# Shh•a Jute Baling ltd v. Hindley and Co. Lrd

- **Citation:** [1955] 2 S.C.R. 252
- **Court:** Supreme Court of India
- **Decided:** 1955
- **Case number:** Civil Appeal No. I 16 of 1953
- **Bench:** s. R. DAS, Bhagwati, Sinha
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/shh-a-jute-baling-ltd-v-hindley-and-co-lrd-1492
- **Pages:** 18

## Headnote

The Trade Marks Act 1940 (Act V of 1940), s. 13--Meanin}?
and scope of-Registration subiect to disclaimer-S. 76-Appeal
to the High Court-When can the Hiflh Court interfere-Registrar,
discretion of-Proper approach in such a case.
The exercise of the power conferred on the Registrar by s. 13
of the Trade Marks Act is alwavs a matter of discretion to be
exercised, not capriciously or arbitrarilv but, according to sound
principles laid down for the exercise of all judicial discretion.
The existence of the two jurisdictional facts referred to in
clauses (a) and lb) of s. 13 and the finding that the trade mark contains pans or matters to the: exclusive use of which the proorietor
is not entitled does not condude the matter and it must further
be cmblished that some good !?l'OUnd exists for the imposition of
n disclaimer and the tribunal will exercise the discretionary power
for good cause shown.
2 S.C.R.
SUPREME COURT REPORTS
253
Por the prorcr understanding and carrying into effect the provisions of s. 13 it is ncc.:ssary to bear in mind that rhe section confides a discretionuy power in the 'tribunal' which by vir•ue of s.
2( n) means the Registrar or, as the case may be, the Court before
which the proceeding con<·crned is pending.
Assuming but not deciding that in dealing with an appeal under s. 76 of the Act from the
dc~·isions of the Registrar under s. 13 of the Act the High Court is
not fettered by reason of the Registrar, on the hearing before him,
h:iving exercised his discretion and the High Court may exercise its
own discretion, just as it could if rhe proceedings had been -taken
initially before it, it must be remembered that it is the Registrar to
whom in the first instance is committed the discretionary
power.
If that au•hority has exercised his discretion in good faith and not in
violation of any Jaw such exercise of discretion should not be interfered wi1h by the High Court merely on the ground that, in the
opinion of th::: High Court it could have been exercised differently or
even that the High Court would have exercised it differently, had the
matter been brought before it in the first instance. The proper
approach in such a c~se is for the High Court to consider whether
'lie Regi~trar llas really gonl' so irrong as to make it nrcessary to
inter/ ere with his discretion.
The real purpose of requiring a disclaimer is to define the rights
of the proprietor under registration so as to minimise, even if it
•annot wholly eliminate, the possibility of extravagant and unauthorised claims being made on the score of registration of the trade
marks.
The proviso to s. 13 preserves intact any right which the proprietor may otherwise under any other law have in relation to the
mark or any part thereof.
The disclaimer is only for the purposes
of the Act.
It does not affect the rights of the proprietor except
.~uch as arise out of registration. That is to say, the special advantages which the Act gives to the proprietor by reason of the registration of his trade mark do not extend to the parts or matters
which he disclaims.
Held, that considering all the circumstances of the present case
th~ Registrar had not gone so wrong as to make it necessary for the
High Court to interfere with his discretion. If it were to be regarded as a m~tter of exercise of discretion by the High Court as
.to whether a ~1sclaimer should be i~posed or not, it is quite clear
that the attention of the High Court was no~ drawn to an important considei:ati.on, namely, the ~trong possibility of the respondent
company ~!a1In~g a s.t~nnory nght to the !ord 'Shree' by virtue
of the re~1strat1on ·of its trade mark and sub1ect others to infringement act10ns onlv on the stren~th of the registration and without
proof of facts which it would have otherwise to establish in order
to succeed in a passing off action or a prosecution under the Indian
Penal Code and, therefore, the High Court cannot be said to have
properly exercised its discrt:'tion.
33-8 SCI/ND182
/955
T

## Text

_Characters 0–38,794 of 40,477. This is a partial read: ask again with offset=38794 for what follows._

1955
Shh•a Jute
Baling ltd.
v.
Hindley and
Co. Lrd.
Mukherjea C. J.
1955
April 15
252
SUPREME COURT REPORTS
[ 1955]
the admission of the appeal to be served upon the
respondents as soon as the security for costs and other
deposits of money were made by the appellants. This
was not done as the procedure to be followed was not
correctly appreciated. It is· true that the appellants
remained idle for a considerable oeriod of time even
after they furnished
security ancf did not take any
steps towards printing of the
record.
But as there
was an initial irregularity in the matter of issuing a
notice under Order XXXIJ, rule 9 of the Original Side
Rules of the Calcutta High Court, we are unable to
hold that the appellants were guilty of any !aches for
which the special leave deserves to be rescinded. The
resnlt is that the application of the respondents is
dismissed. The Registrar, Original Side of the Calcutta
High Court, will now issue a notice under Order
XXXrI. rule 9 of the Original Side Rules and prompt
steps should be taken by the appellants towards
nrinting and transmission of the record to this Court.
We make no order as to costs of this application.
THE REGISTRAR OF TRADE MARKS
v.
ASHOK CHANDRA RAKHIT LTD.
[ s. R. DAS, BHAGWATI and SINHA JJ.]
The Trade Marks Act 1940 (Act V of 1940), s. 13--Meanin}?
and scope of-Registration subiect to disclaimer-S. 76-Appeal
to the High Court-When can the Hiflh Court interfere-Registrar,
discretion of-Proper approach in such a case.
The exercise of the power conferred on the Registrar by s. 13
of the Trade Marks Act is alwavs a matter of discretion to be
exercised, not capriciously or arbitrarilv but, according to sound
principles laid down for the exercise of all judicial discretion.
The existence of the two jurisdictional facts referred to in
clauses (a) and lb) of s. 13 and the finding that the trade mark contains pans or matters to the: exclusive use of which the proorietor
is not entitled does not condude the matter and it must further
be cmblished that some good !?l'OUnd exists for the imposition of
n disclaimer and the tribunal will exercise the discretionary power
for good cause shown.
2 S.C.R.
SUPREME COURT REPORTS
253
Por the prorcr understanding and carrying into effect the provisions of s. 13 it is ncc.:ssary to bear in mind that rhe section confides a discretionuy power in the 'tribunal' which by vir•ue of s.
2( n) means the Registrar or, as the case may be, the Court before
which the proceeding con<·crned is pending.
Assuming but not deciding that in dealing with an appeal under s. 76 of the Act from the
dc~·isions of the Registrar under s. 13 of the Act the High Court is
not fettered by reason of the Registrar, on the hearing before him,
h:iving exercised his discretion and the High Court may exercise its
own discretion, just as it could if rhe proceedings had been -taken
initially before it, it must be remembered that it is the Registrar to
whom in the first instance is committed the discretionary
power.
If that au•hority has exercised his discretion in good faith and not in
violation of any Jaw such exercise of discretion should not be interfered wi1h by the High Court merely on the ground that, in the
opinion of th::: High Court it could have been exercised differently or
even that the High Court would have exercised it differently, had the
matter been brought before it in the first instance. The proper
approach in such a c~se is for the High Court to consider whether
'lie Regi~trar llas really gonl' so irrong as to make it nrcessary to
inter/ ere with his discretion.
The real purpose of requiring a disclaimer is to define the rights
of the proprietor under registration so as to minimise, even if it
•annot wholly eliminate, the possibility of extravagant and unauthorised claims being made on the score of registration of the trade
marks.
The proviso to s. 13 preserves intact any right which the proprietor may otherwise under any other law have in relation to the
mark or any part thereof.
The disclaimer is only for the purposes
of the Act.
It does not affect the rights of the proprietor except
.~uch as arise out of registration. That is to say, the special advantages which the Act gives to the proprietor by reason of the registration of his trade mark do not extend to the parts or matters
which he disclaims.
Held, that considering all the circumstances of the present case
th~ Registrar had not gone so wrong as to make it necessary for the
High Court to interfere with his discretion. If it were to be regarded as a m~tter of exercise of discretion by the High Court as
.to whether a ~1sclaimer should be i~posed or not, it is quite clear
that the attention of the High Court was no~ drawn to an important considei:ati.on, namely, the ~trong possibility of the respondent
company ~!a1In~g a s.t~nnory nght to the !ord 'Shree' by virtue
of the re~1strat1on ·of its trade mark and sub1ect others to infringement act10ns onlv on the stren~th of the registration and without
proof of facts which it would have otherwise to establish in order
to succeed in a passing off action or a prosecution under the Indian
Penal Code and, therefore, the High Court cannot be said to have
properly exercised its discrt:'tion.
33-8 SCI/ND182
/955
Thr Registrar of
Trade Marks
V.
Ashok Chandra
Rakhlt Ltd.
254
SUPREME COURT REPORTS
[ 1955]
1955
Sharp v. Wakefield (L.R. 1891 A.C. 173), Albert Baker Co.'s
The R 11;,rrar of Application and Aerated Bread Company's Application In re (L.R.
Trad~ Marks
[1908] 2 Ch. 86; 25 R.P.C. 513), In the matter of an application by
v.
the Diamond T. Motor Car Co, ([1921] 38 R.P.C. 373 at 379), Eno
'As/10k Chandra
v. Dunn (L.R. [1890] 15 A.C. 252; 7 R.P.C. 311), In the matter of
Rakhit ltd.,
an application by F. Reddaway & Co. Ltd. ([1926] 44 R.P.C. 27),
Smokeless Powder Co.'s Trade In re (LR. [1892] 1 Ch. 590; 9
R.P.C. 109), Greers Ltd. v. Pearman and Gorder Ltd. ([ 1922] 39
R.P.C. 4-09), Cadbury Brothers' Application In re (L.R. [1915] 2
Ch. 307; 32 R.P.C. 456), De Cordova and others v. Vick Chemical
Coy. ([1951] 68 R.P.C. 103),
Pinto v. Badman (8 R.P.C. 181 ),
Apollinaris Company's Trade Marks (L.R. [1891] 2 Ch. 186) and
Clement & Cie In re (L.R. [1900] I Ch. 114), referred to.
CIVIL APPELLATE JURISDICTION: Civil Appeal No.
I 16 of 1953.
Appeal from the Judgment and Order dated the
23rd day of August 1951 of the High Court of Judica·
ture at Calcutta in Appeal No. 112 of 1950 arising
out of the order dated the 24th day of March I 950 of
the Registrar of Trade Marks in the matter of Registered Trade Mark No. 3815.
C: K. Daphtary, Solicitor-General for India K. S.
Shavakasha and R. H. Dhebar, with him) for the appellant.
S. C. Isaacs, (P. K. Ghosh, with him) for the respondents.
1955. April 15. The Judp;ment of the Court was
delivered by
DAS J.-This is an appeal from the judgment and
order pronounced on the 23rd August 1951 by a Division Bench of the High Court at Calcuttil in Appeal
No. 112 of 1950 reversin~ the decision of the Registrar
of Trade Marks dated the 24th March. 1950 whereby
he had rectified the register by inserting a disclaimer
of the word "Shree" forming part of the re~pondent
company's registered trade mark No. 3815.
The material facts are as follows: Jn the year 1897
one Durga Charan Rakhit (since deceased) adnpted
as his trade mark in respect of the <?hee produced
and marketed by him a device which, with some
:;light modification not materially altering its essential
2 S.C.R.
SUPREME COURT REPORTS
255
features, was,
on
the application
of the
respondent company, registered as its trade mark No. 3815.
·rhat mark was and is a device consisting of the word
"Shree" written on the top in bold Bengali character, having below it an ornamental figure with the
word "Shree" written in the centre in small Deva
:Nagri character. The word
"TRADE" written in
English in an inclined manner on the left hand side of
the ornamental figure and the word "MARK" written
in English in an inclined manner on the right hand side
of the ornamental figure and the words "Shree Durga
Charan Rakhit" written at the bottom in Bengali
characters. The ornamental figure referred to above
consists of a triangle over which is another inverted
triangle and in the centre the word "Shree'', in small
Deva Nagri character as mentioned above, the whole of
the saia ornamental figure being enclosed in a circle
outside which are twelve
ornamental petals. In the
affidavit affirmed by Malli Nath Rakhit, a director of
the respondent company and filed in these proceedings,
this mark has
throughout been referred to as "the
said mark SREE". The said Durga Charan Rakhit
having subsequently been adjudged insolvent all his
properties including the goodwill of his ghee business
and the said mark vested in the Official Assignee of
Calcutta. On the 15th January 1915 the goodwill
of the said business including the 'laid mark was
sold by the Official Assignee by public auction and
one Hem Dev Konch, a minor, was declared as the
highest bidder and purchaser. A notice of the said
sale wa~ advertised in the Calcutta Exchange Gazette
on. the 25th January 1915 by an attorney acting on
behalf of the purchaser. On the 27th January 1915
the said sale was confirmed by a Deed of assignment
executed by the Official Assignee. On the 22nd
August 1917 Haripriya Konch, the father and natural
guardian of the minor purchaser, acting as such and
on behalf of the minor.
conveyed to one
Ashok
Chandra ·Rakhit, son
of the said
Ourga Charan
Rakhit. the .goodwill of the business including the
ri!!ht. title and interest in the said mark and the said
Ashok Chandra Rakhit carried on the said business
1955
Tlzc Reginrar of
Trade Marks
v.
As/wk Chandra
Rak/1it Ltd.
DasJ.
256
SUPREME COURT REPORTS
[1955)
1955
and marketed ghee under the said mark. On the J 5th
J"he Registrur ef September 1926 the
said
Ashok Chandra Rakhit
Trade Marks
caused the fact of his ownership of the said mark to
A1hok "c1ia11dra
be advertised in the Calcutta Exchange Gazette and
llakhlt Ltd.
on the 22nd December 1926 caused to he registered
DasJ.
with the Registrar of Assurances of Calcutta a declaration of his
ownership of the said mark. In 1932
the
respondent
company was
incorporated as a
private limited company under the Indian Companies
Act, 1913 and
the said
Ashok Chandra Rakhit
assigned the goodwill of his
said
business and his
right, title and interest in the said mark to the respondent company.
In
1933
the respondent company's said mark was registered in the Trade Mark
Registry at Hong-Kong under the provisions of the
Hong-Kong Trade Marks
Ordinance, 1909 and the
fact of such registration was published in the Straits
Settlements Government Gazette. In 1934 two persons, Rajendra Prasad and Dilliram, were, on complaint, made on behalf of the
respondent company,
convicted by the Chief Presidcm.:y Magistrale of Calcutta under section 4l'6. Indian Penal Codt\ for infringing the said mark and such conviction was uphelci by thr.
Calcutta
High
Court.
In
1935 one
Chiranjilal Sharma was, on like complaint, convicted
by the Chief Presidency Magistrale for infringement
of the said mark. The volume. of lhc respondent
company's business in ghee done under the said mark
is said to be considerable. the annual turn over varying front Rs.
10.00,000 to Rs. 15,00,000, and the
annual cost of advertisement being anything between
Rs.
10,000/-
and Rs. 39,000/-. It is also said that
the ghee marketed by the respondent company and
.its predecessors is well known by the said mark and
is always asked for under the name "Shree".
The Indian Trade Marks Act, 1940 having been
1•ought into·force in 1942 the respondent company
on the 21st August 1942 filed an application for the
registration of its said mark
under the Act. By his
letter dated the 29th November 1943 the Registrar
proposed that there
should be a disdaimer of the
word "Shree". T:1e
respondent company
by its
' •
/
\
2 S.C.R.
SUPREME COURT REPORTS
257
agents' letter dated the 15th February 1944 intimated
to the Registrar that it could not agree to the proposal as "the trade mark Shree is very important in
the device" and "the ghee is commonly designated
by the trade mark Shree". The respondent company
also submitted an affidavit affirmed by one Bidyut
Bikash Rakshit, a director of the respondent company, in support of its objection. The Registrar not
having then pressed his proposal for disclaimer the
respondent company's said mark was duly registered
as trade mark No. 3815.
•
It appears that subsequently the Registrar found
that the word "Shree" was used by
Hindus as a11
auspicious symbol and placed even on letter heads
and that consequently it was not adapted to distinguish within the
meaning of the Act. In course of
time, therefore, a pradice became established in the
Registry whereby the word "Shree" was either ref use~
registration as a trade mark or a disclaimer was enforced if it were made a part of a trade mark. So
infkx111k 11ad Ileen
this practice that barring this
particular trade mark No.
3815 there was no other
trade mark containing the word ''Shrce" which had
been registered without a
disclaimer of the word
"Shree". Naturally this circumstance was bound to
be regarded as an invidious discrimination and,
indeed, pointed reference is said to have been made to
it and it was suggested that the Registry should deal
impartially and
uniformly with all
applications in
matters relating to practice. This aspect of the matter
having been
pressed upon
the Registrar he took
steps under section 46(4) of the Trade Marks Act.
1940 and on the 8th March 1947 issued a notice calling upon the respondent company to show cause why
the register should not be rectified by entering a disclaimer of the exclusive right in regard to the wurd
"Shree". The respondent company showed cause by
filitH! an affidavit affirmed by Malli Nath Rakhit to
which reference has been made. After hearing learned
connsel for the respondent
company the Re_!!istrar
came to the conclusion that the word
"Shree" was
1955
Tile Registrar <!f
Trade Mark>
v.
As/10k Cluuulra
Rak/lit Ltd.
Das J.
258
SUPREME COURT REPORTS
[ [ 955]
1955
not adapted to distinguish and, for reasons slated in
1/re Registrar ,1/ his judgment delivered
on
the 24th March 1950,
Trade· Marks
'directed
rectification of .the register by inserting a
As/wk 'c1wadru disclaimer of the word
"Shree' in
the following
Rakhit Ltd.
tern1s;
D,b·J.
"Registration of this Trade
Mark shall give no
right to the exclusive use of the word 'Shree' ".
Feeling aggrieved by the aforesaid decision the respondent company
preferred an
appeaJ to the High
Court at Calcutta under· section 76 o( the Act. The
Hit!h Court also took the view that "Shree" was a
word which had numerous meanings and that it would
be impossible
for any trader to contend
that
he
had an exclusive right to the use of such a word. But
the High Court went on to hold that there was no
ground whatsoever for the order made by the Registrar as the respondent company had never claimed
that it had any right to the exclusive use of the word
"Shree' . .In the result, the High Court allowed the
appeal and set aside the order of the Regist rnr n:cli-
!'ving the register.
Being. of the
opinion
that the;:
point involved was a novel
one in this country aud
wa:. ot importance and
would aliect the· attitude of
the Hcgistrar in future cases, the Hign Court certified that it was a fit
l'asc for appeal to this Court
under i\rticlc 13311 )(c) of the Constitution. Hence the
prc'<:nt appeal by the Registrar.
The order of rectification of the register by inserting
n disclaimer was made by the Registrar under section
13 read with section 46(4) of the Trade Marks Act.
1940. Section 13 runs as follows:
"13. Registralion subject to disclaimer: --If a
trade mark containsla) any part not separately registered as a trade
mark in the name of the proprietor. or for the separate
registration of which no application has been made.
or
(b) any matter common to the trade, or otherwise of a non-distinctive character.
the trih1mal. in
deciding whether the tracle
mark
<h·11l he entered or shall.remain on the register. may
require. as a condition of its being on the register. that
2 S.C.R.
SUPREME COURT REPORTS
259
the proprietor shall either disclaim any right to the
txciusive use of such part or of all or any portion of
such. matter, as the case may be, to the exclusive use
of which the tribunal holds him not to be entitled, or
make such other disclaimer as the tribunal may consider necessary for the purpose of defining the rights
of the proprietor under the registration:
Provided that no
disclaimer shall affect any
rights of the proprietor of a trade mark except such
as arise out of the registration of the trade mark in
respect of which the disclaimer is made".
At the outset it will be noticed that the power of
the tribunal to require a disclaimer is conditioned and
made dependent upon the existence of one of two
things which are set out in clauses
(a) and (b) and
which have been called the jurisdictional facts. It is
only on the establishment of one of the two jurisdictional 'facts that the Registrar's jurisdiction regarding imposition of a disclaimer arises. Before, however.
he may exercise his discretion he must find and hold
that there are parts or matters included in the trade
mark to the exclusive use of which the proprietor is not
entitled and it is only after this finding is arrived at
that the Re~istrar becomes entitled to exercise his
discretion. In cause of the argument it was at one
time contended that upon the establishment of the
requisite jurisdictional fact and upon the finding that
the proprietor w~s not entitled to the exclusive use
of any particular part or matter contained in the
trade mark the Registrar became entitled, without
anything more, to require a disclaimer of that oart
or matter. This extreme position, however, was not
mnintained in the end and it was conceded, as indeed it had to be. that the exercise of the power conferrecl on the Registrar by this section always remained a matter of discretion to be exercised. not capriciously or arbitrarilv but, according to sound princiole.s
l?id down for the exercise of all judicial discretion.
(See the observations of Lord Halsburv. L.C .. in Sharn
v. WaT(PfiP!d (').) As the hw of Trwie M11rks adooted
in onr .Act mcrdv reproduces the
Frn2li~h Law with
(l) L.R. 1891A.C.173 at p. 179.
1955
The Registrar a/.
Trade Marks
v.
•
Ashok Cha11dra
Rakhit Ltd.
Das.J.
260
SUPREME COURT REPORTS
[ 1955]
195!_
onl)· slight modifications, a reference to the judicial
The Regi . .-rrar of decisions on the corresponding section of the English
Trade Mark•
Act is apposite and must be helpful. Section 15 of
A.rlwk "c1w11dro the English Act of 1905 which later on was reproduced
· Rakhi1 Lid.
in· section 14 of the English Act of 1938 and which
Dns.r.
corresponds to our
section 13, was considered by
the High Court in England in In re Albert Baker Co.'s
Application and Jn re Aerated Bread Company's Application(') which is commonly called the A.B.C. case.
fn that case Eve, J. found
on
the evidence
that
Albert Baker Company were widely
known
as
"A.B.C."
or "A.B. & Co." but that
the
letters
·"A.B.C." did not exclusively indicate their goods and
that those letters being common to the trade they
were not entitled to the exclusive use of those letters.
Nevertheless the learned Judge did not hold that that
finding alone concluded the matter. Said the learned
Judge:
"The first observation which it occurs to· me to
make is that the object of the Legislature
was to
relieve traders from the necessity of disclaiming, and
I think it follows from this that the condition is one
for the imposition of which some good reason ought
to be established
rather
than
one which ought
to be imposed, unless some good reason to the contrary is made out. This conclusion is, I think, fortified by the frame of the section, which is in an enabling form empowering the tribunal to impose the
condition-a power which, I
conclude, the tribunal
would only exercise for good cause shewn."
It follows from what has been stated above that the
existence of one of the two jurisdictional facts referred
to in clauses (a) and (b) of section 13 and the.finding
that the trade mark contains parts or matters to the
exclusive use of which the proprietor is not entitled
does not conclude the matter and it must further be
established that some
good
reason
exists for the
imposition of a disclaimer and
the tribunal will
only exercise the discretionary power for gl'od canse
shown.
(I) L.R [1908] 2 Ch. 86: ~5 R.P.C 51 J.
2 S.C.R.
SUPREME COURT REPORTS
261
The second thing to be borne in mind, if the provisions ot section 13 are to be properly understood and
carried into effect, is that the section confides a discretionary power in t:1e "tribunal" which, by virtue
of section 2(n), means the Registrar or, as the case
nuy be, the Court before which the proceeding concerned is pending. An application for the rectification of the register may, under sub-sections (1) and
(2) of section 46, be made either to the Registrar or
the High Court and sub-section (4) of that section,
under which the present proceedings were initiated
hy the Registrar, authorises both the High Court and
the Registrar to take proceedings suo motu. In view
of the fact that discretion is given also to the High
Court under section 13 a question may be raised as to
whether the observations made by P.O. Lawrence, J.
in In the matter of an application by the Diamond T.
Motor Car Co.0 namely, that in dealing with an
appeRl from the Registrar's decision under section 8(2)
of the English Act of 1919 the
High Court is not
fetterred by reason of the Registrar on the hearing
before him having exercised his discretirm, apply to
our High Court hearing appeals under section 76 of
our Act from Decisions of the Registrar given under
section 13 of our Act and whether in that situation
our High Court may exercise its own discretion iust
as it could if the proceedings had initially been taken
before it. Assuming, but without deciding, that they
do apply, it must, nevertheless, be remembered, adapting the language of Lord Macnaghten in Eno v. Dunn(')
that it is the Registrar "to whom in the first instance
.is committed
the
discretionary power". If that
authority has exercised his discretion in good faith
and not in violation of any law such exercise of discretion should not be interfered with by the High
Court merely on the ground that, in the opinion of
the High Court. it could have been
exercised differentiy or even that the High Court would have exercised it differently. had the
matter been
brought
hefore it in the first instance. The prop~r approach in
(1) [19211 38 R.P.C. 373 nt p. :179.
(21 L.R. r~8901 15 A.C. 25~ at p. 263: 7 R.P.C. 311 at p. 318.
H-f, SCI•ND'82
/95.~
The Regi.vtrar t•f
Trad~ MarkJ ·
v.
As/wk Chandra
Rakhit Ltd.
Dasi.
262
SUPREME COURT REPORTS
[1955]
1955
such a case is for the High Court to consider, as said
The Reg;sirar of by Lord Dunedin in In ihe matter of an application hy
Trade Mark..
F. Reddaway & Co Ltd.('), "whether the Registrar
Ashok Chandra had really gone so wrong as to make it necessary to
Rakhit Ltd.
interfere with his discretion".
DasJ.
Tht third thing to note is that the avowed purpose
of the section is not to confer any direct benefit on
the rival traders or the general public but to define
the rights of the proprietor under the registration.
The registration of a trade mark confers substantial
advantages on its proprietor as will appear from the
sections grouped together in Chapter IV under the
heading "Effect of Registration". It is, however, a
notorious fact that there is a tendency on the part
of some proprietors to get the operation of their trade
marks expanded beyond their legitimate bounds. An
illustration of an attempt .of this kind is to be found
in In re Smokeless Powder Co.'s Trade Mark('). Temptation has even led some proprietors to make an exaggerated claim to the exclusive use of parts or matters
contained in their trade marks in spite of the fact
that the:v had expressly disclaimed the exclusive use
of those parts or matters. Reference may be made to
Greers Ltd. v. Pearman and Corder Ltd.(') commonly
called the "Banquet" case. The real purpose of requiring a disclaimer is to define the rights of the proprietor under the registration so as to minimise. even
if it cannot wholly eliminate, the possibility of extravagant and unauthorised claims being made on the
score of registration of the trade marks.
/
The last feature of the section is its proviso. That
proviso preserves intact any right which the proprietor may otherwise under any other law have in relation to the mark or any part thereof. The disclaimer
is only for the purposes of the Act. 1t do(!s not affect
the rights of the proprietor except such as arise out
of registration. That is to say, the special advanta?es
which the Act gives to the proprietor by reason of the
registration of his trade mark do not extend to the
(I) [1926] 44 R.P.C. 27 at p. 36.
(2) L.R. [1R92] 1Ch.590; 9.R.J.'.C. 109.
(l) [1922] l9"R.P.C. 406.
2 S.C.R.
SUPREME COURT REPORTS
263
parts or matters which he
disclaims. In short, the
disclaimed parts or matters are not within the protection of the statute.
That ciicumstance,
however,
does not mean that the proprietor's rights, if any,
with respect to those parts or matters would not be
protected otherwise than under the Act. If the proprietor has acquired any right by long user of those
parts or matters in connection with goods manufactured or sold by him or otherwise in relation to his
trade, ht may, on proof of the necessary facts, prevent
an infringement of his rights by a passing off action
or .a prosecution under (he Indian Penal Code. Disclaimer does not affect those rights in any way.
Keeping, then, in view the meaning and scope of
section 13 of our Trade Marks Act, 1940 and its underiying purpose as discussed above we proceed to consicler whether in the circumstances of the present case
the Registrar had exercised his discretion properly in
inserting in the
register a
disclaimer of the word
"Shree·· It has not been
disputed that the respondent company's registered trade mark No. 3815 is a
distinctive device· properly registrable under section
6 of tht Act. It is also a fact that it contains, as its
prominent part, the word "Shree'' which is not separately registered as a trade mark in the name of the
respondent company and, indeed, no applica.tion had
heen made by it for the separate registration of that
Word. There can, therefore, be no doubl as to the
existenct: of the jurisdictional fact referred to in clause
(a) of that section. Further, the Registrar found as
a fact, for reasons stated by him,
that the word
"Shree" was not adapted to distinguish, which means
that it did not pass the test for
registrability laid
down in section 6 and in particular in sub-section (3)
thereof. The High Court also unequivocally took the
view that "Shree" is a word which had
numerous
meanings and that it would be impossible for any
trader to contend that he had an exclusive right to
the use of such a word. It, therefore. follows that
the respondent company's trade
mark was concurrenflv held to have contained matters of a non-distinctive character and consequently the second juris1955
The Registrar of
Trade Marks
V.
As/wk Chandra
Rakhit Ltd.
Das!.
264
SUPREME COURT REPORTS
[1955]
1955
dictional fact was also present in this case. It, neverThe Registrar of theless, appeared to the High Court that there was
Trade /tfarks
no ground
whatsoever for the
order made by the
Ashok Chandra Registrar. The High Court read the decision of the
Rak/ut Ltd.
R
t
d ·
1
h
d
· d
Das J.
eg1s rar as procee mg on y on w at was
escnbe
as an inflexible practice established in the Registry
whereby the word "Shree" was either refused registration as a trade mark or a disclaimer was enforced
if it wa' a part of a trade mark and in this view the
case appeared to the High Court to be indistinguishable from the case of In re Cadbury Brothers' A pplication(1).
That case was decided under section 9 of the
English Act of 1905. Clause (5) of section 9 was then
expressed in language which is somewhat different from
clause (5) of section 6 of our Act. Under section 9(5)
of the English Act of 1905 a name, signature or word
or words otherwise than such as fell within the description in the preceding paragraphs 1 to 4 could not.
except by the order of the Board of Trade or by the
Court, be deemed a distinctive mark: Tudor' heing
a surname did not fall within clause (4) of that English
Act and. therefore, the
Regis1rar had no power to
register it as a
distinctive mark
under clause (5).
Such being the position, the then Registrar of Trade
Marks in England adopted a practice that wherever
a mark contained a name which did not come within
clause ( 4) and which he had no power to register under
clause <5). there must be a disclaimer of that word
without going into any investigation as to its distinctiveness. The Registrar in that case
declined to register the mark only because it contained a
name
\"hich could not be
registered alone by him under
section 9(5), without deciding whether that word was
a matter of a distinctive or non-distinctive character,
in pursuance of the inflexible
practice that he had
adc>pted.
namely,
of
refusing
registration in the
absence of a disclaimer. This decision of the Registrar wa~ overruled by Sargant, J. The learned Jud!!e.
on the materials before him, came to the conclusion
that the word 'Tudor' was not common to t'ie trnde
(ll T-.R. [19151 2 C11. 307: 32 R.P.C. 456.
2 S.C.R.
SUPREME COURT REPORTS
. 265
and that the word as it had been used hy the applicants in relation to chocolates was not a matter of
non-distinctive character and that it had denoted
their goods. Consequently, the jurisdiction to impose
a disclaimer did not arise under clause (b) of section
15 of the English Act of 1905. The jurisdiction, if at
all, could, therefore, arise only under clause (a),
namely, that the trade mark contained parts not separately registered by the properietor as trade marks.
Having come to the conclusion that the word 'Tudor'
was a matter of distinctive character as it denoted
the goods of the applicant's manufacture, the Court
might have disposed of the cas.e on the short ground
that, on that finding, the applicant was entitled to
the exclusive use of that name in connection with
chocolates and like goods and, therefore, no question
of requiring a disclaimer could, in that situation,
arise at all.
Treating the matter, however, as stil!
one of discretion, the learned Judge had to take into
account the commercial case made on behalf of the
applicants, namely, that they would, by disclaiming
any right to the exclusive use of the word Tudor',
practically be inviting the public to disregard such
common law rights as they had acquired to the use
of the name 'Tudor' and held that to impose a disclaimer of that word, in spite of the finding as to its
distinctiveness in relation to the goods of the applicant0, would be to drive the applicants to take innumerable passing off actions.
The facts of that case appears to us to be cleady
distinguishable from those of the case now before us.
Here the concurrent finding of the Registrar and the
High Court is that the word "Shree" is not adapted
to distinguish and is not a word to the exclusive use
of which any trader may claim the right. In the face
of this finding the consideration of the possibility that
a disclaimer may drive the respondent company to a
crop of passing off actions was not so relevant or
urgent as it was in the Tudor case. In view of the
finding in the present case the respondent company
CG\1!0 well he left. as it was in fact left, to protect its
1955
Tile Registrar of
Trade Marks
v
Ashok Cliandra
Rak/iit Ltd.
Dasi.
266
SUPREME COURT REPORTS
[1955]
1955
rights by other proceedings, e.g., passing off actions
The R;;;;;;;rar of or prosecutions which, by reason of the proviso, were
Trade Marks
open to be taken by it, if the necessary facts to
As!iok ~Jumdra support such proceedings which were not before the
Rakhit Ltd.
Registrar could be satisfactorily established.
Da:.·J.
Further, it is not quite correct to say that the Registrar, like his English counterpart,
had based his
decision entirely on what has been called his invariable practice. It is no doubt true that the Registrar
did, in this case, lay considerable stress on that aspect
of the matter and may even be said to have some
what over emphasized the practice of his Registry but
it is not correct to say that his decision was entirely
founded on that practice alone. The materials before
the Registrar, appearing on the affidavit filed on beh'aif ot the respondent company, clearly indicated
that the respondent company was claiming a proprietary right to the name "Shree''. Indeed, it called its
mark as "the· said mark Shree" throiaghoqt the affidavit and claimed that the said mark · "Shree" was
well known in the market and that its ghee was asked
for and sold under the said mark "Shree": The two
prosecutions launched by it and the other facts mem"
tioned in the main aflidavit and the two supporting
afildavit~ of two retail dealers and summarised at the
beginning of this judgment clearly indicate that it
was claiming the right to the exclusive use of. the
word "Shree" and, indeed, in its agents' letter of the
15th February
1944 objecting
to
any
disclaimer
of that word, it was referred to "as trade mark Shree"
and it was said to be "very important in the devise".
In other words, they put forward
the claim
that
"Shree'' itself was also its trade mark, apart from the
device as a whole and that it was an important
feature. of its device.
It· is, therefore, not at all
surprising that learned. counsel appearing for the respondent company before the Registrar, when asked
as to how his client could possibly be affected by disclaiming the word "Shree", said frankly that it was
far easier to be successful in a{I infringement action
than in a passing off action. This clearly indic;11cd
that the respondent company did not want any .other
2 S.C.R.
SUPREME COURT REPORTS
267
merchant to use the word "Shree" in his trade mark
in respect of ghee and that the respondent company
t.houghc that the registration of its trade mark with
the word "Shree" contained in it would, per se, give
it a right also to that word and .that its intention was
to launch infringement actioris under the Act against
any other trader who might happen to use the word
"Shree" either alone or as part of his trade mark in
respect of ghee.
Further, the Registrar may well
have thought that the fact that all other traders who
had got their trade marks containing the word "Shree"
registered had had to submit to a disclaimer of the
word "Shree" whereas the respondent company had
got its trade mark containing the word "Shree" registered without a disclaimer was calculated to cause
embarrassment to. other traders and might conceivably encourage tbe respqndent company to contend
that the registration of its trade mark by itself and
without further evidence gave it a properietary right
to the exclusive use of the word "Shree". The respondent company may also find some encouragement
from the observations of .Lord Radcliffe in DeCordova
and others' v. Vick Chemical Coy.(') namely, that if a
word forming part of a mark has come in trade to be
used to identify the goods of the owner of the mark,
it i~ an infringement of the mark itself to use that
word as the mark or part of the mark of another
trader, for confusion is likely to result. These considerations may reasonably have led the Registrar to
require a disclaimer.
None of these considerations
arose or were adverted to in the Tudor case and this
circumstance quite clearly distinguishes the. present
case from that case.
It is true that where a distinctive label is registered
as a whole, such registration cannot possibly give any
exclusive statutory right to the oroprietor
of
the
trade mark to, the use of any particular word or name
contained therein anart from the mark ·a.,; a whole.
As said by Lwd Esher in Pinto v. Badmanr> :
·
"The truth is that the label does not consist of
(1) [19Sll 68 R.P.C.103 at p. 106.
(2) 8 R.J'.C. 181 at p. 191.
1955
The Registrar ef
Trade Marks
\',
Ashok Chandra
Rakhit Ltd.
DasJ.
268
SUPREME COURT REPORTS
[ 1955]
1955
each particular part of it, but consists of the comhiThe Re1ir.;,rar qf nation of them all",
Trade Marks
v.
Ashok Chandra
Rakhit ltd.
Das.I.
Observations to the same effect will be found also in
ln re Appo//inaris Company's Trade MarksC), !11 rl!
Smokeless Powder Co. (supra), In re C/emem and Cid')
and In re Alben Baker & Company {supra) and finally
in the Tudor rnse referred to above which was decided
by Sargant, .T.
This circumstance, however, does not
necessarily mean that in such a case disclaimer will
always be unnecessary. It is significant that one of
th~ facts which give rise to the jurisdiction of the
tribunal to impose disclaimer is that the trade mark
ccntains parts which are not separately registered.
It is, therefore, clear that the section itself contemplates that there may be a disclaimer in respect of
paris contained in a trade mark registered as a whole
although the registration of the mark as a whole does
not confer. any statutory right with respect to that
part.
As we have already stated the possibility of the
proprietor attempting to expand the operation of his
trade mark cannot be ignored or overlooked. It ls a
thing which must be taken into consideration by the
tribunal-be it the Registrar or the Court--in deciding upon the way it should exercise the discretionary
power conferred on it. Reference has beef) made by
the Hi!.!h Court to the observations of Eve, .T. in the
A.B.c: case referred to above and the question has
been posed as to whether any good cause had been
shown for the necessity of disclaimer in this case. The
High Court answers the question immediately by
saying that it did not think that any cause had been
shown beyond the desirability of having a uniform
practice. This, as we have already stated, is not
quite correct. for apart from the :l)ractice the Registrar did advert to the other important consideration,
namelv. that on the evidence before him and the
st~tenient of counsel it was quite clear that the reason
for resisting the disclaimer in this particular case was
that the company thought. erroneously no doubt but
(I) L.R. f1R91l 2C'h. 1R6.
(2) L.R. [1900] 1Ch.114.
2 S.C.R.
SUPREME COURT REPORTS
269
quite seriously, that the registration of the trade
mark as a whole world, in the circumstances of this
case, give.