom_20241219_111228_1_15

Uploaded by

Copyright:

Available Formats

J_1968_SCC_OnLine_Cal_48_AIR_1969_Cal_43_196869_73_CW_yashbhatnagar2355_gmailcom_20241219_111228_1_15

Uploaded by

Document Information

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

J_1968_SCC_OnLine_Cal_48_AIR_1969_Cal_43_196869_73_CW_yashbhatnagar2355_gmailcom_20241219_111228_1_15

Uploaded by

Copyright:

Available Formats

SCC Online Web Edition, © 2024 EBC Publishing Pvt. Ltd.

Page 1 Thursday, December 19, 2024

Calcutta High Court

Aktiebolaget Jonkoping Vulcan … Appellant;

prohibition of all importation of foreign matches according to them. On appeal, Iindley

evidence on which I can come to any finding on this point.

special circumstances cannot be availed to overcome the handicap of non-use of the

with the following directions:—

You might also like