The Judgment of the Court was delivered by
S.K Mukherjee, J.:— This appeal is directed against an order made by Bijayesh Mukherji, J., on an appeal under Section 109 of the Trade and Merchandise Marks Act, 1958, upholding an order by which the Registrar of Trade Marks refused an application by Respondent No. 3 for rectification of the Register by removal of the respondent's Trade Mark “Formica” from the Register.
2. The trade mark in question consists of the word “Formica”. It was registered with effect from May 13, 1952 in respect of non-metallic laminated materials for use in building and construction in class 19. The registration of the mark has been renewed for a period of 15 years from 13th May, 1959. The grounds for rectification as appears from the application and the statement of case presented before the Registrar were that (i) the registration of the said trade mark in respect of non-metallic laminated materials for use in building and construction in class 19 is bad being contrary to the provisions of clauses (a), (b) and (c) of Section 11 of the Act. (ii) The said trade mark is inherently not adapted to distinguish the goods of the registered proprietors and therefore, the said trade mark is not distinctive even now of the goods of the registered proprietors. The said mark remains wrongly on the Register and its entry ought to be removed from the records. (iii) The registration of the said trade mark is bad under the provisions of clauses (b) and (c) of Section 32 of the Act. Though a period of seven years has elapsed from the date of registration yet the same cannot be taken as valid in all respects inasmuch as the word “Formica” is not at all registrable as a trade mark being merely descriptive of the goods. Secondly the said word is deceptive as the goods in respect of which it is applied are not mica or any ingredient of mica. The registered proprietors filed a counterstatement denying the allegations contained in the application for rectification.
3. Affidavits were filed in support of the application for rectification as also in support of the registration by the Directors of the appellants and of the respondents along with supporting affidavits from members of the trade in support of the respective contentions.
4. It was not disputed before the Registrar or before the learned Judge that the appellants are persons aggrieved within the meaning of Section 56 of the Trade and Merchandise Marks Act, 1958. In the statement of case the appellants submitted that the Trade Mark was registered in contravention of Section 6 of the Trade Marks Act, 1940 which corresponds to Section 9 of the Act of 1958. It is contended that the mark patently describes and refers to mica which is the second part of the mark. The mark, in addition, means that the goods under the mark are a substitute for mica although they are neither mica nor do they have any element of mica. It is not in dispute that the goods which are sold under the trade mark “Formica” do not contain mica or any element of mica. As regards the objection on the score of Section 11 of the Act of 1958 the Registrar said:
“I think the proper test is to consider the immediate mental reaction or first impression of a man of average intelligence who comes across the word “Formica” in relation to the goods and whether he would spontaneously regard the goods as a substitute for mica. No evidence was produced on this point.”
5. The Registrar, referred to the dictionary and found that the word “Formica” is an entomological term which means the typical genus of the family Formicidae, the ant. It is also a term in falconry which means a kind of abscess, ulcer or excrescence occurring especially in a hawk's bill. It is therefore, a term of art, the art of entomology, or of veterinary science or of falconry. As no evidence was led as to the meaning ascribed to the word “Formica” by those who use it, he held that “Formica” is a dictionary word with recognized meanings and therefore the conclusion that it would connote to the public that the goods in relation to which it is used are a substitute of mica is not justified. He observed:
“It is true that the word “Formica” may be split up into the two words “for” and “mica” but that should not vitiate the fact that the word “Formica” stands on its own, being a single, distinct word having, its own recognised meanings as given in the dictionaries. It is settled law that in considering whether a word is distinctive it must be looked at as a whole and must not be dissected to see whether its component parts convey any meaning. To do otherwise would lead to results not contemplated or sanctioned by the statute.”
6. He took the view that it is not proper to split up “Formica” into ‘for’ and ‘mica’ to suggest that the goods in relation to which the Trade Mark is used are a substitute for mica.
7. The Registrar in his findings also alluded to the fact that the trade mark has been registered in more than a hundred countries including the United Kingdom and Australia where the law of Trade Marks is similar to ours. He relied on the decision in National Cash Register Company's application, 34 RPC 271 at page 282 and in Shredded Wheat Company Ltd. v. Kellog Company of Great Britain, 57 RPC 137 at page 149 in support of the proposition that the fact, that the mark has been registered in several foreign countries is a relevant factor for the guidance of the tribunal. Accordingly, he held that the applicants objection on the basis of Section 11 failed.
8. The Registrar recorded in his findings that counsel appearing on behalf of the appellants did not press the objection that the Mark was not distinctive of the goods of the registered proprietors. At all events, the Registrar, held that as the mark “Formica” is a dictionary word with specific meanings it could not be said that the Mark was not distinctive of the goods of the registered proprietors.
9. It was submitted before the Registrar by Counsel appearing on behalf of the appellants that in the application for registration the then proprietors of the trade mark, the Formica Company, a Corporation incorporated under the laws of the United States of America, claimed to have used it since 1947. It appears, however, from paragraph 5(d) of the affidavit of Mr. C.W.B Rankin, a Secretary and Director of the present registered proprietors that from 1947 to 1957 the goods sold under the impugned trade mark were manufactured in England and distributed in India by Thomas De La Rue & Co. Ltd., London, and not by the Formica Co. Therefore, Counsel submitted that the statement in the application, namely, that the Mark was used by the registered proprietors since 1947 was a mis-statement and the registration of the Mark was obtained by them on a mis-statement as to the use of the trade mark. He pointed out that the use of the Mark in India by Thomas De La Rue & Co. Ltd., London, was as stated in paragraph 5(c) of Mr. Rankin's affidavit under licence from Formica Insulation Company of U.S.A and is not use of the trade mark by the registered proprietors. Counsel appearing on behalf of the respondents relied on the history of the use of the mark “Formica” set out in Mr. Rankin's affidavit and contended that no mis-statement was made by the proprietors of the mark and that the licence of the mark referred to in the affidavit did not invalidate it. The Registrar thought that this aspect of the matter was not to be found in the grounds taken in the application for rectification and, therefore, he did not go into that objection at all. In the result, he dismissed the application for rectification.
10. The application having failed before the Registrar, the appellants preferred an appeal to this Court under Section 109 sub-section (2) of the Trade and Merchandise Marks Act, 1958. Before the learned Judge, the appellants not only urged the grounds they did before the Registrar but also urged that the original registration was obtained by fraud and that the registration was, therefore, not entitled to protection although seven years from the date of registration had expired, having regard to Section 32 sub-section (a) of the Act of 1958.
11. It may be pointed out that in the application there is no pleading of fraud nor is there any reference to clause (a) of Section 32 of the Trade and Merchandise Marks Act. There the appellants had merely taken the ground that the Trade Mark was registered in contravention of the provisions of Section 11 or offends against the provisions of that Section on the date of commencement of the proceedings or that the mark was not at the commencement of the proceedings distinctive of the goods of the registered proprietors. In other words, the petitioners who are the appellants before us, merely, pleaded the ingredients of clauses (b) and (c) of Section 32 of the Act, and the learned Judge permitted the appellants to urge in the appeal the ground of fraud.
12. The fraud of which the appellants complain is the alleged mis-statement made in the application that the Trade Mark had been used since 1947 by the proprietors, the Formica Company, organised under the laws of the United States of America although it transpires from Clauses (c) and (d) of paragraph 5 of the affidavit of Mr. Rankin, a Director of the present proprietors of the Trade Mark, that between the years 1947 and 1957 Formica laminates manufactured in England were distributed in India by Thomas De La Rue & Co. Ltd. who were manufacturing and marketing the laminates under a licence granted by Formica Insulation Company in 1946.
13. It was contended by Mr. Deb, learned Counsel appearing on behalf of the appellants that the original registration of the mark was obtained by fraud. In the application for registration the registered proprietors in answer to a question by whom the Trade Mark was being used stated that it had been used in India by Formica Company, the proprietors since 1947. It transpires from the affidavit of Mr. Rankin, a Director of the respondent Company, that in 1946 the proprietors or their predeces-sors-in-interest granted a licence to Thomas De La Rue & Co. Ltd., the parent Company of the respondents Formica International Ltd. for the manufacture and marketing of goods to be sold under the Trade Mark “Formica”. Mr. Rankin further stated that between the years 1947–1957 Formica laminates manufactured in England were distributed in India by Thomas De La Rue & Co. Ltd. Relying on the statements made by Rankin, Mr. Deb argued that the registration was obtained by a misstatement or by suppression of the true facts relating to the use of the trade mark at the material time. He further submitted that Rule 14 of the Trade Marks Rules 1942 required the applicant to disclose the commencement of use and the name of the User. The applicant did not state the name of the User. Insofar as the applicant did not state the name of the user to be Thomas De La Rue & Co. Ltd. the applicant did not comply with the requirements of a statutory rule. In the result the original registration must be regarded as having been obtained by fraud.
14. In answer to the objection that fraud was not pleaded in the application for rectification and no ground was taken under clause (a) of Section 32, Mr. Deb contended that although fraud was not pleaded the essence of the objection on the ground of fraud was pleaded in the application inasmush as it was stated that there was a mis-statement in the application with regard to the user of the trade mark prior to registration. The point was raised and argued before the Registrar but he declined to go into the controversy. In any event, the learned Judge allowed the plea to be taken and argued. In these circumstances, the respondent is not entitled to contend that there is no pleading of fraud. Mr. Deb relied on the decision of the Judicial Committee in the Bharat Dharma Syndicate Ltd. v. Harishchandra where it was observed by Lord Russell of Killowen:
“The objection that fraud was not alleged in the petition cannot prevail at this stage. The allegation was made in the affidavit evidence, and the whole matter was clearly fought in the High Court on those lines and apparently without any objection being taken, which had it been taken, would no doubt have led to the necessary amendments being made in the petition.”
15. Mr. Deb pointed out that under the Trade Mark Rules there is no scope for amendment of an application for rectification of the Register and, therefore, the appellants have not been able to amend theirs although they were alive to the need for it. He pointed out that an extended signification has been given to “fraud” in equity and that fraud includes a breach of duty to state correctly what is required to be stated by statute or by statutory rules. He relied on the cases reported in ILR 38 Madras 321 (344) : (1896) A.C 199 at 221 : (1914) A.C 932 (945) 851-4 Halsbury Laws of England Third Edition Vol. 14 Article 901. He also relied on the case of Burcombe & Company Ltd.'s Application, 65 RPC 179 at page 180 where it was held:
“That for lack of frankness in the applicants” evidence and of their failure to furnish a satisfactory explanation of their misuse of the abbreviation “Regd.” the application must be refused.”
16. In that case, the Assistant Comptroller found that the applicants had consistently used the abbreviation “Regd.” in relation to an unregistered Trade Mark and the statements made by them as to user had been grossly exaggerated. In those circumstances, registration was refused.
17. It must be remembered that on the date of the application the trade mark was an unregistered one. It was manufactured and distributed by Thomas De La Rue & Co. Ltd., under a licence granted by the proprietors. Under the Trade Marks Act of 1940 or 1958 the use of a registered Trade Mark by a non-registered user is not use of the registered trade mark by the registered proprietor. However, it does not follow that the use of an unregistered Trade Mark under a licence granted by the proprietor bona fide under its control and supervision is not use of the unregistered trade mark by the proprietor. It is not necessary to go into the question whether at common law the use of an unregistered trade mark by a common law-licensee is use by the proprietor. Suffice it to say that the technical concepts of user and in particular registered user are not attracted at a time when the mark is not a registered trade mark. Secondly it was not beyond dispute that a bona fide use of a trade mark through a licensee was not use of the trade mark by the proprietor. In this connection reference may be made to the well known case of Bostitch Trade Mark, 1963 RPC 163. The appellants, therefore, could have in the state of law as it stood at that point of time justifiably held the view that their use of the trade mark by a licensee was their own use. Moreover, assuming that the respondents did not state in their application the name of the user and the period of use which they were required to do under Rule 14 of the Trade Mark Rules 1942, it cannot in fairness be held that the omission by itself is a fraudulent omission to state material facts. In fact, they did indicate that since 1947 the trade mark had been used by them. The only question was, therefore, whether they had good reasons to entertain bona fide the belief that they were the users of the trade mark which was being used by their licensee under a subsisting licensee. The answer in our opinion, is in the affirmative. In these circumstances, we are unable to hold that the original registration was obtained by fraud within the meaning of Section 32 sub-section (a) or at all.
18. The appellants contended that the entry in respect of the trade mark was made in the register without sufficient cause within the meaning of sub-section (2) of section 56 of the Trade and Merchandise Marks Act of 1958. It was argued that on the date of the application for registration, the mark was in fact not used by the proprietors nor was it proposed to be used by them. The application stated that the mark had been used by the proprietors since 1947. The application was made on the basis that the proprietors had been using the mark not that they proposed to use it in fact, the licensee under the proprietors Thomas De La Rue & Co. Ltd. had been manufacturing and marketing the goods under the trade mark since 1947.
19. As we have said, use of an unregistered trade mark by a licensee may be use by the proprietor at common law though it may not be use by the proprietor of a registered trade mark within the meaning of the Trade Marks Act. At the time when the mark ‘Formica’ was used by Thomas De La Rue & Co. Ltd. it was not a trade mark registered in India and therefore, there is no reason why in order to hold that at that time the trade mark was used by the proprietor we must apply the tests prescribed in the Trade Marks Act. For the purpose of registration of the trade mark ‘any person claiming to be a proprietor of a trade mark used by him’ may well mean any person claiming to be a proprietor of an unregistered trade mark using it through a common law licensee.
20. In the Bostitch case, a foreign proprietor of a trade mark sold his goods in the United Kingdom through a local distributor. During the war, import became impracticable and the proprietor assisted the distributor to manufacture the goods locally. In advertising the good the distributor made it clear that the goods were within the range of the products of the proprietor. The distributor produced other goods which were also sold under the same trade mark when a dispute arose between the parties the proprietor revoked the licence of the distributor to use the trade mark. The distributor contended that there was no registered user's agreement and the mark had come to be associated in public mind with the distributor's goods and had ceased to be distinctive of the proprietor's goods. He applied for the removal of existing registration of the mark from the register.
21. The Court found that the mark had not been used in a deceptive or confusing manner nor had it ceased to be distinctive of the goods of the proprietor. The application was rejected. The Court could not have come to the conclusion it did, had it not been of the opinion that use by the distributor under the agreement was use of the trade mark by the proprietor.
22. It is necessary to remind that when an application for registration is made on the basis that the proprietor proposes to use the mark by himself, the proposed use must be that of the proprietor as contemplated by the statute because the relevant time when the mark is proposed to be used is after it has been registered. When the basis on which the application for registration is made is actual use by the proprietor, the relevant time when the mark has been used is before the mark had been registered. Therefore, the use of a mark by a proprietor through a common law licensee may very well suffice for the purpose of the application.
23. In the view we have taken, we, are of opinion that the appellants contention that the entry of the mark in the register was made without sufficient cause must be rejected.
24. Mr. Deb argued that at common law, a trade mark licensed for use by its proprietor is disentitled to protection in a Court of law because such a procedure of marketing two sets of goods with the same mark emanating from two different sources is calculated to deceive or cause confusion. If the use of a trade mark is likely to deceive or cause confusion surely the mark will be disentitled to protection but that is not to say that the use of a mark by a licensee without more, is likely to deceive or confuse or that the use by a licensee is not at common law use by the proprietor, that is to say by the licensor of the trade mark.
25. On the question of wrongful entry of the trade mark on the Register, the onus is on the appellants. There is no evidence that the terms and conditions on which licence was granted by the proprietors to Thomas De La Rue & Co. Ltd. were such that the proprietors lost control over the manufacture and distribution of the goods, or that the connection between the proprietors and the goods which were manufactured or distributed by the licensee was lost or impaired so that it could be said that use of the mark by the licensee ceased to be use by the proprietor.
26. Mr. Deb relied on Pinto v. Badman, 8 RPC 181. That case was concerned with a licence of a Registered Trade Mark granted to a non-registered user and not with a licence granted to a licensee by the proprietor of an unregistered trade mark. He also relied on Orteli A-G v. Bowman, 1957 RPC 388 (392) and the case (1959) RPC 1 (3) H.L and on the authority of those cases he submitted that a fortiori an unregistered trade mark, if used under a licence will be disentitled to protection in a Court of law. We are unable to agree that mere grant of a licence, irrespective of the nature of the licence, its terms and conditions or the manner of its use or proposed use, is calculated to deceive or confuse and will disentitle an unregistered trade mark to protection.
27. Mr. Deb relied on Section 38(1) of the Trade and Merchandise Marks Act which provides that “an unregistered trade mark shall not be assignable or transmissible except along with the good-will of the business concerned.” He submitted that it follows that no valid licence can be granted for the use of an unregistered trade mark. License to use a trade mark is neither assignment nor transmission of the trade mark. By assignment or transmission the original proprietor is divested of his right, title or interest in the mark. He is not so divested by the grant of a licence. Section 38(1) of the Act is, therefore, of no assistance to the appellants. It was contended that having regard to Section 38(1), the Bostitch case, the case of British Petroleum Co. Ltd. v. European Petroleum Distributors Ltd., (1968) RPC 54 and the G.E Trade Mark Case, 1969 RPC 418 can have no application in India. The argument is hardly tenable because Section 38(1) does not infringe in any manner on the validity of a licence.
28. The Bostitch case has not been disapproved by any superior Court. At all events, even independently of the Bostitch case, under no principle or precedent can it be held that at common law, use by the licensee of an unregistered trade mark is not use by the licensor or that such use will invalidate a passing off action or disentitle the licensor to protection of his trade mark.
29. The main attack on the trade mark was directed on the ground that its use would be likely to deceive or cause confusion. The appellants contended that the use of the mark “Formica” on goods which have no connection with mica is likely to deceive or cause confusion. Mr. Deb pointed out that Mr. Rankin, a responsible officer of the respondent company, claims that Formica is a coined word. He does not say how it was coined and why. It appears to have been coined by Formica Insulation Company who were the original proprietors and users of the mark. Mr. Deb argued that having regard to the possible requirements of that Company for a trade mark for an insulating material “Formica” must have been coined from the words “for” and “mica” to indicate that the goods were substitute for mica which is an insulating material. Mr. Rankin's evidence has made it clear that the goods sold under the trade mark “Formica” have no connection with the group of minerals known as mica. In these circumstances. Mr. Deb argued that the mark is likely to deceive or cause confusion and thereby attract the operation of clause (a) of Section 11 of the Trade and Merchandise Marks Act.
30. Mr. Deb relied on Orlwoola Trade Mark, 26 RPC 850 at page 860 Leopold Casella Co.'s application 27 RPC 453 C.A, at page 458 B.B.I Littetrac Trade Mark, 1971 RPC 7 and Chiropratic Trade Mark, (1971) RPC 133.
31. In the Orlwoola case, it was held that ‘Orlwoola’ being a mere misspelling of the words “all wool” which on the evidence as to user as also on general grounds was not a distinctive mark adapted to distinguish the respondents goods must be removed from the Registrar Fletcher Moulton L.J observed:— “If the goods are wholly made of wool” the words are natural and almost necessary description of them. If they are not wholly made of wool, it is a misdescription which is so certain to deceive, that its own use can hardly be otherwise than fraudulent. In either case, the words are utterly unfit for the registration as a trade mark.”
32. In Leopold Casella Co.'s application the trade mark “Diamine” came up for consideration. It was held by the Court of Appeal that “Diamine” was a known technical English word indicating the presence of two amino groups that notwithstanding the long continuous use by the applicants, the word was not adapted to distinguish their goods, and that for substances not containing two amino groups it was misleading and might deceive.
33. In the B.B.I Litetrac Trade Mark case, an application was made for registration of the trade mark “B.B.I Litetrac” in respect of goods including installations for lighting. The hearing officer found that the Mark did not qualify for registration in part A because inter alia the letters “BBI” were in the absence of evidence to be treated as non-distinctive and the word “Litetrac” was a mis-spelling and phonetic equivalent of the words “Light track” and as such had a direct reference to goods in respect of which registration was sought. The hearing officer also refused to allow registration in part B on the ground that the mark was not capable of distinguishing the applicants' goods. On appeal to the Board of Trade, the applicants urged that the mark should be accepted for registration in part B and relied upon the mis-spelling in the word “Litetrac” as lessening the aptness of the mark for normal description and also upon the presence in the mark of the letters “BBI”. The Board of Trade in dismissing the appeal held that the applicants could not rely on the mis-spelling in the word “Litetrac” as lessening the descriptive needs of the mark and the presence in the mark of the letters “BBI” did not so lessen the aptness for normal description of the word “Litetrac” as to render the mark capable of distinguishing the applicants' goods.
34. In the Chiropractic Trade Mark case registration was sought of the word ‘Chiropractic’ in respect of mattresses. The hearing officer found that the words “Chiropractic mattress” were descriptive of mattresses suitable for use in chiropractic treatment and had, therefore, a direct reference to the character or quality of the goods. He accordingly refused registration under Section 9. In addition he refused registration of the mark under Section 10 on the ground that the mark was highly descriptive and lacking in distinctiveness as to be incapable of distinguishing the mattresses of any one trader from those of another. He also found that the mark was highly deceptive and confusing when applied to mattresses not suitable for chiropractic treatment. The applicants preferred an appeal which was dismissed by the Board of Trade.
35. Mr. Deb relied on the case of Leather-cloth Co. Ltd. v. American Leather Cloth Co., (1865) 11 H.L Cases 523 where it was held that if the trade mark contained a material representation as to the character of the goods to which it was applied the Court would not interfere to protect the use of it even if the misrepresentation should be so obvious that no purchaser would be deceived. In the present case, he submitted, the mark suggests a connection with mica which admittedly the goods do not possess. The use of the mark is, therefore inherently deceptive. He contended that the Registrar and the learned Judge in relying on the facts that there was no evidence of the immediate mental reaction or first impression of a man of average intelligence who comes across the trade mark “Formica” in relation to the goods, had erred on a matter of principle when Mr. Rankin admits that the goods sold under the Mark “Formica” have no connection with the mineral mica. There is no controversy left to be resolved by evidence. The controversy whether the use of the mark is likely to deceive or cause confusion remains only to be resolved by the Court.
36. Mr. Deb relied on the case of Northcheshire & Manchester Brewery Co. Ltd. v. Manchester Brewery Co. Ltd., (1899) A.C 83 H.L That was a case of conflicting trade names. It was held that no witness can be allowed to say that the mark is likely to deceive or cause confusion because that is the very question the tribunal has to decide. The expression “likely to deceive or cause confusion” Mr. Deb contended, projects the issue in future in which evidence was not possible to obtain. In the case of conflicting marks evidence of surrounding circumstances may be possible but where the mark is attacked on the ground on inherent vice, no evidence is possible except the mark itself. He contended that it is quite legitimate to split the trade mark and the cases which lay down the rule against splitting a mark are cases involving two conflicting marks and they have therefore no relevance in this case.
37. He relied on the case of Christiansen's Trade Mark, 3 RPC 54. There, on the question whether a mark is likely to deceive or confuse the Master of the Rolls said:
“It is quite true that you must not try it exclusively by your eyes. It is equally true to my mind that you must not try it exclusively by the evidence. You must use both. You are called upon to decide that in your belief and conscience you think as to whether one thing is so like another as that it will be calculated to deceive, and as you are an intelligent being yourself, or supposed to be you must use your eye and your thoughts, and not go blindly, and act upon evidence which is given by people. Therefore, you must look upon it with your eyes and with your own powers of thought and opinion, accompanied with and, if the evidence is satisfactory to you, the evidence which is given. But when you come to consider the evidence, you, being the person to decide on the effect of it, must not look only at what people say, but you must exercise your own opinion as to whether what they say is sensible or can be accepted.”
38. Mr. Deb also relied on the case of Broadhead's application for registration of a Trade Mark 67 RPC 209 where registration of the Mark “Alka vescent” for a specification of goods including “Effervescent tablets” for making “Seltzerwater” was refused on the ground that the registration might well result in the use side by side, of the phrases. “Alka Vescent Seltzer tablets” and “Alka Seltzer Effervescent tablets” and that the two marks were too close. There, Evershed M.R alluded to the futility and uselessness of evidence which consist of a number of people making precisely similar statements.
39. In our opinion Mr. Deb is right in saying that it is ultimately for the Court or the tribunal to Judge whether a Trade mark is calculated to deceive or confuse by the impression the mark makes on those who use the goods in question. That, however, does not mean that no evidence is necessary or that the evidence is of no assistance. It was made clear in Christiansen's Trade Mark case that the function of the Court is two-fold. To consider the evidence given on the question and also to apply its own mind. The question has to be decided in the light of the evidence as also by the Judges' own reactions to the mark. Mr. Deb is technically right in saying that no evidence can be given or usefully given on the point whether a trade mark is likely to deceive or cause confusion, because it raises facts as they will arise in future. Nevertheless, whether a trade mark which has long been in use has confused or deceived persons who had used the goods under the trade mark in the past is of great assistance to the Court. Moreover, intelligent and truthful evidence on the point given by persons of average intelligence and common sense who use or have used the trade mark may help the Court in coming to the correct conclusion. The fact that no evidence has been given in this case on likelihood of deception of confusion is to our mind an infirmity in the appellant's case. Be that as it may, we are firmly of opinion that the word “Formica” does not suggest, as a matter of first impression, that it is a substitute for mica or that it has some connection with mica. As was said in Galvalloy case, (1963) RPC 34 what the Court was concerned with was not so such what the word “alloy” meant but whether the Trade Mark “Galvalloy” by reason of the presence in it of the suffix “alloy” was likely to deceive or cause confusion in relation to the products sold under the trade mark. In the learned Judges' opinion the persons who used those products where such as would analyse carefully the meaning of the word “Galvalloy”. They would realise that they would be dealing with a trade mark and they would not be greatly concerned with the definition of the word “alloy”. In the present case, those who use the goods sold under the trade mark “Formica” are not likely to be deceived by the presence of the suffix mica. They would understand the word “Formica” as a trade mark used in relation to laminated materials sold under the mark. In this connection we may refer to the case of the trade mark “National” 34 RPC 354 where no evidence was led that any one had ever purchased a National Machine under the impression that it was produced under public auspices or for common benefit. The Court held that the use of the mark was not calculated to deceive and it had no direct reference to the character or quality of the goods.
40. The Registrar relied on the fact the word was to be found in the dictionary and therefore it should be understood in the sense ascribed to it therein. That being so, the Registrar held that it was not permissible to split the word and understand the word to mean that it is a substitute for mica or that it has any connection with mica. The relevant question is not merely whether the word occurs in the dictionary but also whether the dictionary meaning is known to those who use the goods sold under the trade mark. We may draw on our experience and take judicial notice of the fact that the word is not known in its entomological or medical signification nor is it known in the sense which it obtains in the art of falconry to those who use or who are likely to use the trade mark. It is, therefore, for all practical purposes, as satisfactory or as unsatisfactory as a coined word.
41. Registration was refused in the cases of “Orlwoola” and “Litetrac” because of the phonetic resemblance and mis-spelling of words which had direct reference to the character and quality of the goods in respect of which those marks were used or intended to be used. Registration of the Trade Mark “Diamine” was again refused because the mark was descriptive of the character of the goods. On the same ground among others registration of the trade mark “Chiropractic” in relation to mattress was refused. We are unable to hold that the word “Formica” is descriptive of the character or quality of the goods or that it is likely to deceive or confusion by suggesting any connection of the goods with mica. In that view of the matter, the contention raised on behalf of the appellants that the trade mark offends against Section 11 of the Trade and Merchandise Marks Act fails.
42. It remains for us to add that neither before the Registrar nor before the learned Judge was it contended that the Mark at the date of the application for registration or at the commencement of these proceedings was not distinctive of the goods of the registered proprietors. The fact that the mark has been registered in a large number of countries where the law of Trade Marks is the same or similar to ours is also a fact of which we think we ought to take notice.
43. In the case of application by the National Cash Register Company (supra) for registration of the Trade Mark “National” the Court said—
“Importance must be attached to the fact that the mark had been registered as the trade mark of the applicants not only in the United States but nearly in all the civilised countries of the world.”
44. What was said there may with equal propriety be said on the facts of the present case. In the view we have taken the appeal fails and is dismissed with costs.
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