# NATIONAL BELL CO. & ANR v. METAL GOODS MFG. CO. (P) LTD. & ANR

- **Citation:** [1971] 1 S.C.R. 70
- **Court:** Supreme Court of India
- **Decided:** 1970-03-18
- **Bench:** J. M. Shelat, C. A. Vaidialingam
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/national-bell-co-anr-v-metal-goods-mfg-co-p-ltd-anr-5115
- **Pages:** 17

## Headnote

Trade and Merchandise Marks Act (43 of 1958), ss, 9(3), ll(a) and
(e), 32(b) and (c) and 56-'Distinctive', meaning of-Numeral as trade
nu1rk-'Aggrieved person, and 'without sufficient cause' in s. 56-Scnpe
of-'DisentJtled to protectien',
n-zeaning
of-Abandonment of right in
trade 1nark, when inferred-Rectification of register-Discretion of Court.
For a number of years prior to 1952 cycle bells manufactured by Lucas
Jlnd other foreign concerns bearing the numbers '50' and other numerals
were in tbe Indian market.
After 1952, the import of foreign bells was
prohibited, and though foreign made bells with the numerals '50' were
being sold as late as 1958, the sales were from the stock remaining out
ot the earlier imports and were few and far between. In 1953, the respondent company got registered
two trade marks in respect of cycle bells
being the numeral '50' and the figure 'Fifty'. The appellant companies
were manufacturers and also dealers fn cycle bells and were selling their
cycle bells with
~°').· numeral '50' inscribed on them. The respondent
therefore, filed si.Ms in 1959, against the appellants, alleging infringement
of its trade marks.
ln ,1961, the appellants applied for stay o'f trial of the
suits and filed appli~ations in the High Court for rectification of th" register by cancelling the trade marks of the respondent under s. 5o of the
Trade and Merchandise Marks Act, 1958.
A single Judge of the High
Court, refused to expunge the trade mark 'Fifty' but ordered the cancellation of the trade mark '50'. In appeals to the Division Bench of
tbe
High Court, the order cancelling the trade mark '50' was set asiee.
In aopeals to this Court, it was contended that : ( 1) the trade marks
in question were common and not distinctive at the date of their registration as required by s. 9(3), and therefore, ought never to have been registered; (2) that the numeral '50' is not distinctive; (3) that the use of
the trade mark was likely to deceive or cause confusion and hence the
registration should be cancelled under s. 32(b) ands. l!(a); (4) that tbe
respondent had imitated the use of the marks by Lucas and other foreign
concerns that therefore they would be
disentitled
to protection under
s. ll(e) and hence the registration should be cancelled under s. 32(h);
and (5) that the trade marks were not, at the commencement <if the proceedings, distinctive and hence Hable to be cancelled under s. 32(c).
HELD: (ll Under s. 32(b) and (c) the original registration of the
trade mark has, after the expiration of 7 years from the date of registration to be taken to be valid in all respects including in rectificatior.. applications under s. 56 unless it is proved : ( 1) the trade mark was registered
in contravention of the provisions of s. 11 or offends against the p·rovisions
of that section on the date of the commencement of the proceeding or
(2) that the trade mark was not, at the commencement of the proceedings
distinctive of the goods of the registered proprietor. Section ll(a) prohibits
the registration of trade mark which would be likely to deceive or cause con·
fusion, and •. 11 ( e) prohibits the registration of trade marks if they were
•11ch that they were otherwise disentitled to protection in a court. Section
A
B·
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B
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NATIONAL BELL CO, V. METAL GOODS CO.
71
56(2) confers a right on any person aggrieved by an entry made in the
register without sufficient cause or by an entry wrongly remaining in theregister, to apply for expunging or varying such an entry. Since 'an aggrieved pe'Cson' includes a person who has, before registration,
used the trade
mark, and a person against whom an infringement action is taken, and the
words 'without sufficierit cause' relate to the time df original registration,
the appellant could apply for concellation on the ground that the trade
mark in question was not distinctive within the meaning of s. 9(3).
But in view of the fanguage of s. 32, no contention could be raised in
the present

## Text

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70
NATIONAL BELL CO. & ANR.
v.
METAL GOODS MFG. CO. (P) LTD. & ANR.
March 18, 1970
(J. M. SHELAT AND C. A. VAIDIALINGAM, JJ,J
Trade and Merchandise Marks Act (43 of 1958), ss, 9(3), ll(a) and
(e), 32(b) and (c) and 56-'Distinctive', meaning of-Numeral as trade
nu1rk-'Aggrieved person, and 'without sufficient cause' in s. 56-Scnpe
of-'DisentJtled to protectien',
n-zeaning
of-Abandonment of right in
trade 1nark, when inferred-Rectification of register-Discretion of Court.
For a number of years prior to 1952 cycle bells manufactured by Lucas
Jlnd other foreign concerns bearing the numbers '50' and other numerals
were in tbe Indian market.
After 1952, the import of foreign bells was
prohibited, and though foreign made bells with the numerals '50' were
being sold as late as 1958, the sales were from the stock remaining out
ot the earlier imports and were few and far between. In 1953, the respondent company got registered
two trade marks in respect of cycle bells
being the numeral '50' and the figure 'Fifty'. The appellant companies
were manufacturers and also dealers fn cycle bells and were selling their
cycle bells with
~°').· numeral '50' inscribed on them. The respondent
therefore, filed si.Ms in 1959, against the appellants, alleging infringement
of its trade marks.
ln ,1961, the appellants applied for stay o'f trial of the
suits and filed appli~ations in the High Court for rectification of th" register by cancelling the trade marks of the respondent under s. 5o of the
Trade and Merchandise Marks Act, 1958.
A single Judge of the High
Court, refused to expunge the trade mark 'Fifty' but ordered the cancellation of the trade mark '50'. In appeals to the Division Bench of
tbe
High Court, the order cancelling the trade mark '50' was set asiee.
In aopeals to this Court, it was contended that : ( 1) the trade marks
in question were common and not distinctive at the date of their registration as required by s. 9(3), and therefore, ought never to have been registered; (2) that the numeral '50' is not distinctive; (3) that the use of
the trade mark was likely to deceive or cause confusion and hence the
registration should be cancelled under s. 32(b) ands. l!(a); (4) that tbe
respondent had imitated the use of the marks by Lucas and other foreign
concerns that therefore they would be
disentitled
to protection under
s. ll(e) and hence the registration should be cancelled under s. 32(h);
and (5) that the trade marks were not, at the commencement <if the proceedings, distinctive and hence Hable to be cancelled under s. 32(c).
HELD: (ll Under s. 32(b) and (c) the original registration of the
trade mark has, after the expiration of 7 years from the date of registration to be taken to be valid in all respects including in rectificatior.. applications under s. 56 unless it is proved : ( 1) the trade mark was registered
in contravention of the provisions of s. 11 or offends against the p·rovisions
of that section on the date of the commencement of the proceeding or
(2) that the trade mark was not, at the commencement of the proceedings
distinctive of the goods of the registered proprietor. Section ll(a) prohibits
the registration of trade mark which would be likely to deceive or cause con·
fusion, and •. 11 ( e) prohibits the registration of trade marks if they were
•11ch that they were otherwise disentitled to protection in a court. Section
A
B·
c
D·
E
F
G
H
A
B
c
D
E
F
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NATIONAL BELL CO, V. METAL GOODS CO.
71
56(2) confers a right on any person aggrieved by an entry made in the
register without sufficient cause or by an entry wrongly remaining in theregister, to apply for expunging or varying such an entry. Since 'an aggrieved pe'Cson' includes a person who has, before registration,
used the trade
mark, and a person against whom an infringement action is taken, and the
words 'without sufficierit cause' relate to the time df original registration,
the appellant could apply for concellation on the ground that the trade
mark in question was not distinctive within the meaning of s. 9(3).
But in view of the fanguage of s. 32, no contention could be raised in
the present case, that the trade mark '50' and 'Fifty' were not distinctive
under s. 9(3), that is, adapted to distinguish the cycle bells of the respondent, at the dare of regiSlration, as, seven years had elapsed since the date
of the registration. [78 D-F; 79 B-HJ
Paine & Co. v. Dc.niells & Sons' Brcll'eries Ltd. (1893) R.P.C. 217,
232, referred to.
(2) It is not an inflexible rule that except in the case of textile goods.
a mark consh.ting of a numeral is necessarily not distinctive and is not registerable. [80 E]
Kerly on Trade Marks, 9th End.
p. 284, and
Reuter v. Hub/ens,
(1954) Ch. 50,. referred to.
(3) Section 32(b) relates to facts existing both at the time of and after
registration. If the mark at the time of registration was likely to deceive
or cause confusion or would
otherwise be disentitled to protection of a
Court, and therefore, was, under s. 11 (a) and (e) prohibited irom being
registered, the rule as to conclusiveness of the validity of the registration
in s. 32 cannot be invoked and that would also be so, if the trade mark
at the date of commencement of rectification proceedings was such as to
offend against the provisions of s. 11. [80 F-H]
The sales of foreign bells with numeral
'50' after 1953 were so few
that they could hardly be considered as evidence for showing a likelihood
of confusion o.r deception.
In
fact the purchasers
used to call those
bells. not by the numerals,
but by the
manufacturers' names.
As regards bells said to have been manufactured by one of the appellant companies since 1947 and bearing the numeral '50', no evidence was led to
show either the extent of manufacture or sale between 1947-1953 or thereafter from which the High Court could be asked to draw any inference
as to the likelihood of deception or confusion.
As against the voluminous sales of the respondent for the
years
1949-1962.
there was no
corresponding evidence on behalf of the appellants indicating sales of
their hells with number '50' from which anv likelihood of confusion or
deception could be deduced.
Therefore, s.
11 (a) was not attracted.
(816-C, G-H; 82 D-Fl
(t) The true construction of s. ll(e) is that even assuming that the
trade marks in question
were not distinctive and for that reason not registerable as not falling within s. 9, that fact. by itself, would not mean
that they became disentitled to protection in a court. That is, although a
mark cannot be registered because
it is not distinctive as provided by
s. 9 such a mark is not for that
reason only one,
the registration of
whi~h is prohibited by s. 11, because, the section ,Iays. down pos!tive objection to registration, and· not mere lack of quahfica!ton, by usmg
the
words disentitled to protection. Therefore, unless the tr~de mark offends
the provisions of s. 11, that is, offends any of the matters m els. (a) to (d)
of s. 11, or is disentitled to prolcction in a court under s. 11 ( e), the rule
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SUPREME COURT REPORTS
(1971 J l S.C.R.
as to conclusiveness of the validity di registration embodied in s. 32
applios.
In the present case, in fact, there was no evidence of any fraud having
b@en committed by the respondent at the time of the registration. There
\Vas neither averment by the appellants nor evidence, that Lucas or any
other foreign concern had obtained registration of trade marks of '50' or
'Fifty'. Those concerns merely used various numerals for distinguishing
one type of bell from another manufactured by them and there was
no
question of any piracy by the respondent. The trade mark had also become distinctive with respective to the respondent. [82 F-H; 84 D-F]
Imptria/ Tobacco Co. Ltd, v, De Pasquali & Co. 35 R.P.C. 186, referred to.
(5) The principle underlying s. 32(c) is that property in a trade mark
exists so long as it continues to be distinctive of the goods of the registered
proprietor in the eyes of the public or a section of the public. If the proprietor is not in a position to use the mark to distinguish his goods from
those of others or has abandoned it or the mark has become so common
in the market that it has ceased to connect him with his goods then there
would be no justification for retaining the mark on the register. Under
s. 32(c) the marks have to be distinctive at the 'commencement of the
proceedings', that i:; the proceedings in which the conclusive character of
the registration arises.
Therefore, it may be the date when a suit for
infringement is filed by the proprietor of the. trade mark or the date on
which the rectification proceedings are filed as a result of the suit. Rights
in a trade mark could be abandoned by the owner, but when such
abandonmevt is sought to be inferred from the proprietors neglect to
challenge infringement the character and extent of the trade of the
~nfringers and their position would have to be reckoned in considering
~befuer the registered proprietor was barred by such neglect (84 F-H;
85 A..C, D-E]
'
A
B
c
D
E
In the present case, the progressive increase of the sales of the respondent's bells from 1949 together with the evidence of witnesses of the respondent shows that the said trade marks distinguished the goods of the
respondent from those of other manufacturers. Also, whether the crucial
date is taken as 1959 or 1961, the date of suit or the date of rectification
proceedings, the evidence on record indicates that the trade marks were
F
distinctive.
The respondent has all along been zealously trying to maintain its right, against all infringements. There were no repeated breaches
which went unchallenged by the respondent when known to the respondent. Mere neglect in a few cases to proceed did not necessarily consti·
tute abandonment, because, it was in respect of infringements which were
not sufficient to affect the distinctiveness of the
mark.
There
was
no
evidence to show that the use by others di the word 'Fifty' or the numeral
~so• was substantial and the plea that there was common use of the trade
G
marks must fail.
Therefore, it is impossible to sustain
the
contention
founded on s. 32(c). [86A-E]
R•. Farina, (1879) 27 W.R. 456 and Rowland v. Mitchell, (1897) 14
R.P.C. 37, applied.
(6) The power to rectify under s. 56 is discretionary and when such
discretion was properly exercised, a court of appeal would refuse to inH
terfere. But, in the present case, the single Judge did not appreciate the
principles df ss. 11 and 32, and hence, the Division Bench was justified in
setting aside his order. [86 F]
NATIONAL JIELL co. v. METAL GOODS co. (She/at, J.)
73
A
ClV!L APPELLATE JURISDICTION:
Civil Appeal Nos. 1952
B
c
D
E
and 1953 of 1966.
Appeals from the judgment and order dated February 25,
1965 of the Punjab High Court, Circuit Bench at Delhi in Letters
Patent Appeals Nos. 38-D and 42-D, and 39-D and 43-D of
1963.
.
S. T. Desai and Naunit Lal, for the appellants (in both the
appeals).
C. B. Agarwala, K. P. Gupta and R. C. Chadlia, for respon.-
dent No. 1 (in both the appeals).
The Judgment of the Court was delivered by
Shelat, J.
These two appeals, under certificate, are directed
against the common judgment and order of the High Court of
Punjab, dated February 25, 1965, passed in four Letters Patent
appeals filed by the two appellant-companies and the respondentcompany against the judgment and order of a learned Single
Judge of the High Court.
The said appeals were the outcome of two applications filed
in the High Court under s. 111 of the Trade and Merchandise
Marks Act, XLIII of 1958 (referred to hereinafter as the Act)
for rectification of the register in respect of two registered Trade
Marks. Nos. 161543 and 161544, registered on November 20,
l 9S3 in respect,of cycle bells manufactured by the respondentcompany.
Registered Trade Mark No. 161543 was the numeral
'SO' and Trade Mark No. 161S44 was the figure 'Fifty'.
Ti1e two appellant companies carry on business in KapurF
thala in Punjab, one of them the National Bell Co. Ltd. claimed
to be manufacturing bells with numerals '33', 'SO', '51' and '40'
inscribed on them since 1957, and the other M/s Gupta Industrial
Corporation since 194 7 with numerals, '20', '50' and '60' inscribed on cycle bells manufactured by it. The two applications
for r.~ctification arose out of suits filed in the District Court,
Lucknow by the respondent-company against the two
appellant
G
companies on the ground of infringement of its said registered
trade marks •. the numeral '50' and the figure 'Fifty'. On April 24,
1961 the District Court stayed the said suits at the instance of
the appellant companies giving them time for filing the said rectification applications in the High Court.
H
The grounds alleged in the applications were (1)
that the
numeral '50' and the word 'Fifty' were common to the trade at
the time of the original registration and were therefore not distinctive of the bells
manufactured by the respondent-company,
L11Sup. C!-6
74
SUPREME COURT REPORTS
[1971] l S.C.R.
(2) that many other manufacturers in the market were using the
numeral '50' and the word 'Fifty' on or in relation to cycle bells,
and therefore, the distinctiveness of the said marks in relation to
the bdls manufactured by the respondent-company, if any, had
been Jost, ( 3) that the respondent-company did not get the registration of these marks with ad'y bona fide intention of using them
in relation to their cycle bells and that in fact there had been no
bona fide use of the said trade marks in relation to their goods
before the date of the applications.
They also alleged that the
respondent-company had fraudulently declared at the time of
registration that they were the originators or praprietors of the
said two marks '50' and 'Fifty'. Both sides led evidence, oral and
documentary, the latter including several price-lists from
the
possession of some of the dealers in cycle spare parts .
. The learned Single Judge, who in the first insta,nce tried the
applications, found on a consideration of the evidence that cycle
bells with different numerals and in particular the numeral '50'
were being sold in the market before the respondent-company put
A
c
its cycle bells with the numeral '50' and the figure 'Fifty' inscribed
D
on them in the market and continued to be sold right upto 1952
when import of foreign manufactured cycle be!ls was prohibited,
and that despite such prohibition those cycle bells were being sold
in the market as late as 1958, presumably from old stocks still
lingering in the market, though not from any .new imported stock.
The learned Single Judge also found that there was no evidence
of the original registration having been fraudulently obtained by
E
the respondent-company, that there was no averment by the appellant companies that Lucas or any other concern had obtained registration of any mark either of the numeral '50' or the figure
'Fifty', and that therefore, cl. (a) of s. 32 did not apply. He
further found that cl. (b) of s. 32 also did not apply. He held,
however, that the trade mark, namely, the numeral '50' was not
F
at the commencement of the proceedings distinctive of the goods
of the respondent company as (a) numerals are prima facie not
distinctive except in the case of textile goods as recognised by
Part III of the Trade and Merchandise Marks Rules, 1959, and
(b) that the numeral '50' was being rommonly used by several
dealers and manufacturers subsequent to the registration thereof
by the respondent-company, and that t]Jerefore, the registered
trade mark, the numeral '50', was hit by cl. ( c) of s. 32. So far
as the trade mark of the figure 'Fifty was concerned, he held that
ther.e was no evidence that it was used by other parties either prior
to or after the registration thereof by the respondent-company and
in that view declined to rectify or expunge the trade mark 'Fifty'
as seven years had already elapsed by the time the rectification
proceedings were launched and could not, therefore, be cha!lenged
on the ground of absence of distinctiveness as laid down in s. 32.
G
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NATIONAL BELL co. v. METAL GOODS co. (She/at, J.)
7 5
A
The learned Single Judge, on the basis of his aforesaid conclusions, cancelled the trade mark No. 161543, i.e., of the numeral
'50'.
B
c
D
F
G
H
In the appeals filed against the said judgment the Division
Bench of the High Court held ( 1) that though the use of the
numeral '50' in relation to cycle bells dated back at least 30 years
as in th" case of Lucas and certain other foreign concerns, the
imports of such goods stopped from about 1952, though some
bells were being sold till 1958 presumably from the remaining
previous stock, (2) that the numeral '50' in connection with those
foreign made bells was never intended as a trade mark but was
used only as an indication of the type or quality, and (3) that
statements Exs. R-2, R-3 and R-4 produced by the respondentcompany showed that sales of its bells with the trade marks '50'
and 'Fifty' inscribed on them had risen from the value of
Rs. 19,644 in 1949-50 to Rs. 14.83 lacs in 1961-62. The Division Bench agreed with the Trial Judge that cl. (a) of s. 32 did
not apply as there was no question of the original registration
having been fraudule,ntly procured in 1953.
It also held that the
trade marks in question could not be cancelled merely on the
ground that if their registration had been opposed they would not
have been registered, and that therefore, the question for determination was whether it was liable to cancellation in view of s.
32 ( c), which lays down that the section would not apply in cases
where the trade mark in question was not distinctive at the commencement of the proceedings.
According to the Division
Bench, the word "commencement of proceedings" in cl. ( c) of
s. 32 meant the commencement of the infringement suits filed by
the respondent-company as the proceedings for cancellation were
the off ~hO()ts arising from those suits, that therefore, the situation
in respect of s. 32 ( c) had to be assessed in the light of the state
of affairs existing in 1959. According to the Division Bench,
the earliest use of the mark '50' by any concern other than Lucas
and other foreign manufacturers was in 1953 by M/s Indian
Union Manufacturers Ltd. The respondent-company, however,
had filed a suit against that company in 1954 which resulted in
a compromise dated February 5. 1955 whereunder the said company recognised the exclusive right of the respondent-company
to the use Jf the words 'Fifty', 'Thirty' and the numerals '50' and
'30', while the respondent-company recognised the right of the
said company to the exclusive use of the words and numerals
'Thirty one', 'Forty one' and 'Fifty one' and '31', '41' and '51',
that the respondent-company had also in 1956 similarly taken
action against K. R. Berry & Co. of Jullundur for use by that
company of the mark 'Five 50'. The suit, however, had to be
withdrawn in 1958 on account of lack of iurisdktion of the
Banaras court where it was filed that though no fresh suit was
76
SUPREME COURT REPORTS
[1971] 1 S.C.R.
filed against that company, the respondent-company had opposed
an e!pplication by that company for registration of the mark 'Five
Fiity· before the Registrar and that application was then pending
in l 962, and lastly, that the respondent-company had filed
in
1959 the two suits against the appellant companies out of which
the>e rectification proceedings arose.
The Division Bench held
th~:t though there was some evidence of the use of the numeral
'50' by certain other conce'rns after 1953, no. importance could
be attached to such breaches as there was hardly any evidence as
to when the infringers started manufacturing and the extent of
their manufacture and sales, and that the correct principle applicable in such cases was that a few unchallenged, scattered infringements by a number of traders did not render a registered trade
mark common.
As regards the earlier use of the word 'Fifty'
and the numeral '50' by Lucas and other foreign concerns, the
Di\·ision Bench held that they were not the registered trade marks
of those companies and that those concerns had used those marks
as merely type marks. Though the idea of using '50' and 'Fifty'
was not the original idea of the
respondent-company when
it
obtained registration in 1953, the foreign concerns had ceased
importing the goods and though sales of those
bells
continued
until 1958. such sales were from the stock still remaining unsold.
Such sales could not be in any appreciable bulk.
Even if the
idea of using the two marks might have been conceived by the
re>pondent-company from the marks used by Lucas and other
foreign concerns. there was no question of any piracy or infringement of those marks as the respondent-company was the first to
convert what were originally type marks into
registered
trade
marks.
Lastly. it held that the statements of sales produced by
the respondent-company demonstrated that its
sales
had been
steadily increasing and that some concerns, finding the use by the
respondent-company of it> marks '50' and 'Fifty' highly successful. had sought in recent years to take advantage of the popularity of the cycle bells of respondent-company by imitating its
marks.
This fact. however, could not mean that either in 1959
when the respondent-company filed the suits or in 1961 when
rectification proceedings commenced, the marks had ceased to be
distinctive in relation to the goods of the respondent-company or
were. therefore. liable to cancellation under s. 56 by reason of
cl. (c) of s. 32.
Accordingly. the Division Bench allowed the
re,pondent-company's appeals and set aside the order of tire learned
Sin~le Judge cancelli11g the
registration
of its
trade
mark
No. 161543 in respect of the numeral '50' and dismissed the
appeals of the appellant companies.
Mr. S. T. Desai for the appellant companies contended that
the two trade marks in question were liable to cancellation on the
gr:'und1 that ( 1) they were common and not distinctive at the
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B
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NATIONAL BELL co. v. METAL GOODS co. (Shelat, 1.)
7 7
date of their registration, and therefore, ought never to have been
registered, (2) that in any event, the numeral ':SU' is prima facie
not distinctive unless shown to be of such extensive use
as to
make it distinctive, ( 3) that there was clear evidence that the
respondent-company had imitated the use of these marks by Lucas
and other manufacturers, and that therefore, these marks would
be disentitled to protection in a court of Jaw, and ( 4) that the
said marks were not, at the commencement of the proceedings
distinctive, that is, adapted to distinguish the goods of the respondent-company.
Mr. Agarwala, on the other hand, argued that,
( 1) the two marks having been registered in 1953 and seven years
since then having elapsed at the commencement of these proceedings, the question whether they were distinctive at the time of
registration was not open to dispute, (2) that that being so, there
was no question of any alleged piracy by the respondent-company
of the marks of Lucas and other concerns, and therefore,
the
marks could not be said to be disentitled to protection by a court,
( 3) that the marks had not lost their distinctiveness at the date of
these proceedings under s. 56, and ( 4) that the Letter Patent
Bench was, therefore, justified in dismissing these proceedings by
the appellant-companies
A mark under s. 2(j) includes a word, letter or numeral or
any combination thereof.
A trade mark, as difined in s. 2(v)
means in relation to Chapter X (i.e. for offences and penalties
provided in that chapter) a registered trade mark or a mark used
in relation to the goods for the purpose of indicating or so as to
indicate a connection in the course of trade between the goods
and some person having the right as proprietor to use the mark,
and in relation to the other provisions of the Act a mark used or
proposed to be used in relation to the goods for the purpose of
indicating or so as to indicate a connection in the course of trade
between the goods a,nd some person having the right, either as
proprietor or as registered user, to use the mark and includes a
certification trade mark registered as such under the provisions of
Chapter VIII.
Under s. 9, a trade mark is not registerable in
Part A of the register unless it contains or consists of at least one
of the essential particulars mentioned therein.
One of these
particulars in "any other distinctive mark". Cl. ( 3) of s. 9 defines
the expression "distinctive" in relation to the goods in respect of
which a trade mark is proposed to be registered,
as meaning
"adapted to distinguish goods with which the proprietor of the
trade mark is or may be connected in the course of trade from
goods in the case of which no such connection subsists either
generally or. where the trade mark is proposed to be registered
subject to limitations, in relation to use within the extent of the
registration." In determining whether a trade mark is distinctive,
regard is to be had whether it is inherently distinctive or ~
78
SUPREME COURT REPORTS
[1971] l S.C.R.
inherently capable of distinguishing and by reason of its use or any
other circumstances it is in fact adapted to distinguish or is capable of distinguishing the goods. S. 11 prohibits certain trade
marks from being registered.
These are marks the use of which
would be likely to deceive or cause confusion, or the use of which
would be contrary to any law or which comprises or contains
scandalous or obscene matters or any matter likely to hur~ the
religious susceptibilities of any class or section of the citizens,
or .. ( e) which would otherwise be disentitlw to protection in a
court''. On registration of a trade mark, the registered proprietor
gets under s. 28 the exclusive right to the use of such trade.marks
in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of any infringement of
such trade mark.
Under s. 31, registration is prima facie evidence of its validity.
The object of the section is obviously tq
facilitate proof of title by a plaintiff suing for infringement of his
trade mark.
He has only to produce the certificate of registration of his trade mark and that would be prima facie evidence
of his title. Such registration is prima facie evidence also in rectification applications under s. 56, which means that the onus of
proof is on the person making such application.
Being prima
facie evidence, the evidence afforded by the registration may be
rebutted, but in view of s. 32 that can be done if seven years have
not elapsed since the original registration. Even where such rebuttal ls possible, i.e., where seven years have not elapsed, and it is
shown that the mark in question was not registerable under s. 9
as no evidence of distinctiveness was submitted to the Registrar,
the registration would not be invalid if it is proved that the trade
mark had been so used by the registered proprietor or his predecessor-in-interest as to have become distinctive at the date of
registration.
Sec. 32, with which we are immediately concerned, reads as
follows :
"Subject to the provisions of section 35 and section
46, in all legal proceedings relating to a trade mark
registered in Part A of the register (including applications under section 56), the original registration of the
trade mark shall, after the expiration of 11even years from
the date of such registration, be taken to be valid in all
respects unless it is proved-
( a) that the original registration was
obtained by
fraud; or
(b I that the trade mark was registered in contravention of the provisions of section 11 or offends
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NATIONAL B.ELL co. v. METAL GOODS co. (Shelat, J.)
(c)
against the provisions of that section on the date
of commencement of the proceedings; or
that the trade mark was not, at the commencelll.ent of the proceedings, distinctive of the goods
of the registered proprietor."
79
We are not concerned with cl. (a) as no sucl1 case was even
averred in the applications as pointed out both by the Trial Judge
and the Division Bench. As regards cl. (b), it will be at once
noticed that the clause relates to facts existing both at the time
of and after registration. If a mark at the time of registration was
such that it was likely to deceive or cause confusion or its use
would be contrary to any law or contained or consisted of scandalous or obsce.ne matters or matter likely to hurt religious susceptibilities or which would otherwise be disentitled to protection of a
court; and therefore, was under s. 11 prohibited from being registered, cl. (b) would apply, and the rule as to conclusiveness of
the validity of the registration cannot be invoked. That would
also be so, if the trade mark at the date of the rectification proceedings was such as to offend against the provisions of s. 11.
But, unlike cl. (b), cl. ( c) relates to facts which are post-registration facts, existing at the date of the commencement of the
proceedings. If the trade mark at such date is not distinctive in
relation to the goods of the registered proprietor, the rule as to
conclusiveness enunciated in s. 32 again would not apply. It
would seem that the word 'distinctive' in cl. ( c) is presumably
used in the same sense in which it is defined in s. 9 ( 3), as the
definition of that expression therein commences with the words
"for the purposes of this Act" and not the words "for the purposes
of this section," the intention of the legislature, thus, being to give
uniform meaning to that expression all throughout the Act. S. 56
deals with the power to cancel or vary registration and to rectify
the register.
Sub-s. 2 thereof confers a right to any person
"aggrieved" by an entry made in the register without sufficient
cause or by an entry wrongly remaining in the register to apply
to the tribunal for expunging or varying such au entry. The expression "aggrieved person" has received liberal construction
from the courts and includes a . person who has, before registration, used the trade mark in question as also a person against
whom an infringement action is taken or threatened by the registered proprietor of such a trade mark.
The words ''without
sufficient cause" in the section have clearly relation to the time
of the original registration.
Therefore, a person can apply for
cancellation on the ground that the trade mark iii question was
not at the date of the commencement of the proceedings distinctive in the sense of s. 9 ( 3) . The burden of proof, however, in
such a case is, as aforesaid, on the applicant applying under
s. 56.
80
SUPREME COURT REPORTS
( 1971] l S.C.R.
The ~ontention was that numerals, such as '50', are prima
facie not considered distinctive and to be registerable there must
be evidence of extensive use.
The contention was sought to be
fortified by showing that contrary to the practice in
England,
rules 139 and 140 of the Rules of 1959 permit numerals to be
registered as trade marks only in the case -of textile goods.
But
that is permitted on account of a long standing practice in that
particular trade of using numerals with a view to distinguish.goods
of a particular manufacturer or a particular type or quality. It
will, however. be noticed that although in th.e 8th edition of
Kerly on Trade Marks, page 135, it was stated that numerals are
considered to be prima facie not distinctive and registerable only
upon proof of their extensive use, the 9th edition of the same work
does not reproduce that passage.
On the contrary, at p. 284,
the learned editor states that numerals are capable of registration
and that such marks exist.
For this change the learned editor
relies on the registered trade mark, "4711 ": for eau-de-Cologne,
which was the subject-matter of dispute in Reuter v. Mublens(').
In that case, however, no contention was raised as to whether the
trade mark consisting of a numeral could be distinctive or net and
the court. therefore, was not called upon to decide such a point.
But the parties appear to have proceed.ed on the assumption that
the numeral "4 711" was validly registered as a trade mark for
that particular brand of eau-de-Cologne by reason of its
having
gained distinctiveness by extensive use.
It i3, therefore, not an
inflexible rule and that was also conceded by Mr. Desai, that a
mark consisting of a numeral is necessarily not distinctive and is
not registerable, except only in the case of textile goods, in spite
of proof of extensive use.
S. 32 in clear terms provides that the original registratio~ of
a trade mark, after expiry of seven years from the date of
its
registration, shall be taken to be valid in all respects in all Jegd
proceedings including those under s. 56, except in the three categories of cases mention.::d therein.
It follows. therefore, that no
objection that the trade mark in question was not distinctive and
therefore was not registerable under s. 9 can be entertained if
such an objection is raised after seven years have lapsed ,;ince
the date of its registration as in the present c~se, nor can an objection be entertained that no proof of distinctiveness was adduced
or insisted upon at the time of the original registration. This is
clear also from the fact that the three exceptions set out in s. 32
agianst conclusiveness as to the validity of the registration relate
to, (I) fraud, (2) contravention of s. 11, and (3) absence of
distinctiveness at the commencement of the proceedings in question and not at the time of registration. No contention, therefore,
(!) [i954] Ch. 50.
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NATIONAL BELL co. v. METAL GOODS.CO. (Shelat, J.)
81
A
can be raised that the trade marks, '50' and 'Fifty', were not
distinctive, i.e., adapted to distinguish the cycle bells of the respondent-company at the date of the registration, and therefore,
were not registerable as provided by s. 9
(cf. Paine & Co. v.
Dani ells & Sons' Breweries Ltd. (1).
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But the argument was that the appellant companies were entitled to show under els. (b) and ( c) in s. 32, (1) that these
marks were registered in contravention of s. 11, or that they
offended against the provisions of that section on the date of the
commencement of these proceedings, and (2) that they were not
distinctive at the date of the commencement of these proceedings.
S. 11, as already noticed, does not, as s. 9 does, lay down the
requisites for registration, but lays down prohibition against certain marks from being registered. Cls. ( b), ( c) and ( d) of s. I 1
obviously do not apply in the present case but reliance was placed
on els. (a) and.(e); i.e., that the use of these trade marks would
be likely to deceive or cause confusion and that they were such
that they were otherwise disentitled to protection in a court. The
burden of proof being on the appellant companies, the question
is : has that burden been satisfactorily discharged ? The evi-·
denct> relied on by them was that of dealers in cycle spare parts ·
including bells, certain price-lists produced through them and the
two representatives of the two appellant companies. That evidence, no doubt, shows, ( I ) that for a number of years prior to
1952 bells manufactured by Lucas and certain other foreign concerns with various numerals such as '30', '50' and 61' inscribed
either on the bells or on their cartons were in the market, ( 2)
that even after 1952 bells with inscriptions thereon, such as
"Berry 50", "National 50", manufactured by one of the appellant
co,mpani.es, "Five 50", "Padam 50", "Bal co 50" etc. were sold
in the market, (3) that Gupta lndustri~l Corporation, one of the
appellant companies, claimed to have started the manufacture of
bells since 1947, calling them "Gupta 50" and the National Bell
Company likewise began to produce bells, calling them "National
50" since 1957. But both the learned Single Judge and the Division Bench clearly found, (1) that there was no -evidence of any
fraud having bt;en committed by the respondent-company at the
time of the registration; (2) that there was no avennent by the
appellant companies, much less any evidence, that Lucas or any
other foreign concerns had obtained registration of trade marks
either of the numeral '50' or the word 'Fifty', that the indication,
on the contrary, was that those concerns used the different numerals, '30', '61', '50' etc. for distinguishing one type of bell from
the other manufactured by ti-em; and (3) that about a year prior
(1) [1893j R.P.C. 217, 232.
82
SUPREME COURT REPORTS
[1971 J l S.C.R.
to the registration of th.e trade marks in question in 1953 foreign
bells were prohibited from being imported. Obviously, therefore,
the evidence as to purchases and sales by the dealers examined by
the appellant companies related to bells which had remained unsold from out of the stock earlier imported. As regards the bells
called -"Gupta 50" said to have been manufactured by one of the
app~llant companies since 1947, no evidence was led to show
either the extent of manufacture or sale between 1947 and 1953
or thereafter from which the High Court conld be asked to draw
1ny inference as to the likelihood of deception or confusion.
Though there was some evidence that foreign made _bells such as
Lucas "30", "50" and "61" were being sold as Jate as 1958, such
sal~s must have been few and far between as they could only be
from the remaining stock out of the earlier imports. Such sales
could hardly be considered as evidence showing a likelihood of
confusion or deception as
contemplated by s.
11 (a). In fact,
the evidence was that purc!iasers used to call those bells not by
their numerals but simply as Lucas' belis and those manufactured
by the respondent company as "Asia bells", and in some cases
"Asia 50".
As against the voluminous sales by the respondentcompany shown by the statements filed by it for the years 194950 to 1961-62, there was no such corresponding evideno~ indicating the sales of other bells with numerals, such as· "50" inscribed on them from which any likelihood of confusion or deception rnuld be deduced.
Regarding deception, there was indeed
no evidence whatsoever in that regard.
There was no question
of piracy also on the part of the respondent company as argued
by counsel as there was nothing to show that Lucas or any other
foreign concerns used this numeral except for distinguishing one
type of bell from another manufactured by them.
In our view,
cl. (a) of s. 11, therefore. is clearly not attracted.
The next question is whether the trade mark "50" or "Fifty"
is one which would otherwise be disentitled to protection in
a
court as laid down in cl. ( e) of s. 11 so as to attract cl. (b) of
s. 32. While construing cl. (e) of s. 11, it is necessary to repeat
that it deals with prohibition and not with requisites of registration.
Therefore, although a mark cannot be registered, for instance, because it is not distinctive, as provided by s. 9, such a
mark is not for that reason only one the registration of which is
prohib:ted by s. 11. The section lays down positive objection t.J
registration and not to mere lack of qualification. This is clear
from cl. ( e) of s. 11, which uses the expression "disentitled to
protection", and not the expression "not entitled to protection".
The former contemplates some illegal or other disentitlement inherent in the mark itself_
(see Kerly. 9th ed. 344).
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NATIONAL BELL co. v. METAL GOODS co. (Siu/at,!.)
83
In Imperial Tobacco Co. Ltd. v.