Sunder Parmanand Lalwani v. Caltex (India) Ltd.

Mody, J.:— [His Lordship after setting out the facts of the case and dealing with points not material to this report, proceeded.] A proprietary right in a mark can be obtained in a number of ways. The mark can be originated by a person, or it can be subsequently acquired by him from somebody else. Our trade marks law is based on the English trade marks law and the English Acts. The first Trade Marks Act in England was passed in 1875. Even prior thereto, it was firmly established in England that a trader acquired a right of property in a distinctive mark merely by using it upon or in connection with goods irrespective of the length of such user and the extent of his trade, and that he was entitled to protect such right of property by appropriate proceedings by way of injunction in a Court of law. Then came the English Trade. Marks Act of 1875, which was substituted later by later Acts. The English Acts enabled registration of a new mark not till then used with the like consequences which a distinctive mark had prior to the passing of the Acts. The effect of the relevant provision of the English Acts was that registration of a trade mark would be deemed to be equivalent to public user of such mark. Prior to the Acts, one could become a proprietor of a trade mark only by user, but after the passing of the Act of 1875, one could become a proprietor either by user or by registering the mark even prior to its user. He could do the latter after complying with the other requirements of the Act, including the filing of a declaration of his intention to use such a mark. See the observations of Lloyd Jacob J. in In the master of Vitamins Ld.'s Application for a Trade Mark1 at page 12, and particularly the following:

“A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be acquired, but in all cases it is, necessary that the person putting forward the application should be in possession of some proprietary right which, if questioned, can be substantiated.”

2. Law in India under our present Act is similar. One of the modes of acquisition of proprietorship may be if an Indian businessman happens to import and sell in India foreign goods of a foreign trader with the latter's foreign trade mark. If the Indian trader sells those goods in India, a question may arise who is entitled to that trade mark. It is quite clear that the trade mark being a foreign trade mark, the proprietorship as to India will be determined according to its use in the market of this country. (See Impex Electrical Ld. v. Weinbaum1a). Now, if there is a specific agreement as to proprietorship of that mark, that agreement will govern as between the foreign owner and the Indian importer. If, however, there is no specific agreement, diverse factors will govern the determination as to which of the two is the proprietor in India. That determination must depend on the facts of each case. If, for example, the Indian importer has acted merely as an agent of the foreign owner, the probabilities would be that the trade mark continues to belong to the foreign owner and not to the Indian importer. If, however, the transaction between the foreign owner and the Indian importer has been on the basis of principal to principal, the position may be a little more complicated. There again, one of the more important considerations would be to whom was credit given, that is, whether the purchasing public paid regard to the reputation of the foreign manufacturer or to the Indian importer. In some cases, it may happen that the foreign manufacturer is so well known that which importer imported the goods and sold them in India would be immaterial. It would happen, for example, in the case of goods so well known as, for example, “Bovril” or “Pears Soap”. The converse may happen when a firm of great repute in India imports and sells goods, and the purchasing public attaches value to the reputation of the Indian importer who selects to import the goods and not to the reputation of the manufacturer of the goods.

3. Now, it is common ground that the point as to proprietorship is to be decided as on August 14, 1956, being the date of the application. The applicant contends that he imported watches in his own right under contracts with Degoumois & Co. as between principal and principal. He thereafter sold those watches in India and thereby used the trade mark “Caltex” in India in his own right, and by reason of such user he acquired the proprietorship. The present dispute as to the ownership of the trade mark is not a dispute between the foreign manufacturer and owner of the trade mark viz. Degoumois & Co. on the one hand, and the applicant, an Indian importer, on the other. In this case there is no competition as to ownership between the two of them. In any event, in view of the said declaration of Degoumois, it is clear that Degoumois does not and cannot claim any ownership in himself in that trade mark in respect of watches in India. If the applicant, therefore, establishes his user in India, he can be said to be the proprietor of the trade mark in India in respect of the goods which he claims.

4. The evidence, however, in this respect is not very satisfactory. The shortcomings in the different pieces of evidence have been noticed earlier when we referred to each of them. There is no satisfactory evidence that any watches were in fact imported into India by the applicant under any of the said three orders. The evidence, however, can lead to an inference that very probably some watches were in fact imported. Even on that assumption there could be only 100 watches under the first order and only 300 watches under the second order under the mark “Caltex”. The statement made across the Bar before Mr. Justice Shah mentions the number of watches imported under the mark “Caltex” at 200. It is not necessary to discuss and adjudicate upon this discrepancy, because the figures of 100 and 300 are only in respect of the orders and the invoices, but not in respect of the actual imports, and possibly the actual imports might have been less than the aggregate of the said two numbers of 100 and 300. But whether the actual number be 200 or 400 or somewhere in between or even a small quantity more than 400, that cannot make the number very large. What we have to examine is the actual user in India of the mark by the applicant. In this connection, the evidence of the said five sale memos shows that the applicant sold 215 watches in India with the mark “Caltex”. As contended by Mr. Rege, there is of course no direct evidence that a single watch out of the said 215 watches was actually sold and delivered. But these five sale memos do in any event make it highly probable that the majority of them must have been sold and delivered. If the opponents wanted to contend to the contrary, they had an opportunity to cross-examine the applicant. They did not avail themselves of the opportunity. It is not disputed that the burden of establishing proprietorship lies on the applicant, and that it is for the applicant to satisfy the Court as to his user. But none the less, in this particular respect, we feel that on this evidence, the applicant has established that he did sell in India at about the dates of those five sale memos a substantial quantity out of these 215 watches.

5. The Deputy Registrar found that the mark “Caltex” applied for by the applicant was an Importer's mark and that he was the owner thereof by selection in so far as this country was concerned. Mr. Justice Shah has stated in his judgment that he was not inclined to agree with that finding of the Deputy Registrar. It is necessary to bear in mind certain principles concerning the point involved. Mr. Justice Shah, in his judgment in another case, being Consolidated Foods v. Brandon & Co. . 1961 66 Bom. L.R 612., has held as follows (p. 624):

“…in case of a distinctive mark within the meaning of the Act, right to the exclusive use thereof can be acquired immediately on that mark being used as a trade mark i.e used by the trader in his business upon or in connection with his goods and it is not necessary to prove either the length of the user or the extent of the trade. It may be noted that the word ‘Monarch’ in this case, as conceded by the counsel at the Bar, is a distinctive mark and, therefore, it follows that if it is shown that this mark was used by the petitioner corporation as a trade mark in this country upon or in connection with its food products even for once prior to the use of that mark by the respondent company in 1951, and if there is no evidence to show that this mark was abandoned by it, it would be entitled under s. 18 of the Act to apply for registration of that mark as its trade mark and also to oppose an application made by any other trader for the purpose of registering that mark in his name.”

6. He has further held that if it is shown that the distinctive mark was used by a trader as a trade mark upon or in connection with his products even for once prior to the use of that mark by another trader, and if there is no evidence to show that this mark was abandoned by him, he would be entitled under s. 18 of the Act to apply for registration of that mark as his trade mark. The learned Judge reached those conclusions on the basis of four English judgments considered and analysed by the learned Judge in his judgment. As stated by the learned Judge, therefore, in the case of a foreign mark, a person first to introduce and use it in India would become entitled to claim it in India as the proprietor thereof. The judgment in Impex Electrical Ld. v. Weinbaum shows that if the foreign owner of a mark sells goods in this country, he may become the owner of that mark. It further shows (p. 410):

“For the purpose of seeing whether the mark is distinctive, it is to the market of this country alone that one has to have regard. For that purpose foreign markets are wholly irrelevant unless it be shown by evidence that in fact goods have been sold in this country with a foreign mark on them, and that the mark so used has thereby become identified with the manufacturer of the goods. If a manufacturer having a mark abroad has made goods and imported them into this country with the foreign mark on them, the foreign mark may acquire in this country this characteristic, that it is distinctive of the goods of the manufacturer abroad. If that be shown, it is not afterwards open to somebody else to register in this country that mark, either as an importer of the goods of the manufacturer or for any other purpose. The reason of that is not that the mark is a foreign mark registered in a foreign country, but that it is something which has been used in the market of this country in such a way as to be identified with a manufacturer who manufacturers in a foreign country.”

7. To the same effect is the decision of the Comptroller-General reported in In the matter Isola Limited3, which also was relied upon by Mr. Rege. Mr. Bhabha cited in this connection In the matter of Gaines Animal Foods Ld.'s application4. In our opinion, the decision in that case is in no way useful to us and, therefore, we do not refer to the same.

8. Another case relied upon in this connection was Ebrahim Currium v. Essa Abba Sait . 1900 I.L.R 24 Mad. 163.. In that case, the plaintiff had for many years imported into Bombay and Madras umbrellas bearing the “Stag” mark from a Glasgow firm, where it was held “that the prior use in Scotland of the mark did not justify the Scotch firm and the defendant in claiming that the plaintiff's user of the trade mark was illegal or otherwise than an exclusive user”.

9. A person may become a proprietor of a trade mark in diverse ways. The particular mode of acquisition of proprietorship relied upon by the applicant in this case is of his user for the first time in India in connection with watches and allied goods mentioned by him of the mark “Caltex”, which at the material time was a foreign mark belonging to Degoumois & Co. of Switzerland and used by them in respect of watches in Switzerland. Before the Deputy Registrar and before Mr. Justice Shah, proprietorship was claimed on the basis that the application was entitled to it as an importer's mark. Several authorities were cited and were considered and principles deduced and relied upon in that behalf. In our opinion, it is not necessary in this case to go into details about facts in the various decided cases dealing with importer's marks. In many of those cases, the dispute was between a foreign trader using a foreign mark in a foreign country on goods which were subsequently imported by Indian importers and sold by them in this country under that very mark. In short, it was a competition between a foreign trader and the Indian importer for the proprietorship of that mark in this country. We have already reached a conclusion that so far as this country is concerned, Degoumois & Co. have totally disclaimed any interest in the proprietorship of that mark for watches etc. In India, the mark “Caltex” was a totally new mark, for watches and allied goods. The applicant was the originator of that mark so far as that class of goods is concerned, and so far as this country is concerned. He in fact used it in respect of watches. There is no evidence that mark was used by anyone else in this country before the applicant, in connection with that class of goods. Unquestionably, the applicant's user was not large, but that fact makes no difference, because so far as this country is concerned, the mark was a new mark in respect of the class of goods in respect of which the applicant used it. We, therefore, hold that the applicant is the proprietor of that mark.

10. The next point for decision is whether the use of the mark was likely to deceive or cause confusion. It involves the decision whether there was any tangible danger of deception or confusion being caused by the use of that mark. Under the provisions of s. 11, clause (a), of the Act, a mark is dis entitled to be registered if the use of it is likely to deceive or cause confusion. It may be stated that s. 12 does not fall for consideration in this case in this respect, because the mark is identical and, therefore, no question of its being deceptively similar to the mark of the opponents arises.

11. The Deputy Registrar held that though the marks were identical, as the competing goods were entirely different in character, and as there was not only no connection in the course of trade between the competing goods, but also, the fact that the competing goods were never sold at the same shop much less at the counter, and as the trade channels through which the respective goods passed were entirely different, and as the reputation that the opponents' marks had acquired was only in respect of the goods for which their marks were in fact used, there was no tangible danger of any deception or confusion arising. The learned Judge held in the appeal against the order of the Deputy Registrar that this decision of the Deputy Registrar was quite right in law, and that there was no question of any confusion arising in the mind of the public. It is now well settled that whether there is a likelihood of deception or confusion arising is a matter for decision by the Court, and that no witness is entitled to say whether the mark is likely to deceive or to cause confusion; for example, see Parker-Knoll Limited v. Knoll International Limited . 1962 R.P.C 265, at pp. 273, 274.. It is, therefore, clear that evidence by a witness that it is likely that purchasers of the goods will be deceived is inadmissible, but the evidence which would be admissible would be of a witness who is accustomed to buy the articles in question, and he can say that he himself would be deceived.

12. In this case the two marks are identical. Therefore, there is no question of any confusion arising because of any “similarity” between the rival marks. It is the finding of the Deputy Registrar and also of the learned Judge that there is no connection between the two marks in the course of trade or by reason of there being any common trade channels. That finding has not been challenged before us. The only ground urged by Mr. Rege in support of the contention that there was likelihood of deception and confusion, was that there is a danger that the goods of the applicant would be taken by purchasers as being the goods of the opponents, that is, as indicating that the goods had some connection with the opponents. Mr. Rege invited our attention to certain leading cases on this point.

13. Mr. Rege relied upon the case reported in In the matter of Dunn's Trade Mark7. In that case, one Dunn applied to register a label for baking powder containing conspicuously the words “Fruit-Salt Baking Powder”. The application was opposed by one Eno on the ground that he had registered the words “Fruit-Salt” as a trade mark for certain preparation, and had used those words to denote his preparation. The case reported is a decision of the House of Lords. We need not set out the various pieces of evidence relied upon in that case. Lord Watson held that Dunn's use of the words “Fruit-Salt” would have the effect of deceiving the people as there would be a suspicious connection between the two articles in the minds of many persons.

14. Another case relied upon by Mr. Rege is that of Edward Hack for the registration of a Trade Mark8. In that case, an application was made for registration of the words “Black Magic” in respect of laxatives. The application was opposed by the proprietors of the mark “Black Magic”, which was registered for being used in respect of ‘Chocolate and chocolates’. The judgment shows that it could be held that there is a tangible danger of confusion, if it could be found that there is a risk of confusion that some persons would be likely to think that the two “Black Magic” preparations were made by the same manufacturers, and others to wonder if this might be the case.

15. Another case relied upon by Mr. Rege was The Eastman Photographic Material Company, Ld. v. The John Griffiths Cycle Corporation, Ld. and The Kodak Cycle Company, Ld. . 1898 15 R.P.C 105. In that case, the Eastman Company were manufacturing Kodak cameras, and also started manufacturing certain cameras specially adapted for being used on bicycles, which were known as “Bicycle Kodaks”. The Eastman Company had invented the mark “Kodak” and were using it in respect of their goods. Another company. John Griffiths Cycle Corporation Ld., applied for registration of the word “Kodak” for cycles. They thereafter got registered a new company called “Kodak Cycle Company Ld.” That company along with John Griffiths Cycle Corporation started advertising “Kodak cycles”. The Eastman Company commenced an action against them for preventing the use by them of the mark “Kodak”. Evidence was led in that case which showed a close connection between the bicycles and the photographic trades. It was held in that case that no intelligible reason had been suggested why the defendants took the term “Kodak” to be applied to their cycles, or registered that word as a trade mark, or used it as the title of the company, except for the purpose of connecting themselves in some way with the plaintiff company and its business; and that was their real and sole object. It was further held that the defendants' action in adopting the mark ‘Kodak’ and giving the name to the new corporation was really to try and get a monopoly of the word “Kodak” as connected with cycles, and that they wanted to use the word “Kodak” and acquire a monopoly of it, as applied to cycles, in the hope and with the intention of, in some shape or other, identifying their company with the plaintiff company whose “Kodaks” were so well known in the market—to cause the public to suppose either that the defendant company was connected with the plaintiff company, or to lead the public to suppose that the goods which the defendant company was going to sell were the goods of the plaintiff company, and so to obtain the benefit of the large reputation of the plaintiff company. On those considerations, it was held that there was danger of confusion, and that no registration of the defendants' mark ought to have been made.

16. The next case relied upon was that reported in In the matter of an Application by Ferodo, Ld.10 It was an application for defencive registration of the mark “Ferodo” in connection with pharmaceutical articles and tobacco, and certain smokers' requisites. The mark was registered in several classes, but it was principally used for brake linings and clutches. The judgment in that case is useful as it shows that in judging whether there is a tangible danger of deception or confusion resulting a test would be whether the person seeing the mark attached to the new class of goods would assume that they originated from the proprietor of the mark of a registered user. It further shows that in assessing whether there is a tangible danger of deception or confusion, the nature of the goods is an important factor, for more special in character those goods are and the more limited their market, the less likely will be the inference that there is such a tangible danger.

17. Mr. Rege also relied upon the judgment in the case of Walter v. Ashton . [1902] 2 Ch. D. 282.. In our opinion, the principles governing this aspect of the case are well established, and it is not necessary to refer to any further authorities in support of those principles.

18. Mr. Bhabha took us through the judgments in the said three cases reported in In the matter of Dunn's Trade Mark, Edward Hack for the registration of a Trade Mark and the Eastman Photographic Materials Company Ld. v. John Griffiths Cycle Corporation, Ld. and the Kodak Cycle Company Ld. He also invited our attention in detail to the facts in those cases, and the points of similarity and distinction between those cases and our case, and how, in the light of the comparisons and distinctions made by him, those principles should be applied to this case. He pointed out that in all those cases, there was a trade connection between the competing goods. He argued that, therefore, the principle of trading on another's reputation as a factor likely to cause deception or confusion would apply only when the user of both the marks was confined to the same or similar classes of goods. He argued that the principle of causing confusion would not be applicable when it was alleged that advantage was sought to be taken of the reputation of the opponents generally, and not in respect of the reputation in respect of the actual user in connection with a particular class of goods. In our opinion, it is not necessary to go in detail into the aspect of comparisons and distinctions as pointed out by Mr. Bhabha. One must never forget that what s. 11(a) requires to be decided is whether the mark sought to be registered is likely to deceive or cause confusion. That likelihood must vary on the facts of each case. Human conduct is varied and complex. The importance of a particular fact or facts may vary, in the perspective of the totality of the facts of each case. The importance of a particular fact may increase or diminish when considered in combination with different sets of facts. What has to be decided in a case is whether on the totality of the facts of that case, it is likely that there would be deception or confusion. It would, therefore, be totally misleading to rely only on some individual fact or facts from a decided case and put emphasis on them without taking into account other facts in combination with which that particular fact was looked upon as yielding any principle. All factors which are likely to create or allay deception or confusion must be considered in combination. Broadly speaking, factors creating confusion would be, for example, the nature of the mark itself, the class of customers, the extent of the reputation, the trade channels, the existence of any connection in the course of trade, and several others. Of course, it need not be stated that it would not be that all such factors would exist in each and every case.

19. Now, before proceeding to consider the facts of this case, it is necessary to bear in mind that in proceedings for application for registration, the onus of proving that the mark is not calculated to deceive or cause confusion lies on the applicant. That proposition is well established, for example, see the judgment of Lord Watson in the above case In the matter of Dunn's Trade Mark, and also the judgment in Edward Hack's case.

20. In this case, the goods are totally different. There is no trade connection between them. There is no connection in the course of trade, nor any common trade channels. These are factors against holding that there would be any danger of deception or confusion. But we must consider the factors which tend to show that there is a likelihood of creating deception or confusion. The opponents have been using their mark on a very large scale since 1937. Their sales in 1956 exceeded Rs. 30 crores. Their publicity is widespread and large. In 1956 they spent over a million rupees on advertisements. The goods in respect of which they use the trade mark “Caltex” are mainly petroleum, kerosene and lubricants like greases and oils etc. The goods in respect of which the applicant seeks registration are mainly watches. The class of goods in respect of which the applicant seeks registration is wider than watches and watches can be both costly and cheap. It cannot go without notice that the goods in respect of which the applicant in fact used the mark before he applied for registration were very cheap watches. The goods of the opponents are used by persons all over India, in cities and villages, in different walks of life, rich or poor, literate or illiterate. The goods of the applicant are different in nature. But they are watches. They can be cheap watches. The potential market for them is, therefore, similar to that of the existing market of the opponents, in the sense that the goods of both the parties are not special goods. They are goods which would be purchased by the common man. Now, so far as the word “Caltex” is concerned, it is common to the opponent's mark as also to the opponent's name. To mention the mark “Caltex” is also to mention the name of the owner. The mark is unlike the “Lion” or the “Stag” mark, where there would be no direct connection between the mark and the name of its owner. The opponents are a large company known by many as having large resources, and therefore, capable of starting any new industry or trade. Because of that reason, there is a greater probability of the public believing that any goods with the mark “Caltex” on them would be the goods of the opponents. This is, in our opinion, sufficiently established by the 36 affidavits referred to above. The deponents of these 36 affidavits are from different parts of India, and from different vocations. In this connection, it may be stated that one of the deponents, Pujara, in his cross-examination, has stated that he would not be confused if he found the mark “Caltex” on other goods, like potato chips, hats, umbrellas etc. Such evidence on this particular point is not of much assistance. A witness who says so may be more particular or may have a sub-conscious background, whereby he makes the necessary distinction between the mark as used on different kinds of goods. Although such evidence would be weak, even such weak evidence has not been produced by the applicant. There is no affidavit on behalf of the applicant of any witness who says that he would not be so deceived or confused. But, there is the evidence of Rajpal, who even in his cross-examination has stated that he weld take all goods bearing the mark “Caltex” to have been manufactured by the opponents. The evidence of the other deponents as contained in their affidavits is similar. There is an additional factor to be taken into consideration. The applicant has given no explanation why he selected the word “Caltex”. Mr. Bhabha contended that although the applicant has not specifically stated the reason for his selection, it can be inferred from the other statements of the applicant on the record. He pointed out that the applicant has stated that in about April 1955 he had gone to Switzerland: that he saw the mark applied by Degoumois & Co. on their watches; and that, their watches had good sales. He says that these facts by themselves provide the reason for his making the selection. But, unfortunately for the applicant, it is also his evidence that Degoumois & Co. had other marks in respect of their watches. As a matter of fact, on the first order which the applicant placed with Degoumois & Co., which is dated April 6, 1955, the mark originally selected by him in respect of the categories of Avatches covered thereby was “Sandy”, which also was a mark of Degoumois & Co. He got the mark “Sandy” changed to “Caltex” only subsequently. Why he made the change has not been explained. It would be legitimate to infer that he selected the mark “Caltex” to take advantage of the reputation of that mark as used by the opponents in connection with their goods. The applicant's selection of the mark was made, to use the words of Lord Denning in Parker-Knoll Ld. v. Knoll International Limited, with intention to deceive and cause confusion, and he must, therefore, be given credit for success in his intention, and we should not hesitate to hold that the use of that mark is likely to deceive or cause confusion. In this connection, the following passage from the judgment in Edward Hack's case, occurring at page 106 is relevant:

“I think that a large number of persons if they heard of laxative called ‘Black Magic’ or saw advertisements of a laxative called ‘Black Magic’ would be likely to think that the laxative was made by the same firm who made the ‘Black Magic’ chocolates”.

21. On the facts of this case, we have no hesitation in holding that a large number of persons, if they see or hear about the mark “Caltex” in connection with watches, would be led to think that the watches were in some way connected with the opponents, or they would at least wonder whether they were in any way connected with the opponents. Persons seeing the mark attached to watches, which is a new class of goods, would assume, or are most likely to assume, that they originated from the proprietor of the mark, namely, the opponents.

22. We are, therefore, of the opinion that if the application for registration's granted and the mark is used in connection with the goods in respect of which the application is made, it is likely to cause deception and confusion.

23. Mr. Rege urged that the applicant acted dishonestly in selecting the mark “Caltex”, with the intention of trading on the wide reputation which that mark enjoys in India, that the applicant's case is not founded on truth, and that, because of these two reasons, the applicant should be held disentitled to registration under the discretionary provisions contained in cl. (c) of s. 11 of the Act. Under that provision, there is prohibition against registering a mark “which would otherwise be disentitled to protection in a court”. The provision contained in cls. (a) to (d) of that section shows that the factor which is to be taken into account for not registering a mark is a factor connected with the mark itself, in contra-distinction, for example, to a factor concerning the person applying for registration or the facts or circumstances under which or the intention with which he applies for registration. The provision contained in cl. (e) is discretionary. It is to be considered in cases when an application is made for registration. Such application has to be made under s. 18. Sub-section (4) of s. 18 also contains a provision for the exercise of discretion in accepting or refusing to register, because it provides:

“The Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.”

24. Both these provisions confer a discretion in accepting or refusing registration. It would be unreasonable to ascribe to the Legislature an intention to provide for such a discretion at two places in the same enactment, and that too without making any distinction as to the circumstances under which it can be exercised, or the objects for which it should be exercised. It leads to the conclusion that the Legislature intended to make a provision for the exercise of discretion but in different set of circumstances under cl. (e) of s. 11 and under sub-s. (4) of s. 18. In this connection, Mr. Bhabha invited our attention to the following statement in Kerly on Trade Marks, 8th edn., at p. 167:

“This section is directed to some positive objection to registration and not to mere lack of qualification. It contemplates some illegality inherent in the mark itself.”

25. The statement is made in Kerly in relation to s. 11 of the English Act, which is, for this purpose, in pari materia with cl. (e) of s. 11 of our Act. One of the cases relied upon by Kerly in support of that statement is that of Hassan El-Madi's Application for Trade Mark12. In construing the provision of the English Act, Lloyd Jacob J. observed in that case (p. 295):

“In my judgment, the reference in Sec. 11 to disentitlement to protection in a Court of Justice is to be related to something inherent in the mark applied for. That to me would follow from the fact that the phrase is qualified by ‘by reason of its being likely to deceive or cause confusion or otherwise’, and the fact that it introduces as proper for consideration any matter arising out of the form and nature of the mark applied for which could properly be objected to as unsuitable for inclusion in the Register.”

26. In our opinion, the prohibition contained in cl. (e) of s. 11 must, therefore, be restricted to some illegality inherent in the mark itself and not de hors the mark itself. Mr. Rege's contention cannot be considered under the provisions of s. 11(e).

27. The question then arises whether the above two causes for disentitlement urged by Mr. Rege can prevent registration under s. 18(4). There is no absolute right to registration, and the Registrar has discretion to refuse registration. That is the well settled position in law, and neither side has naturally urged any contention to the contrary. Mr. Rege's allegation that the applicant was actuated by dishonesty in selecting the mark concerns his motive. The other allegation of Mr. Rege that the applicant's case was not founded in truth ascribes to the applicant dishonest conduct. Mr. Bhabha, however, contended that there is no such plea at all taken by the opponents before the Registrar, nor have any particulars in that behalf been given. This complaint is not justified. There is such a plea taken by the opponents. It is to be found in the very first document which they filed before the Registrar, namely, the notice of opposition. It is stated in para. 5 of the grounds of opposition. In the language in which it is taken, however, dishonesty as such has not been specifically stated. But what has been stated is that the Registrar should in the exercise of his discretion refuse to grant the application for registering the mark. But after the notice of opposition was filed, the opponents filed the affidavit of Bery dated December 8, 1959. In para, 15 of that affidavit, it is stated that any one in India using the trade mark “Caltex” as a trade mark on goods not of the manufacture of Caltex (India) Ltd. would be using it merely for the purpose of deceiving the public into supposing that they are manufactured by Caltex (India) Ltd. This is a clear allegation of dishonesty, and the plea was taken before the Deputy Registrar before the proceedings before him concluded. In any event, that plea was argued before the Deputy Registrar, and the Deputy Registrar has recorded a finding on that plea. It was also argued before Mr. Justice Shah, and he also has recorded his finding on that plea. The applicant did not, at any stage, register any protest, and it is, therefore, not open to him now to resist this argument on the ground that it was not pleaded at all. But there is another ground to hold against this particular contention of the applicant. What Mr. Rege has urged is that the Registrar ought to have exercised his discretion against registering the application of the applicant. The discretion has been vested in the Registrar under s. 18(4), for protection of the interests of the general public. In this connection, the judgment in Midland Counties Dairy, Ld. v. Midland Dairies, Ld. . 1948 65 R.P.C 429. may be referred to. In that case, no fraud was alleged, and as a matter of fact, the chief witness for the plaintiff disclaimed any allegation of fraud. It was argued that in these circumstances, the Court should exclude all considerations of fraud from its mind. It was held: “In my opinion the court is not bound by the form of the pleadings, or by disclaimer on the plaintiff's behalf, to shut its eyes to a case of fraud if convinced that one exists”. It is clear that the discretion has been vested under s. 18(4) so that the tribunal can satisfy its conscience and satisfy itself that registration of the mark would not operate as a fraud on the general public. In our opinion, therefore, it is open to Mr. Rege to urge this contention. Even if he did not urge it, it is our duty to see that what has been alleged by Mr. Rege against the applicant does not exist in the way of the application being registered….

28. In our opinion, due to both the above reasons, the discretion under s. 18(4) should have been exercised against registering the applicant's application. The Deputy Registrar has, however, exercised the discretion in favour of registration. Mr. Justice Shah held against exercising that discretion in favour of registering the application. He thereby interfered with the exercise of the discretion by the Deputy Registrar and actually exercised it conversely. The question arises whether on the circumstances of this case there was reason to interfere with the exercise of his discretion by the Deputy Registrar. This discretion is a judicial discretion, and the Deputy Registrar's exercise thereof should be over-ruled only if he has applied wrong principles of law or has not appreciated the facts before him.

29. These principles can be gathered from In the matter of William Bailey (Birmingham) Ld.14 and In the matter of J. & P. Coates Ld.15 Now, in this case, the material portion of the decision of the Deputy Registrar is as follows:

“The opponents have very vehemently urged that the application should be refused by the Tribunal in the exercise of its discretion. No doubt section 18 of the Trade and Merchandise Marks Act, 1958 confers upon the Registrar a discretion to refuse or accept an application, but then such discretion has to be reasonably and not capriciously exercised and must be based upon judicial and legal principles. Having regard to the findings of fact arrived at by me in this case, namely, that the competing goods are entirely different in character and that the respective trade channels are entirely different and that despite the reputation acquired by the opponents' mark the applicant's mark will not reasonably be likely to deceive or cause confusion, I fail to see on what legal or judicial basis can I justifiably exercise the discretion adversely to the applicant. Moreover, in view of my aforesaid findings, my exercise of discretion adversely to the applicant in the present case would in effect amount to giving a monopoly to the opponents in the word “Caltex” irrespective of any goods whatsoever and that would be throwing to the winds and doing violence to the basic principles of the Law of Trade Mark which permits the use and registration of the same mark by two different persons in respect of goods entirely different in character.”

30. It is clear that the Deputy Registrar has taken into account two factors for deciding that he could not exercise his discretion against the applicant.

31. Taking the second factor first, he felt that the exercise of his discretion adversely to the applicant would, in effect, amount to giving a monopoly to the opponents in the word “Caltex” irrespective of any goods whatsoever. The use of the words “in the present case” suggests that he was limiting his statement that “any exercise of discretion adversely to the applicant would in effect amount to giving a monopoly to the opponents” to this particular case only, and that he was not stating it by way of a general proposition applicable to all cases. Therefore, this statement must be considered in that restricted sense.

32. In our opinion, read in that restricted sense, it is difficult to understand its meaning. How could the exercise of the discretion against the applicant result in the creation of a monopoly in the opponents in the word “Caltex” in respect of every conceivable kind of goods? The exercise of his discretion against registration would disentitle only the applicant to use the mark. “Caltex”. But that would not be creation of a monopoly in the opponents. A monopoly means a sole right being vested in the applicant to use that mark to the exclusion of all other persons. By the mere fact of exercising discretion in that way, none other than the applicant would be disentitled to use the mark in respect of goods falling in the classes other than those for which the opponents have registered their mark. It is quite clear that even if the discretion was exercised against the applicant, it could not have conferred any monopoly on the opponents as apprehended by the Deputy Registrar, or prevented any other person in a fit case from using the word “Caltex” as his trade mark in respect of other goods as permitted under the trade mark law. Thinking in terms of monopoly in this context was basically wrong. When considering the question of the exercise of his discretion the Deputy Registrar has taken into account a principle which had no application on the facts of this case.

33. Turning now to the first reason, the Deputy Registrar felt that there was no legal or judicial basis for exercising the discretion adversely to the applicant because of the findings of fact which he has arrived at. No finding of fact arrived at by him, either individually or cumulatively with the other findings of facts, would make the exercise of his discretion against the applicant otherwise than on a legal or judicial basis. The findings of fact arrived at by him in connection with the proprietorship of the applicant and the question whether there was a tangible danger of deception or confusion arising, were arrived at by him for those purposes only. He had to reconsider those findings of fact, to the extent that they were relevant for the purpose of exercising discretion, in conjunction with various other facts which were relevant for that purpose and which we have already pointed out when considering the two grounds urged by Mr. Rege in support of exercising the discretion against registering the application. He has, therefore, failed to appreciate, that is to take into consideration, all the relevant facts. A Court is, therefore, entitled to interfere with such an exercise of discretion. The approach would have had to be different if the Deputy Registrar had considered the other questions of fact, weighed them and come to a conclusion that he ought to exercise the discretion against the applicant. In the latter event a Court could have interfered, not merely because the Court would, on its own, have taken a different view, but only if there was something fundamentally wrong in his appreciation of the facts concerned. What the Deputy Registrar felt was that in view of his findings of fact, he was debarred from considering the other relevant facts either by themselves or even in combination with the facts as found by him, for the purpose of deciding how to exercise his discretion. This is not a case of merely a wrong appreciation of the facts before him by the Deputy Registrar. It is much stronger. In these circumstances, therefore, we are of the opinion that the learned Judge was justified in interfering with the exercise of his discretion by the Deputy Registrar. The appeal, therefore, fails and is dismissed with costs.

34. Appeal dismissed.