Sunanda Bhandare, J.:— The petitioner on 16th April, 1968 filed an application being Application No. 248584 with the Registrar of Trade Marks to register in Part A of the Register, a trade mark consisting of the word “YERA” in Class 3 in respect of perfumery, cosmetics and non-medicated toilet preparation. The application was duly advertised in the Trade Mark Journal No. 466 dated 1st November, 1968. The respondent—M/s. Alembic Glass Industries Limited who held registration in respect of the same trade trade mark “YERA” in respect of various goods falling Class 9, 10, 11, 14, 17, 19, 20 and 21 objected to the registration of the aforesaid trade mark on 26th February, 1969 under section 9, 11(a), 11(e), 12(1) and 18(1) of the trade & merchandise act, 1958 (hereinafter referred to as the act). By order dated 8th June 1973, Assistant Registrar of Trade Marks, New Delhi rejected the application of the petitioner for registration on the ground that the trade mark applied for, if allowed to be registered in Class 3 as prayed by the petitioner was liable to deceive or cause confusion and also that the petitioner not being the proprietor of the said trade mark was not entitled to protection in the court of law within the meaning of Section 11(e) of the Act. The petitioner has challenged this order of the Assistant Registrar of Trade Marks in this petition under Section 109 of the Act and Article 227 of the Constitution of India.

2. Learned counsel for the petitioner made a two fold challenge. Firstly, it was contended that unless there was a real tangible danger of causing confusion or possibility of deception, registration of a trade mark of goods which are not similar should not be refused. Learned counsel submitted that the petitioner had made the application for registration of the trade mark within three months of its commencement of the manufacture of the perfumery-and though several years have passed since then, till today no action has been taken by the respondent against the petitioner alleging either for passing off or infringement of the trade mark, the balance of convenience is, therefore, in favour of the petitioner and considerable hardship would be caused if the trade mark applied for by the petitioner is not registered. Learned counsel’ further submitted that since there is no trade connection between the petitioner and the respondent and there is no similarity in the goods, Section 11(a) of the Act will not be attracted in the present case. Learned counsel submitted that the reputation is attached to the goods and the goods manufactured by the respondent are distinctly not similar to the goods manufactured by the petitioner. Learned counsel relied on Bridgestone Co. (P) Ltd. v. Bridgestone Tyre Co. Ltd., Tokyo, Japan, (2) D.L.T 1966 p. 143 and Nestle's Product Limited & Others v. Milkmade Corporation & Others, AIR 1974 (Delhi)’ 40 in support of this contention. Secondly, it was contended that petitioner's, application could not be rejected on the ground that the petitioner would be disentitled to protection in the court of law because once it is held that the goods are not of the similar description and are different, no case for passing off can be filed by the respondent and, therefore, Sub-section (e) of Section 11 of the Act would not be attracted.

3. On behalf of the respondent, reliance was placed on Jugmug Electric & Radio Co. v. Telerad Pvt. Ltd. & Another, 1978 (1) I.L.R 667 The Eastman Photographic Materials Co-operative Limited & Another v. The John Griffiths Cycle Corporation Ltd. & Others, 15 R.P.C (1898) 105. In the Matter of an Application by Edward Hack for registration of a trade mark, 58 R.P.C 91, Sunder Parmanand Lalwani & Others v. Caltex (India) Limited, AIR 1969 (Bombay) 24 and Cibs Limited Basle Switzerland v. M. Ramalingum & Others, AIR 1958 (Bombay) 56 in support of the contention that once it is found that the trade mark is distinctive inasmuch as the word is coined, rare, exclusive and not an ordinary dictionary word, the Registrar of Trade Marks has to consider whether the reputation of the opponent already using the trade mark is such that if registration of the same mark is allowed it was likely to deceive or cause confusion in the minds of the ordinary public. It was submitted that in the present case, the respondent was manufacturing glassware including jars and bottles and had adopted the word “YERA” as a house mark to connote and denote the special character and quality of the products sold thereunder and the respondent had acquired the registration of the trade mark “YERA” in different classes as far back as in the year 1953, It was submitted that the sales of the respondent in respect of its goods bearing the trade mark “YERA” between the periods 1958 to 1968 run into lacs. The respondent had spent several lacs of rupees on publicity and had acquired a reputation in the trade and public and, therefore, though the petitioner did not manufacture goods of the same description if his application for registration of the same trade mark is permitted it was likely to deceive or cause confusion in the minds of the general public. It was further submitted that the petitioner had not given any valid reason as to why he was wanting to adopt this trade mark and the respondent being prior user and responsible for coining this word, was justified in objecting to the registration of the said trade mark by the petitioner, though in another case. Learned counsel also opposed the registration for the petitioner stating that since the petitioner was not the proprietor of the said trade mark he would not be entitled to any protection in a court of law. Learned counsel further submitted that the burden of proving that the registration of the said trade mark was not likely to deceive or cause confusion in the minds of the public, was on the petitioner and the petitioner had not led any evidence and had not discharged the burden in any manner whereas the respondent had produced affidavits of several parties to show that the reputation was very wide and the registration of the trade mark was likely to cause confusion in the minds of the general public who was likely to buy the products manufactured both by the petitioner as well as by the respondent. Learned counsel submitted that the perfumery manufactured by the petitioner is sold in glass containers and such glass containers manufactured by the respondent were supplied to other manufacturers of perfumery which was likely to cause confusion. Moreover, the public at large may be led to believe that it is the respondent-company who was manufacturing the said perfumery and cosmetics.

4. The Division Bench of this Court in the case of Jugmug Electric & Radio Co. Limited (supra) popularly known as the Telerad case has held that if a trade mark is invented one then the first user of such a trade mark obviously intents to have a monopoly of it and he will make every attempt to satisfy the authorities acting under the Act to protect his monopoly of the same. When a person copies as his own trade mark, a word previously invented by another person, suspicion immediately arises why the copyist is trying to immitate the person who has the priority in the trade mark. This Court on the facts of that case found that there was a common trade channel and thus there was likelihood that confusion or deception would be caused in the minds of the customers and the applicant was likely to take illegitimate advantage of the reputation attached to the goods manufactured and or marketed by the opponents. The Division Bench of this Court further referred to a summary of the factors to be taken into account in assessing the degree of deception or confusion under Section 11 (a) of the Act found in the case of Sunder Parmanand Lalwani & Others (Supra) popularly known as the Caltex case. In the Caltex also, as in the present case, an argument was advanced that the principle of trading on another's reputation as a factory likely to cause confusion or deception would apply when the user of both the marks was confined to the same or similar classes of goods and, therefore, trade connection in competing goods was the detertmining factor. It may be useful to re-produce herein the observations of the Bombay High Court in the Caltex case:—

“One must never forget that what Section.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 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 orally 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 challans, 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.”

The Division Bench of this Court approved of the factors enumerated by the Bombay High Court and held that apart from the trade connection all other factors relevant for consideration under Section 11 (a) of the Act as explained by the Bombay High Court were present in that case. I, therefore, find no force in the contention of the learned counsel for the petitioner that in every case the opponent must prove trade connection and common trade channel, between competing goods.

5. In the present case, admittedly, the goods are totally different, There is also no finding that there is any trade connection between the applicant and the opponent. However, it is equally admitted that the word “YERA” is rare and a coined word and not a common dictionary word or a word which is used in common parlance. Though a meak attempt was made by the learned counsel for the petitioner to say that the word “YERA” was adopted by the petitioner because of its similarity with the word “YARA” found in the chemical dictionary, one finds it difficult to accept this argument because ex-facie, there is no similarity between the word “YERA” and “YARA” either in its pronounciation or in the meaning. On being asked, learned counsel for the petitioner had no explanation to give as to why this word “YERA” was adopted except saying that it was a name of a chemical: found in the chemical dictionary. The respondent had coined this word as early as in the year 1952 and by the time the petitioner had applied for the registration of the word “YERA” the opponent had already spent lacs of rupees in popularising the word by way of advertisement and the sales of the opponent had also run into several lacs. It appears that this word which was coined by the respondent and popularised by it was being copied by the petitioner in order to take advantage of the reputation acquired by the trade mark. It is well-settled that the onus of proving that the mark is not calculated to deceive or cause confusion lies on the applicant. The opponent company which manufactures glassware with the trade mark “YERA'’ is a company having ample resources capable of starting new industry or trade and the goods i.e perfumery and cosmetics manufactured by the petitioner are sold in bottles and glass containers and if the trade mark “YERA” appears on these bottles and glass containers, there is likelihood that a common man who would go to buy these perfumery and cosmetics would be led to believe that these goods were manufactured by the opponent company.

6. On the facts of the present case the argument of balance of convenience is not available for the petitioner because of his own admission that the petitioner had started using the mark “YERA” only three months prior to the application. The petitioner has also not placed on record any material to show that the goods of the petitioner had acquired a reputation under that name.

7. In the present case, the Assistant Registrar of Trade Marks has held that the explanation given by the petitioner that the mark was adopted by the petitioner because it was similar to word “YARA” is difficult to believe, he would be disentitled to get protection in a court. This by itself would not be sufficient to disqualify the petitioner from registration of the trade mark under Section 11 (e) of the Act. In order to deny registration on this ground, it is necessary to prove that apart from the disqualifications envisaged in Sub-sections (a) to (d) of Section 11 of the Act, there is something more which would disentitle the applicant from getting protection in a court. If it is found that the applicant has adopted, the trade mark with dishonest intention or because of misrepresentation, it would certainly disentitle the applicant to protection in a court. Be that as it may, since in my opinion in the present case, the petitioner was not entitled to registration under Section 11 (a) of the Act, it is unnecessary to further go into the question whether on facts the petitioner was disqualified under Section 11 (e) as well.

8. In the result, the petition is dismissed. No costs.