Concurrent Trade Mark Registration under Special Circumstances: The Calcutta High Court's Ruling in Aktiebolaget Jonkoping Vulcan v. V.S.V Palanichamy Nadar And Others

Introduction

The case of Aktiebolaget Jonkoping Vulcan v. V.S.V Palanichamy Nadar And Others adjudicated by the Calcutta High Court on June 6, 1968, addresses pivotal issues surrounding the registration and use of trade marks under the Trade and Merchandise Marks Act, 1958. The dispute centers on the concurrent use and registration of the "Three Stars" trade mark by two competing entities—the Swedish Match Company (appellant) and the Madras Match Company (respondent). This commentary delves into the background, judicial reasoning, cited precedents, and the broader implications of the court's decision.

Summary of the Judgment

The Swedish Match Company, headquartered in Sweden, held a registered trade mark "Three Stars," consisting of three stars and the accompanying words, first registered on February 24, 1944. The Madras Match Company, operating in India since 1951, also used a "Three Stars" label for their safety matches and sought registration in 1963. The primary contention arose when the Swedish Match Company, citing similarity, sought to expunge the Madras Match Company's mark as a colorable imitation and claimed non-use of their own mark due to special circumstances—specifically, import restrictions during the wartime period.

The Deputy Registrar of Trade Marks had initially ruled in favor of the Swedish Match Company, leading to an appeal under Section 109(2) of the Trade and Merchandise Marks Act. However, the High Court scrutinized the defense of special circumstances and found it insufficient due to lack of concrete evidence of bona fide use by the Swedish Match Company in India. Consequently, the court permitted concurrent registration of the "Three Stars" mark to the Madras Match Company, subject to specific conditions to prevent future conflicts.

Analysis

Precedents Cited

The judgment references several pivotal cases that shaped the court's approach to trade mark registration and concurrent use:

• In re Powell's Trade Marks (1894) 11 RPC 4
• In re Talbot's Trade Mark (1894) 11 RPC 77
• In re Batt's Trade Mark Case (1889) 6 RPC 493
• In Marshall's application (1843) 60 RPC 147
• In re Appollinaris Co.'s Trade Marks (1891) 2 Ch 186
• In re Rivire's Trade Marks (1884) 26 Ch D 48
• Aktiebolaget Manus v. R.J Fullwood & Bland Ltd. (1949) 66 RPC 71
• Mouson & Co. v. Boehm (1884) 26 Ch D 398
• John Taylor Peddie (1944) 61 RPC 31
• Ford-Werke AG (1955) 72 RPC 191
• De Cordova v. Vick Chemical Co. (1951) 68 RPC 103
• James Crean & Sons Ltd. (1921) 38 RPC 155
• Lanette’s Case (1950) 67 RPC 95
• Black Flag Case (1946) 63 RPC 161

These cases collectively underscore the necessity of bona fide use of a trade mark within the territorial jurisdiction and clarify that mere non-use without a valid reason such as war or prohibitive import restrictions does not sustain the defense against cancellation. Notably, cases like James Crean & Sons Ltd. and Black Flag emphasize that the onus lies on the proprietor to substantiate claims of special circumstances affecting trade mark use.

Legal Reasoning

The court's legal reasoning hinged on several critical interpretations of the Trade and Merchandise Marks Act, 1958, particularly Sections 46(1)(b), 46(3), 12(3), and 109(2). The Swedish Match Company's defense rested on non-use of their registered trade mark due to "special circumstances in the trade," specifically import restrictions during wartime. However, the court scrutinized the adequacy of this defense by examining:

• Bona Fide Use: The Swedish Match Company failed to demonstrate continuous and bona fide use of their trade mark in India since its registration in 1944.
• Special Circumstances: While the appellant cited import restrictions as special circumstances preventing use, the court found insufficient evidence linking these restrictions directly to the lack of trade mark use.
• Intent to Abandon: The court inferred that the lack of use, absence of promotional activities, and failure to maintain any association with the registered mark indicated an intention to abandon, despite the appellant's claims.
• Concurrent Registration: Given the appellant's non-use and the respondent's longstanding use of an identical mark, the court exercised discretion under Section 12(3) to permit concurrent registration while imposing strict conditions to prevent future disputes.

The decision emphasized that trade mark laws are territorially confined; thus, foreign use does not influence the validity of a trade mark within India. The court upheld the principle that the protection and regulation of trade marks fall within the national jurisdiction, and foreign registrations or uses are irrelevant unless they intersect directly with domestic law.

Impact

This judgment has profound implications for trade mark law and practices, particularly in scenarios involving:

• Concurrent Registration: Establishes a precedent where identical or similar trade marks can be registered concurrently under special circumstances, provided stringent conditions are met to avoid consumer confusion and unfair competition.
• Defense of Special Circumstances: Clarifies that merely citing external factors like war does not suffice to defend against non-use claims; substantive evidence linking such circumstances to trade mark use is mandatory.
• Territorial Jurisdiction: Reinforces the principle that trade mark protections and registrations are inherently territorial, limiting the influence of foreign registrations and uses on domestic trade mark validity.
• Onus of Proof: Aligns with existing legal standards by reiterating that the burden of proof lies with the party asserting special circumstances to justify non-use.

Future cases involving trade mark disputes can draw upon this judgment to navigate the complexities of concurrent registrations, especially in contexts where historical trade disruptions or import controls are cited.

Complex Concepts Simplified

Trade Mark Registration and Use

A trade mark registration grants exclusive rights to use a specific sign, symbol, or label in relation to certain goods or services. To maintain this exclusive right, the holder must demonstrate active use of the trade mark within the jurisdiction of registration.

Concurrent Registration

Concurrent registration occurs when two different entities are permitted to register identical or similar trade marks for the same or similar goods or services. This is generally disallowed to prevent consumer confusion but may be permitted under exceptional circumstances where both parties can coexist without infringing upon each other's rights.

Special Circumstances in Trade

Special circumstances refer to external factors that prevent the proprietor of a trade mark from using their mark despite their desire to do so. These can include events like wars, natural disasters, or regulatory changes that disrupt normal business operations.

Onus of Proof

This legal term refers to the responsibility of a party to prove or disprove a disputed fact in a legal proceeding. In the context of trade mark disputes, if a party claims that non-use of a mark is due to special circumstances, they bear the burden to provide sufficient evidence supporting this claim.

Conclusion