{"id":68682,"date":"1985-09-30T00:00:00","date_gmt":"1985-09-29T18:30:00","guid":{"rendered":"https:\/\/www.legalindia.com\/judgments\/american-home-products-vs-mac-laboratories-private-limited-on-30-september-1985"},"modified":"2018-03-11T15:22:59","modified_gmt":"2018-03-11T09:52:59","slug":"american-home-products-vs-mac-laboratories-private-limited-on-30-september-1985","status":"publish","type":"post","link":"https:\/\/www.legalindia.com\/judgments\/american-home-products-vs-mac-laboratories-private-limited-on-30-september-1985","title":{"rendered":"American Home Products … vs Mac Laboratories Private Limited … on 30 September, 1985"},"content":{"rendered":"
Supreme Court of India<\/div>\n
American Home Products … vs Mac Laboratories Private Limited … on 30 September, 1985<\/div>\n
Equivalent citations: 1986 AIR 137, \t\t 1985 SCR Supl. (3) 264<\/div>\n
Author: D Madon<\/div>\n
Bench: Madon, D.P.<\/div>\n
           PETITIONER:\nAMERICAN HOME PRODUCTS CORPORATION\n\n\tVs.\n\nRESPONDENT:\nMAC LABORATORIES PRIVATE LIMITED AND ANR.\n\nDATE OF JUDGMENT30\/09\/1985\n\nBENCH:\nMADON, D.P.\nBENCH:\nMADON, D.P.\nSEN, AMARENDRA NATH (J)\n\nCITATION:\n 1986 AIR  137\t\t  1985 SCR  Supl. (3) 264\n 1986 SCC  (1) 465\t  1985 SCALE  (2)933\n\n\nACT:\n     Trade Marks  Act, 1940  (5 of 1940), ss.14(1) and 39(2)\nand Trade  and Merchandise Marks Act, 1958 (43 of 1958), ss.\n18,  46(1)(a)(b)   and\t48  -  \"Trade  Mark\"  -\t What  is  -\nRegistration of\t Valuable right\t on the\t proprietor  whether\nconferred - Infringement of rights - Remedies - What are.\n     Trade Marks  Act, 1940 - s.14(1) - Trade mark 'Dristan'\nRegistration of.\n     Trade and\tMerchandise Marks  Act, 1958 - S.46(1)(a)(b)\n\"Trade Mark\" - Removal of from Register of Trade Marks - Two\nconditions  precedent  under  cl.(a)  must  be\tcumulatively\nsatisfied - Burden of proving applicability of s.46(1)(a)(b)\n- On  person seeking  removal of  trade mark  -\t Distinction\nbetween cls.  (a) and  (b) - What is - S.46(1) - Object of -\nTrafficking  in\t trade\tmark  What  is\t-  Ascertainment  of\nbonafide intention  to use  trade mark\tWhether dependant on\nthe facts  and circumstances of each case Whether continuous\nchain of  events even  subsequent  to  the  application\t for\nregistration to\t be considered - Intention to use trade mark\nsought to  be registered  - Must  be genuine and real at the\ndate of\t application for  registration -  Whether the  words\n\"proposed to  be used  by him\"\tin s.18 mean \"proposed to be\nused by the proprietor, his agents and servants\" - Effect of\nsub-s.(2) of s.48 on sub-s. (1) of s.18 - What is.\n     Trafficking in Trade Marks - What is.\n     Interpretation OF Statutes:\n     Deeming provision - Full effect to be given.\n     Construction leading  to manifest absurdity, injustice,\ninconvenience or anomaly to be avoided.\n     Precedents: Doctrine of\n     English  decisions\t  -  Can   be\treferred   to,\t but\napplicability would  depend upon  context  of  Indian  laws,\nlegal procedure\t and practical\trealities of  litigation  in\nIndia.\n265\n\n\n\nHEADNOTE:\n     The appellant-American  Home Products Corporation, is a\nCorporation incorporated  in the  United States\t of America.\nOne of\tits activities\tis, the manufacture and marketing of\npharmaceutical products\t and drugs  carried on\tthrough\t its\ndivision \"Whitehall Laboratories\". The appellant was dealing\nwith the  Indian Company  -  Geoffery  Manners\t&  Co.\tLtd.\nthrough its  subsidiary -  Home Products  International Ltd.\nSome time  prior to 1956 lt acquired 40% shareholding in the\nIndian Company.\t In 1956 it introduced an anti-hystamin drug\nin the\tAmerican market\t under the  trade-mark 'Dristan'. It\ngot the\t trade mark  'Dristan' registered  as a\t distinctive\ntrade mark  in the Trade Marks Register in the United States\nand subsequently in several foreign countries.\n     The appellant  entered into  a technical  collaboration\nagreement with\tthe Indian  Company effective  from Nov.  1,\n1957. Under  this agreement  the Indian Company received the\nformulae, manufacturing\t technology,  and  other  assistance\nessential for  the efficient manufacture in India of various\nproducts of  the appellant.  The appellant  granted  to\t the\nIndian\tCompany,  for  the  duration  of  the  agreement  an\nexclusive and  non-transferable licence to make and sell the\n\"Licensed Products\"  in India under the name or marks of the\nappellant. The\tagreement inter\t alia further  provided that\nrights of  registered user  will be  extended to  the Indian\nCompany\t in  respect  of  each\t\"Licensed  Product\"  by\t the\nappellant - proprietor of such trade mark.\n     Pursuant to  the  collaboration  agreement\t the  Indian\nCompany\t manufactured  and  marketed  the  products  covered\nthereunder and\tgot itself registered as the registered user\nin respect of the trade marks relating to the goods of which\nthe appellant  was the\tregistered proprietor.\tOn and\tfrom\nDecember 1957  it was decided that the Indian Company should\nintroduce in  the  Indian  market  nine\t new  drugs  of\t the\nappellant including  'Dristan' tablets.\t On August 18, 1958,\nthe appellant  filed an\t application under  8.14(1)  of\t the\nTrade Marks  Act 1940,\tin Form TM-I for registration of the\ntrade  mark   'Dristan'\t in  class  5  claiming\t to  be\t its\nproprietor and\tthat the same was proposed to be used by it.\nThe application\t was advertised\t as required  by  the  Trade\nMarks  Rules   1942.  No   Notice  of\topposition  to\t the\nregistration of\t the trade mark was filed by any one and the\ntrade mark  'Dristan' was  registered on June 8, 1959 by the\nRegistrar of  Trade Marks  as trade mark No. 186511 in class\n5. Thereafter, the Indian Company obtained a licence for the\npurchase of a machine for manufacturing of 'Dristan' tablets\nand installed the same.\n266\n     On\t May   31,  1960,   the\t first\t respondent  -\t Mac\nLaboratories Private  Ltd. - applied for registration of the\ntrade mark  'Tristine' in  class 5. On January 18, 1961, the\nappellant filed\t a notice  of opposition to the registration\nof the mark 'Tristine' on the ground that it was deceptively\nsimilar\t to   its  trade  mark\t'Dristan'.  The\t appellant's\nopposition was\tnot accepted  by the  Assistant Registrar of\nTrade Marks  and by his order dt. March 27, 1962, he ordered\nthe trade  mark 'Tristine' to be registered in Part A of the\nRegister of  Trade Marks.  The appellant  thereupon filed an\nappeal in  the Bombay  High Court  which was  allowed  by  a\nSingle Judge  on Feb. 5, 1963. The appeal filet by the first\nrespondent before  a division  Bench was  allowed  with\t the\ndirections that\t the respondent's  application be amended so\nas to read the trade mark 'Tristine' as 'Tristine'.\n     During the\t pendency of  the application  of the  first\nrespondent for registration of the trade mark 'Tristine' the\nIndian Company\ton Sept.  23, 1960  applied to\tthe  Central\nGovt. under  s.11  of  the  Industries\t.  (Development\t and\nregulation) Act 1951 for a licence to manufacture the tablet\n'Dristan' which\t was granted  on January  19, 1961  for\t the\nmanufacture of\t'Distran' tablets  to the  extent of 5 lakhs\ntablets per month with the conditions that \"no royalty would\nbe payable\"  ant that the products will be marketed with the\ntrade mark already in use or without any trade mark. It also\napplied for  an import\tlicence for  import of materials for\nmanufacture of\t'Dristan'  tablets,  and  got  approval\t for\nmanufacture of 'Dristan' tablets.\n     On October\t 18, 1961 another agreement was entered into\nbetween the appellant ant the Indian Soprano for granting to\nthe latter  the non-exclusive  right to\t use the  trade mark\n'Dristan' upon\tor in  relation to  the goods  in respect of\nwhich  the   said  trade  mark\twas  registered\t during\t the\nunexpired residue  of the  term of  the registration  of the\nsaid `trade  mark. Under  this agreement  the Indian Company\nagreed to  become the  registered user\tof  the\t trade\tmark\n'Dristan' ant  further agreed  that the rights granted to it\nunder the agreement would not be deemed to entitle it to use\nthe  trade  mark  otherwise  than  as  the  registered\tuser\nthereof.\n     On October\t 22, 1961,  the 'Dristan' tablets were first\nmarketed in India by the Indian Company. On March 6, 1962, a\njoint application in Form TM-28 was ate by the appellant ant\nthe Indian  Company for\t registering the Indian Company as a\nregistered user\t of the\t trade mark  'Dristan' in respect of\nthe goods for\n267\nwhich it  was registered  subject to  certain conditions  or\nrestrictions.  The  application\t stated\t that  the  proposed\npermitted use  was without  limit of  period subject  to the\nright of  the appellant\t registered proprietor\tto apply for\ncancellation of\t the registered\t user forthwith after notice\nin writing to the Indian Company.\n     The first\trespondent on  April 10, 1961 filed with the\nRegistrar of  the Trade Marks an application under 88.46 and\n56 of  the 1958\t Act for  rectifying the  register of  Trade\nMarks by  removing  therefrom  the  appellant's\t trade\tmark\n'Dristan' on the grounds:\n\t  (i) That  the trade  mark 'Dristan' is deceptively\n\t  ant  confusingly   similar  to   the\ttrade\tmark\n\t  'Bistan'' already  registered in class 5 ant which\n\t  has been used and is being used.\n\t  (ii) That  the trade mark 'Dristan' is deceptively\n\t  similar to   the  trade mark\t'Tristine' which the\n\t  Applicants have  lawfully been using since October\n\t  1960 in respect of their medicinal preparation.\n\t       (111) That there has been no bona fide use of\n\t       trade mark  'Dristan' in India in relation to\n\t       the goods  for  which  it  is  registered  by\n\t       proprietor thereof  for the  time being\tupto\n\t       date  one  month\t before\t the  date  of\tthis\n\t       application.\"\n     On May  5,\t 1961,\tthe  first  respondent\tapplied\t for\namendment of  the Rectification\t Application by substituting\nthe submissions in support of the grounds taken earlier. The\nsubmissions so substituted were :\n\t  \"(1)\tThat   the  trade  mark\t 'Dristan'  was\t not\n\t  distinctive mark and\/or was not registerable trade\n\t  mark under  s.6  of  the  Trade  Marks  Act,\t1940\n\t  (corresponding to  s.9  of  Act  No.40  of  1958),\n\t  except upon evidence of its distinctiveness ant no\n\t  such\tevidence  was  submitted  to  the  registrar\n\t  before registration.\n\t  (ii) That  the said  trade mark  was registered in\n\t  contravention of  s.8 of the Trade Marks Act, 1940\n\t  (corresponding to s.11 of Act of 1958).\n268\n\t  (iii) That the said trade mark offends against the\n\t  provisions of 6.11 of the Act.\n\t  (lv)\tThat   the  trade   mark  'Distran'  is\t not\n\t  distinctive  of   the\t goods\t of  the  registered\n\t  proprietors.\n\t  (v) That  the trade  mark 'Dristan' was registered\n\t  without any bona fide intention on the part of the\n\t  Applicants that  it would  be used  in relation to\n\t  their\t medicinal   preparation   for\t symptomatic\n\t  treatment of respiratory ailments by them and that\n\t  there has, in fact, been no bona fide use in India\n\t  of the  said trade  mark 'Dristan'  in relation to\n\t  the said goods by the said proprietors upto a date\n\t  one month before the date of this application.\"\n     On December  7, 1964,  the\t Registrar  of\tTrade  marks\ndismissed  the\t Rectification\tApplication   of  the  first\nRespondent holding  that the  Whitehall Laboratories  was  a\ndivision of  the appellant  and not  a separate legal entity\nand, therefore, the mark could not be registered in its name\nbut only  in the  name\tof  the\t appellant  and\t accordingly\nordered the entry in the Register relating to the Trade mark\n'Dristan'  to\tbe  varied   by\t amending   the\t  registered\nproprietor's  name   to\t read  as  \"American  Home  Products\nCorporation trading  as Whitehall  Laboratories.\" The appeal\nfiled by  the first  respondent was  allowed by\t the  Single\nJudge holding  (1) that\t at the\t date of  the making  Of the\napplication for\t registration the  appellant did  not have a\nbona fide  intention to\t use the  trade\t mark  'Dristan'  by\nitself, (2)  that the appellant had not at any time used the\nsaid trade mark in relation to the goods in respect of which\nit was\tregistered, (3)\t that the  legal fiction  created by\n8.48(2) of  the 1958  Act came\tinto play only after a trade\nmark was  registered and  that an intention to use the trade\nmark through  someone who  would  subsequently\tget  himself\nregistered as  a  registered  user  did\t not  amount  to  an\nintention on  the part\tof the applicant for registration to\nuse the\t trade mark  himself; and  (4) that  to\t accept\t the\nappellant's   contention    would   amount   to\t  permitting\ntrafficking in trade marks. In view of these conclusions the\nSingle Judge did not decide the question whether  trade mark\n'Dristan' was  deceptively and\tconfusingly similar  to\t the\ntrade mark 'Bistan'.\n     In the appeal filed by the appellant the Division Bench\nheld that  trade mark  'Dristan'  was  not  deceptively\t and\nconfusingly similar  to the  trade mark 'Bistan'. Dismissing\nthe appeal it,\n269\nhowever, agreed\t with the  view taken by the Single Judge in\nrespect of  the construction  which he had placed upon ss.18\nand 48\tof the\t1958 Act  to come to the conclusion that the\nappellant had no bona fide intention to use itself the trade\nmark 'Dristan'\tand that  the appellant\t had not at any time\nmade use of the said trade mark.\n     In the  appeal to this Court on behalf of the appellant\nit was contended:\n\t  (1) the legal fiction created by sub-s.(2) of 8.48\n\t  18, as  expressly stated  in that sub-section, for\n\t  the purposes\tof y 46 or for any other purpose for\n\t  which such  use is  material under the 1958 Act or\n\t  any other  law. To  confine this fiction to a case\n\t  of an\t actual use  of a trade mark by a registered\n\t  user is to confine it only to use for the purposes\n\t  of clause(b)\tof 8.46(1)  which is contrary to the\n\t  purpose for  which the  fiction was  created\tant,\n\t  therefore,  when   8.18(1)   of   the\t  1958\t Act\n\t  (corresponding to  8.14(1) of\t the 1940  Act) uses\n\t  the words  \"proposed to  be used, these words must\n\t  be read  as \"proposed\t to be\tused by\t a  proposed\n\t  registered user\".\n\t  (2) To  register a trade mark which is proposed to\n\t  be used  by a\t register d  user does\tnot  per  se\n\t  amount to  trafficking in  trade marks and whether\n\t  it does  so or  not must depend upon the facts and\n\t  circumstances of each case.\n\t  (3) The  reliance  placed by the High Court - both\n\t  by the  Single Judge and the Division Bench - upon\n\t  the 'PUSSY  GALORE' Trade marks Case [1967] R.P.C.\n\t  265, was  unjustified and  unwarranted inasmuch as\n\t  the provisions  of the  English Trade\t Marks\tAct,\n\t  1938, are  radically different  from those  of the\n\t  1938 Act as also the 1940 Act and, therefore, that\n\t  case has  no relevance  80 far as the construction\n\t  of 8.18(1)  read with\t 8.48(2) of  the 1958 Act is\n\t  concerned.\n\t  (4) The reliance placed by the High Court (both by\n\t  the Single  Judge and the Division Bench) upon the\n\t  Shavaksha  Committee\t Report\t ant  the  Ayyanagar\n\t  Report was equally misplaced as Parliament did not\n\t  accept  the\trecommendation\t with\trespect\t  to\n\t  registered users.\n270\n\t  (5) The  facts and  circumstances of the case show\n\t  that the  appellant had, at the date of the making\n\t  of the  application for  registration, a bona fide\n\t  intention to\tuse the trade mark 'Dristan' through\n\t  a registered user.\n\t  (6) In  any event,  the appellant  itself had made\n\t  bona fide  use of the trade mark 'Dristan' up to a\n\t  date one  month  before  the\tdate  of  the  First\n\t  Respondent's Application for Rectification.\n     On behalf of the First Respondent following contentions\nwere made.\n\t  (1) The  words \"proposed to be used\" in 8.18(1) of\n\t  the  1958   Act  8.14(1)  of\tthe  1940  Act\tmean\n\t  \"proposed  to\t  be  used   by\t the  applicant\t for\n\t  registration, his  servants and agents\" and not by\n\t  any person who is proposed to be got registered as\n\t  a  registered\t  user\tand,  therefore,  the  legal\n\t  fiction enacted in 8.48(2) cannot be imported into\n\t  8.18(1).\n\t  (2) A\t registered user  can only  come into  being\n\t  after a trade mark is registered. Therefore, as at\n\t  the date  of an  application for registration of a\n\t  trade\t mark,\t there\tcannot\t be  any  person  in\n\t  existence who\t is a  registered  user.  The  words\n\t  \"proposed to\tbe used\"  cannot therefore  possibly\n\t  mean \"proposed to be used by a proposed registered\n\t  user\"\n\t  (3) To  permit a  trade mark to be registered when\n\t  the applicant\t himself does  not propose to use it\n\t  but proposes\tto use\tit through  someone else who\n\t  would subsequently  be registered  as a registered\n\t  user would be to permit trafficking in trade marks\n\t  which is  contrary to\t the policy  underlying\t the\n\t  Trade Marks laws.\n\t  (4) The  only case  which the 1958 Act per its the\n\t  registration of  a trade  mark when  the applicant\n\t  for registration does not intend to use it himself\n\t  but intends  to use  it through another is the one\n\t  set out  in 8.45,  namely, where  the registrar is\n\t  satisfied that a company is about to be formed and\n\t  registered under  the Companies Act, 1956, and the\n\t  applicant intends to assign the trade mark to that\n\t  company with\ta view\tto the\tuse thereof  by\t the\n\t  company.\n271\n\t  (5) The  1958 Act  is, as  the 1940 Act was, based\n\t  upon\t the English  Trade Marks Act, 1938, and the\n\t  decision in  the 'PUSSY  GALORE' Trade  mark\tcase\n\t  (supra)   concludes\tthis   point   against\t the\n\t  appellant.\n\t  (6)  The   Shavaksha\tCommittee   Report  and\t the\n\t  Ayyangar Report show the legislative intent not to\n\t  allow a proposed use be a proposed registered user\n\t  to be equated with a proposed u e by the applicant\n\t  for registration.\n\t  (7)The appellant  had not  at any  relevant-\ttime\n\t  made use of the trade mark 'Dristan'.\n\t  (8)  The   appellant\thad   fradulently   obtained\n\t  registration\tof   the  trade\t mark  'Dristan'  by\n\t  stating in  the application  for registration that\n\t  it proposed  to use the said trade mark itself and\n\t  by not disclosing the fact that it proposed to use\n\t  it through a proposed registered user.\n\t  (9) The  trade mark  'Dristan' was deceptively and\n\t  confusingly similar  to the  trade  mark  'Bistan'\n\t  and, therefore,  lt cannot be allowed to remain on\n\t  the Register of Trade Marks.\n\t  (10) to  allow the  trade mark 'Dristan' to remain\n\t  on the Register of Trade Mark would be contrary to\n\t  the policy of the Government of India.\n     Allowing the appeal,\n^\n     HELD :  (1) The  Judgment of  the Division Bench of the\nCalcutta High  Court appealed  against is  reversed and\t the\norder passed by it is set aside. Appeal No.165 of 1968 filed\nby the\tappellant before  the division Bench is allowed with\ncosts and  the judgment and order of the Single Judge of the\nHigh Court  are reversed  ant set aside. As a result, Appeal\nNo. 61\tof 1965\t filed by  the First  Respondent before\t the\nSingle Judge  of the  High Court is dismissed with costs and\nthe  order  of\tthe  Registrar\tof  Trade  Marks,  Calcutta,\ndismissing   the    First   Respondent's   Application\t for\nRectification, No.CAL-17 is confirmed. 1341 B-C]\n     2. Before\ta  person  can\tmake  an  application  under\n8.46(1) to take off a trade mark from the Register he has to\nbe a \"person\n272\naggrieved\". Undisputedly, the first Respondent was a \"person\naggrieved\" within  the meaning\tof  8.46(1).  Section  46(1)\nprovides for  two cases in which a registered trade mark may\nbe taken off the Registrar in respect of any of the goods in\nrespect of which it is registered. The first case is set out\nin cl.(a)  of 8.46(1)  and the second in cl.(b) of that sub-\nsection. Before\t cl.(a) can become applicable two conditions\nare to\tbe satisfied,  namely, (1)  that the  trade mark was\nregistered without  any bona  fide intention  on the part of\nthe applicant  for registration\t that it  should be  used in\nrelation to  those goods  by him, and (2) that there has, in\nfact, been  no bona  fide use of that trade mark in relation\nto those  goods by any proprietor thereof for the time being\nup to  a date  one month  before the date of the application\nunder 8.46(1).\tThe only exception to the first condition is\nof a  case to  which the  provisions of 8.45 apply. Both the\nconditions in  cl.(a) are  cumulative and  not\tdisjunctive.\nClause (a),  therefore, will  not apply\t where even  though\nthere has  been no  bona fide  intention on  the part of the\napplicant for  registration to\tuse the\t trade mark  but, in\nfact, there  has been  a bona  fide use of the trade mark in\nrelation to  those goods  by any  proprietor thereof for the\ntime being  up to  a date  one month  before the date of the\napplication under  8.46(1). Similarly, cl.(a) will not apply\nwhere, though  there had  been a  bona fide intention on the\npart of\t the applicant\tfor registration  to use  the  trade\nmark, in  fact, there has been no bona fide use of the trade\nmark in\t relation to  those goods  by any proprietor thereof\nfor the time being up to a date one month before the date of\nthe application under 8.46(1). [311 G-H; 312 A-E]\n     3. Clause (b) of s.46(1) applies where for a continuous\nperiod of  five\t years\tor  longer  from  the  date  of\t the\nregistration of\t the trade mark, there has been no bona fide\nuse thereof  in relation  to those goods in respect of which\nit is  registered by  any proprietor  thereof for  the\ttime\nbeing. An  exception to\t cl.(b) is created by s.46(3). Under\n8.46(3), the non-use of a trade mark, which is shown to have\nbeen due  to special  circumstances in\tthe trade and not to\nany intention  to abandon  or not  to use  the trade mark in\nrelation to  the goods\tto which  the  application  .  under\ns.46(1) relates,  will not amount to non-use for the purpose\nof cl.(b). [312 P-H]\n     4. The distinction between cl.(a) and cl.(b) is that if\nthe period  specified in  cl.(b) has elapsed and during that\nperiod there  has been\tno bona\t fide use of the trade mark,\nthe fact  that the  registered proprietor  had a  bona\tfide\nintention to use the\n273\ntrade mark  at the  date of the application for registration\nbecomes immaterial  and the  trade  mark  is  liable  to  be\nremoved from  the  Register  unless  his  case\tfalls  under\n8.46(3), while under cl.(a) where there had been a bona fide\nintention  to  use  the\t trade\tmark  in  respect  of  which\nregistration was  sought, merely  because the trade mark had\nnot been  used for a period shorter than five years from the\ndate of its registration will not entitle any person to have\nthat trade mark taken off the Register. [313 A-B]\n     (5) Under both these clauses the burden of proving that\nthe facts  which bring\tinto play  cl.(a) or  cl.(b), as the\ncase may  be, exist  is on  the person who seeks to have the\ntrade mark  removed from the Register. Thus, where there has\nbeen a non-User of the trade mark for a continuous period of\nfive years and the application for taking Off the trade mark\nfrom the  Register has been filed one month after the expire\nof such\t period, the  person seeking  to have the trade mark\nremoved from  the Register has only to prove such continuous\nnon-user and  has not  to prove\t the lack  of  a  bona\tfide\nintention on  the part\tof the\tregistered proprietor to use\nthe  trade   mark  at\tthe  date  of  the  application\t for\nregistration. Where,  however, the  non-user is for a period\nof less\t than five  years, the person seeking  to remove the\ntrade mark  from the Register has not only to prove non-user\nfor the\t requisite period  but has  also to  prove that\t the\napplicant for  registration of\tthe trade  mark had  no bona\nfide intention\tto use\tthe trade  mark when the application\nfor registration was made. [313 C-E]\n     (6) The  definition of \"trade mark\" contained in cl.(v)\nof 8.2(1) shows that a trade mark is a mark used or proposed\nto  be\tused  in  relation  to\tgoods  for  the\t purpose  of\nindicating or  so as  to indicate a connection in the course\nof trade  between the goods and some person having the right\nto use\tthe mark.  It is,  therefore, not necessary for the\npurpose of  registering a trade mark that those goods should\nbe  in\t existence  at\tthe  date  of  the  application\t for\nregistration. If the position were that the mere non-user of\na trade\t mark for  the period mentioned in cl.(a) of 8.46(1)\nwould make a trade mark liable to be taken off the Register,\nit would  result in  great hardship and cause a large number\nof trade  marks to be removed from the Register, because the\nc one  month has  elapsed, after the registration of a trade\nmark had been ordered, a trade rival can make an application\non the\tground set  out in  cl.(a) of  8.46(1) claiming that\nthere has  been no  bona fide  w e of the trade mark up to a\ndate one  month before the date of his application. It is in\norder to  revent such  harassment and absurd result that the\ntwo  conditions\t  specified  in\t  cl.(a)  have\t been\tmade\ncumulative. [313 F-H; 314 A-C]\n274\n     (7)  The\tobject\tunderlying  8.46(1)  is\t to  prevent\ntrafficking in\ttrade marks.  This is,\tin fact,  the object\nunderling all  trade mark  Laws. A  trade mark\tis meant  to\ndistinguish the\t goods made  by one  person fro\t tho made by\nanother. A  trade mark, therefore, cannot exist in vacuo. It\ncan only  exist in  connection with the goods in relation to\nwhich lt  18 used  or intended\tto be used. Its object 18 to\nindicate a  connection in  the course  of trade\t between the\ngoods and  some person\thaving the  right to  use  the\tmark\neither with  or without\t any indication\t of the\t identity of\nthat person.  when a  person gets his trade mark registered,\nhe acquires  valuable rights by reason of such registration.\nRegistration of his trade mark gives him the exclusive right\nto the use of the trade mark in connection with the goods in\nrespect of  which it  is registered  ant  if  there  18\t any\ninvasion of  this right\t by any\t other person  using a\tmark\nwhich is  the same or deceptively similar to his trade mark,\nhe can\tprotect his  trade mark by u action for infringement\nin which  he can obtain injunction, damages or an account of\nprofits\t mate  by  other  person.  In  such  an\t action\t the\nregistration of\t a trade mark is prima facie evidence on its\nvalidity. After\t the expiry  of seven years from the date of\nthe registration,  a trade  mark  is  to  be  valid  in\t all\nrespects except\t in the\t three cases  set out  in 8.32.\t The\nproprietor of  an unregistered\ttrade  mark  whose  mark  is\nunauthorisedly used  by another cannot, however, use for the\ninfringement of\t such trade  mark. His\tonly remedy  lies in\nbringing a  passing-off action,\t an inconvenient  remedy  as\ncompared to an infringement action. [314 C-H; 315 A-B]\n     7(i) In a passing-off action the plaintiff will have to\nprove that  his mark has by user acquired such reputation as\nto become distinctive of the plaintiff's goods 80 that if it\n18 used\t in relation  to any goods of the kind dealt with by\nthe plaintiff, it will be understood by the trade ant public\nas meaning that the goods are the plaintiff's goods. [315 B-\nC]\n     7(ii) In  an infringement\taction, the plaintiff is not\nrequired to prove the reputation of his mark. Further, under\n8.37 a\tregistered  mark  is  assignable  and  transmissible\neither with  or without\t goodwill of  the business concerned\nwhile  under   8.38,  an  unregistered\ttrade  mark  is\t not\nassignable or  transmissible except  in the  three cases set\nout in 8.38(2). [315 C-D]\n     (8)  As  the  registration\t of  a\ttrade  mark  confers\nvaluable rights\t upon the  registered proprietor  thereof, a\nperson cannot  be permitted to register a trade mark when he\nhas not used it in relation to the goods in respect of which\nit sought  to be  registered  or  does\tnot  intend  to\t use\nrelation to such goods. [315 D-1]\n275\n     Batt's case, (1898) 2 Ch-D 432, 436; s.c.15 R.P.C. 262,\n266, (1898) 2 Ch. D. 432 at pages 439-442, sub nominee Johan\nBatt &\tCo. v. Dunnett and another, (1899) A.C. 420; s.c. 16\nR.P.C. 411 relied upon.\n     (9)  To   get  a  trade  mark  registered\twithout\t any\nintention to  use lt  in relation to any goods but merely to\nmake money  out of  it by selling to others the right to use\nit would  be trafficking  in that trade mark. If there is no\nreal trade convection between the proprietor of the mark and\nthe licensee  or his goods, there is roam for the conclusion\nthat the  grant of the licence is a trafficking in the mark.\nIt is  a question of fact and degree in every case whether a\nsufficient trade connection exists. [316 A-B; 317 A-B]\n     Re American Greetings Corp.'s Application, [1983] 2 All\nE.R. 609 & 619 [1984] 1 All E.R. 426, 433 relied upon.\n     (10) The  intention to  use a  trade mark\tsought to be\nregistered must\t be genuine  and real  and the fact that the\nmark was  thought to  be something  which some\tday might be\nuseful\twould\tnot  amount  to\t any  definite\tant  precise\nintention at  the time\tof registration\t to use\t that  trade\nmark. The  intention to\t use the mark must exist at the date\nof  the\t  application  for  registration.  Section  46(1)(a)\nexpressly speaks  of \"bona fide intention on the part of the\napplicant for  registration. which  would mean\t\"at the date\nwhen such applicant makes his application for registration.\"\n[317 C-E]\n     In re Ducker's Trade mark (1928) Ch.1 405, 409 referred\nto.\n     (11) Intention  is a  state of mind. No person can make\nout the\t state of  mind or  any other  person- None the less\ncourts\tare  often  called  upon  for  various\tpurposes  to\ndetermine the  state of\t a person's mind. The court can only\ndo to  by deducting  the existence  of a particular state of\nmind from the facts of a case. [317 B; 318 A]\n     (12) In  the instant  case, in  order to  ascertain the\nintention  of  the  appellant  at  the\tdate  of  filing  of\napplication for\t registration the  facts could be summarised\nwith reference to three periods: (1) events which took place\nupto the  date of  the application for registration, namely,\nAugust 18, 1958, (2) events which happened between that date\nand the\t date of Application for Rectification, namely April\n10, 1961 and (3) events which happened subsequently to April\n10, 1961. [320 D-E]\n276\n     12(1) Prior  to 1956,  the\t appellant  had\t acquired  a\nsubstantial shareholding  to the  extent of  40 percent\t the\nIndian Company.\t In 1956  the appellant introduced 'Dristan'\ntablets in  the American  market  and  got  the\t trade\tmark\n'Dristan' registered  in the United States of America and in\nseveral other countries. technical collaboration between the\nAppellant and  the Indian  Company commenced  from  Nov.  1,\n1957, and  an agreement in that behalf was signed on May 16,\n1958. In  pursuance of\tthe said collaboration agreement the\nIndian Company\tmanufactured and markets several produced of\nthe appellant.\tThe appellant got registered its trade marks\nin respect  of such  products and  the\tIndian\tCompany\t was\nregistered as  the registered  were in respect of such trade\nmarks. As  early as  December 1557,  it was decided that the\nIndian Company\tshould introduced  in the Indian market nine\nnew products  of the  appellant including 'Dristan' tablets.\nOn August  18, 1958,  the appellant filed an application for\nregls tratlon of the trade mark 'Drlstan' and the said trade\nmark was tuly registered on June 8, 1959. [320 FiH; 321 A]\n     12(ii) During  the period\tbetween August 18, 1958, and\nthe  date   of\tthe  First  Respondent\tis  Application\t for\nRectification, that  is April  10, 1961\t the Indian  Company\napplied for  and obtained  a licence  for the  purchase of a\nStokes Triple  Layer  Machine  for  manufacturing  'Dristan'\ntablets and  when the said machine was received installed it\nat  its\t  Ghatkoper  factory.  It  also\t obtained  from\t the\nappellant three\t units of  'Dristan' tablets  as samples and\nthe  manufacturing  manual  for\t the  tablets.\tFurther,  lt\napplied\t to   the  Central  Government\tunder  8.11  of\t the\nIndustrials (Development  and regulation)  Act, 1951,  for a\nlicence to  manufacture 'Dristan'  tablets which was granted\nto lt. It also applied for and obtained a licence to import\ncertain ingredients  used in  the manufacture  of  'Dristan'\ntablets and  imported such   ingredients. It further applied\nfor  and   obtained  from   the\t Director,   Drugs   Control\nAdministrating\t State\t of   Maharashtra,   permission\t  to\nmanufacture 'Dristan'  tablets. The  appellant also  filed a\nnotice of  opposition to  the First  Respondent' Application\nfor registration of their mark 'Tristine'. [321 H; 322A-C]\n     12(iii) During  the  period  subsequent  to  the  First\nrespondent's  Application   for\t  Rectification,   that\t  is\nsubsequent to  April 10,  1961,\t on  October  18  1961,\t the\nregistered user\t agreement  was\t entered  into\tbetween\t the\nappellant and  the Indian  Company. On\tOctober 22, 1961 the\n'Dristan' tablets were first marketed in India by She Indian\nCompany. On  March 6,  1962, the  appellant and\t the  Indian\nCompany jointly\t made an  application to register the Indian\nCompany as  a registered  user of  the trade mark 'Dristan'.\n[322 C-E]\n277\n     12(iv) The\t facts set  out above clearly show that each\nof them\t is an integral link in a chain and that they cannot\nbe divided  into three\tseparate periods.  m  is  continuous\nchain of  events establishes beyond doubt that the appellant\nhad an\tintention that\tthe trade  mark 'Dristan'  should be\nused  in   relation  to\t the  tablets  in  question  by\t the\nmanufacture and sale of these tablets in India. [322 E-F]\n     (13) The  appellant's application\tfor registration  of\nthe trade  mark 'Dristan' was made under 8.14(1) of the 1940\nAct and\t was registered\t under the Act. Under 8.14(1) only a\nperson claiming to be the proprietor of a trade mark used or\nproposed to  be used  by him could apply for registration of\nthat trade  mark. The  provisions of 8.18(1) of the 1958 Act\nare identical. [323 F-G]\n     (14) If  the 1940\tAct did\t not contain a legal fiction\nsimilar to  that enacted  in s.48(2)  of the  1958 Act,\t the\nappellant's case  would fall  to the  ground because then at\nthe date  of its  application for  registration of  the said\ntrade mark,  its intention would be not to use it itself but\nto use\tit through another. The 1940 Act, however, also made\nprovisions with\t respect to  registered users  and created a\nsimilar legal fiction in 8.39(2) of that Act. [325 A-B]\n     (15) The only difference between 5.392) of the 1940 Act\nand s.48(2)  of the 1958 Act is that while under 8.39(2) the\nlegal fiction  created by  it applies  \"for any\t purpose for\nwhich such use is material under this Act or any other laws,\nunder s.48(2) the legal fiction applies \"for the purposes of\ns.48 or for any other purpose for which such use is material\nunder this  Act or any other laws. The addition of the words\n\"for the  purposed of  8.46\" in\t 8.48(2) does  not make\t any\ndifference  but\t clarifies  the\t scope\tof  the\t said  legal\nfiction. Clause\t (a) of\t s.48(1) refers\t both to  bona\tfide\nintention on the part of the applicant for registration that\nthe trade  mark should be used in relation to those goods by\nhim as\talso to\t bona fide use of the trade mark in relation\nto those goods by any proprietor thereof for the time being.\nIt cannot  possibly be\tthat when 8.48(2) expressly provides\nthat the permitted user f a trade mark by a registered user\nis to  be deemed  to be\t user by the proprietor of the trade\nmark for  the purposes cf s.48, the fiction is intended only\nto apply  to the  use of  the trade  mark referred to in the\nsecond condition  of cl.(a) of 8.46(1) and not to the use of\nthat trade  mark referred  to  in  the\tfirst  condition  of\ncl.(a). Under  8.18(1), on application for registration of a\ntrade mark can only be made\n278\nby a  person who  claims to  be the proprietor of that trade\nmark. Therefore,  the words  applicant for  registration\" in\ncl.(a) of  s.48(1) would mean \"the person claiming to be the\nproprietor of  the trade  mark\twho  is\t the  applicant\t for\nregistration of\t that trade  mark\". The\t first condition  of\ncl.(a) would,  therefore, read\t\"that  the  trade  mark\t was\nregistered without  any bona  fide intention  on the part of\nthe person  claiming to be the proprietor of that trade mark\nwho has made the application for registration that it should\nbe w  ed in  relation to those goods by him.\" So read, there\ncan be\tno difficulty  in reading the words \"by him\" also as\n\"by a  registered user\".  Similarly, the  legal\t fiction  in\n.48(2) can  also be applied to 8.18(1). S.18(1) in the light\nof the\tlegal fiction  would read as \"any person claiming to\nbe the\tproprietor of  a trade\tmark used  or proposed to be\nused by\t him or\t by a  registered user\".  By reason  of\t the\nprovisions of  8.39(2) of  the 1940  Act, 8.14\tof that\t Act\nshould also be read in the same way. [325 B-U; 326 A-D]\n     East  End\t Dwellings  Co.\t Ltd.  v.  Finsbury  Borough\nCouncil, (1952)\t A.C.109 &  state  of  Bombay  y.  Pandurang\nVinayak Chaphalkar and Or., [19531 S.C.K. 773 relied upon.\n     (16) The  purposes\t for  which  the  fiction  has\tbeen\nenacted are  set out  in 8.48(2).  These  purposes  are\t the\npurposes of  8.46 or  for any  other purposes for which such\nuse is\tmaterial under\tthe 1958  Act or  any other  law. To\nconfine the  purpose only  to a\t part of  8.46 would  be  to\nsubstantially cut  down the  operation of the legal fiction.\nThe purpose for which the legal fiction is to be resorted to\nis to  deem the\t permitted use\tof a trade mark, which m the\nuse of\tthe trade  mark by  a registered user thereof, to be\nthe use by the proprietor of that trade mark. [327 A-B]\n     (17) Section 17(1) of the English Trade Marks Act, 1938\n(1 & 2 Geo, 6, c.22) sets out who can apply for registration\nof a  trade mark  and is in pari materia with 8.18(1) of the\n1958 Act.  Under s.17(4),  the refusal\tby  a  Registrar  to\nregister the trade mark is subject to appeal to the Board of\nTrade or to the Court at the option of the applicant. If the\nappeal is  to the  Court, there can be further appeal to the\nCourt of  Appeal ant  from there  to  the  House  of  Lords.\nSection 26  provides for  removal of  a trade  mark from the\nRegister and  is in  pari materia with 8.46 of the 1958 Act.\nSection 32 teals with rectifying the entries in the Register\nand is analogous to 8.56 of the 1958 Act. [327 E-F]\n     (18) Under 8.87 of the Patents, Desings and Trade Marks\nAct, 1883  (46 &  47 Vict.  c.57), any registered proprietor\ncould grant  licences to use the mark subject to any equity.\nThe 1883 Act in\n279\nso far\tas it  rel ted\tto Trade  marks was  repealed by the\nTrade\tmarks Act,  1905 (5  Edw. 7  c.15). The 1905 Act did\nnot, however, contain any power in the registered proprietor\nto  grant  licences.  the  English  Act\t of  1938,  however,\nintroduced a system of official approval for licences to use\na trade\t mark particularly  by providing  for registering  a\nperson other  than the\tproprietor of  the trade mark as the\nregistered user of the trade mark. [327 G-H; 328 A]\n     (19) The  High Court  was\tunduly\timpressed  by  Pussy\nGalore Trade  mark case\t and  unnecessarily  attached  great\nimportance to  it. The\tHigh Court  was justified in relying\nupon that  case by  referring to  the case  of Ashok Chander\nRakhit\tLtd.,  [1955]  2  S.C.R.  252  but  the\t High  Court\noverlooked  that  in  Ashok  Chander  'Rakhit's-  case\tthe\nsection of  the 1940  Act which\t fell for interpretation was\nnot in\tpari materia  with the\tcorresponding section of the\nEnglish Act of 1938 which had been judicially interpreted by\nthe courts in England. [332 E-E]\n     The Registrar  of Trade  mark v.  Ashok Chandra   LTD.,\n[1955] 2 S.C.R. 252 referred to.\n     (20) In  the absence  of any  binding authority  of  an\nIndian Court on a particular point of law, English decisions\nin which  judgments were  delivered by\tjudges held  in high\nrepute can be referred to as they are decisions of courts of\na country  from which  Indian Jurisprudence and a large part\nof Indian  Law 18  derived, for they are authorities of high\npersuasive value  to which  the court  may legitimately turn\nfor assistance;\t but whether  the rule\tLaid down  in any of\nthese case can be applied by Indian courts lust, however, be\njudged in the context of Indian laws and legal procedure and\nthe practical  realities of litigation in India. [332 H; 333\nA-B]\n     Forasol v.\t 011 and  Natural Gas  Commission, [1984]  1\nS.C.R. 526, 549, 567; S.C. [1984] Supp. S.C.C. 263, 280, 295\nreferred to.\n     (21) The  relevant provisions  relating  to  registered\nusers IN  the English Act and IN the 1958 Act are materially\ndifferent. The\tEnglish Act creates two legal fictions\". The\nfirst is contained in 8.28(2) which relates to the permitted\nw e of a trade mark. That fiction is for the purpose of 8.26\n(Which correspond to section 46 of the 1958 Act) and for any\nother purpose  for which  such use  is\tmaterial  under\t the\nEnglish Act  o-r at  common law.  The second 1- contained in\ns.29(2) and relates to\n280\nintention on  the part of an applicant for registration that\na trade\t mark should  be used  by him. The second fiction 18\nfor  the   purposes  of\t  paragraph(a)\tof   8.26(1)   which\ncorresponds to\tcl.(a) of  s.46(1) of the 1958 act. The 1958\nAct, however,  contains only  one fiction. It is in 8.48(2),\nwhich 18  in pari  material with s.28(2) of the English Act.\nThe   omission\t from\tthe   1958   Act   of\ta  provision\nsimilar\t  to  that   contained\t in    8.29(2)\t  of\t the\nEnglish Act  does not make any difference if one were to see\n6- (2)\tin its\tproper setting\tand contest. The English Act\ndoes not  prescribe, just  as the  1958 Act  does  not,\t any\nperiod of tile from the date of registration of a trade mark\nwithin which an application for registering of a person as a\nregistered user\t of that  trade mark should be made. Section\n29(1)  of   the\t English  Act,\thowever,  provides  that  an\napplication  for   registration\t of  a\ttrade  mark  can  be\naccompanied by\tan application\tfor there  registration of a\nperson as  a registered\t user of  that trade  mark',  if the\ntribunal is  satisfied that the proprietor of the trade mark\nintend it  to be  used by  that person\tin relation to those\ngoods and  is also  satisfied that person will be registered\nns a  registered user  thereof after the registration of the\ntrade mark,  it will  not refuse to register the trade mark.\nThe effect of 8.29(1), therefore, is that an application for\nregistering a  person as  a  registered\t user  can  be\tmade\nsimultaneously with  the  application  for  registering\t the\ntrade mark  and if  both are  found to\tbe satisfactory, the\napplication  for   registration\t  would\t  be   granted\t and\nimmediately thereafter\tthe registration  of the  registered\nuser would  be allowed. In such a case, the intention on the\npart of\t the applicant\tfor registration that the trade mark\nshould be  used by  the registered  user thereof  is  to  be\ndeiced to  be an  intention to\tuse that  trade mark  by the\napplicant for  registration. This  is  a  special  provision\napplicable to a special case. The fiction created by s.29(2)\n18 also\t made applicable  to the case of a corporation above\nto be  constituted to  which the applicant intends to assign\nthe trade  mark.  There\t is  no\t such  fiction\trelating  to\nintention expertly  provided in\t the 1958  Act, nor is there\nany provision  for simultaneously  making an application for\nregistration of\t a  trade  mark\t and  an    application\t for\nregistering a  person a\t the registered\t user of  that trade\nmark. The  purpose for\twhich  the  fiction  was  created  y\n8.29(2) the  respect to\t a registered  user was to eliminate\nall possibility\t of trafficking\t in a trade mark by a person\ngetting himself registered as the proprietor of a trade mark\nand there  after going in search of so the person who will w\ne it as the registered user thereof. If the existence of the\nspecial\t fiction  created  by  5.29(2)\tcuts  down  he\tfull\noperation of the general fiction enacted in s. 28(2), it\n281\ndoes not  follow that the absence of such special fiction in\nthe 1958 Act will also cut down the operation of the fiction\nin s.48(2)  in the same way by limiting it to the actual use\nof a  trade mark  only. In  the 1958 Act wherever the phrase\n\"used by  him occurs the fiction will apply. In other words,\nthe permitted use of a trade mark is, by the fiction enacted\nin s.48(2),  equated with  use by the registered proprietor-\nConsequently  wherever\tthe  word  e  occurs  with  all\t its\npermutations and  commutations, as  for instance  in phrases\nsuch as proposed to be used be him or intended to be used be\nin, the\t fiction will  apply. Form No.TM-2, which is the for\nprescribed for\tan application\tfor registration  of a trade\nmark prescribed by the English\tTrade Marks Rules, 1938, was\nsubstituted in\t1982 and  under the  substituted From  a new\ncolumn is  provided which requires details of an application\nunder s.29(1)  to be  given. The  old Form  No.TM-2 did\t not\ncontain this  requirement nor does Form TM-1 appended to the\nTrade and Merchandise Mark rules, 1959 [333 B-H; 334 A-G]\n     (22) Under the 1958 Act an application for registration\nof a  trade mark  ad also  an application  for registering a\nregistered user\t are to\t be made  to the Registrar and it is\nthe Registrar  who has\tto grant both of them. The Registrar\nwould refuse  the application  if lt appears to him that the\ngrant thereof  would tend  to facilitate  trafficking  in  a\ntrade mark.  this  question  is\t to  be\t considered  by\t the\nRegistrar himself.  provisions of the 1940 Act were the same\nbut the\t provisions of the 1958 Act are radically different.\nUnder  the   1958  Act,\t though\t both  the  application\t for\nregistration  of  a  trade  mark  and  the  application\t for\nregistration of\t registered user  are  to  be  made  to\t the\nregistrar,  the\t  Registrar  has  the  power  to  grant\t the\napplication for\t registration of the trade mark only. So far\nas the\tapplication for registering a person as a registered\nuser is\t concerned, he\thas to\tforward lt together with his\nreport to  the Central\tGovernment and\tit for\tthe  Central\nGovernment to  decide whether  to permit such application to\nbe granted  or Lot-  in order  to decide  this, the  Central\nGovernment or  to take\tinto account  the matters set out in\nsubs-s.(3)   of .49  and on rule 85 of the Trade Marks Rules\n1959. The  matter to be considered by the Central Government\ninclude not  only whether  the permitted  use,\tif  allowed,\nwould about  to trafficking  in\t trade\tmark  but  also\t the\ninterested of  the general public and the development of any\nindustry, trade\t or commerce  in India.\t After\tthe  Central\nGovernment has\ttaken  its  decision  the  Registrar  is  to\ndispose of the application in accordance with the directions\nissued by  the Central\tGovernment.  Thus  while  under\t the\nEnglish Act the authority to decide an\n282\napplication for registering a registered user is the same as\nthe authority  for registering\ta trade mark, under the 1958\nAct they  are different\t and 80 are the considerations which\nare to be taken into account. [334 h; 335 A-E]\n     (23) Under\t the 1958 Act an application for registering\na registered  user can\tonly be\t made after  a trade mark is\nregistered. If\tan intended  use by  a person  who  will  be\nregistered as a registered user is not to be included in the\nlegal fiction  created by  section 48(2), it would make that\nfiction operate\t within a  very\t narrow\t compass  an  almost\nrender\tthe   provision\t  relating   to\t  registered   users\nmeaningless. It\t 16 in very rare circumstances that a person\nwill get  a trade  mark registered as proposed to be used by\nhimself, use  it in  relation to  the concerned\t goods,\t and\nthereafter permit  it to  be used by another as a registered\nuser. It  is also not open to everyone who wants to register\na trade\t mark to for a company to which after the trade mark\nis registered  and the proposed company is incorporated, the\ntrade mark  will be assigned. These things are not practical\nrealities and Parliament could not have intended such absurd\nresults. 1335 F-H]\n     (24) It is not necessary that the appellant should have\ngot the\t trade mark  registered with  the intention  that it\nwill itself  use the  trade mark  and in order to effectuate\nthat intention\tthe appellant  should have  set up a factory\nand manufactured and marketed the tablets 'DRISTAN' and then\neither assigned\t the trade  mark to the Indian Company or to\nget the\t Indian Company registered as the registered user of\nthat  trade   mark.  By\t  reason  of  foreign  exchange\t and\nindustrial policies  in India  it  is  not  possible  for  a\nforeign company\t to establish its own industry India. It can\nonly do\t so by\tentering into  a collaboration\twith  Indian\nentrepreneurs in  which the  foreign company  would  not  be\npermitted to  have more\t than 40  per cent  shareholding and\nwould be  subject to  other restriction.  Even if  a foreign\nproprietor of  a trade mark were to establish an industry of\nhis own\t in India,  it would  be absurd\t to imagine  that it\nwould thereafter  cease manufacturing  the goods  and  allow\nsomeone else  to do  80. It  is equally\t illogical that\t the\nappellant and the Indian Company should have jointly applied\nfor registration  of the trade mark 'DRISTAN'. The appellant\nwas already  in collaboration with the Indian Company. There\nwas no\tneed for it to seek other collaborators to establish\na new  company. To  assign the\ttrade  mark  to\t the  Indian\nCompany or  to make  jointly  with  the\t Indian\t Company  an\napplication for\t registration of  the trade  mark  'DRISTAN'\nwould be  to destroy  the appellant's proprietorship in that\ntrade nark. [336 A-D]\n283\n     (25) It  is a well-known principle of interpretation of\nstatutes that  a construction  should  not  be\tput  upon  a\nstatutory provision  which would  lead to manifest absurdity\nof futility,  palpable injustice, ox absurd inconvenience or\nanomaly. While\tplacing construction  on 6.48(2),  the\tHigh\nCourt did not apply this principle and failed to give to the\nlegal fiction  enacted by 8.48(2) its full force and effect.\n[336 E-F]\n     'BOSTITCH' Trade  Mark (1963)  R.P.C.  183\t and  'PUSSY\nGALOK' Trade Mark, 119671 R.P.C. 265 inapplicable.\n     (see: -  Beneath and  Ore. v. Muddala Veeramallappa and\nCk.) [1961] 2 S.C.R. 295, 303 referred to.\n     Aston v.  Harlee Manufacturing  company, (1959-60)\t 103\nC.L.R. 391 relied upon.\n(26) The  Parliament did  not accept the recommendation made\nin Shavakasha  Committee Report\t and Ayyanagar Report. These\nReports, therefore,  cannot be\treferred to for ascertaining\nthe intention  of  Parliament  when  enacting  the  relevant\nprovisions of 1958 Act. [337 G]\n     (27) In  the instant case, the facts on the record show\nthat only when it was decided to introduce 'DRISTAN' tablets\nin the\tIndian market  through the  Indian Company  that the\nappellant made\tits application\t to register  the trade mark\n'DRISTAN'. There  was a\t close connection  in the  course of\ntrade between  the appellant  and the  Indian  Company.\t The\nappellant owned\t 40 per\t cent of  the shareholding  in\tthe\nIndian\tCompany.   It\thad   entered\tinto   a   technical\ncollaboration  agreement   with\t the  Indian  Company  which\nprovided for  strict quality  control and  for formulae\t and\nservices to  be provided  by the appellant. The manufacture,\nmarketing  and\t advertising  of   all\tproducts  under\t the\nagreement were\tto be  under the  control of  the appellant.\nThere was  no royalty  payable by  the Indian Company to the\nappellant in respect of the use of the trade mark 'DRISTAN'.\nIn the event of the collaboration agreement being terminated\nby reason of the happening of any of the events mentioned in\nthe agreement,\tamongst which events was the shareholding of\nthe appellant  becoming less  than 40  per cent,  the Indian\nCompany was  to cease  to be  entitled\tto  manufacture\t the\ntablets 'DRISTAN'. There was here, therefore, no question of\nany trafficking in a trade mark. In these circumstances, the\nintention of  the appellant  to use the trade mark 'DRISTAN'\nthrough the  Indian Company  which was\tsubsequently to\t get\nitself registered  as the  registered user of the said trade\nmark cannot  but be characterised as bona fide. [338 Lr; 339\nA]\n284\n       (28)  The two  conditions of  cl-(d) of\t8-46(1)\t are\ncumulative and\tsince  the  first  condition  has  not\tbeen\nsatisfied in  this case,  it la\t unnecessary to consider the\nquestion whether  the appellant\t had in addition to having a\nbona fide intention to use the trade mark 'Dristan' had also\nused it\t within a  period of  one mouth\t before the  date of\nApplication for Rectification. 339 A-C]\n\n\n\nJUDGMENT:\n<\/pre>\n
     CIVIL APPELLATE JURISDICTION : Civil Appeal No. 2159 of
\n1970<\/span>
\n     From the  Judgment and  Decree dated  16.12.69  of\t the
\nCalcutta High Court in Appeal No. 165 of 1968.\n<\/p>\n
     F.S. Nariman,  J.I. Mehta, Michal Fysh, T.M. Ansari, V.
\nTulzapurkar, C.M.  Maniar, Ashok Sagar, Aditia Narayan, Alok
\nVidyalankar and D.N. Misra for the Appellant.\n<\/p>\n
     Dr.V.  Gouri   Shankar,  K.L.   Hathi,   Manoj   Arora,
\nNarendrabhai Zaveri,  Ms. Malati  Jhaveri and  Vijay F. Shah
\nfor Respondent No.l.\n<\/p>\n
     Ex-parte for Respondent No. 2.\n<\/p>\n
     T.U. Mehta and V. Dave for Intervener.\n<\/p>\n
     The Judgment of the Court was delivered by
\n     MADON, J.\tThis Appeal  has been  filed pursuant  to  a
\ncertificate granted  by the  Calcutta High Court against its
\njudgment and  order dated December 16, 1969, in Appeal . 165
\nof 1968.  The certificate  has been  given by the High Court
\nunder sub-clause  (a) and  (c) of  clause (1) of Article 133
\nprior to the substitution of that clause by a new clause (1)
\nby the\tConstitution (Thirtieth\t Amendment) Act,  1972.\t The
\ngrounds on which the certificate has been given are (i) that
\nthe value  of the  subjectmatter in  dispute in the court of
\nthe first instance and still in dispute on appeal was and is
\nnot less  than Rs.20,000  and that as the judgment in appeal
\nwas one\t of affirmance,\t the appeal  involves a\t substantial
\nquestion of  law, and  (ii) that  the case was a fit one for
\nappeal to the Supreme Court. The High Court obserbed:\n<\/p>\n
\t  The appeal  raises a\tquestion of great importance
\n\t  in Trade  Marks Law,\tthat is\t to  say  whether  a
\n\t  proprietor
\n285<\/span>
\n\t  of a\ttrade mark who intends to use it solely by a
\n\t  registered- user  is entitled\t to registration  of
\n\t  his\ttrade mark,  under Sec. 18 of the Trade Mark
\n\t  Act, or  to  put  it\tdifferently,  do  the  words
\n\t  ‘proposed to\tbe used\t by him’  in  Sec.  18\tmean
\n\t  ‘proposed to\tbe  used  by  the  proprietor,\this
\n\t  agents  and\tservant’  only….   The  case\talso
\n\t  involves the\tquestion  of  construction  of\tsub-
\n\t  section (2)  of Sec.\t48 and\tconsideration of the
\n\t  effect of  that sub-section  on sub-section (1) of
\n\t  sec. 18  of the  Trade and  Merchandise harks Act,
\n\t  1958.\n<\/p><\/blockquote>\n
The questions  so posed by the High Court resolve themselves
\ninto the following two questions :\n<\/p>\n
\t  (1) Whether  a proprietor  of\t a  trade  mark\t who
\n\t  intends to  use it  solely by a registered user is
\n\t  entitled to  registration of high trade mark under
\n\t  section 18 of the Trade and Merchandise Marks Act,
\n\t  1958 ?\n<\/p><\/blockquote>\n
\t  (2) Whether  by reason  of the  provisions of sub-
\n\t  section  (2)\tof  section  48\t of  the  Trade\t and
\n\t  Merchandise marks Act, 1958, the words proposed to
\n\t  be used by him in sub-section (1) of section 18 of
\n\t  the said  Act mean  proposed to  be  used  by\t the
\n\t  proprietor, his  agents and  servants only  or  do
\n\t  they also  include a\tproposed user by someone who
\n\t  will get himself registered under section 48(1) of
\n\t  the said Act as a registered user?\n<\/p><\/blockquote>\n
The High Court further observed :\n<\/p>\n
\t  The  matter\tis  of\tconsiderable  importance  to
\n\t  foreign proprietors  of trade marks, to registered
\n\t  users\t of  trade  marks  in  general\tand  to\t the
\n\t  Industry and Commerce at large.<\/p><\/blockquote>\n
     Before embarking on a discussion of the above questions
\nit will\t be convenient\tto relate first the facts which have
\ngiven rise to this Appeal.\n<\/p>\n
     The Appellant, American Home Products Corporation, is a
\nmulti-national corporation  incorporated under\tthe laws  of
\nthe State  of Delaware\tin the United States of America. One
\nof the\tactivities of  the appellant  is the manufacture and
\nmarketing of pharmaceutical products and drugs. The division
\nof the Appellant
\n286<\/span>
\nwhich at  all relevant times carried on and still carries on
\nthis  activity\t is  called  the  Whitehall  Laboratories  .
\nGeoffrey Manners  & Co. Ltd. (hereinafter referred to as the
\nIndian Company ) is a company registered as a public limited
\ncompany under  the Indian  Companies Act,  1913,  and  is  a
\npublic company\twithin the  meaning of\tthe  Companies\tAct,
\n1956. Home  Products International Limited is a wholly owned
\nsubsidiary of  the  Appellant  and  at\tall  material  times
\nrepresented the\t Appellant  in\tits  dealings  with  foreign
\ndistributors, licences and subsidiaries. In the present case
\nthe said  Home Products International Limited had carried or
\ncorrespondence on  behalf of  the Appellant  with the Indian
\nCompany. International\tChemical Company  Limited is another
\nwholly owned subsidiary of the Appellant. Some time prior to
\n1956, the  Appellant acquired  a substantial shareholding to
\nthe extent of 40 per cent in the Indian Company. In 1956 the
\nAppellant introduced  an anti-hystamin\tdrug in the American
\nmarket under  the trade\t mark ‘DRISTAN’ for the treatment of
\nrespiratory ailments  in the  form of  a decongestant tablet
\nfor  symptomatic   relief  for\t cold  and  congestion.\t The
\nAppellant got  the trade  mark\t‘DRISTAN’  registered  as  a
\ndistinctive trade  mark in  the Trade  Marks Register in the
\nUnited States  and subsequently thereto between 1957 to 1961
\nin  about   39\tother  foreign\tcountries.  These  countries
\nincluded Great\tBritain, Ireland,  Belgium, Denmark, France,
\nHolland and  other countries  in the  Continent\t of  Europe,
\nCanada, Mexico, and several countries in south America, Asia
\nand Africa.\n<\/p>\n
     By an  agreement signed on May 16, 1958, effective from
\nNovember 1,  1957, the\tAppellant entered  into a  technical
\ncollaboration  agreement   with\t the   Indian  Company.\t The
\nrecitals of  the said  agreement are  material\tand  may  be
\nreproduced. They read as follows :\n<\/p>\n
\t  WHEREAS,  American   Home   Products\t Corporation
\n\t  directly or  through its wholly owned subsidiaries
\n\t  is one  of the  leading  American manufacturers of
\n\t  drugs,  pharmaceuticals,   biologicals,  vaccines,
\n\t  antibiotics,\t  nutritionals\t   and\t   medicinal
\n\t  preparations\tand   conducts\tcontinuously  active
\n\t  research  in\tits  various  Laboratories  for\t the
\n\t  discovery  of\t new  and  improvement\tof  existing
\n\t  therapeutic products, and
\n\t  WHEREAS,  American   Home   Products\t Corporation
\n\t  prepared to  provide Geoffrey Manners on the terms
\n\t  and conditions  of this Agreement the formulae and
\n\t  manufacturing technology and other assistance
\n287<\/span>
\n\t  essential for\t the efficient\tmanufacture in India
\n\t  of   various American\t home  Products\t Corporation
\n\t  products, and
\n\t  WHEREAS, Geoffrey Manners has access to and use of
\n\t  lands\t and   buildings  and  has  the\t experience,
\n\t  facilities,  equipment  and  personnel  needed  or
\n\t  desired  for\t successful  production,   sale\t and
\n\t  distribution of  the\taforementioned\tproducts  in
\n\t  India.\n<\/p><\/blockquote>\n
The said  agreement related  to\t two  classes  of  products,
\nnamely, Whitehall  Products  and  Whet\tProducts  .  We\t are
\nconcerned in  this Appeal  with Whitehall Products. m e term
\n“Whitehall Products’  was defined  in the  said agreement as
\nmeaning\t all  formulations  owned  by  or  whose  sales\t are
\npromoted  under\t the  direction\t of  Whitehall\tLaboratories
\nDivision  of   American\t  Home\t Products   Corporation\t  or
\nInternational\tChemical    company   Limited\t which\t are
\nmanufactured and  sold under  the name\tor  trade  marks  of
\nWhitehall Laboratories\tDivision of  American home  Products
\nCorporation or\tInternational Chemical\tCompany Limited\t and
\npackaged in  form for  sale and distribution by the trade to
\nthe ultimate  costumer .  The term  “Licensed” Products\t was
\ndefined in  the said  agreement as  meaning those  Whitehall
\nProducts whose\timport, manufacture, sale or distribution in
\nIndia by Geoffrey Manners are licensed under and pursuant to
\nthe terms  of this  Agreement.\tThese  shall  include  those
\nidentified in  Schedule a  annexed hereto  and made  a\tpart
\nhereof. Schedule  A to\tthe  said  agreement  set  out\tfour
\nproducts,  namely,   ‘Anacin’,\t ‘Kolynos’   Dental   Cream,
\n‘Bismag’, and  ‘Anne French’  Cleansing Milk.  ‘DRISTAN’ was
\nthus not  mentioned in\tthe said  Schedule A. Under the said
\nagreement, the\tAppellant agreed  to furnish  or cause to be
\nfurnished to the Indian Company the manufacturing technology
\nand other assistance essential for the efficient manufacture
\nby the\tIndian Company\tof inter  alia the Licensed Products
\nand further  agreed that  qualified employees  of the Indian
\nCompany may visit the laboratories, PLANTS and facilities of
\nthe Appellant  to observe  and learn for the period required
\nto obtain  the necessary  working knowledge, the methods and
\nequipment for  the production  of the  Licensed Products and
\nthat qualified members of the appellant would be assigned to
\ndiscuss\t such  method  and  equipment  with  such  qualified
\nemployees of  the Indian  Company during the period of their
\nvisits. The  Indian company  likewise agreed  that qualified
\nemployees of  the  appellant  may  visit  the  laboratories,
\nplants and  facilities of  the Indian  Company in  order  to
\nobserve and  examine the  methods  being  employed  and\t the
\nequipment being
\n288<\/span>
\nused for the Licensed Products. The Appellant further agreed
\nto supply  to the  Indian company  a written  description of
\neach  process\tutilized  for  the  production\tof  Licensed
\nProducts including  flowsheets of  processes, necessary test
\nmethods and basic specifications for apparatus and equipment
\nunitized in production and that thereafter the Appellant and
\nthe Indian  Company  should  furnish  each  other  with\t all
\nsignificant information\t which either  of them developed and
\nwas  free   to\tdisclose   concerning  improvements  in\t the
\nprocesses  and\t in  the   equipment,  raw   materials\t and
\nintermediates used  therein.  It  was  further\tagreed\tthat
\nbefore making  any offer to a third party or contracting any
\ncommitment with a third party for the purpose of manufacture
\nand sale  in India  of any Whitehall Products, the Appellant
\nwould offer  to the  Indian Company,  upon the\tthermic\t and
\nconditions set\tout in\tthe said  agreement,  the  right  to
\nmanufacture, sell  and\/or distribute such products in India.
\nIn the\tevent of  such offer  being accepted  by the  Indian
\nCompany in  respect of\tany Whitehall  products such product
\nwould be  deemed a  Licensed Product for the purposes of the
\nsaid agreement. During the period of the said agreements the
\nIndian Company agreed not to manufacture, distribute of sell
\nany new products whose production or sale would compete with
\nthe production and sale of the Licensed Products except with
\nthe prior  consent  thereto  in\t writer\t obtained  from\t the
\nAppellant, and\tthe Appellant  granted to the Indian Company
\nfor the duration of the said agreement an exclusive and non-
\ntransferable license  to make and sell the Licensed Products
\nin India  under the  name or  marks which for these purposes
\nthe Appellant  would design or cause to be designed for such
\nproducts. Clause  (a) of  Article IV  of the  said agreement
\ninter alia  provided that  Rights of registered user will be
\nextended to  Geoffrey Markers  in respect  of each  Licensed
\nProduct by  the proprietor  of such  trade mark\t .  Furthers
\nunder the said agreement the Appellant was to furnish to the
\nIndian Company\tthe manufacturing  technology applicable  to
\neach Licensed  Product and to provide reasonable engineering
\nand  technical\t assistance  and   instructions\t  to   those
\nrepresentatives of  the Indian Company who were to direct or
\nsupervise the  manufacture of  such products  and who  would
\nvisit  the   Appellant’s  plants  for  such  assistance\t and
\ninstructions.  The   advertising  expenditures,\t  plans\t and
\nbudgets for  each fiscal  year with respect to each Licensed
\nProducts was  to be determined annually and approved by the
\nAppellant and  the selection, appointment of all advertising
\nagencies by  the Indian\t Company for  promoting the sale and
\ndistribution of\t the  Licensed\tProducts  was  to  have\t the
\nprevious agreement  in writing\tof the\tAppellant. The\tsaid
\nagreement also sat out in detail the various
\n289<\/span>
\nservices which\twere to\t be rendered by the Appellant to the
\nIndian Company.\t The said agreement was to continue in force
\nfor an\tindefinite period  of time  subject  to\t its  sooner
\ntermination in the event of any of the eventualities set out
\nin the\tsaid agreement\ttaking place, one of them being that
\nof the\tAppellant ceasing to be the owner of at least 40 per
\ncent of\t the issued  and outstanding  share capital  of\t the
\nIndian Company.\t The  said  agreement  contained  a  secrecy
\nclause and  upon the  termination of the said agreement, the
\nIndian\tCompany\t  had  to   return  to\t the  Appellant\t all
\nmanufacturing technology  received by  it from the Appellant
\nand not to make any use of it thereafter.\n<\/p>\n
     In pursuance  of the  said collaboration  agreement the
\nIndian\tCompany\t  manufactured\tand  marketed  the  products
\ncovered\t thereunder   and  got\t itself\t registered  as\t the
\nregistered user\t in respect  of the  trade marks relating to
\nthe said  goods of  which the  Appellant was  the registered
\nproprietor. The\t correspondence on  the record shows that on
\nand from  December 1957\t it  was  decided  that\t the  Indian
\nCompany should\tintroduce in  the  Indian  market  nine\t new
\nproducts of  the Appellant  including ‘DRISTAN’\t tablets. On
\nAugust 18,  1958, the  Appellant filed\tan application under
\nsection 14(1)  of the  Trade Marks  Act, 1940  (Act No. V of
\n1940) in  the prescribed  form T-I  for registration of the
\ntrade  mark   ‘DRlSTAN’\t  in   class   5   (which   includes
\npharmaceutical substances)  as a  medicinal preparation\t for
\ntreatment  of\trespiratory  ailments  claiming\t to  be\t the
\nproprietor of  the said\t mark by  whom\tthe  said  mark\t was
\nproposed to be used. The said application was advertised as
\nrequired by  the Trade\tMarks  Rules,  1942.  No  notice  of
\nopposition to  the registration\t of the\t said trade mark was
\nfilet by  anyone and the trade mark ‘DRISTAN’ was registered
\nby the\tRegistrar of  Trade Marks,  Bombay, as Trade Mark No
\n186511 in class 5 on June 8, 1959. With effect from November
\n25, 1959,  the Trade  marks  Act,  1940,  was  repealed\t and
\nreplaced by  the Trade\tand Merchandise Marks Act, 1958 (Act
\nNo. 43 of 1958).\n<\/p>\n
     Thereafter the  Indian Company applied for and obtained
\na licence  for the purchase of a Stokes Triple Layer Machine
\nwhich could produce two-layered tablets, the intention being
\nto  use\t this  machine\tfor  the  purpose  of  manufacturing
\n‘DRISTAN’ tablets. The Indian Company intimated this fact to
\nthe Appellant asking it to supply urgently the manufacturing
\nmanual for ‘DRISTAN’ tablets. The Indian Company also wrote
\nto the\tAppellant asking  lt to\t supply free  of cost  three
\nunits (comprising  twenty four\ttablets in all) of ‘DRISTAN’
\ntablets as  samples. me\t MANUFACTURING manual  as  also\t the
\nsamples were  duly sent\t by the\t Appellant to  1 the  Indian
\nCompany.\n<\/p>\n
290<\/span><\/p>\n
     On May  31, 1960, Mac Laboratories Private Limited, the
\nFirst Respondent in this Appeal, applied for registration of
\nthe trade  mark ‘TRISTINE’  in class  5 in  respect  of\t its
\nmedicinal   preparation\t  for\tsymptomatic   treatment\t  of
\nrespiratory airlines.  On January  1,  1961,  the  Appellant
\nfiled a notice of opposition to the registration of the said
\nmark ‘TRISTINE’ on re ground that it was deceptively similar
\nto its\ttrade mark ‘DRISTAN’. The Appellant’s opposition was
\nnot accepted  by the  Assistant Registrar  of  Trade  Marks,
\nBombay, and  by his  order dated  March 27, 1962, he ordered
\nthe trade  mark ‘TRISTINE’ to be registered in Part A of the
\nRegister of  Trade Marks.  The Appellant  thereupon filed an
\nappeal in  the Bombay  High Court  which was  allowed  by  a
\nlearned Single\tJudge of that High Court on February 5 1963.
\nThe First  Respondent thereupon\t filed an  appeal  before  a
\ndivision Bench of the said High Court and the Division Bench
\non April  l 1968,  allowed the said appeal but directed that
\nthe Respondent\tapplication be\tamended so  as to  read\t the
\ntrade MARK ‘TRISTIN’ as ‘TRISTINA’.\n<\/p>\n
     In\t the   meantime,  while\t  the\tFirst\tRespondent’s
\napplication for\t registration of  the trade  mark ‘TRISTINE’
\nwas pending,  the Indian  Company applied  on September\t 23,
\n1960, to  the Central  Government under\t section 11  of\t the
\nIndustries (Development\t and Regulation)  Act, 1951,  for  a
\nlicence to  manufacture the  tablets ‘DRISTAN’.\t In the said
\napplications the Indian Company stated :\n<\/p>\n
\t  No Royalty  payment is  involved. This new product
\n\t  will be  marketed under  the trade  mark ‘DRISTAN’
\n\t  which\t  belongs    to\t  American   Home   Products
\n\t  Corporation, New  York who own 40 of the Company’s
\n\t  capital and  whose products  are manufactured\t and
\n\t  distributed by us in India.\n<\/p><\/blockquote>\n
The Indian  Company installed the said Stokes machine at its
\nGhatkopar factory  on October  5, 1960 and also informed the
\nappellant that as the said machine was installed, the Indian
\nCompany\t would\t be  working   on  experimental\t batches  of
\n‘DRISTAN’ tablets  after completing  a few formalities which
\nthe Governments\t It also  wrote to  the said  Home  Products
\nInternational Limited  requesting it for a sample of 200 gms
\nof Phenindamine\t Tartarate U.S.P.,  one of  the\t ingredients
\nused in\t the manufacture  of ‘DRISTAN’\ttablets. The  Indian
\nCompany also  applied for  an import  licence for  import of
\nPhenylophrine Hydrocloride and Phenindamine Tartarate to the
\nvalue of Rs. 6,000 and Rs. 12,000 c.i.f. Bombay respectively
\nfor the purpose of initial production of ‘DRISTAN’
\n291<\/span>
\ntablets. The  licence under  the Industries (Development and
\nRegulation) Act,  1951 was  granted to the Indian Company on
\nJanuary 19,  1961, for\tthe manufacture of ‘DRISTAN’ tablets
\nto the\textent of  five lakh  tablets per  month. Two of the
\nconditions of the said licence were that no royalty would be
\npayable and that the product will be marketed with the trade
\nmark already  in use  or without  any trade mark . A further
\ncondition was  that no\tspecial concession  in regard to the
\nimport of  basic raw  materials\t and  ingredients  would  be
\nsought in  relaxation of  the general  policy in  force from
\ntime to\t time. On  January  23,\t 1961,\tthe  Indian  Company
\napplied to the Director, Drugs control Administration, State
\nof Maharashtra,\t for  permission  to  manufacture  ‘DRISTAN’
\ntablets. The  said application\twas approved  by  the  Drugs
\nController on  February 10,  1961. Meanwhile, on January 18,
\n1961, the  Appellant had filed a notice of opposition to the
\napplication for\t registration of  the mark  ‘TRISTINE’. As a
\ncounterblast to\t the said  notice of  opposition, the  First
\nRespondent on  April 10,  1961, filed  with the Registrar of
\nTrade Marks, Calcutta, an application, being Application No.
\nCal-17, for  rectifying\t the  Register\tof  Trade  Marks  by
\nremoving therefrom  the Appellant’s trade mark ‘DRISTAN’. On
\nMay 5,\t1961, the first Respondent applied for amendment of
\nthe said  Recitification  Application  by  substituting\t the
\nparagraph containing  the  submissions\tin  support  of\t the
\ngrounds taken  therein by  a new paragraph. This application
\nfor amendment was allowed.\n<\/p>\n
     On October\t 18, 1961,  an agreement  was  entered\tinto
\nbetween the Appellant and the Indian Company for granting to
\nthe Indian  Company the non-exclusive right to use the trade
\nmark ‘DRISTAN’\tupon or\t in relation to the goods in respect
\nof which  the said  trade mark\twas  registered\t during\t the
\nunexpired residue  of the  term of  the registration  of the
\nsaid trade  mark and  during  all  extensions  of  the\tsame
\nsubject to  the\t determination\tof  the\t said  agreement  as
\nprovided therein.  By the said agreement, the Indian Company
\nagreed to  become the registered user of the said trade mark
\n‘DRISTaN’ and  further agreed  that the rights granted to it
\nunder the  said agreement  would not be deemed to entitle it
\nto use\tthe said trade mark otherwise than as the registered
\nuser thereof.  Clauses 3,  4,  5,  6  and  7  of  the  said
\nagreement provided as follows :\n<\/p>\n
\t  “3. The  Indian Company  shall follow the formulae
\n\t  and specifications  prescribed and supplied by the
\n\t  American Company.  The Indian Company will conform
\n\t  to the  technical advice  tendered, will  use\t the
\n\t  quality
\n292<\/span>
\n\t  control methods  prescribed by or on behalf of the
\n\t  American Company  in the  course of manufacture of
\n\t  the goods  and will  not place upon the market any
\n\t  goods which  do not  attain  to  the\tstandard  of
\n\t  quality fixed by the American Company.\n<\/p><\/blockquote>\n
\t  4. To\t ensure maintenance of standards, the Indian
\n\t  Company will\tsubmit to the American Company or to
\n\t  laboratories designated  by the  American  Company
\n\t  for test  purposes  batch  samples  of  the  goods
\n\t  manufactured\tand   also  permit  duly  authorised
\n\t  representatives of the American Company to examine
\n\t  and inspect the Indian Company’s installations and
\n\t  manufacturing processes  and control\tmethods used
\n\t  in the  manufacture  of  the\tsaid  goods  on\t the
\n\t  premises of the Indian Company at any time.\n<\/p><\/blockquote>\n
\t  5. The  Indian Company convenants that it will not
\n\t  u e  the said\t Trade hark in any manner whatsoever
\n\t  which\t   may\t  jeopardize\tthe    significance,
\n\t  distinctiveness or validity of the said Trade Mark
\n\t  and the  Indian Company will take all steps within
\n\t  its power  to protect\t and  defend  or  assist  in
\n\t  protecting defending\tthe right  of  the  American
\n\t  Company in and to the said Trade Mark.\n<\/p><\/blockquote>\n
\t  6. All  use of  the said  Trade lark by the Indian
\n\t  Company shall\t clearly show  its ownership  by the
\n\t  American Company  and its  ownership by the Indian
\n\t  Company  only\t  by  permission   of  the  American
\n\t  Company. The\tIndian Company\ttherefore will apply
\n\t  and use  the said Trade mark only in such form and
\n\t  manner as  the American  Company may\tfrom time to
\n\t  time direct  and all\tlabels, containers, packing,
\n\t  pamphlets, advertising and the like shall show the
\n\t  said Trade  mark in  manner, design and use as the
\n\t  American Company  so directs\tand with  the  prior
\n\t  approval in writing of the American Company.\n<\/p><\/blockquote>\n
\t  7. There  is\tno  royalty  or\t other\tremuneration
\n\t  payable by  the Indian  Company  to  the  American
\n\t  Company for the proposed permitted use of the said
\n\t  trade mark.\n<\/p><\/blockquote>\n
The said  agreement provided that in the event of any breach
\nor default  by the  Indian Company  of any of the conditions
\ncontained in  the said\tagreement, the\tappellant would have
\nthe right  to prohibit\tforthwith further  use by the Indian
\nCompany of the trade
\n293<\/span>
\nmark ‘DRISTAN’.\t The said  agreement was  to remain in force
\nuntil\tdetermined by either party by ninety days’ notice in
\nwriting and  in the  event of  such termination\t the  Indian
\nCompany was to discontinue all further use of the said trade
\nmark and  to deliver  to  the  Appellant  the  manufacturing
\ntechnology relating  to the said tablets ‘DRISTAN’ including
\nformulae, raw  materials, finishing  materials\tand  packing
\nmaterials supplied  by or  on behalf of the Appellant and to
\nhold a\tthe disposition\t of the\t Appellant or its authorized
\nrepresentative\tall  stocks  of\t finished  goods  ready\t for
\ntransfer to  any party\tor parties  to whom the Appellant or
\nits authorized\trepresentative may  direct delivery  against
\npayment of  any accrued or unpaid manufacturing charges with
\nrespect to the same.\n<\/p>\n
     On October\t 22, 1961,  the ‘DRISTAN’ tablets were first
\nmarketed in  India by  Indian Company.\tOn March  6, 1962, a
\njoint application  in Form  TM-28 was  made by the Appellant
\nand the Indian Company for registering the Indian Company as
\na registered  user of the trade mark ‘DRISTAN’ in respect of
\nthe goods  for\twhich  it  was\tregistered  subject  to\t the
\nfollowing conditions  or restrictions  set out\tin the\tsaid
\napplication :-\n<\/p>\n
\t  The Trade  Mark is  to be  used by  the registered
\n\t  user in  relation to the goods only so long as the
\n\t  goods are  manufactured  in  accordance  with\t the
\n\t  formulae   and   specifications   prescribed\t and
\n\t  supplied by  the registered  proprietor,  only  so
\n\t  long\tas  the\t registered  user  conforms  to\t the
\n\t  technical advice  tendered and  uses\tthe  quality
\n\t  control methods  prescribed by or on behalf of the
\n\t  registered proprietor in the course of manufacture
\n\t  of the  goods and  only so  long as the registered
\n\t  proprietor has a right to inspect, on the premises
\n\t  of   the   registered\t  user,\t  the\tgoods,\t the
\n\t  installations, manufacturing processes and control
\n\t  methods used\tin the\tmanufacture of the goods and
\n\t  is supplied on request with samples of the goods.\n<\/p><\/blockquote>\n
In the\tsaid application  it was  stated that  the  proposed
\npermitted use  was without  limit of  period subject  to the
\nright of the registered proprietor, namely the Appellant, to
\napply for  cancellation of  the\t registered  user  forthwith
\nafter giving  ninety days  notice in  writing to  the Indian
\nCompany.  The\tsaid  application   was\t accompanied  by  an
\naffidavit of Kenneth A. Bonham, the executive Vice President
\nof the\tAppellant, affirmed  on October\t 18, 1961,  that the
\ntrade mark ‘DRISTAN’ was not till then used in India. In
\n294<\/span>
\nview  of   the\tsaid  rectification  proceedings,  the\tsaid
\napplication for registering the Indian Company as registered
\nuser of\t the trade mark ‘DRISTAN’ was not processed but kept
\npending\t until\tthe  final  decision  of  the  Rectification
\nApplication made by the First Respondent.\n<\/p>\n
     On December  7, 1964,  the Registrar  of  Trade  Marks,
\nCalcutta,  dismissed   with  costs  the\t First\tRespondent’s
\nRectification Application.  The First  Respondent  thereupon
\nfiled an  appeal in  the Calcutta  high Court,\tbeing Appeal
\nNo.61 of  1965, making\tthe Second  Respondent before us the
\nRegistrar of  Trade Marks,  Calcutta, the  Second Respondent
\nthereto. A  learned single  Judge of  the said high Court by
\nhis judgment  delivered on May 10, 13 and 14, 1968, reported
\nas Mac\tLaboratories private  Ltd. v. American home Products
\nCorporation and\t Anr. A.I.R. 1969 Cal. 342, allowed the said
\nappeal with  costs and\tset aside the order of the Registrar
\nof Trade  marks. Thereupon,  the Appellant  filed a  further
\nappeal, being  Appeal No.  165 of  1968. A Division Bench of
\nthe said High Court by its judgment and order dated December
\n1, 1969,  reported as  American home  products Corpn. v. Mac
\nLaboratories Private  Ltd. and Anr. (1970-71) 75 C.W.N. 118,
\nS.C., L194  Fleet Street  Reports 215,\tdismissed  the\tsaid
\nappeal with  no order  as  to  costs.  It  is  against\tthis
\njudgment and  order that  the present  Appeal by certificate
\nhas been filed .\n<\/p>\n
     In order  to appreciate  what was held by the Registrar
\nof Trade Marks and the learned Single Judge and the Division
\nBench of the Calcutta high Court and to test the correctness
\nof the\trival submissions  advanced before  us,\t it  is\t now
\nnecessary to refer to the relevant statutory provisions.\n<\/p>\n
     The first\tlegislation in India relating to trade marks
\nwas  the  Trade\t Marks\tAct,  1940  (Amt  No.  V  of  1940),
\nhereinafter referred  to as  the 1940 Act . The 1940 Act was
\nrepealed and  replaced with  effect from November 25, 1959,
\nby the\tTrade and Merchandise Marks Act, 1958 (Act No. 43 of
\n1958), hereinafter  referred to\t as the 1958 Act . Section 2
\nof the\t1958 Act  is the  definition section.  Clause (v) of
\nsection 2(1) defines the expression trade mark inter alia as
\nmeaning a  mark used  or proposed  to be used in relation to
\ngoods for  the purpose\tof indicating or so as to indicate a
\nconnection in the course of trade between the goods and some
\nperson\thaving\t the  right,  either  as  proprietor  or  as
\nregistered user, to use the mark whether with or without any
\nindication of  the identity  of that person . The definition
\nof the expression trade mark contained in clause (1)
\n295<\/span>
\nof section  2 of  the 194 Act was the same as the portion of
\nclause (v)  of section\t2(1), of  the  1958  Act  reproduced
\nabove. Under  clause lb) of section 22) any reference to the
\nuse of a mark in relation to the goods is to be construed as
\na reference  to the use of the mark upon, or in any physical
\nor in any other relation whatsoever, to such goods . Clauses\n<\/p>\n
(q), (r)  and (s)  of section  2(1  define  the\t expressions
\nregistered proprietor , registered trade mark and registered
\nuser . They read as follows :\n<\/p>\n
\t  “(q) ‘registered  proprietor’, in  relation  to  a
\n\t  trade mark,  means the  person for  the time being
\n\t  entered in the register as proprietor of the trade
\n\t  mark;\n<\/p><\/blockquote>\n
\t  ‘registered trade  mark’ means  a trade mark which
\n\t  is actually on the register;\n<\/p><\/blockquote>\n
\t  (s) ‘registered  user’ means\ta person  who is for
\n\t  the time being registered as such under section 49
\n\t  .\n<\/p><\/blockquote>\n
Clause (x)  of section\t2(1) defines the expression tribunal
\nas meaning  the Registrar  or, as  the case may be, the High
\nCourt, before which the proceeding concerned is pending .\n<\/p>\n
     The other\tdefinition which is relevant for our purpose
\nis that\t of the expression permitted use contained in clause\n<\/p>\n
(m) of section 2(1). That definition is as follows :\n<\/p>\n
\t  (m) ‘permitted  use’, in  relation to a registered
\n\t  trade mark, means the use of a trade mark –\n<\/p><\/blockquote>\n
\t  (i) by  a registered\tuser of\t the trade  mark  in
\n\t  relation to goods\n<\/p><\/blockquote>\n
\t  (a) with  which he  is connected  in the course of
\n\t  trade; and\n<\/p><\/blockquote>\n
\t  (b) in  respect of  which the\t trade mark  remains
\n\t  registered for the time being; and\n<\/p><\/blockquote>\n
\t  (c) for which he is registered as registered user;
\n\t  and\n<\/p><\/blockquote>\n
\t  (ii)\twhich\tcomplies  with\t any  conditions  or
\n\t  restrictions to  which  the  registration  of\t the
\n\t  trade mark is subject .<\/p><\/blockquote>\n
296<\/span><\/p>\n
     Section 6\tprovides for  the maintenance  of  a  record
\ncalled the  Register of\t Trade Marks in which all registered
\ntrade marks  are to  be\t entered.  Under  section  71),\t the
\nRegister is to be divided into two parts called respectively
\nPart A\tand Part  . Under section 72), the register or Trade
\nMarks existing\tat the commencement of the 1958 Act is to be
\nincorporated with  and\tto  form  part\tof  Part  A  of\t the
\nRegister. The  Appellant’s trade  mark ‘DISTAN’ leaving been
\nregistered under  the 194  Act, it  became part of Part A of
\nthe Register  of Trade\tMarks  under  the  1958\t Act.  Under
\nsection 136(2),\t a registration\t made under the 1940 Act is,
\nif in force at the commencement of the 1958 Act, to continue
\nin force and have effect as if trade under the corresponding
\nprovision of  the 1958\tAct. Sub-section (1) of section 9 of
\nthe 1958  Act,\twhich  corresponds  to\tsub-section  (1)  of
\nsection 6  of the  1940 Act  sets  out\tthe  requisites\t for
\nregistration cf\t a trade  mark. Under it a trade mark is not
\nto be  registered in  Part  A  of  the\tRegister  unless  it
\ncontains or  consists of  at  least  one  of  the  essential
\nparticulars  set   out\tin  that  sub-section.\tOne  of\t the
\nessential particulars set out in section 9(1) is one or more
\ninvented words .\n<\/p>\n
     Sub-section (1) and (4) of section 1 provide as follows
\n:\n<\/p>\n
\t  1. Application for Registration. –
\n\t  (1) Any  person claiming to be the proprietor of a
\n\t  trade mark used or proposed to be used by him, who
\n\t  is desirous  of registering  it,  shall  apply  in
\n\t  writing to the Registrar’ in the prescribed manner
\n\t  for the  registration of  his trade mark either in
\n\t  Part A or in Part  of the Register.\n<\/p><\/blockquote>\n
\t  x    x     x\t   x\t x     x
\n\t  (4) Subject  to the  provisions of  this Act,\t the
\n\t  Registrar may refuse the application or may accept
\n\t  it  absolutely  or  subject  to  such\t amendments,
\n\t  modifications, conditions  or limitations,  if any
\n\t  as he may think fit.\n<\/p><\/blockquote>\n
The Appellant’\tapplication for\t registration of  the  trade
\nmark ‘DRISTAN’\twas made under section 14(1) of the 1940 Act
\nwhich provided a follows :\n<\/p>\n
\t  “14. application for registration.-\n<\/p><\/blockquote>\n
297<\/span><\/p>\n
\t  (1) Any  person c  np- to  be the  proprietor of a
\n\t  trade mark  used or proposed to be used by him who
\n\t  is A\tdesirous of  registering it  shall apply  in
\n\t  writing to the Registrar in the prescribed manner,
\n\t  and subject  to the  provisions of  this Act,\t the
\n\t  Registrar may refuse the application or may accept
\n\t  lt  absolutely  or  subject  to  such\t amendments,
\n\t  modifications, conditions  or limitations, if any,
\n\t  as he may think fit-\n<\/p><\/blockquote>\n
It is  pertinent to note that both under section 141) of the
\n1940 Act  and section  18(1) of the 1958 Act, an application
\nfor registration  must\tbe  a  person  claiming\t to  be\t the
\nproprietor of  a trade\tmark used  or proposed to be used by
\nhim. Therefore,\t unless it  is the  case of an applicant for
\nregistration that he is the proprietor of a trade mark which
\nhas been used by him or which is proposed to be used by him,
\nhe is not entitled to registration. Admittedly, in this case
\nthe trade  mark ‘DRISTAN’  was not  at any  time used by the
\nAppellant in  India at the date when it made its application
\nfor registration on August 18, 1958, nor did it claim in its
\napplication that the said trade mark had been 80 used by it.
\nthat was  stated in  the said  application as  that the said
\ntrade  mark   was  proposed  to\t be  used  by  it.  Once  an
\napplication for\t registration is  made\ta  accepted  by\t the
\nregistrar, the\tRegistrar has to cause the application to be
\nadvertised and\twithin three  months from  the date  of\t the
\nadvertisement, any  person may\tlodge with  the Registrar  a
\nnotice of  opposition in writing to the registration of such
\nmark. A\t copy of  such notice  of opposition is to be served
\nupon the applicant. These provisions made in sections 20 and
\n21 of  the 195 Act correspond to section 15 of the 1940 Act.
\nUnder section 23(1), if the application has not been opposed
\nand the time for giving the notice of opposition has expired
\nor if  the application\thas been  opposed and the opposition
\nhas been  decided in  favour of the applicant, the Registrar
\nis “unless  the\t Central  Government  otherwise\t directs  to
\nregister the  said trade  mark in  Part A  or  Part  of\t the
\nRegister, as  the case may be The trade mark when registered
\nis to  be registered  as of  the date  of the  making of the
\napplication for\t registration and  such date is to be deemed
\nto be the date of registration. A similar provisions existed
\nin section  16 of  the 1940  Act. to notice of opposition to
\nthe registration of the trade mark ‘DRISTAN’ was ever lodged
\nby anyone,  and accordingly  it was ordered to be registered
\nby the\tRegistrar of  Trade marks. In view of the provisions
\nof section 16 of the 1940 Act, the said trade mark ‘DRISTAN’
\nwas to\tbe deemed  for the  purposes of\t the 1940  Act to be
\nregistered from the date of the application for its
\n298<\/span>
\nregistration namely, from August 18, 1958 and even after the
\ncoming into  force of  the 1958\t Act  to  be  deemed  to  be
\nregistered from\t the same  date for the purposes of one 1958
\nAct. under  section 25 of the 1958 Act, which corresponds to
\nsection 1  of the  190 Act, the registration of a trade mark
\nis to  be for  a period\t of seven  years, but can be renewed
\nfrom time  to time  on application  made by  the  registered
\nproprietor of  the trade  mark in  the prescribed manner and
\nwithin the  prescribed period  and subject to the payment of
\nthe prescribed\tfee. The  renewal of  the registration\tof a
\ntrade mark  is to  be for  a period  of seven years from the
\ndate of\t expiration of the original registration or the last
\nrenewal of registration, as the case may be.\n<\/p>\n
     The registration  of a trade mark confers very valuable
\nrights upon  the registered  proprietor of  that trade mark.
\nUnder section 27(1) of the 1958 Act, no person can institute
\nany proceeding\tto prevent,  or to  recover damages for, the
\ninfringement of\t an unregistered  trade mark.  however,\t his
\nright of  action against any person for passing off goods as
\nthe goods  of another  person or  the  remedies\t in  respect
\nthereof is not affected by reason of the fact that his trade
\nmark is an unregistered one. Under section 28(1) of the 1958
\nAct,  subject\tto  other   provisions\tof   the  Act,\t the
\nregistration of\t a  trade  mark,  if  valid,  gives  to\t the
\nregistered proprietor  of the trade mark the exclusive right
\nto the\tuse of\tthe trade  mark in  relation to the goods in
\nrespect of  which the trade mark is registered and to obtain
\nrelief in  respect of  that a  company is about to be formed
\nand registered\tunder the  Companies Act, 1956, and that the
\napplicant intends  to assign the trade mark to- that company
\nwith a view to the use thereof in relation to those goods by
\nthe company.\n<\/p>\n
     (2) The  tribunal may,  in a-case\tto which sub-section
\n(1) applies,  require the applicant to give security for the
\ncosts of  any proceedings  relative  to\t any  opposition  or
\nappeal, and in default of such security being duly given may
\ntreat the application an abandoned.\n<\/p>\n
     (3) Where in a case to which sub-section (1) applies, a
\ntrade mark in respect of any goods is registered in the name
\nof an  applicant who relies on intention to assign the trade
\nmark to a company, then, unless within such period as may be
\nprescribed, or\twithin such further period not exceeding six
\nmonths as  the Registrar  may, on  application being made to
\nhim in\tthe prescribed\tmanner, allow,\tthe company has been
\nregistered as  the proprietor  of the trade marks in respect
\nof those goods, the registration
\n299<\/span>
\nshall ceased  to have  effect  in  respect  thereof  at\t the
\nexpiration of that period, and the Registrar shall amend the
\nregister  accordingly.\n<\/p>\n
     An important  section for\tthe purpose  of the  present
\nAppeal is  section  46\twhich  provides\t for  removal  of  a
\nregistered trade mark from the Register. The infringement of
\nthe trade  mark in  the manner\tprovided by  the 1958 Act. A
\nsimilar provision  was to  be found  in section 21(1) of the
\n1940  Act.   Section  29   of  the  1958  Act  defines\twhat
\nconstitutes infringement  of a\ttrade mark  while section 30
\nsets out the acts which do not constitute an infringement of
\nthe right  to the  use of  a registered\t trade\tmark.  Under
\nsection 36,  a registered proprietor of a trade mark has the
\npower to  assign the  trade mark.  Under section 37, a trade
\nmark is assignable and transmissible whether with or without
\nthe goodwill  of the  business concerned and that in respect
\neither of  all the  woods in respect of which the trade mark
\nis registered  or of some only of those goods. Under section
\n38,  an\t  unregistered\ttrade  mark  is\t not  assignable  or
\ntransmissible except in the cases set out in sub-section (2)
\nof that section.\n<\/p>\n
     Section 45 provides as follows :\n<\/p>\n
\t  “45 Proposed\tuse of\ttrade mar  by company  to be
\n\t  formed.-\n<\/p>\n
\t  (1) No application for the registration of a trade
\n\t  mark in respect of any goods shall be refused, nor
\n\t  shall\t permission   for     such  registration  be
\n\t  withheld, on\tthe ground only that it appears that
\n\t  the applicant\t does not  use or propose to use the
\n\t  trade mark, if the Registrar is satisfied material
\n\t  provisions of section 46 are as follows :\n<\/p>\n
\t  46. Removal  from    register\t and  imposition  of
\n\t  limitations on ground of no-use.\n<\/p>\n
\t  (1) Subject  to the  provisions of  section 47,  a
\n\t  registered  trade   mark  may\t be  taken  off\t the
\n\t  register in respect of any of the goods in respect
\n\t  of which  it is  registered on application made in
\n\t  the prescribed  manner to  a High  Court or to the
\n\t  Registrar by\tany person  aggrieved on  the ground
\n\t  either\n<\/p>\n
\t  (a) that the trade mark was registered without any
\n\t  bonafide intention  on the  part of  the applicant
\n\t  for
\n300<\/span>
\n\t  registration that it should be used in relation to
\n\t  those goods  by him  or, in  a case  to which\t the
\n\t  provisions of\t section 45  apply, by\tthe  company
\n\t  concerned, and  that there  ha, in  fact, been  no
\n\t  bona fide  use of  the trade\tmark in\t relation to
\n\t  those goods by any proprietor thereof for the time
\n\t  being up  to a  date one  month before the date of
\n\t  the application; or\n<\/p>\n
\t  (b) that up to a date one month before the date of
\n\t  the application, a continuous period of five years
\n\t  or longer  had elapsed during which the trade mark
\n\t  was registered  and during which there was no bona
\n\t  fide use thereof in relation to those goods by any
\n\t  proprietor thereof for the time being:\n<\/p>\n
\t  Provided that, except where the applicant has been
\n\t  permitted under  sub-section (3)  of section 12 to
\n\t  register an  identical or  nearly resembling trade
\n\t  mark in  respect of the goods in question or where
\n\t  the tribunal\tis of opinion that he might properly
\n\t  be permitted so to register such a trade mark, the
\n\t  tribunal may\trefuse an  application under  clause\n<\/p>\n
\t  (a) or  clause (b) in relation to any goods, if it
\n\t  is shown  that there has been, before the relevant
\n\t  date or  during the  relevant period,\t at the case
\n\t  may be,  bona fide  use of  the trade\t mark by any
\n\t  proprietor thereof  for the time being in relation
\n\t  to goods  of the  same description, being goods in
\n\t  respect of which the trade mark is registered.\n<\/p>\n
\t  x\t   x\t    x\t      x\t\tx
\n\t  (3) An  application shall  not be entitled to rely
\n\t  for the  purpose of  clause (b) of sub-section (1)
\n\t  or for the purposes of sub-section (2) on any non-
\n\t  use of  a trade  mark which  is shown to have been
\n\t  due to  special circumstances in the trade and not
\n\t  to any  intention to\tabandon or  not to  use\t the
\n\t  trade mark  in relation  to the goods to which the
\n\t  application relates.”\n<\/p>\n
     The   First    Respondent’s   said\t   application\t for
\nrectification was  made both  under section 46 and 56 of the
\n1958 Act.  Under section  56(2), any person aggrieved by any
\nentry made in the Register of Trade Marks without sufficient
\ncause or  by any entry wrongly remaining on the Register may
\napply in the prescribed
\n301<\/span>
\nmanner to a High Court or to the Registrar, and the tribunal
\nmay make  such order  for making,  expunging or\t varying the
\nentry as it A may think fit. Under section 56(4), this power
\ncan also  be exercised by the High Court or the Registrar of
\nits own\t motion after giving notice to the parties concerned
\nand after  giving them\tan opportunity\tof being heard. This
\npower includes\tthe power to cancel or vary the registration
\nof a trade mark. Against such an order made by the Registrar
\nrectifying, cancelling\tor removing  a trade  mark from\t the
\nRegister of Trade Marks, an appeal lies under section 109 to
\na Single  Judge of  the High Court and against an order made
\nby the Single Judge of the High Court, a further appeal lies
\nto a Bench of the High Court.\n<\/p>\n
     What is now required to be set out is section 48 of the
\n1958 Act,  the interpretation  of which\t is crucial  for the
\npurpose of  deciding this  Appeal, for that section provides
\nfor registration of a registered user and the effect of such
\nregistration.\n<\/p>\n
     Section 48 provides as follows :\n<\/p>\n
\t  48. Registered users.-\n<\/p>\n
\t  (1) Subject  to the  provisions of  section 49,  a
\n\t  person other\tthan the  registered proprietor of a
\n\t  trade mark  may be  registered as  the  registered
\n\t  user thereof in respect of any or all of the goods
\n\t  in respect  of which\tthe trade mark is registered
\n\t  otherwise than  as a defensive trade mark; but the
\n\t  Central Government  may, by  rules  made  in\tthis
\n\t  behalf,   provide    that   no   application\t for
\n\t  registration as  such shall  be entertained unless
\n\t  the agreement\t between the  parties complies\twith
\n\t  the  conditions   laid  down\t in  the  rules\t for
\n\t  preventing trafficking in trade marks.\n<\/p>\n
\t  (2) The  permitted use  of a\ttrade mark  shall be
\n\t  deemed to  be use  by the  proprietor thereof, and
\n\t  shall be  deemed not\tto be  use by a person other
\n\t  than the  proprietor, for  the purposes of section
\n\t  46 or\t for any other purpose for which such use is
\n\t  material under this Act or any other law.\n<\/p>\n
Section 49  prescribes the  procedure for  registration of a
\nregistered user and is in the following terms :\n<\/p>\n
\t  49. Application  for\tregistration  as  registered
\n\t  user.-\n<\/p><\/blockquote>\n
302<\/span><\/p>\n
\t  (1) Where  it is  proposed that a person should be
\n\t  registered as\t a registered  user of a trade mark,
\n\t  the  registered   proprietor\tand   the   proposed
\n\t  registered user  shall jointly apply in writing to
\n\t  the Registrar\t in the prescribed manner, and every
\n\t  such application shall be accompanied by –\n<\/p><\/blockquote>\n
\t  (i)  the   agreement\tin   writing   or   a\tduly
\n\t  authenticated copy  thereof, entered\tinto between
\n\t  the  registered   proprietor\tand   the   proposed
\n\t  registered user  with respect to the permitted use
\n\t  of the trade mark; and\n<\/p><\/blockquote>\n
\t  (ii)\tan   affidavit\tmade   by   the\t  registered
\n\t  proprietor or\t by some  person authorised  to\t the
\n\t  satisfaction\tof  the\t Registrar  to\tact  on\t his
\n\t  behalf,-\n<\/p><\/blockquote>\n
\t  (a)  giving\tparticulars  of\t  the  relationship,
\n\t  existing or  proposed, between  the proprietor and
\n\t  the\tproposed    registered\t  user,\t   including
\n\t  particulars showing  the degree  of control by the
\n\t  proprietor over  the\tpermitted  use\twhich  their
\n\t  relationship will  confer and whether it is a term
\n\t  of their relationship that the proposed registered
\n\t  user shall  be the  sole registered  user or\tthat
\n\t  there shall be any other restriction as to persons
\n\t  for  whose   registration  as\t  registered   users
\n\t  application may be made;\n<\/p><\/blockquote>\n
\t  (b)  stating\t the  goods   in  respect  of  which
\n\t  registration is proposed;\n<\/p><\/blockquote>\n
\t  (c) stating  the conditions  or  restrictions,  if
\n\t  any, proposed\t with respect to the characteristics
\n\t  of the  GOODS to  the mode  or place\tof permitted
\n\t  use, or to any another matter;\n<\/p><\/blockquote>\n
\t  (d) stating whether the permitted use is to be for
\n\t  a period or without limit of period, and, if for a
\n\t  period, the duration thereof; and\n<\/p><\/blockquote>\n
\t  (iii) such  further documents or other evidence as
\n\t  may be  required by  the Registrar  or as  may  be
\n\t  prescribed.\n<\/p><\/blockquote>\n
\t  (2) When  the requirements of sub-section (1) have
\n\t  been\tcomplied   with\t to  his  satisfaction,\t the
\n\t  Registrar shall  forward the\tapplication together
\n\t  with his  report and all the relevant documents to
\n\t  the Central Government.\n<\/p><\/blockquote>\n
303<\/span><\/p>\n
\t  (3) On receipt of an application under sub-section
\n\t  (2), The  Central Government, having regard to all
\n\t  the circumstances of the case and to the interests
\n\t  of the  general public, and the development of any
\n\t  industry, trade  or commerce\tin India, may direct
\n\t  the Registrar\n<\/p><\/blockquote>\n
\t  (a) to refuse the application; or\n<\/p><\/blockquote>\n
\t  (b) to  accept application  either  absolutely  or
\n\t  subject  to\tany  conditions,   restrictions\t  or
\n\t  limitations which the Central Government may think
\n\t  proper to impose;\n<\/p><\/blockquote>\n
\t  Provided  that   no  direction  for  refusing\t the
\n\t  application or  for its  acceptance  conditionally
\n\t  shall be  made unless the applicant has been given
\n\t  an opportunity of being heard.\n<\/p><\/blockquote>\n
\t  (4) The Registrar shall dispose of the application
\n\t  in accordance\t with the  directions issued  by the
\n\t  Central Government sub-section (3).
\n\t  (5)  The  Central  Government\t and  the  Registrar
\n\t  shall, if  so requested  by  the  applicant,\ttake
\n\t  steps for  securing that information given for the
\n\t  purpose  of  an  application\tunder  this  section
\n\t  (other than  matters entered\tin the\tregister) is
\n\t  not disclosed to rivals in trade.\n<\/p><\/blockquote>\n
\t  (6)  The  Registrar  shall  issue  notice  in\t the
\n\t  prescribed manner  of the registration of a person
\n\t  as a registered user, to ocher registered users of
\n\t  the trade mark, if any.<\/p><\/blockquote>\n
     As we have seen, before a person can be registered as a
\nregistered user\t of a  registered trade mark, the registered
\nuser’s agreement  between the  parties is to comply with the
\nconditions laid down in the Rules for preventing trafficking
\nin  trade  marks.  section  133\t confers  upon\tthe  Central
\nGovernment,  by\t  notification\tpublished  in  THE  Official
\nGazette\t and   subject\tto   the   condition   of   previous
\npublication” the  power to  make  rules\t to  carry  out\t the
\npurposes of  the 1958  At. Under  section 134,\tall rules so
\nmade are  to be\t laid for  not less  than thirty days before
\neach house  of Parliament  as soon  as may be after they are
\nmade  and   are\t to  be\t subject  to  such  modification  as
\nParliament may make in the session in which they are so laid
\nor the session immediately
\n304<\/span>
\nfollowing In  exercise of  this power the Central Government
\nhas made  the  Trade  and  Merchandise\tMarks  Rules,  1959.
\nChapter V  of these  Rules consisting  of  Rules  82  to  93
\nrelates to  registered users.  Under Rule 82, an application
\nfor registering a person as a register user is to be made in
\nForm TM-28  jointly by\tthe proposed registered user and the
\nregistered proprietor  of  the\ttrade  mark  and  is  to  be
\naccompanied inter alia by the agreement in writing or a duly
\nauthenticated  copy   thereof  entered\t into  between\t the
\nregistered proprietor  and the proposed registered user with
\nrespect to  the permitted  use of the trade mark. Rule 85 is
\nin the following terms :\n<\/p>\n
\t  85. Consideration by the Central Government.-
\n\t  The  Central\t Government,  on   receipt   of\t  an
\n\t  application for  registration as  registered\tuser
\n\t  forwarded to it by the Registrar under sub-section
\n\t  (2) of  section 49,  shall, if  satisfied that the
\n\t  application and  the accompanying documents comply
\n\t  with the  provisions of  the Act  and\t the  rules,
\n\t  consider whether  the\t APPLIED  cation  should  be
\n\t  allowed having  regard to the matters specified in
\n\t  sub-section (3)  of that  section, and in doing so
\n\t  may take  into account all or any of the following
\n\t  matters :-\n<\/p><\/blockquote>\n
\t  (1) whether  the permitted  use if  allowed  would
\n\t  contravene the  policy of  the  Act  which  is  to
\n\t  prevent trafficking in trade marks;
\n\t  (2)  whether\t the   registered   proprietor\t has
\n\t  registered the  trade mark  without any  bona fide
\n\t  intention to\tuse it\tin relation  to his goods in
\n\t  the course  of trade\tor solely  or mainly for the
\n\t  purpose of  permitting  others  to  use  it  under
\n\t  agreements for registered user; and
\n\t  (3) whether the registered proprietor has acquired
\n\t  title to  the trade mark by assignment without any
\n\t  bona fide  intention to  use it in relation to his
\n\t  goods in  the course\tof trade or solely or mainly
\n\t  for the  purpose of  permitting others  to use  it
\n\t  under agreements for registered user.<\/p><\/blockquote>\n
     Explanation I.  – For considering the bona fides of the
\nregistration of the trade mark under clause (2) regard shall
\nbe h had inter alia to –\n<\/p>\n
305<\/span><\/p>\n
\t  (a) whether the goods for which the trade marks is
\n\t  registered are  similar to  or are  different from
\n\t  the goods  in which  the registered proprietor has
\n\t  been trading or dealing before the registration or
\n\t  the mark;\n<\/p><\/blockquote>\n
\t  (b) whether  the registered  proprietor  has\tever
\n\t  used the mark in question in relation to his goods
\n\t  in the  course of  trade before  the date  or\t the
\n\t  agreement for\t registered user,  and\tif  so,\t the
\n\t  amount and duration of such user;\n<\/p><\/blockquote>\n
\t  (c) whether  the terms  as to\t royalty  and  other
\n\t  remuneration payable\tby the\tproposed  registered
\n\t  user\tand   reasonable  taking  into\taccount\t the
\n\t  expenses which the registered proprietor is likely
\n\t  to incur i exercising over the permitted use.<\/p><\/blockquote>\n
     Explanation II.  – For  Considering the  bona fides  of
\nthe I  acquisition of title under clause (3) regard shall be
\nhad, besides  the matters  SEL out  in Explanation  I to the
\nfollowing further  matter, namely,  whether  the  registered
\nproprietor has obtained assignment of other registered trade
\nmark and  if o, whether he ha dealt with such other marks by
\nway of assignment or registered user.\n<\/p>\n
     Three grounds  were  taken\t in  the  First\t Respondents
\nApplication  for   Rectification.  lt\twill  facilitate  an
\nunderstanding of  the controversy  between the parties if we
\nwere to reproduce these grounds. They are :\n<\/p>\n
\t  (i)  ‘That   the  said  trade\t mark  ‘DRISTAN’  is
\n\t  deceptively and  confusingly similarity  the\tmark
\n\t  ‘BISTAN’ Registered  under No\t 122391 in  class  5
\n\t  (advertised in T.M. Journal No. 47) in the name of
\n\t  Messrs  Prof.\t Gajjar’s  Standard  Chemical  Works
\n\t  Ltd., of Bombay. The said trade mark\t‘BISTAN’ has
\n\t  been\tused   and  is\t being\tused   by  its\tsaid
\n\t  proprietors  in   respect   of   their   medicinal
\n\t  preparation since several years pat.\n<\/p><\/blockquote>\n
\t  (ii) That  the Registered  Proprietor on  the said
\n\t  trade\t mark\t‘DRISTAN’  alleged   in\t  the\tsaid
\n\t  opposition No.  Bom. 76  that the  said trade mark
\n\t  ‘DRUSTAN’ is deceptively similarity the said trade
\n\t  mark ‘TRISTINE’ which the
\n306<\/span>
\n\t  Applicants have  lawfully been using since October
\n\t  1960\tin respect of their medicinal preparation.\n<\/p><\/blockquote>\n
\t  (iii) That  there has\t been no bonafide use of the
\n\t  said trade  mark ‘DRISTAN’ in India in relation to
\n\t  the goods  for  which\t it  is\t registered  by\t any
\n\t  proprietor thereof  for the  time being  upto date
\n\t  one month before the date of this application.\n<\/p><\/blockquote>\n
The second  ground mentioned  above was\t taken in order make
\nout that the First Respondent was a person aggrieved for the
\npurposes of  section 46\t and  56(2)  of\t the  195  Act.\t The
\nAppellant had  contested this  position but this particular
\ncontroversy does  not survive  for it  is no more in dispute
\nthat the First Respondent was person aggrieved.\n<\/p>\n
     The submission  set out  in the  said  Application\t for
\nRectification in  support of  the above\t three grounds\twere
\nsubstituted  by\t  fresh\t submissions   by  an  amendment  as
\nmentioned earlier. These submissions define the scope of the
\ncontroversy  between   the  parties.   The  submissions\t  so
\nsubstituted were\n<\/p>\n
\t  (i) That  the said  trade mark  ‘DRISTAN’ was\t not
\n\t  distinctive mark and nor was not regenerable trade
\n\t  mark under  Sec.6 of\tthe Trade  marks  Act,\t1940
\n\t  (corresponding to  Section 9\tof  Act\t No.  40  of
\n\t  1958), except upon evidence of its distinctiveness
\n\t  and  no   such  evidence   was  submitted  to\t the
\n\t  Registrar before registration.\n<\/p>\n
\t  (ii) That  the said  trade mark  was registered in
\n\t  contravention of Section 8 of the Trade Marks Act,
\n\t  1940 (corresponding  to Section  11 of the present
\n\t  Act, of 1958).\n<\/p>\n
\t  (iii) That the said trade mark offends against the
\n\t  provisions of Section 11 of the Act.\n<\/p>\n
\t  (iv) That  the said  trade mark  ‘DRISTAN’ is\t not
\n\t  distinctive  of   the\t goods\t of  the  registered
\n\t  proprietors.\n<\/p>\n
\t  (v)  That   the  said\t trade\tmark  ‘DRISTAN’\t was
\n\t  registered without  any bonafide  intention on the
\n\t  part of  the Applicants  for registration  that it
\n\t  should be used in
\n307<\/span>
\n\t  relation  to\t their\tmedicinal   preparation\t for
\n\t  symptomatic treatment\t of respiratory\t ailments by
\n\t  them and  that there\thas, in\t fact, been  no bona
\n\t  fide use in India of the said trade mark ‘DRISTAN’
\n\t  in  relation\t to  the  said\tgoods  by  the\tsaid
\n\t  proprietors upto  a date one month before the date
\n\t  of this application.\n<\/p>\n
     All  the\tabove  submissions   were  rejected  by\t the
\nRegistrar. In  coming to  the conclusion  that the Appellant
\nhad the\t bona fide intention to use the trade mark ‘DRISTAN’
\nthe Registrar  relied upon  the decision of Lloyd-Jacob, J.,
\nin the\tcase of\t ‘BOSTITCH’ Trade  Mark, (1963)\t R.P.C. 183.
\nAccordingly, the  Registrar dismissed the said Rectification
\nApplication. During  the course of the proceedings, a carton
\nof ‘DRISTAN’  tablets was filed along with an affidavit made
\non behalf  of the First Respondent. The legend upon the said
\ncarton read as follows :\n<\/p>\n
\t  MADE IN INDIA BY ; GEOFFREY MANNERS & CO. LIMITED,
\n\t  Magnet  House,   Doughall  Road,  Bombay  for\t the
\n\t  Proprietors  Whitehall  Laboratories,\t New  York,
\n\t  N.Y., U.S.A.”\n<\/p><\/blockquote>\n
The Registrar  held that  Whitehall Laboratories  was not  a
\nseparate legal\tentity and, therefore, the mark could not be
\nregistered in its name but only in the name of the Appellant
\nof which  it formed  a par  and\t accordingly  the  Registrar
\nordered the entry in the Register relating to the Trade Mark
\n‘DRISTAN’  to\tbe  varied   by\t amending   the\t  registered
\nproprietor’s  name   to\t read  as  ‘American  Home  Products
\nCorporation (  a corporation organised under the laws of the
\nState of  Delaware, United  States of  America)\t trading  as
\nWhitehall Laboratories\t. In  the appeal  filed by the First
\nRespondent against  the order  of the  Registrar the learned
\nsingle Judge  held that\t at the\t date of  the making  of the
\napplication for\t registration the  Appellant did  not have a
\nbona fide  intention to\t use the  trade mark  ‘DRISTAN’,  by
\nitself. In  coming to  this conclusion\tthe  learned  Single
\nJudge relied  upon the\tdecision of  the word  of  Trade  in
\nEngland in  the case  of ‘PUSSY\t GALORE’ Trade\tMark, (1967)
\nR.P.C. 265,  1954 (hereinafter\treferred to as the Shavaksha
\nCommittee Report ), and the Report of Mr. Justice Rajagopala
\nAyyangar on  Trade Marks  Law  Revision,  1955\t(hereinafter
\nreferred to  as the  Ayyangar Report  ). The  learned Single
\nJudge further  held that  the Appellant\t had not at any time
\nused the said trade mark in relation to the goods in respect
\nof which  it was registered. According to the learned Single
\nJudge, the  legal fiction  created by  section 48(2)  of the
\n1958 Act came
\n308<\/span>
\ninto play only after a trade mark was registered and that an
\nintention to  use a  trade mark\t through someone  who  would
\nsubsequently get himself registered as a registered user did
\nnot amount  to an intention on the part of the applicant for
\nregistration to\t use the  trade mark  himself.\tThe  learned
\nSingle Judge  held  that  to  accept  the  Appellant’s\tsaid
\ncontention would  amount to permitting traffic hang in trade
\nmarks. In view of the conclusion he had reached, the learned
\nSingle Judge  did not decide the question whether trade mark
\n‘DRISTAN’ was  deceptively and\tconfusingly similar  to\t the
\ntrade mark  ‘BISTAN’. The  learned Single  Judge accordingly
\nallowed the  said appeal.  In further  appeal  the  Division
\nBench rejected\tthe contention that the trade mark ‘DRISTAN’
\nwas deceptively\t and confusingly  similar to  the trade mark
\n‘BISTAN’. It, however, confirmed the judgment of the learned
\nSingle Judge  in respect  of the  construction which  he had
\nplaced upon  section 18\t and 48\t of the\t 195 Act in order to
\ncome to\t the conclusion\t that the Appellant had no bona fide
\nintention to  use itself  the trade  mark ‘DRISTAN’ and that
\nthe Appellant had not at any time made use of the said trade
\nmark.  It  accordingly\tdismissed  the\tAppellant’s  further
\nappeal. The main judgment of the division each was delivered
\nby S.K.\t Mukherjee, J., with whom A.K. Mukherjee, J., agreed
\nand at\tthe conclusion\tof his\tjudgment S.K. Mukherjee, J.,
\npointed out  the hardship  which the  construction placed by
\nthe Division  Bench upon  section 18  and 48 of the 1958 Act
\nwould lead to. These observations are (at page 143) :\n<\/p>\n
\t  “It is  neither good\tsense nor  good policy to be
\n\t  plus royaliste  que  le  roi,\t to  be\t more  of  a
\n\t  royalist than\t the king himself. A legal situation
\n\t  which permits\t use of a registered trade mark by a
\n\t  registered user  but disqualifies  the  proprietor
\n\t  from registering  his mark if he intends to use it
\n\t  only through a registered user even when a user is
\n\t  available  who   is  ready   and  willing   to  be
\n\t  registered on\t terms which are unexceptionable, is
\n\t  a situation  fraught with three-quarters irony and
\n\t  the rest unconscious humour.\n<\/p><\/blockquote>\n
\t  It is\t not for the Courts of Law to provide relief
\n\t  where relief should be provided by the legislature
\n\t  by ignoring  a conscious departure the statute has
\n\t  made, strain\tits construction  and assume  powers
\n\t  which ore properly belong to the legislature.”\n<\/p><\/blockquote>\n
\t\t\t\t\t(Emphasis supplied.)
\n309<\/span>
\nproper construction of the relevant sections of the 1958 Act
\nshows that there is neither any cause for sardonic merriment
\nnor any need to shed tears.<\/p><\/blockquote>\n
     The submissions  made at  the hearing of this Appeal by
\nMr. F.S.  Nariman, learned counsel for the Appellant, may be
\nthus summarized :\n<\/p>\n
     1. The  leal fiction  created  by\tsub-section  (2)  of
\nsection 48  is, as expressly stated in that sub-section, for
\nthe purposes  of section  46 or\t for any  other purpose\t for
\nwhich such  use is  material under  the 195 Act or any other
\nlaw. To confine this fiction to a case of an actual use of a
\ntrade mark by a registered user is to confine it only to use
\nfor the\t purposes of  clause (b)  of section  46(1) which is
\ncontrary to  the purpose  for which  the  said\tfiction\t Was
\ncreated and,  therefore, when  section 1(1)  of the  15\t Act
\n(corresponding to  section 14(1\t of the\t 1940 Act)  uses the
\nwords proposed\tto be  used”, these  words must\t be read  as
\nproposed to be used by a proposed registered user.\n<\/p>\n
     2. To  register a\ttrade mark  which is  proposed to be
\nused by\t a  registered\tuser  does  not\t per  se  amount  to
\ntrafficking in trade marks and whether it doe so or not must
\ndepend upon the facts and circumstances of each case.\n<\/p>\n
     3. The  reliance placed  by the High Court, both by the
\nlearned single\tJudge and  Division Bench  upon\t the  ‘PUSSY
\nGALORE’ Trade  Mark Case  was  unjustified  and\t unwarranted
\ninasmuch as  the provisions  of the English Act, namely, the
\nTrade Marks Act, 1938, are radically different from those of
\nthe 1958  Act as  also the  194 Act an, therefore, that case
\nhas no relevance so far as the construction of section 18(1)
\nread with section 48(2) of the 1958 Act is concerned.\n<\/p>\n
     4. The  reliance placed  by the High Court (both by the
\nlearned\t single\t Judge\tand  the  Division  Bench  upon\t the
\nShavaksha Committee  Report  and  the  Ayyangar\t Report\t was
\nequally\t misplaced   as\t Parliament   did  not\t accept\t the
\nrecommendations with  respect to  registered users  made  in
\neither of these reports.\n<\/p>\n
     5. The  facts and\tcircumstances of  the case show that
\nthe  appellant\thad  at\t the  date  of\tthe  making  of\t the
\napplication for\t registration a\t bona fide  intention to use
\nthe trade mark ‘DRISTAN’ through a registered user.\n<\/p>\n
310<\/span><\/p>\n
     6. In  any event,\tthe Appellant  itself had  made bona
\nfide use  of the  said trade  mark up  to a  date one  month
\nbefore the  date of  the First\tRespondent’s Application for
\nRectification.\n<\/p>\n
     The submissions  made by  Dr.  Gauri  Shankar,  learned
\nCounsel for the First Respondent, were as follows :\n<\/p>\n
     1. The  words proposed  to be used” in section 18(1) of
\nthe 1958 Act and section 14(1) of the 1940 Act mean proposed
\nto be  used by\tthe applicant for registration, his servants
\nand agents  and not  by any person who is proposed to be got
\nregistered as  a registered  user and,\ttherefore, the legal
\nfiction enacted\t in section  48(2) cannot  be imported\tinto
\nsection 18(1).\n<\/p>\n
     2. A  registered user  can only come into being after a
\ntrade mark  is registered.  Therefore, as  at the date of an
\napplication for\t registration of  a trade mark, there cannot
\nbe any\tperson in  existence who  is a\tregistered user, the
\nwords “proposed to be used” cannot possibly mean proposed to
\nbe used by a proposed registered user\n<\/p>\n
     3. To  permit a  trade mark  to be\t registered when the
\napplicant himself does not propose to use it but proposes to
\nuse it\tthrough\t someone  else\twho  would  subsequently  be
\nregistered  as\t a  registered\t user  would  be  to  permit
\ntrafficking in\ttrade marks  which is contrary to the policy
\nunderlying the Trade Marks laws.\n<\/p>\n
     4. The  only case\tin which  the 1958  Act permits\t the
\nregistration  of   a  trade  mark  when\t the  applicant\t for
\nregistration does  not intend  to use it himself but intends
\nto use\tin through another is the one set out in section 45,
\nnamely, where  the Registrar  is satisfied that a company is
\nabout to  be formed  and registered under the Companies Act,
\n1956, and  the applicant intends to assign the trade mark to
\nthat company with a view to the use thereof by the Company.\n<\/p>\n
     5. The 1958 Act is, as the 1940 Act was, based upon the
\nEnglish Trade  Marks Act  , 1938,  and the  decision in\t the
\n‘PUSSY GALORE’\tTrade Mark Case concludes this point against
\nthe Appellant.\n<\/p>\n
     6. The  Shavaksha Committee  Report  and  the  Ayyangar
\nReport show  the legislative  intent not to allow a proposed
\nuse by\ta proposed  registered user  to be  equated  with  a
\nproposed use by the u applicant for registration.\n<\/p>\n
311<\/span><\/p>\n
     7. The  Appellant had not at any relevant time made use
\nof  the trade mark ‘DRISTAN’\n<\/p>\n
     8. The  Appellant had fradulently obtained registration
\nof the\ttrade mark  ‘DRISTAN’ by  stating in the application
\nfor registration that it proposed to use the said trade mark
\nitself and  by not  disclosing the  fact that it proposed to
\nuse it through a proposed registered user.\n<\/p>\n
     9.\t The   trade  mark  ‘DRISTAN’  was  deceptively\t and
\nconfusingly  similar   to  the\t trade\tmark  ‘BISTAN’\tand,
\ntherefore, it cannot be allowed to remain on the Register of
\nTrade Marks.\n<\/p>\n
     10. To  allow the trade mark ‘DRISTAN’ to remain on the
\nRegister of  Trade Marks  would be contrary to the policy of
\nthe Government of India.\n<\/p>\n
     We\t will\tno  test  the  correctness  of\tthese  rival
\nsubmissions.\n<\/p>\n
     The first\tRespondent’s Application  for  Rectification
\nwas stated  to be  made under  section 46 and 56 of the 1958
\nAct and\t Rule 94  of the  Trade and Merchandise Marks Rules,
\n1959. Rule  94 is irrelevant because it merely prescribes in
\nwhich form  an\tapplication  for  rectification\t of  or\t for
\nvarying or  expunging any  entry in  the Register  of  Trade
\nMarks  is   to\tbe  made  and  by  what\t documents  such  an
\napplication is\tto be accompanied. Under section 56 an entry
\nwrongly remaining  on the  Register of Trade Marks is liable
\nto be  expunged therefrom.  An entry  relating to a mark the
\nuse of\twhich would be likely to deceive or cause confusion,
\nwould be  an entry  wrongly remaining  on the  Register and,
\ntherefore, liable to be expunged therefrom.\n<\/p>\n
     The principal  challenge of the First Respondent to the
\ntrade mark  ‘DRISTAN’ remaining\t on the\t Register was  under
\nclause (a)  of section\t46(1). The  main question before us,
\ntherefore, is  whether the entry in the Register relating to
\nthe said  trade mark  falls within  the mischief of the said
\nclause (a); for if it does, it is liable to be taken off the
\nRegister. The relevant provisions of section 46 have already
\nbeen set  out above. Before a person can made an application
\nunder section  46(1) to\t take off  a  trade  mark  from\t the
\nRegister he  has to  be a  “person aggrieved”.\tIt is now no
\nmore disputed  that  the  First\t Respondent  was  a  “person
\naggrieved” within  the meaning\tof  section  46(1).  Section
\n46(1) provides\tfor two\t cases in  which a  registered trade
\nmark may  be taken off the Register in respect of any of the
\ngoods in respect of which it is
\n312<\/span>
\nregistered. The\t first case  is set  out  in  clause  (a  of
\nsection 4(1)  and the  second in  clause  (b  of  that\tsub-
\nsection. There\tare two\t conditions to\tbe satisfied  before
\nclause (a) can become applicable. These conditions are\n<\/p>\n
     1. that  the trade mark was registered without any bona
\nfide intention\ton the\tapplicant for  registration that  it
\nshould be used in relation to those good `by him, and\n<\/p>\n
     2. that  there has,  in fact,  been no bona fide use of
\nthat trade  mark in relation to those good by any proprietor
\nthereof or  the time  being to\ta date\tone month before the
\ndate of the application under section 46(1)
\n     The only exception to the first condition set out above
\nis of  a case  to which\t the provisions of section 45 apply,
\nthat is,  if the  trade mark of which registration is sought
\nis proposed  to be  used by  a company\twhich is about to be
\nformed and  registered under the Companies Act, 1956, and to
\nwhich the  applicant intends t() assign the trade mark. Both
\nthe conditions\tset out in clause (a) are cumulative and not
\ndisjunctive. Clause  (a), therefore,  will not\t apply where
\neven though  there had\tbeen no\t bona fide  intention on the
\npart of the applicant for registration to use the trade mark
\nbut, in\t fact, there  has been\ta bona fide use of the trade
\nmark in\t relation to  those goods  by any proprietor thereof
\nfor the time being up to a date one month before the date of
\nthe application\t under section\t46(1). Similarly, clause (a)
\nwill not  apply where,\tthough there  had been\ta bona\tfide
\nintention on  the part\tof the applicant for registration-to
\nuse the trade mark, in fact, there has been no bona fide use
\nof the\ttrade  mark  in\t relation  to  those  goods  by\t any
\nproprietor thereof for the time being up to a date one month
\nbefore the date of the application under section 46(1).\n<\/p>\n
     Clause  (b)  of  section  46(1)  applies  where  for  a
\ncontinuous period  of five  years or longer from the date of
\nthe registration  of the  trade mark, there has been no bona
\nfide use  thereof in  relation to  those goods in respect of
\nwhich it  is registered\t by any\t proprietor thereof  for the
\ntime being. An exception to clause (b) is created by section
\n46(3). Under  section 46(3),  the non-use  of a\t trade mark,
\nwhich is  shown to have been due to special circumstances in
\nthe trade  and not to any intention to abandon or not to use
\nthe trade  mark in  relation  to  the  goods  to  which\t the
\napplication under  section 46(1) relates, will not amount to
\nnon-use for the purpose of clause (b).\n<\/p>\n
313<\/span><\/p>\n
     The distinction  between clause  (a) and  clause (b) is
\nthat if\t the period  specified in clause (b) has elapsed and
\nduring that  A period there has been no bona fide use of the
\ntrade mark,  the fact  that the\t registered proprietor had a
\nbona fide intention to use the trade mark at the date of the
\napplication for\t registration  becomes\timmaterial  and\t the
\ntrade mark  is liable  o be removed from the Register unless
\nhis case  falls under  section 46(3), while under clause (a)
\nwhere there  had been a bona fide intention to use the trade
\nmark in\t respect of  which registration\t was sought,  merely
\nbecause the  trade mark\t had not  been\tused  for  a  period
\nshorter than  five years  from the  date of its registration
\nwill not  entitle any  person to  have that trade mark taken
\noff the Register-\n<\/p>\n
     Under both these clauses the burden of proving that the
\nfacts which bring into play clause (a) or clause (b), as the
\ncase may  be, exists  is on the person who seeks to have the
\ntrade mark  removed from the Register. Thus, where there has
\nbeen a non-user of the trade mark for a continuous period of
\nfive years and the application for taking off the trade mark
\nfrom the  Register has been filed one month after the expire
\nof such\t period. the  person seeking  to have the trade mark
\nremoved from  the Register has only to prove such continuous
\nnon-user and  has not  to prove\t the lack  of  a  bona\tfide
\nintention on  the part\tof the\tregistered proprietor to use
\nthe  trade   mark  at\tthe  date  of  the  application\t for
\nregistration. Where,  however, the  non-user is for a period
\nof less\t than five  years, the\tperson seeking to remove the
\ntrade mark  from the Register has not only to prove non-user
\nfor the\t requisite period  but has  also to  prove that\t the
\napplicant for  registration of\tthe trade  mark had  no bona
\nfide intention\tto use\tthe trade  mark when the application
\nfor registration was made.\n<\/p>\n
     The reason\t why the  two conditions specified in clause\n<\/p>\n
(a) are\t made cumulative  is obvious.  As the  definition of
\ntrade mark” contained in clause (v) of section 2(1) shows, a
\ntrade mark is a mark used or proposed to be used in relation
\nto goods  for the purpose of indicating or so as to indicate
\na connection  in the  course of\t trade between the goods and
\nsome person  having the\t right\tto  use\t the  mark.  It\t is,
\ntherefore, not\tnecessary for  the purpose  of registering a
\ntrade mark  that those\tgoods should  be in existence at the
\ndate of\t the application  for  registration.  A\t person\t who
\nintends to  manufacture goods  or has  made preparations for
\nthe  manufacture  of  goods  but  the  manufacture  has\t not
\ncommenced and,\ttherefore, goods  have not  been marketed is
\nnone the  less entitled\t to get\t the trade  mark  which\t the
\nproposes to use
\n314<\/span>
\nin relation  to those  goods registered.  In the present day
\nworld of commerce and industry, a manufacturing industry can
\nneither be  commenced nor  established overnight.  There are
\ninnumerable preparatory\t steps\trequired  to  be  taken\t and
\nformalities to\tbe complied  with before the manufacture of
\ngoods can  start and  the manufactured\tgoods marketed.\t The
\nprocesses must\tof necessity take time. If the position were
\nthat the  mere non-user\t of a  trade  mark  for\t the  period
\nmentioned in  clause (a) of section 46(1) would make a trade
\nmark liable  to be taken off the Register it would result in
\ngreat hardship and cause a large number of trade marks to be
\nremoved from  the Register, because the moment one month has
\nelapsed after  the registration\t of a  trade mark  has\tbeen
\nordered, a trade rival can make an application on the ground
\nset out in clause (a) of section 461 claiming that there has
\nbeen no\t bona fide  use of  the trade  mark up to a date one
\nmonth before  the date of his application. It is in order to
\nprevent such  harassment and  absured result  that  the\t two
\nconditions  specified\tin  clause   (a)  have\t been\tmade
\ncumulative.\n<\/p>\n
     The object\t underlying  section  46(1)  is\t to  prevent
\ntrafficking in\ttrade marks.  This is,\tin fact,  the object
\nunderlying all\ttrade mark  laws. A  trade mark\t is meant to
\ndistinguish the\t goods made by one person from those made by
\nanother. A  trade mark, therefore, cannot exist in vacuo. It
\ncan only  exist in  connection with the goods in relation to
\nwhich it  is used  or intended\tto be used. Its object is to
\nindicate a  connection in  the course  of trade\t between the
\ngoods and  some person\thaving the  right to  use  the\tmark
\neither with  or without\t any indication\t of the\t identity of
\nthat person.  Clause (v)  of section  2(1) which defines the
\nexpression ‘trade  mark’ makes\tthis abundantly clear. Trade
\nmarks became  important after  the Industrial  Revolution  a
\ndistinguish goods  made by  one person\tfrom those  made  by
\nanother; and  soon the\tneed was  felt\tto  protect  traders
\nagainst those  who were unauthorizedly using their marks and
\naccordingly registration  of trade  marks was  introduced in
\nEngland by the Trade Marks Registration Act, 1875, which was
\nsoon replaced  by more\tdetailed and  advanced\tlegislation.
\nWhen a\tperson gets  his trade\tmark registered, he acquires
\nvaluable rights by reason of such registration. Registration
\nof his\ttrade mark  gives him the exclusive right to the use
\nof the trade mark in connection with the goods in respect of
\nwhich it  is registered and if there is any invasion of this
\nright by  any other person using a mark which is the same or
\ndeceptively similar  to his  trade mark,  he can protect his
\ntrade mark  by an  action for  infringement in\twhich he can
\nobtain injunction, damages or an account of profits made
\n315<\/span>
\nby the\tother person. In such an action, the registration of
\na trade\t mark is prima facie evidence of its validity. After
\nthe expiry  of seven years from the date of the registration
\na trade\t mark is  to be\t valid in all respects except in the
\nthree cases  set out  in section  3. The  proprietor  of  an
\nunregistered trade mark whose mark is unauthorisedly used by
\nanother cannot,\t however, sue  for the\tinfringement of such
\ntrade mark.  His only  remedy lies in bringing a passing-off
\naction,\t an   inconvenient  remedy   as\t  compared   to\t  an
\ninfringement action.  In a  passing-off action the plaintiff
\nwill have  to prove  that his mark has by user acquired such
\nreputation as to become distinctive of the plaintiff’s goods
\nso that\t if it\tis used in relation to any goods of the kind
\ndealt with  by the  plaintiff, it  will be understood by the
\ntrade  and   public  as\t meaning  that\tthe  goods  are\t the
\nplaintiff’s goods.  In an infringement action, the plaintiff
\nis not\trequired  to  prove  the  reputation  of  his  mark.
\nFurther, under\tsection 37  a registered  mark is assignable
\nand transmissible  either with\tor without  goodwill of\t the
\nbusiness concerned  while under\t section 38  an unregistered
\ntrade mark  is not assignable or transmissible except in the
\nthree cases set out in section 3(2).\n<\/p>\n
     As the  registration  of  a  trade\t mark  confers\tsuch
\nvaluable rights\t upon the  registered proprietor  thereof, a
\nperson cannot  be permitted to register a trade mark when he
\nhas not\t used it in relation o the goods in respect of which
\nit is  sought to  be registered or does not intend to use it
\nin relation  to such  goods. The  reason for  not permitting
\nsuch trade  marks to be registered was thus stated by Romer,
\nJ., in\tIn re  the Registered  Trade-Marks of John Batt\t Co.
\nand In\tre Carter’s  Application for a Trade-Mark:, (1898) 2
\nCh. D. 432, 436, S.C. 15 R.P.C. 262, 266.\n<\/p>\n
\t  ” …one  cannot help\t seeing the  evils that\t may
\n\t  result from  allowing trade-marks to be registered
\n\t  broadcast, if\t I may\tuse  the  expression,  there
\n\t  being no  real intention of using them, or only an
\n\t  intention possibly  of using\tthem in respect of a
\n\t  few articles.\t The inconvenience it occasions, the
\n\t  cost it  occasions, is very large, and beyond that
\n\t  I cannot  help seeing\t that it  would lead  in  of
\n\t  cases to absolute oppression, and to persons using
\n\t  the position\tthey  have  obtained  as  registered
\n\t  owners of  trade marks  (which are not really bona
\n\t  fide trade  marks) for  the purpose of trafficking
\n\t  in then  and using the as a weapon to obtain money
\n\t  from subsequent  persons who\tmay want to use bona
\n\t  fide trade  marks in\trespect of  some classes  in
\n\t  respect of which they find those bogus trade-marks
\n\t  registered.<\/p><\/blockquote>\n
\t\t\t\t\t (Emphasis supplied)
\n316<\/span>
\nThe judgment  of Romer,\t J., in\t Batts case was confirmed by
\nthe Court  of Appeal, (1898)2 ch.D.432 at pages 439-442, and
\nby the\thouse of Lords sub nominee John Batt & co.v. dunnett
\nand Anr. (1986) A.C.420; S.C. 16 R.P.C. 411.\n<\/p>\n
     To get a trade nark registered Without any intention to
\nuse it\tin relation to any Gods but merely to make money out
\nof it  by selling  to others  the right\t to use\t it would be
\ntrafficking in\tthat trade mar. In Re American Greetings Cor
\nApplication, [1983]  2 ALLEY.  ALL E.K. 609, 619, Dillon, L.
\nJ., said in the Court of Appeal :\n<\/p>\n
\t  “Trafficking in  a  trade mark has from the outset
\n\t  been one  of the  cardinal sins of trade mark law.
\n\t  but  there   is  no\t  statutory   definition  of
\n\t  trafficking, and  one may  suspect that,  as\twith
\n\t  usury in the middle\t    Ages, though it is known
\n\t  to be\t a deadly  sin, it  has become less and less
\n\t  clear, as  economic circumstances  have developed,
\n\t  what the sin actually comprehends.
\n\t  Trafficking must   involve   trading in or dealing
\n\t  with the  trade  mark for money’s worth, but it is
\n\t  not all dealing with a trade mark or money that is
\n\t  objectionable,, since it has always  been accepted
\n\t  that it  is permissible o sell trade mark together
\n\t  with the goodwill of the business in the course of
\n\t  which the trade Mark has teen used.<\/p><\/blockquote>\n
\t\t\t\t       (Emphasise supplied.)
\nIn the\tsame case,  Lord Brightman  in the  house of  Lords,
\n[1984] 1  All E.K..  426,433, summed  up the position in law
\nthus:\n<\/p>\n
\t  ” My\tLords, although\t as  a\tmatter\tof  ordinary
\n\t  English, trafficking in trade marks might mean the
\n\t  buying  and  selling\tof  trade  marks,  it  seems
\n\t  obvious that\tit is  to have\ta  more\t specialised
\n\t  meaning in a trade mark context. I have no quarrel
\n\t  with the  definitions suggested  by the  assistant
\n\t  registrar and\t by Sir\t Denys Buckley,\t but perhaps
\n\t  one further  attempt on  y part  may not be out of
\n\t  place. The  courts have to grope for some means of
\n\t  delineating  the   forbidden\tterritory,   and   h
\n\t  different modes of expression may help to indicate
\n\t  boundaries which  are not and cannot be marked out
\n\t  with absolute\t precision. To\tmy mind, trafficking
\n\t  in a trade
\n317<\/span>
\n\t  mark context\tconveys\t  the notion  dealing  in  a
\n\t  trade mark  primarily as,  commodity\tin  its\t won
\n\t  right and  not  primarily  for  the\t purpose  of
\n\t  indentifying or promoting merchandise in which the
\n\t  proprietor of\t the nark is interested. if tiler is
\n\t  no real trade connection between the proprietor of
\n\t  the mark  and the  licensee or his goods, there is
\n\t  room for  the conclusion  that the  grant  of\t the
\n\t  licence is  a trafficking  in the  ark.  It  is  a
\n\t  question of fact and degree in ever case whether a
\n\t  sufficient trade connection exists.\n<\/p><\/blockquote>\n
We have\t no hesitation in accepting the meaning given to the
\nexpression trafficking\tin a  trade   Dillon, LJ.,  and Lord
\nBrightman.\n<\/p>\n
     The  intention  to\t use  a\t trade\tmark  sought  to  be
\nregistered must\t be, therefore,\t genuine and   real  and  as
\npointed out  by J  Tomlin, J.,\tin In re ducker’s Trade mark
\n(1928)\t Ch. L\t405, 409,  the fact  that the  mark  was  as
\nthought to be something which some day might be useful would
\nnot amount to any definite and precise intention at the time
\nof registration\t to use\t that mark. The intention to use the
\nmark  must   exist  at\tthe  date  of  the  application\t for
\nregistration and  such intention  must be  genuine and\tbona
\nfide. In  fact, section\t 46(1)(a) expressly  speaks of “bona
\nfide  intention\t  on  the   part  of   the  application\t for
\nregistration  which  would  mean  “at  the  date  when\tsuch
\napplicant makes his application for registration
\n     We will  now address  ourselves to the question whether
\nthe facts  which bring into play clause (a) of section 46(1)
\nexist in  the present  case. What  is first  required to  be
\nascertained for this purpose is whether the Appellant had an
\nintention that\tthe trade  mark ‘DRISTAN’  should be used in
\nIndia in  relation to  the  concerned  goods.  Assuming\t the
\nAppellant had  such an\tintention, the\tnext question  which
\nwill fall  to be determined is whether this intention was an
\nintention on  the part\tof the\tAppellant to   use  the said
\ntrade mark itself or to use it through a registered user and
\nif he  intention was  to use  it through  a registered user,
\nwhether clause\t(a) of section 46(1) would be attracted. The
\nthird question will be whether such intention on the part of
\nthe Appellant was a  bona fide one.\n<\/p>\n
     Intention is  a state  of mind.  No person can make out
\nthe state  of mind  of another\tperson. None the less courts
\nare often
\n318<\/span>
\ncalled upon for various purposes to determine the state of a
\nperson’s mind.\tThe Courts  can only  do so by deducting the
\nexistence of  a particular state of mind from the facts of a
\ncase section 14 of the Indian Evidence Act, 187, provides as
\nfollows:\n<\/p>\n
\t  “14. Facts  Showing existence of state of mind, or
\n\t  of body or bodily feeling.-\n<\/p><\/blockquote>\n
\t  Facts showing\t the existence of any state of mind,
\n\t  such\tas   intention,\t  knowledge,   good   faith,
\n\t  negligence,  rashness,   ill-will   or   good-will
\n\t  towards any  particular  person,  or\tshowing\t the
\n\t  existence of\tany state of body or bodily feeling,
\n\t  are relevant, when the existence of any such state
\n\t  of mind  or body  or bodily feeling is in issue or
\n\t  relevant.\n<\/p><\/blockquote>\n
\t  Explanation 1.  A fact  relevant  as\tshowing\t the
\n\t  existence of\ta relevant  state of  mind must show
\n\t  that the  state of mind exists, not generally, but
\n\t  in reference to the particular matter in question.\n<\/p><\/blockquote>\n
\t  x\t  x\t    x\t\t  x
\nThe second  Explanation to  that section is not material for
\nout purpose .<\/p><\/blockquote>\n
     It was submitted by  Dr. Gauri Shankar, learned Counsel
\nfor the\t First Respondent,  that in  order to ascertain what
\nthe Appellant’s\t intention was,.  the Court can only look at
\nevents previous\t to the\t relevant date,\t namely, the date of
\nthe application for registration made by the Appellant, that
\nis, August  18, 1958,  and  not\t to  any  events  subsequent
\nthereto. Whether subsequent events are relevant or not would
\ndepend upon the facts and circumstances of each case and the
\nquestion at  issue therein.  In Srinivas Mall Bariroliya and
\nAnr. v.\t Emperor, A.I..\t 1947 P.C.  135, Appellant  No. 1, a
\nSalt Agent  for the  District  Magistrate,  was\t inter\talia
\ncharged with  having abetted  Appellant No.2,  who had\tbeen
\nappointed by him, in selling salt to licensed retail dealers
\nto whom\t allocations of specific quantities of salt had been
\nmade by\t the Central Government, on three specified dates at
\na price\t exceeding the maximum price which had been fixed by
\nthe District  Magistrate. Appellant  No.1 was  convicted and
\nsentenced to imprisonment under Rule 81(4) of the Defence of
\nIndia Rules,  1939, relating  to the  control of  prices. In
\naddition to the evidence of the three dealers to whom
\n319<\/span>
\nthe salt  was sold,  nine other\t dealers who had bought salt
\nfrom appellant\tNo.1 and had to deal with Appellant No.2 and
\nhad obtained  salt from\t him at\t a price exceeding the fixed
\nmaximum price,\twere also  called in evidence as prosecution
\nwitnesses. The transactions with the other nine dealers took
\nplace not  only during and shortly before the dates on which
\nthe offences  were  committed  but  also  after\t the  period
\ncovered by the dates of the offences. The Judicial Committee
\nof the Privy Council held (at page 139 :\n<\/p>\n
\t  “… The  evidence was  relevant to  the charge of
\n\t  abettin, because  it showed  an intention  to aid
\n\t  the commission  of the  offence and an intentional
\n\t  omission to  put a  stop to  an illegal  practice,
\n\t  which, it  need hardly  be added,  was an ‘illegal
\n\t  omission’. The  evidence was\tthus  admissible  to
\n\t  prove intention under s. 14 Evidence Act.’
\n\t\t\t\t\t(Emphasis supplied.)
\n     Dr. Gauri\tShankar then  submitted\t  that in  any event
\nfacts subsequent  to the  date\tof  the\t First\tRespondent’s
\nApplication for\t Rectification, namely, April 1, 1961, could
\nnot be\tlooked at  by the  Court. We  are equally  unable to
\nagree. As  we nave  pointed out\t earlier, where a trade mark
\nhas been  registered on\t the round  that the  applicant\t for
\nregistration proposes  to use such trade mark, a trade rival
\nin order  to cause vexation and harassment to the registered
\nproprietor can\tfile his  application immediately  after the
\nexpiry of  one month  from the date of the order registering
\nthe trade  mark. As pointed out by us, where a trade mark is
\nproposed co  be used, the manufacture and marketing of goods
\nin relation  to which such trade mark is proposed to be used
\nSL of  necessity case  time;  and  not\tto  look  at  events
\nsubsequent to  the date of the Application for Rectification
\nwould result in great injustice
\n     It was next submitted by Dr. Gauri Shankar that for the
\npurpose of  ascertaining the intention of the Appellant, the
\nCourt cannot  look at  the technical collaboration agreement
\nand the\t registered user agreement inasmuch as neither these
\nagreements nor\tcopies thereof were produced before the High
\nCourt bu copies the were produced for tile first time during
\nthe course  of the  hearing or this Appeal his argument also
\ncannot be accepted. Both these agreement  have been referred
\nto in  the ii  affidavits filed before the Registrar and the
\nHigh Court and also
\n320<\/span>
\ndealt with  by the  Registrar, the  learned Single Judge and
\nthe Division  Bench in\ttheir respective  judgments. In this
\nconnection, it\twill not be out of place to set out here the
\ncircumstances in which copies o these agreements came not be
\nproduced before this Court. During the course of the hearing
\nof the peal, w called upon learned Counsel for the Appellant
\nto file before us copies of the application for registration
\nof  the\t  trade\t mark  `DRISTAN’  and  the  application\t for
\nregistering the Indian Company as the registered user of the
\nsaid trade  mark. The  original file  relating to  the trade
\nmark `DRISTAN’\twas before  the Registrar  when he heard the
\nFirst Respondent’s  Application for  Rectification and\talso
\nbefore the  High Court\twhen the  matter was  heard  by\t the
\nlearned Single Judge and the Division Bench Copies, however,
\nof the\tsaid two applications were not on the record, and we
\nwanted to  ascertain for  ourselves what was stated in those
\napplications. At  that time  learned Counsel  for the  first
\nRespondent got up and requested Us that the Appellant should
\nalso be\t asked to  produce copies of the said two agreements
\nand accordingly\t we directed the Appellant to file copies of
\nthose two agreements also, which it did.<\/p><\/blockquote>\n
     It is  because the\t intention of  the Appellant  at the
\ndate of\t filling  the  application  registration  is  to  be
\nascertained from  the facts  existing in  this case  that we
\nhave related  them at some length in the earlier part of our
\njudgment. We  will now\tsummarize these facts with reference
\nto three  periods :  (1) events\t which took  place up to the
\ndate of\t the application for registration, namely, August 18
\n1958, (2)  events which\t happened between  that date  an the
\ndate of\t he Application for Rectification, namely, April 10,
\n1961 and  (3) events  which happened subsequent to April 10,
\n1961.\n<\/p>\n
     So far  a the  period up  to August 18, 1958 concerned,
\nprior to  156, the  Appellant  had  acquired  a\t substantial
\nshareholding to\t the extent  of 40  per cent  in the  Indian
\nCompany. In  1956 the  Appellant introduced ‘DRISTAN’ TABLES
\nin the\tAmerican market\t and got  the  trade  mark  ‘DRISTAN
\nREGISTERED i  the United  States of  America and  in several
\nother  countries.   technical  collaboration   between\t the
\nAppellant and the Indian. Company commenced from November 1,
\n1957, and  an agreement in that behalf was signed on May 16,
\n1958. In  pursuance of\tthe said collaboration agreement the
\nIndian Company manufactured and marketed several products of
\nthe Appellant. The Appellant got  registered its trade marks
\nin respect  of such  products and  the\tIndian\tCompany\t was
\nregistered as the registered user in respect
\n321<\/span>
\nof such\t trade marks.  As early\t as December  1957,  it\t was
\ndecided that  the Indian  Company should  introduce  in\t the
\nIndian market  nine new\t products of the Appellant including
\n‘DRISTAN’ tablets.  On August  18, 1958, the Appellant filed
\nan application\tfor registration of the trade mark ‘DRISTAN’
\nand the said trade mark was duly registered on June 8, 1959.\n<\/p>\n
     Dr.  Gauri\t  shankar,  however,   submitted  that\t the
\ncollaboration agreement\t was  irrelevant  because  ‘DRISTAN’
\ntablets were  not  mentioned  in  Schedule  A  to  the\tsail
\nagreement,  and,   therefore,  the  intention  to  introduce
\n‘DRISTAN’  tablets  in\tthe  Indian  market  and  the  facts
\nrelating thereto  did not  have anything to do with the said
\ncollaboration agreement.  In this  behalf, Dr. Gauri Shankar
\nrelied upon  the definition  of ‘Licensed Products’ given in
\nthe  said  agreement.  This  submission\t is  wholly  without
\nfoundation. That definition related to Whitehall Products in
\nrespect\t  of   whose   marketing,   manufacture,   sale\t  or
\ndistribution in India, the Indian Company was to be licensed
\nunder and  pursuant to\tthe terms  of the said collaboration
\nagreement and  it further  stated that\t“these shall include
\nthose identified  in Schedule Annexed hereto and made a part
\nhereto”. lt  is true  that Schedule  A to the said agreement
\ndoes not  mention ‘DRlSTAN’ tablets but the products set out
\nin schedule A are not exhaustive of the Licensed Products to
\nwhich the  said collaboration  agreement related and this is
\nmade  clear  by\t the  rule  of\tthe  word  “include”\twith
\nreference to the products identified in Schedule A. There is
\nno dispute  that ‘DRISTAN’  tablets are\t Whitehall Products.
\nThe division  of the  Appellant, which at all relevant times
\ncarried\t on   and  still   carries  on\t the   activity\t  of
\nmanufacturing  and  marketing  pharmaceutical  products,  is
\ncalled the Whitehall laboratories and it was for this reason
\nthat the  Registrar ordered  the entry relating to the trade
\nmark ‘DRISTAN’\tto be  amended so  as to  show the Appellant
\ntrading\t as   ‘Whitehall  Laboratories.\t The  definition  of
\n“Licensed Products”  in\t the  said  collaboration  agreement
\ncomprehended not  only the  Whitehall Products\tset  out  in
\nSchedule A  to the  collaboration agreement  but also  other
\nproducts in  respect of\t which the  Indian Company  would be
\nlicensed for  import, manufacture,  sale or  distribution in
\nIndia  under   the  terms   of\tthe   said  agreement.\t The
\ncorrespondence between\tthe parties leaves no doubt that the
\nmanufacture and\t of  the  ‘DRISTAN  tablets  by\t the  Indian
\nCompany in  India was  to be  under the\t said  collaboration
\nagreement.\n<\/p>\n
     So far  as the second period is concerned, namely, that
\n. between  August 18,  1958,  and  the\tdate  of  the  first
\nRespondent’s
\n322<\/span>
\nApplication for\t Rectification, that  is,  April  10,  1961,
\nduring that  period  the  Indian  Company  applied  for\t and
\nobtained a  licence for\t the purchase  of a  Stockes  Triple
\nLayer Machine  for manufacturing  ‘DRlSTAN’ tablets and when
\nthe said  machine was received installed it at its Ghatkopar
\nfactory. It  also obtained from the Appellant three units of
\n‘DRISTAN’ tablets  as samples  and the\tmanufacturing manual
\nfor the\t said tablets.\tFurther, it  applied to\t the Central
\nGovernment under  section 11  of the Industries (Development
\nand Regulation)\t Act, 1551,  for a  licence  to\t manufacture
\n‘DRISTAN’ tablets  which was  granted to it. It also applied
\nfor and\t obtained a  licence to\t import certain\t ingredients
\nused in\t the manufacture  of ‘DRISTAN’\ttablets and imported
\nsuch ingredients.  It further  applied for and obtained from
\nthe  Director,\t Drugs\tControl\t  Administration,  State  of
\nMaharashtra, permission\t to manufacture\t ‘DRISTAN’  tablets.
\nThe Appellant also filed a notice of opposition to the First
\nRespondent’s Application  for  registration  of\t their\tmark
\n‘TRISTINE’.\n<\/p>\n
     During the\t third period, namely, the period subsequent
\nto the\tFirst Respondent’s  Application\t for  Rectification,
\nthat is,  subsequent to April 10, 1961, on October 18, 1961,
\nthe said  registered user agreement was entered into between
\nthe Appellant  and the\tIndian Company. On October 22, 1961,
\nthe ‘DRISTAN’  tablets were  first marketed  in India by the
\nIndian Company.\t On March  6, 1962,  the Appellant  and\t the
\nIndian Company\tjointly made  an application to register the
\nIndian Company\tas a  registered  user\tof  the\t trade\tmark
\n‘DRISTAN’.\n<\/p>\n
     The facts\tset out\t above clearly show that each of the
\nis an  integral link  in a  chain and  that they  cannot  be
\ndivided into  three separate  periods as  contended  by\t Dr.
\nGauri Shankar.\tThis continuous\t chain of events establishes
\nbeyond doubt  that the\tAppellant had  an intention that the
\ntrade mark  ‘DRISTAN’ should  be used  in  relation  to\t the
\ntablets in  question by\t the manufacture  and sale  of these
\ntablets in India.\n<\/p>\n
     This brings us to the question whether the intention of
\nthe Appellant to market and manufacture ‘DRISTAN’ tablets in
\nIndia was  to do  so itself or to do so through a registered
\nuser.  Mr.   Nariman,  learned\tCounsel\t for  the  Appellant
\nsubmitted that\tas the\tintention of  the Appellant  was  to
\nmarket ‘DRISTAN’  tablets in  India, it could translate that
\nintention into\taction either by getting it manufactured and
\nmarketed by  a registered  user in India or as exporting the
\ntablets to India and if the import
\n323<\/span>
\npolicy did  not permit\tthis to be done, it could export the
\ntablets to  India when\tthe import  policy was relaxed. This
\nargument is  contrary to the facts on the record and must be
\nrejected. A  person’s intention\t is shown  by the facts of a
\ncase and  not by  statements made  at the  Bar. The facts of
\nthis case  clearly establish  that the Appellant’s intention
\nin applying for registration of the trade mark ‘DRISTAN’ was
\nto use\tit in  relation to  goods  to  be  manufactured\t and
\nmarketed by the Indian Company and that for this purpose the
\nIndian Company would get itself registered as the registered
\nuser of the said trade mark. Further, in the affidavit sworn
\non April  13, 1962,  by S.  Waldron, Vice-President  of\t the
\nAppellant, it is categorically stated as follows :\n<\/p>\n
\t  “It was  intended that  the  product\tbearing\t the
\n\t  ‘DRISTAN’  trade   mark  be  introduced  in  India
\n\t  through Geoffrey  Manners &  Co.  Ltd.  should  be
\n\t  registered as\t registered user  in  India  of\t the
\n\t  trade\t mark\t‘DRISTAN’.  For\t  this\treason\t all
\n\t  applications to  Government authorities  and\tDrug
\n\t  Control authorities  were made by Geoffrey Manners
\n\t  & Co.\t Ltd. In  implementation of the intention to
\n\t  appoint Geoffrey  Manners & Co. Ltd. as registered
\n\t  users of  the trade  mark ‘DRISTAN’,\tpreparations
\n\t  were undertaken  to appoint Geoffrey Manners & Co.
\n\t  Ltd. as registered users and these culminated into
\n\t  execution of registered user agreement between the
\n\t  Registered Proprietors  and Geoffrey Manners & Co.
\n\t  Ltd.\twhich  has  been  dated\t the  18th  October,
\n\t  1961″‘.\n<\/p><\/blockquote>\n
In view\t of this  sworn statement  made\t on  behalf  of\t the
\nAppellant it  is not  open to  Counsel to  submit  that\t the
\nproposed use  by the  Appellant\t could\talso  have  been  by
\nexporting ‘DRISTAN’ tablets to India.\n<\/p>\n
     The Appellant’s  application for  registration  of\t the
\ntrade mark  ‘DRISTAN’ was  made under  section 14(1)  of the
\n1940 Act  and was  registered under that Act. Under the said
\nsection 14(1),\tonly a\tperson claiming to be the proprietor
\nof a  trade mark  “use or  proposed to be used by him” could
\napply for registration of that trade mark. The provisions of
\nsection 18(1)  of the 1958 Act are identical. This brings us
\nto the\tcrucial question  whether the  words “proposed to be
\nused by\t him” would  include “proposed\tto be used through a
\nregistered proprietor”.\t In other  words,  the\tquestion  is
\nwhether a proposed user by a registered user of a trade mark
\ncan be equated with a proposed user by the proprietor of the
\ntrade mark.\n<\/p>\n
324<\/span><\/p>\n
     On behalf\tof the\tAppellant it  was submitted  by\t Mr.
\nNariman that  the two  phrases “proposed  to be used by him”
\nant “proposed  to be  used by  a registered  user”  must  be
\nequated by  reason of the statutory legal fiction created by
\nsection 48(2)  of the  1958 Act which corresponds to section
\n39(2) of  the 1940 Act. According to Mr. Nariman, unless the
\nlegal fiction  enacted in  section 48(2) applied also to the
\nprovisions of  section 18(1),  it would\t have a very limited
\noperation and  can apply only so far as the second condition
\nof clause  (a) of  section 46(1) and clause (b) of that sub-
\nsection are concerned, which, according to him, would render
\nnugatory the  words “or for any other purpose for which such
\nuse is\tmaterial under\tthis Act or any other law” occurring
\nin section 48(2).\n<\/p>\n
     Dr. Gauri\tShankar on  behalf of  the First Respondent,
\nhowever submitted  that both under the 1940 Act and the 1958
\nAct a  registered  user\t is  not  the  same  person  as\t the
\nproprietor of  a registered trade mark for a registered user
\ncan only  be some  person other\t than the  proprietor of the
\ntrade mark  and that  no registered user can come into being
\nunless and  until a  trade  mark  has  been  registered\t and
\nthereafter an application for registration as the registered
\nuser thereof  has been\tmade and  granted. He also submitted
\nthat the  legal fiction enacted in section 48(2) of the 1958
\nAct and section 39(2) of the 1940 Act cannot for this reason
\napply to  the provisions  of section  18(1) or\tto the first
\ncondition of  clause (a)  of section  46(1) of\tthe 1958 Act
\nand, therefore,\t the Appellant\twas not entitled to seek the
\nprotection of the said legal fiction. According to Dr. Gauri
\nShankar, if  the proprietor  of a trade mark intended to use
\nit through  another, he could only do it by having resort to
\nsection 45  of the 1958 Act, which corresponds to section 36
\nof the 1940 Act, by getting it registered for the purpose of
\nassigning it  to a company to be formed and registered under
\nthe Companies  Act, 1956.  In Dr. Gauri Shankar’s submission
\nthe only  three ways  in which,\t therefore, the\t trade\tmark
\n‘DRISTAN’ could\t have  been  used  in  India  were  for\t the
\nAppellant to have resort to section 45 by floating a company
\nto  which,  when  incorporated,\t the  trade  mark  would  be
\nassigned or  by manufacturing  the tablets ‘DRISTAN’ it self
\nin India  and thereafter  by  assigning\t it  to\t the  Indian
\nCompany or by Jointly applying along with the Indian Company
\nto have the Indian company registered as the registered user
\nof the said trade mark.\n<\/p>\n
     The Appellant’s  application for  registration  of\t the
\ntrade mark  ‘DRISTAN’ was  made under  the 1940\t Act and its
\nregistration  was   also  ordered   under  that\t  Act.\t The
\napplication for registering
\n325<\/span>
\nthe Indian company as the registered user was, however, made
\nunder the  1958 Act. If the 1940 Act did not contain a legal
\nfiction similar to that enacted in section 48(2) of the 1958
\nAct, the  Appellant’s case  would fall to the ground because
\nthen at\t the date of its application for registration of the
\nsaid trade mark, its intention would be not to use it itself
\nbut to\tuse it through\tanother. The 1940 Act, however, also
\nmade provisions with respect to registered users and created
\na similar legal fiction in section 39(2) of the Act. Section
\n39 of the 1940 Act provided as follows :\n<\/p>\n
\t  “39. Registered users.-\n<\/p><\/blockquote>\n
\t  (1) A\t person other that the proprietor of a trade
\n\t  mark\tmay  be\t registered  as\t a  registered\tuser
\n\t  thereof in  respect of  all or any of the goods in
\n\t  respect of  which it is registered (otherwise than
\n\t  as a\tdefensive trade\t mark) and  either  with  or
\n\t  without conditions or restrictions.<\/p><\/blockquote>\n
\t  (2) The  permitted use  of a\ttrade mark  shall be
\n\t  deemed to  be use  by the  proprietor thereof, and
\n\t  shall be  deemed not\tto be  use by a person other
\n\t  than the  proprietor, for  any purpose  for  which
\n\t  such use  is material\t under this Act or any other
\n\t  law. “The only difference between section 39(2) of
\n\t  the 1940  Act and section 48(2) of the 1958 Act is
\n\t  that while  under section  39(2) the legal fiction
\n\t  created by  it applies  “for any purpose for which
\n\t  such use  is material\t under this Act or any other
\n\t  law”,\t under\t section  48(2)\t the  legal  fiction
\n\t  applies “for the purposes of section 46 or for any
\n\t  other purpose for which such use is material under
\n\t  this Act  or any  other law”.\t The addition of the
\n\t  words “for  the purposes of section 46” in section
\n\t  48(2) not  only does\tnot make  any difference but
\n\t  clarifies the\t scope of the said legal fiction. As
\n\t  we have  seen, clause\t (a) of section 46(1) refers
\n\t  both to  “bona fide  intention on  the part of the
\n\t  applicant for\t registration that  it (that is, the
\n\t  trade mark)  should be  used in  relation to those
\n\t  goods by  him” as  also to  “bona fide  use of the
\n\t  trade mark  in relation  to  those  goods  do\t any
\n\t  proprietor thereof  for the time being.” It cannot
\n\t  possibly be  that  when  section  48(2)  expressly
\n\t  provides that\t the permitted\tuser of a trade mark
\n\t  by a registered user is to be deemed to be user by
\n\t  the proprietor  of the trade mark for the purposes
\n\t  of section  46, the  fiction is  intended only  to
\n\t  apply to the use of the trade mark
\n326<\/span>
\nreferred to in the second condition of clause (a) of section
\n46(1) and  not to  the use of that trade mark referred to in
\nthe first  condition of\t the said  clause (a). Under section
\n18(1), an  application for  registration of a trade mark can
\nonly be\t made by a person who claims to be the proprietor of
\nthat  trade   mark.  Therefore,\t the  words  “applicant\t for
\nregistration” in clause (a) Of section 46(1) would mean ‘the
\nperson claiming\t to be\tthe proprietor of the trade mark who
\nis the\tapplicant for  registration of that trade mark”. The
\nfirst condition\t of clause  (a) would, therefore, read “that
\nthe trade  mark\t was  registered  with\tout  any  bona\tfide
\nintention on  the part\tof the\tperson claiming\t to  be\t the
\nproprietor of  that trade  mark who has made the application
\nfor registration that it should be used in relation to those
\ngoods by  him”. So  read, there\t can  be  no  difficulty  in
\nreading the  words “by him.” also as “by a registered user”.
\nSimilarly, we  see  no\tdifficulty  in\tapplying  the  legal
\nfiction in  section 48(2) to section 18(1). Section lb(l) in
\nthe light of the said legal fiction would read Is any person
\nclaiming to  be the  proprietor of  a  trade  mark  used  or
\nproposed to  be used  by him  or by  a registered  user”. By
\nreason of  the provisions  of section 39(2) of the 194C Act,
\nsection 14(1)  of that\tAct should  also be read in the same
\nway.\n<\/p>\n
     In celebrated  passage Lord  Asquith of  Bishopstone in
\nEast End  Dwellings Co.\t Ld.  v.  Finsbury  Borough  Council
\n(1952) A.C. 109, said (at page 132) :\n<\/p>\n
\t  ” If you are bidden to treat an imaginary state of
\n\t  affairs  as\treal,  you   must   surely,   unless
\n\t  prohibited from,  doing so,  also imagine  as real
\n\t  the  consequences  and  incidents  which,  if\t the
\n\t  putative state  of affairs  had in  fact  existed,
\n\t  must invitably have flowed from or accompanied it.<\/p><\/blockquote>\n
     In the  State of Bombay v. Pandurang Vinayak Chaphalkar
\nand Others<\/a>  [1953] S.C.R.773,  this Court held (at page 132)
\nwhile approving the above passage of Lord-Asquith :\n<\/p>\n
\t  “When a  statute enacts  that something  shall  be
\n\t  deemed to  have been done, which in fact and truth
\n\t  was not  done, the  court is entitled and bound to
\n\t  ascertain  for  what\tpurposes  and  between\twhat
\n\t  persons the statutory fiction is to be resorted to
\n\t  and full  effect must\t be given  to the  statutory
\n\t  fiction and  it should  be carried  to  its  logic
\n\t  conclusion.”<\/p><\/blockquote>\n
327<\/span><\/p>\n
     The purposes  for\twhich  the  said  fiction  has\tbeen
\nenacted are   set  out in  section 48(2). These purposes are
\nthe purposes  of section  46 or\t for any  other purpose\t for
\nwhich such  use is  material under the 1958 Act or any other
\nlaw. To\t confine the  purpose only  to a  part of section 46
\nwould be  to substantially  cut down  the operation  of\t the
\nlegal fiction. The purpose for which the legal fiction is to
\nbe resorted to is to deem the permitted use of a trade mark,
\nwhich means  the use  of the trade mark by a registered user
\nthereof, to be the use by the proprietor of that trade mark.
\nHaving regard  to the  purposes for  which  the\t fiction  in
\nsection 48(2) was created and the persons between whom it is
\nto be  resorted to, namely, the proprietor of the trade mark
\nand the\t registered user thereof, and giving to such fiction
\nits full  effect and  carrying it to its logical conclusion,
\nno other  interpretation can  be placed\t upon  the  relevant
\nportions of section 18(1) and of clause (a) of section 46(1)
\nthan the one which we have given.\n<\/p>\n
     In reaching  the conclusion which they did, the learned
\nSingle Judge and the Division Bench of the High court relied
\nheavily upon  the PUSSY GALORE’ Trade Mark Case. In order to
\nunderstand what\t was held in that case it is necessary first
\nto refer  to some  of the  provisions of  the English  Trade
\nMarks Act,  1938 (1  & 2  Geo. 6, c. 22), as the 1958 Act is
\nbased largely  upon the provisions of the English Act though
\nwith certain  important differences.  Section 17(1)  of\t the
\nEnglish Act  sets out  who can\tapply for  registration of a
\ntrade mark  and is in pari materia with section 18(1) of the
\n1958 Act. Under section 11(4), the refusal by a Registrar to
\nregister the trade mark is subject to appeal to the Board of
\nTrade or to the court at the option of the applicant. If the
\nappeal is  to the  court, there can be further appeal to the
\nCourt of  Appeal and  from there  to  the  House  of  Lords,
\nSection 2h  provides for  removal of  a trade  mark from the
\nRegister and  is in pari materia with section 46 of the 1958
\nact. Section  32 deals\twith rectifying\t the entries  in the
\nRegister and is analogous to section 56 of the 1958 Act.\n<\/p>\n
     Under section  87 of  the Patents,\t Designs  and  Trade
\nMarks Act,  1883 (46  & 47  Vict.  c.  57),  any  registered
\nproprietor could  grant licences  to use the mark subject to
\nany equity.  The 1883  Act in  so far as it related to trade
\nmarks was repealed by the Trade marks Act, 1905 (5 Edw. 7 c.\n<\/p>\n
15). The 1905 Act did not, however, contain any power in the
\nregistered proprietor  to grant licences. The English Act of
\n1938, however,\tintroduced a system of official approval for
\nlicences to use a trade mark
\n328<\/span>
\nParticularly by\t providing for\tregistering a  Person  other
\nthan the proprietor of the trade mark as the registered user
\nof the\ttrade mark.  It\t will  be  useful  to  set  out\t the
\nprovisions cf the English Act of 1938 relating to registered
\nusers in  order to  Focus our  attention on  the differences
\nbetween the  English Act  and the  1958 Act  with respect to
\nregistered users.\n<\/p>\n
     Sub-sections (1),\t(2) and\t (4) to\t (2) of\t section  28
\nprovide as follows :\n<\/p>\n
\t  “28. “Registered users.-\n<\/p><\/blockquote>\n
\t  (1) Subject  to the  provisions of this section, a
\n\t  person other\tthan the  proprietor of a trade nark
\n\t  mark\tmay  be\t registered  as\t a  registered\tuser
\n\t  thereof in  respect of  all or any of the goods in
\n\t  respect of  which it is registered (otherwise than
\n\t  as a\tdefensive trade\t mark) and  either  with  or
\n\t  without conditions or restrictions.
\n\t  The use  of a\t trade mark  by\t a  registered\tuser
\n\t  thereof in  relation to  goods with  which  he  is
\n\t  connected in the course of trade and in respect of
\n\t  which for  the time  being the  trade mark remains
\n\t  registered and  he is\t registered as\ta registered
\n\t  user,\t being\tuse  such  as  to  comply  with\t any
\n\t  conditions   or    restrictions   to\t which\t his
\n\t  registration is  subject, is\tin this Act referred
\n\t  to as the ‘permitted use’ thereof.\n<\/p><\/blockquote>\n
\t  (2) The  permitted use  of a\ttrade mark  shall be
\n\t  deemed to  be use  by the  proprietor thereof, and
\n\t  shall be  deemed not\tto be  use by a person other
\n\t  than the  proprietor, for  the purpose  of section
\n\t  twenty six  of this Act and for any other purposes
\n\t  for which  such use  is material under this Act or
\n\t  at common law.\n<\/p><\/blockquote>\n
\t  (4) Where  it is  proposed that a person should be
\n\t  registered as\t a registered  user of a trade mark,
\n\t  the proprietor  and the  proposed registered\tuser
\n\t  must apply  in writing  to the  Registrar  in\t the
\n\t  prescribed manner  and must  furnish\thim  with  a
\n\t  statutory declaration\t made by  the proprietor, or
\n\t  by some person authorised to act on his behalf and
\n\t  approved by the Registrar-\n<\/p><\/blockquote>\n
\t  (a)  giving\tparticulars  of\t  the  relationship,
\n\t  existing or  proposed, between  the proprietor and
\n\t  the proposed
\n329<\/span>
\n\t  registered user, including particulars showing the
\n\t  degree of  control  by  the  proprietor  over\t the
\n\t  permitted use which their relationship will confer
\n\t  and whether  it is  a term  of their\trelationship
\n\t  that the  proposed registered\t user shall  be\t the
\n\t  sole registered  user or  that there\tshall be any
\n\t  other\t restriction   as  to\tpersons\t for   whose
\n\t  registration as  registered users  application may
\n\t  be made;\n<\/p><\/blockquote>\n
\t  (b)  stating\t the  goods   in  respect  of  which
\n\t  registration is proposed;\n<\/p><\/blockquote>\n
\t  (c)  stating\t any  conditions   or\trestrictions
\n\t  proposed with\t respect to  the characteristics  of
\n\t  the goods,  to the mode or place of permitted use,
\n\t  or to any other matter, and\n<\/p><\/blockquote>\n
\t  (d) stating whether the permitted use is to be for
\n\t  a period  or without limit of period, and if for a
\n\t  period,  the\t duration  thereof;  and  with\tsuch
\n\t  further documents,  information or evidence as may
\n\t  be required under the rules or by the Registrar.
\n\t  (5) When  the requirements  of the  last foregoing
\n\t  subsection  have   been  compled   with,  if\t the
\n\t  Registrar,  after   considering  the\t information
\n\t  furnished  to\t  him  under  that  sub-section,  is
\n\t  satisfied that in all the circumstances the use of
\n\t  the trade  mark in  relation to the proposed goods
\n\t  or any  of them  by the  proposed registered\tuser
\n\t  subject to  any conditions  or restrictions  which
\n\t  the Registrar\t thinks proper would not be contrary
\n\t  to the public interest, the Registrar may register
\n\t  the proposed\tregistered user as a registered user
\n\t  in respect  of the  goods as\tto which  he  is  so
\n\t  satisfied subject as aforesaid.\n<\/p><\/blockquote>\n
\t  (6) The  Registrar  shall  refuse  an\t application
\n\t  under the  foregoing provisions  of his section if
\n\t  it appears  to him  that the\tgrant thereof  would
\n\t  tend to facilitate trafficking in a trade mark.\n<\/p><\/blockquote>\n
Sub-section (1) and (2) of section 29 provide as follows :\n<\/p>\n
\t  “29. Proposed\t use of trade mark by corporation to
\n\t  be constituted. etc.
\n330<\/span>
\n\t  (1) No application for the registration of a trade
\n\t  mark in respect of any goods shall be refused, nor
\n\t  shall\t permission   for   such   registration\t  be
\n\t  withheld, on\tthe ground only that it appears that
\n\t  the applicant\t does not  use or propose to use the
\n\t  trade mark,\n<\/p><\/blockquote>\n
\t  (a) if  the tribunal\tis  satisfied  that  a\tbody
\n\t  corporate is about to be constituted, and that the
\n\t  applicant intends  to assign the trade mark to the
\n\t  corporation with  a view  to the  use\t thereof  in
\n\t  relation to those goods by the corporation; or\n<\/p><\/blockquote>\n
\t  (b)  if  the\tapplication  is\t accompanied  by  an
\n\t  application for  the registration of a person as a
\n\t  registered  user   of\t the  trade  mark,  and\t the
\n\t  tribunal is  satisfied that the proprietor intends
\n\t  it to\t be used by that person in relation to those
\n\t  goods and  the tribunal  is  also  satisfied\tthat
\n\t  person will  be registered  as a  registered\tuser
\n\t  thereof immediately  after the registration of the
\n\t  trade mark.\n<\/p><\/blockquote>\n
\t  (2) The  provisions of  section twenty-six of this
\n\t  Act shall have effect, in relation to a trade mark
\n\t  registered  under   the  power  conferred  by\t the
\n\t  foregoing sub-section, as if for the reference, in
\n\t  paragraph  (a)  t.  of  sub-section  (1)  of\tthat
\n\t  section, to  intention on the part of an applicant
\n\t  for registration  that a trade mark should be used
\n\t  by him  there\t were  substituted  a  reference  to
\n\t  intention on\this part  that it  should be used by
\n\t  the corporation or registered user concerned.”<\/p><\/blockquote>\n
     In the  ‘PUSSY GALORE’  Trade mark Case a company filed
\nforty-six applications for registering different trade marks
\nin  respect  of\t goods\tfalling\t under\tseventeen  different
\nclasses. official  objection was  raised that,\towing to the
\nvery large and diverse range of goods covered by the several
\napplications, the  Registrar  was  not\tsatisfied  that\t the
\napplicant company  had itself the necessary intention to use
\nthe marks applied For. All the marks sought to be registered
\nrelated to  novels written  by the late Ian Fleming. Thirty-
\nnine of\t the said  applications related to marks ‘James Bond
\nSecret Agent’  and ‘007\t Secret Agent’, James Bond being the
\nhero of\t those novels  and ‘007’  being\t his  official\tcode
\nnumber. The  remaining seven applications were in respect of
\nthe mark  ‘PUSSY  GALORE’.  Pussy  Galore  was\ta  character
\nfeaturing in Ian Fleming’s novel ‘Godfinger’, being a female
\nwith Jew’
\n331<\/span>
\nunorthodox morals  and a  name which  would appear  to be an
\nobscene\t pun in very questionable taste. The Registrar heard
\none of the said applications which related to the trade mark
\n‘PUSSY GALORE’.\t The other  relevant  facts  appear  in\t the
\ndecision of  the  Registrar.  The  relevant  passage  is  as
\nfollows (at page 266) :\n<\/p>\n
\t  ” The\t mark in suit and the others to which I have
\n\t  referred all contain references either directly or
\n\t  indirectly to\t the well-known\t fictional character
\n\t  James\t Bond  and  Mr.\t Bevan\texplained  that\t the
\n\t  applicant company  were closely connected with the
\n\t  devisor  of  that  character,\t the  late  Mr.\t Ian
\n\t  Fleming and  that his\t widow has  some interest in
\n\t  the company.\tMr. Bevan further explained that at
\n\t  the time  the various\t applications were filed the
\n\t  applicants  did   not\t propose  to  use  the\tmark
\n\t  themselves but were filed of the intention to seek
\n\t  others who  would put\t the mark  to use  either as
\n\t  registered users  or as licensees. The application
\n\t  was not  however  accompanied\t by  application  to
\n\t  register users  as specified\tin section 29(1)(b).
\n\t  Mr.  Bevan   stated  that   it  was  a  convenient
\n\t  commercial practice  to operate through registered
\n\t  users but  the latter might not be agreeable so to
\n\t  act Until  the mark  was registered.\tHe submitted
\n\t  that the  requirements of  the Act as to intention
\n\t  to use are satisfied in these conditions.”\n<\/p><\/blockquote>\n
The Registrar  took the\t view that  the English\t Act of 1938
\nrequired that, to qualify as an applicant, the proprietor of
\nthe mark  must either  possess the intention to use the mark
\nhimself at the time of application or have applied under the
\nconditions of clause (a) or clause (b) of section 25(1). The
\nRegistrar accordingly refused the application. The applicant
\nappealed to  the Board\tof Trade and the appeal was heard by
\nG.W. Tookey,  Esq., Q.C.,  who dismissed  the  appeal’.\t The
\nrelevant passages  from the  judgment of  the Board of Irade
\nare as follows (at pages 269 and 27C) :\n<\/p>\n
\t  ”  Having   carefully\t considered   the   relevant
\n\t  sections  of\t the  Act,   I\tconclude   that\t the
\n\t  Registrar’s decision is right. In My view, section
\n\t  17 has the limited meaning attributed to it by the
\n\t  Registrar. There  is no  difficulty about the case
\n\t  of servants  and agents,  because although various
\n\t  executive acts may be performed by them on behalf
\n\t  of their  principal who  is the  applicant for the
\n\t  Dark, the use of the mark
\n332<\/span>
\n\t  vis-a-vis the\t public is  by the  applicant and no
\n\t  one  else.   As  regards  registered\tusers,\twhen
\n\t  section 17  was framed  by  the  legislature,\t the
\n\t  effect of the introduction into trade mark law for
\n\t  the first  time of registered user provisions must
\n\t  have been  borne in mind. It would be obvious from
\n\t  the provisions  of section  28, and  also from the
\n\t  definition of\t ‘trade mark’  in section  68,\tthat
\n\t  actual use of a trade mark might be exclusively by
\n\t  a registered user and not by the proprietor at all
\n\t  I agree  with the  Registrar that  section  28  is
\n\t  dealing   with    matters   which    arise   after
\n\t  registration, and  has no  such bearing  upon\t the
\n\t  interpretation  of   section\t17  and\t 29  as\t the
\n\t  applicants have  contended. As above indicated, my
\n\t  view is  that section\t 29 state  the only  case in
\n\t  which an  intended use,  ex hypothesi not a use by
\n\t  the  applicant,  can\tbe  regarded  as  justifying
\n\t  dispensation from  the requirements of section 17.
\n\t  What\thappens\t  after\t registration\tcalls\tfor
\n\t  different consideration both as regards the use of
\n\t  marks in  accordance with the provision of the Act
\n\t  and as  regards the  consequences of use otherwise
\n\t  than in  accordance with  the\t provision  of\tthat
\n\t  Act.”<\/p><\/blockquote>\n
     In our  opinion, the High Court was unduly impressed by
\nthis case and unnecessarily attached great importance to it.
\nThe High  Court justified  its reliance\t upon that  case  by
\nreferring to the following passage from the judgment of this
\nCourt in  The Registrar\t of Trade  Marks  v.  Ashok<\/a>  chandra
\nRakhit Ltd. [1955] 2 S.C.R. 252. (at pages 259-60) :\n<\/p>\n
\t  “As the  law of  Trade Marks\tadopted in  our\t Act
\n\t  merely reproduces the English Law with only slight
\n\t  modifications,  a   reference\t to   the   judicial
\n\t  decisions on\tthe  corresponding  section  of\t the
\n\t  English Act is apposite and must be helpful.”\n<\/p><\/blockquote>\n
What the  High Court  overlooked was  that in  Ashok Chandra
\nRakhit’s Case  the section  of the  1940 Act  which fell for
\ninterpretation was  in Pari  materia with  the corresponding
\nsection of the English Act of 1938 which has been judicially
\ninterpreted by\tthe court in England. As pointed out by this
\nCourt in  Forasal v.  Oil d  Natural Gas Commission [1984] 1
\nS.C.R. 526,  549, 567;\ts.c. (1984)  Supp. S.C.C.  263, 280,
\n295, in the absence of any binding
\n333<\/span>
\nauthority of  an Indian\t Court on a particular point of law,
\nEnglish decisions  in  which  judgments\t were  delivered  by
\njudges held  in high  repute can  be referred to as they are
\ndecisions  of\tcourts\tof   a\tcountry\t from  which  Indian
\nJurisprudence and  a large  part of  our law is derived, for
\nthey are  authorities of  high persuasive value to which the
\ncourt may legitimately turn. for assistance; but whether the
\nrule laid  down in  any of these cases can be applied by our
\ncourts must,  however, be  judged in  the context of our own
\nlaws and  legal procedure  and the  practical  realities  of
\nlitigation in our country.\n<\/p>\n
     The relevant provisions relating to registered users in
\nthe  English   Act  and\t in  the  1958\tAct  are  materially
\ndifferent. The\tEnglish Act  creates two legal fictions. The
\nfirst is  contained in\tsection 28(2)  which relates  to the
\npermitted use  of a  trade mark.  That fiction\t18  for\t the
\npurpose of  section 26\t(which corresponds  to section 46 of
\nthe 1958  Act) and  for any other purpose for which such use
\n18 material  under the\tEnglish Act  or at  common law.\t The
\nsecond\tis   contained\tin  section  29(2)  and\t relates  to
\nintention on  the part of an applicant for registration that
\na trade\t mark should  be used  by him. The second fiction is
\nfor the\t purposes of  paragraph (a)  of section\t 26(1) which
\ncorresponds to\tclause (a) of section 46(1) of the 1958 Act.
\nThe 1958  Act, however,\t contains only one fiction. It 18 in
\nsection 48(2),\twhich is  in pari materia with section 28(2)
\nof the\tEnglish Act.  In our  opinion, the omission from the
\n1958 Act of a provision similar to that contained in section
\n29(2) of the English Act toes not make any difference if one
\nwere to see the said section 29(2) in its proper setting and
\ncontext. The  English Act  does not  prescribe, just  as the
\n1958 Act  does not,  any period\t of time  from the  date  of
\nregistration of a trade mark within which an application for
\nregistering a person as a registered user of that trade mark
\nshould be  made. Section  29(1) of the English Act, however,
\nprovides that  an application  for registration\t of a  trade
\nmark  can   be\taccompanied   by  an   application  for\t the
\nregistration of\t a person as a registered user of that trade
\nmark, and  if the  tribunal is satisfied that the proprietor
\nof the\ttrade mark  intends lt\tto be used by that person in
\nrelation to  those goods  and is also satisfied that  person
\nwill be\t registered as\ta registered  user thereof after the
\nregistration of\t the trade  mark,  lt  will  not  refuse  to
\nregister the  trade  mark.  The\t effect\t of  section  29(1),
\ntherefore, is  that an\tapplication for registering a person
\nas a  registered user  can be  made simultaneously  with the
\napplication for\t registering the  trade mark and if both are
\nfound to  be satisfactory,  the application for registration
\nwould be granted and
\n334<\/span>
\nimmediately thereafter\tthe registration  of the  registered
\nuser would  be allowed. In such a case, the intention on the
\npart of\t the applicant\tfor registration that the trade mark
\nshould be  used by  the registered  user thereof  is  to  be
\ndeemed to  be an  intention to\tuse that  trade mark  by the
\napplication for\t registration. This  is a  special provision
\napplicable to a special case. The fiction created by section
\n29(2) is  also made  applicable to the case of a corporation
\nabout to  be constituted  to which  the applicant intends to
\nassign the  trade mark. There is no such fiction relating to
\nintention expressly  provided in  the 1958  Act, or is there
\nany provision  for simultaneously  making an application for
\nregistration  of   a  trade  mark  and\tan  application\t for
\nregistering a  person as  the registered  user of  the trade
\nmark. It  appears to  us that  the purpose for wh ch fiction
\nwas created  by section\t 29(2) with  respect to a registered
\nuser was  to eliminate\tall possibility\t of trafficking in a
\ntrade mark  by a  person getting  himself registered  as the
\nproprietor of a trade mark and thereafter going in search of
\nsome person  who will use it as the registered user thereof.
\nAssuming that  the existence  of the special fiction created
\nby section 29(2) cuts down the full operation of the general
\nfiction enacted\t in section  28(2), it\tdoes not follow that
\nthe absence  of such  special fiction  in the  1958 Act will
\nalso cut  down the operation of the fiction in section 48(2)
\nin the\tsame way by limiting it to the actual use of a trade
\nmark only.  As pointed out earlier, in the 1958 Act wherever
\nthe phrase  “used by  him” occurs the fiction will apply. In
\nother words,  the permitted  use of  a trade mark is, by the
\nfiction enacted\t in section  48(2), equated with “use by the
\nregistered proprietor”. Consequently wherever the word “use”
\noccurs with  all its  permutations and\tcommutations as\t for
\ninstance in  phrases such as “proposed to be used by him” or
\n‘intended to  be used  by him”,\t the fiction  will apply. At
\nthis stage,  it is  pertinent to  note that  form No.  TM-2,
\nwhich  is   the\t form  prescribed  for\tan  application\t for
\nregistration of a trade mark prescribed by the English Trade
\nMarks Rules,  1938, was\t substituted in\t 1982 and  under the
\nsubstituted Form  a new\t column is  provided which  requires
\ndetails of  an application  under section 29(1) to be given.
\nThe old\t Form No.  TM-2 did not contain this requirement nor
\ndoes form  TM-l appended  to the Trade and Merchandise Marks
\nRules, 1959.\n<\/p>\n
     There is another vital point of distinction between the
\nprovisions of  the English.  Act and  those of\tthe 1958 Act
\nrelating  to  registered  users.  Under\t the  1958  Act,  an
\napplication for\t registration of  a trade  mark as  also  an
\napplication for
\n335<\/span>
\nregistering  a\tregistered  user  are  to  be  made  to\t the
\nRegistrar and\tit is the Registrar who has to grant both of
\nthem. The  Registrar would  refuse  the\t application  if  it
\nappears\t to  him  that\tthe  grant  thereof  would  tend  to
\nfacilitate trafficking\tin a trade mark. This question is to
\nbe considered  by the  Registrar himself.  The provisions of
\nthe 1958  Act were  the same  but the provisions or the 1958
\nAct are\t radically different.  Under the  1958 . Act, though
\nboth the  application for  registration of  a trade mark and
\nthe application for registration of a registered user are to
\nbe made\t to the\t Registrar, the\t Registrar has\tthe power to
\ngrant the  application for  registration of  the trade\tmark
\nonly. So  far as the application for registering a person as
\na registered  user  is\tconcerned,  he\thas  to\t forward  it
\ntogether with his report to the Central Government and it is
\nfor the\t Central Government to decide whether to permit such
\napplication to\tbe granted  or not. In order to decide this,
\nthe Central  Government has to take into account the matters
\nset out\t in sub-section\t (3) of section 49 and in rule 85 of
\nthe Trade Marks Rules, 1959. The matters to be considered by
\nthe  Central   Government  include   not  only\twhether\t the
\npermitted use,\tif allowed,  would amount  to trafficking in
\ntrade marks but also the interests of the general public and
\nthe development of any industry, trade or commerce in India.
\nAfter the  Central Government  has taken  its decision,\t the
\nRegistrar is  to dispose  of the  application in  accordance
\nWith the  directions issued by the Central Government. Thus,
\nwhile under  the English  Act the  authority  to  decide  an
\napplication for registering a registered user is the same as
\nthe authority  for registering\ta trade mark, under the 1958
\nAct they  are different\t and so are the considerations which
\nare to be taken into account-\n<\/p>\n
     Under the\t1958 Act  an application  for registering  a
\nregistered user\t can only  be made  after a  trade  mark  is
\nregistered. If\tan intended  use by  a person  who  will  be
\nregistered user\t is not\t to be included in the legal fiction
\ncreated by  section 48(2) it would make that fiction operate
\nwithin\ta   very  narrow   compass  and\t almost\t render\t the
\nprovisions relating  to registered  users meaningless. It is
\nin very\t rare circumstances  that a person will get a  trade
\nmark registered as proposed to be used By himself, use to no
\nrelation to the concerned goods, and thereafter permit it to
\nbe used by another as a registered user. It is also not open
\nto everyone  who want  to register  a trade  mark to  form a
\ncompany to  which after the trade mark is registered and the
\nproposed company  is incorporated,  the trade  mark will  be
\nassigned. These\t things\t are  not  practical  realities\t and
\nParliament could not have intended such absurd results. The
\n336<\/span>
\nargument of Dr. Gauri Shankar that the Appellant should have
\ngot the\t trade mark  registered with  the intention  that it
\nwill itself  use the  trade mark  and in order to effectuate
\nthat intention\tthe Appellant  should have  set up a factory
\nand manufactured and marketed the tablets ‘DRISTAN’ and then
\neither assigned\t the trade  mark to the Indian Company or to
\nget the\t Indian Company registered as the registered user of
\nthat trade  mark is  illogical. By  reason  of\tour  foreign
\nexchange and  industrial policies  it is  not possible for a
\nforeign company\t to establish  its own industry in India. It
\ncan only  do 80 by entering into a collaboration with Indian
\nentrepreneurs in  which the  foreign company  would  not  be
\npermitted to  have more\t than 40  per cent  shareholding and
\nwould be subject to other restrictions. Even assuming that a
\nforeign proprietor of a trade mark were to be established an
\nindustry of  his own in India, it would be absurd to imagine
\nthat it\t would thereafter  cease manufacturing the goods and
\nallow someone  else to\tdo  80.\t Equally  illogical  is\t the
\nargument of Dr. Dr. Gauri Shankar that the Appellant ant the
\nIndian Company\tshould have jointly applied for registration
\nof the\ttrade mark  ‘DRISTAN’. The  Appellant was already in
\ncollaboration with the Indian Company. There was no need for
\nit to  seek other  collaborators to establish a new company.
\nTo assign  the trade  mark to  the Indian Company or to make
\njointly\t with\tthe  Indian   Company  an   application\t for
\nregistration of the trade mark ‘DRISTAN’ would be to destroy
\nthe appellant’s\t proprietorship in  that trade\tmark. It  is
\nwell-known principle  of interpretation\t of statutes  that a
\nconstruction should  not be  put upon  a statutory provision
\nwhich would lead to manifest absurdity or futility, palpable
\ninjustice, or  absurd inconvenience  or\t anomaly.  (see:  M.
\nPentiah and  Ors. v.  Muddala Veeramallappa  and Ors.<\/a> [1961]
\nS.C.R. 295,  303. The  Division Bench  of the  Calcutta High
\nCourt  saw   the  absurdity,   inconvenience  and   hardship
\nresulting from\tthe construction which was placed by it upon
\nsection 48(2), as is shown by the passages from its judgment
\nreproduced earlier.  It, however, forget the above principle
\nof construction\t and failed  to give  to the  legal  fiction
\nenacted by section 48(2) its full force and effect.\n<\/p>\n
     The ‘PUSSY\t GALORE’ Trade\tMark Case  was a decision of
\nthe Board  of Trade and not of any English Court. As against
\nthat case,  we have  the  decision  of\tthe  High  Court  of
\nAustralia in  Aston v.\tHarlee Manufacturing Company, (1959-\n<\/p>\n
60) 103\t C.L.R. 391,  on which\tFullagar, J., held (at pages
\n402-3) :\n<\/p>\n
\t  “I would  only  add  that  the  ‘registered  user’
\n\t  provisions of\t the Trade Marks Act were introduced
\n\t  in
\n337<\/span>
\n\t  1948, and  an intention to take advantage of those
\n\t  provisions would,  in my  opinion, be a sufficient
\n\t  ‘intention to use’.”<\/p><\/blockquote>\n
     So far as the ‘BOSTITCH’ Trade Mark Case relied upon by
\nthe Registrar  is concerned,  it has  no  relevance  to\t the
\nquestion which\twe have\t to decide.  It turned\tupon its own
\nfacts and what was held in that case was that the provisions
\nof section  28 of  the English\tAct are\t not  mandatory\t but
\npermissive.\n<\/p>\n
     The  high\t Court\talso  took  the\t assistance  of\t the
\nShavaksha Committee Report and the Ayyangar Report to enable
\nit to  place the  construction which  it  did  upon  section
\n48(2). When  it was  intended to  revise the  1940 Act,\t the
\nGovernment of  India set up in 1953 that Trade Marks enquiry
\nCommittee under\t the Chairmanship of Mr. K.S. Shavaksha, the
\nthen, Registrar\t of Irade Marks. The Report of the Shavaksha
\nCommittee  was\tmade  in  1954.\t The  Government  thereafter
\nappointed Mr.  Alagiriswami, who  had acted as the Secretary
\nof the\tCommittee, as  Special Officer\tto  consider  L\t the
\nShavaksha  Committee   Report,\t and   he   made   his\t own
\nrecommendations. The  Government, therefore,  felt that\t the
\nShavaksha Committee  Report and\t the recommendations made by
\nthe Special Officer should be further examined by a judicial
\nauthority  and\t it  accordingly   appointed   Mr.   Justice
\nRajagopala Ayyangar  to examine the matter. Both the learned
\nSingle Judge and the Division Bench were of the opinion that
\nthe recommendation made in the Ayyangar Report were accepted
\nby the\tGovernment.  This  is,\thowever,  not  correct.\t The
\nShavaksha Committee  had  recommended  the  insertion  of  a
\nprovision similar  to clause  (b) of  section 29(1)  of\t the
\nEnglish Act  in section 36 of the 1940 Act which corresponds
\nto section  45 of  the 1958 Act. The Ayyangar Report did not
\naccept this  recommendation but had recommended the addition
\nof a  provision to  the effect\tthat a registered proprietor
\nshould not  be entitled\t to permit  use by  registered\tuser
\nunless such  proprietor had  used the  mark in\trelation  to
\ngoods in  the course  of trade\tfor a period of at least two
\nyears before the date of the application for registration of
\na  registered\tuser.  Parliament   did\t  not\taccept\t the
\nrecommendation\tmade  in  either  of  these  Reports.  These
\nReports, therefore,  cannot be\treferred to for ascertaining
\nthe intention  of  Parliament  when  enacting  the  relevant
\nprovisions of the 1958 Act.\n<\/p>\n
     From what we have said above, we must not be understood
\nto mean\t that a\t person, who  does not intend to use a trade
\nmark himself  can get  it registered  and when faced with an
\napplication
\n338<\/span>
\nunder clause  (a) of  section 46(1)  to have that trade mark
\nremoved, turn  round and  say that  he intended\t to  use  it
\nthrough some person who was proposed to be got registered as
\na registered  user. This would clearly amount to trafficking
\nin a trade mark. ‘PUSSY GALORE’ Trade Mark Case could easily
\nhave been  decided on  the ground  that the applications for
\nregistration made  therein,  if\t granted,  would  amount  to
\ntrafficking in\ttrade marks.  This has\tbeen pointed  out in
\nHalsbury’s Laws\t of England,  Fourth Edition,  Volume 48, in
\nfootnote 6 to paragraph 30 at page 25.\n<\/p>\n
     In our  opinion, to  enable the  proprietor of  a trade
\nmark who has got it registered on the ground that he intends
\nto use\tthe trade  mark to  avail  himself  of\tthe  fiction
\ncreated by  section 48(2),  he must  have had in mind at the
\ndate of his application for registration some person to whom
\nhe intends  to\tallow  the  use\t of  the  trade\t mark  as  a
\nregistered  user.   This  would\t eliminate  all\t chances  of
\ntrafficking  in\t  a  trade   mark.  If\t an  applicant\t for
\nregistration did not have at the date of his application for
\nregistration a particular registered user in view, he cannot
\nbe said\t to have  had a bona fide intention to use the trade
\nmark and  in such  an event he cannot resist ar. application
\nmade under clause (a) of section 46(1) of the 1958 Act.\n<\/p>\n
     Turning now  to the  present Appeal,  the facts  on the
\nrecord show  that only\twhen it\t was  decided  to  introduce
\n‘DRISTAN’ tablets  in the  Indian market  through the Indian
\nCompany that  the Appellant made its application to register
\nthe trade  mark ‘DRISTAN’.  There was  a close connection in
\nthe course  of trade  between the  Appellant and  the Indian
\nCompany. The Appellant owned 40 per cent of the shareholding
\nin the\tIndian Company.\t It had\t entered  into\ta  technical
\ncollaboration  agreement   with\t the  Indian  Company  which
\nprovided for  strict quality  control and  for formulae\t and
\nservices to  be provided  by the Appellant. The manufacture,
\nmarketing and  advertising of  all products  under the\tsaid
\nagreement were\tto be  under the  control of  the Appellant.
\nThere was  no royalty  payable by  the Indian Company to the
\nAppellant in respect of the use of the trade mark ‘DRISTAN’.
\nIn the event of the collaboration agreement being terminated
\nby reason of the happening of any of the events mentioned in
\nthe  said   agreement,\tamongst\t  which\t  events   was\t the
\nshareholding of\t the Appellant\tbecoming less  than  40\t per
\ncent, the  Indian Company  was to  cease to  be entitled  to
\nmanufacture the\t tablets ‘DRISTAN’  or to use its formula or
\nto use\tthe trade mark ‘DRISTAN’. There was here, therefore,
\nno question  of any  trafficking in  a trade  mark. In these
\ncircumstances, the intention of the Appellant to use the
\n339<\/span>
\ntrade mark  ‘DRISTAN’ through  the Indian  Company which was
\nsubsequently to get itself registered as the registered user
\nof the\tsaid trade  mark cannot but be characterized as bona
\nfide.\n<\/p>\n
     Mr. Nariman,  learned Counsel  for the  Appellant, also
\nurged that  in addition\t to having  a bona fide intention to
\nuse the trade mark ‘DRISTAN’, the Appellant had also used it
\nwithin a  period  of  one  month  before  the  date  of\t the
\nApplication for\t Rectification. For  this  purpose,  learned
\nCounsel relied upon the samples sent by the Appellant to the
\nIndian Company. In the view which we have taken that the two
\nconditions of clause (a) of section 46(1) are cumulative and
\nthat the  first condition  has not  been satisfied  in\tthis
\ncase, we find it unnecessary to consider this point.\n<\/p>\n
     It was  also submitted  by Dr.  Gauri Shankar,  learned
\nCounsel for  the First Respondent that the Appellant was not
\nentitled to  retain the trade mark ‘DRISTAN’ on the register
\nbecause it  had obtained  its registration by making a false
\nstatement in its application for registration inasmuch as it
\nhad not\t stated in  the said application that the said trade
\nmark was  proposed to  be used\tby  a  registered  user\t but
\ninstead stated\tthat it\t was to be used by the Appellant who
\nclaimed to  be the  proprietor thereof.\t This point  was not
\nraised at  any time  before the\t Registrar or the High Court
\nand it\tis not\topen to\t the First Respondent to take this E
\npoint for  the first  time in  this Appeal  by\tcertificate.
\nApart from  that, there\t is no substance in this point. Form
\nTM-l appended  to the  Trade and  Merchandise  Marks  Rules,
\n1959, does  not contain\t any column similar to the column in
\nthe new\t Form No.  TM-2 appended  to the English Trade Marks
\nRules, 1938. The relevant portion of Form TM-l is as follows
\n:\n<\/p>\n
\t  ” Application\t is hereby  made for registration in
\n\t  Part A(a)\/B  of the  register of  the accompanying
\n\t  trade mark  in class\t(b) ….  in respect  of (c)
\n\t  …. in  the name(s) of (d)…… whose address is\n<\/p><\/blockquote>\n
\t  (e) ……… who claim(s) to be the proprietor(s)
\n\t  thereof (and\tby whom the said mark is proposed to
\n\t  be used)  (f) or  (and by  whom  and\this  (their)
\n\t  predecessor(s) in title (g) the said mark has been
\n\t  continuously used since ….. 19….. ) in respect
\n\t  of the said goods(h).”\n<\/p><\/blockquote>\n
The Appellant,\ttherefore, cannot  be said to have practised
\nany deception in stating in its application that it intended
\nto use
\n340<\/span>
\nthe trade mark itself. In our opinion, it would be better if
\nthe Central  Government were  to amend\tForm TM-l to require
\nthe applicant  to state whether he proposes to use the trade
\nmark himself  or through  a registered proprietor and if so,
\nto state the particulars of the proposed registered user.\n<\/p>\n
     It was  next sought  to be\t argued by Dr. Gauri Shankar
\nthat  the   trade  mark\t  ‘DRISTAN’  was   deceptively\t and
\nconfusingly similar  to the trade mark ‘BISTAN’ of which the
\nregistered  proprietor\t is  M\/s.  Prof.  Gajjar’s  Standard
\nChemical Works\tLtd. This  is not  one of the questions upon
\nwhich the  certificate was  granted by the High Court and it
\nis not\topen to\t the First  Respondent to take this point in
\nthis Appeal.  In any  event, this  point too  is without any
\nsubstance. It  was rejected  by the  Registrar. The  learned
\nsingle Judge did not deal with it. Though the Division Bench
\nwas of\tthe opinion that it was not necessary to decide that
\nquestion, it recorded the facts relating thereto which would
\njustify the  rejection of  that contention.  These facts are
\nthat though  the proprietor  of the said trade mark ‘BISTAN’
\nhad made an affidavit supporting the First Respondent in the
\nproceedings for\t rectification of  the Register\t it had\t not
\neither opposed\tthe registration of the trade mark ‘DRISTAN’
\nnor had\t it  at\t any  time  alleged,  apart  from  the\tsaid
\naffidavits that there would be any confusion or deception by
\nthe use of the trade mark ‘DRISTAN’.\n<\/p>\n
     In\t the   written\tsubmissions   filed  by\t  the  First
\nRespondent after  the hearing before us was concluded it was
\ncontended that\tthe Court’s  discretion should\tbe exercised
\nagainst the  trade mark\t ‘DRISTAN’ remaining on the Register
\ninasmuch as  to allow it so to continue would be contrary to
\nthe policy  of the  Central Government with respect to brand
\nnames belonging to foreign companies and also because two of
\nthe ingredients\t used in  the formula for the manufacture of
\n‘DRISTAN’ tablets were banned by the authorities. In support
\nof  this   contention\tcopies\t of   some   circulars\t and
\nnotifications were filed along with the written submissions.
\nThis point was not at any time taken before the Registrar or
\nthe High  Court nor does the certificate granted by the High
\ncourt cover  it. It  is not  fair to  produce copies  of any
\ncircular or  notification  along  with\twritten\t submissions
\nafter oral  arguments have closed because the other side has
\nno opportunity\tto meet\t this case. For ought we know, after
\nsome ingredients in the composition of the ‘DRISTAN’ tablets
\nwere banned, the manufacturers may have changed the formula.
\nWe are\tnot concerned in this Appeal with this question. The
\napplication  for  registering  the  Indian  Company  as\t the
\nregistered user of the
\n341<\/span>
\nsaid trade  mark is  still  pending  and  when\tthe  Central
\nGovernment comes  to  consider\tthat  application,  it\twill
\ndecide the  matter for\titself. After all, the best guardian
\nof the\tpolicy of  the Central\tGovernment  is\tthe  Central
\nGovernment itself and not a private limited company, namely,
\nMac  Laboratories  Private  Limited,  the  First  Respondent
\nbefore us,  which has  a vital\tinterest in having the trade
\nmark ‘DRISTAN’ removed from the Register.\n<\/p>\n
     For the  reasons given  above, this Appeal must succeed
\nand is allowed and the judgment of the Division Bench of the
\nCalcutta High  court appealed  against is  reversed and\t the
\norder passed  by it  is set  aside. Consequently, Appeal No.
\n165 of 1968 filed by the Appellant before the Division Bench
\nof the\tCalcutta High  Court is\t allowed with  costs and the
\njudgment of  the learned Single Judge of that High Court and
\nthe order  passed by  him are  reversed and  set aside. As a
\nresult Appeal  No. 61  of 1965 filed by the First Respondent
\nbefore the  learned Single  Judge of the Calcutta High Court
\nis dismissed  with costs  and the  order of the Registrar of
\nTrade Marks,  Calcutta, dismissing  the\t First\tRespondent’s
\nApplication for\t Rectification\tNo.  CAL-17  with  costs  is
\nconfirmed.\n<\/p>\n
     The First\tRespondent will\t pay to\t the  Appellant\t the
\ncosts of this Appeal.\n<\/p>\n
A.P.J.\t\t\t\t\t     Appeal allowed.\n342<\/span>\n\n\n\n<\/pre>\n","protected":false},"excerpt":{"rendered":"
Supreme Court of India American Home Products … vs Mac Laboratories Private Limited … on 30 September, 1985 Equivalent citations: 1986 AIR 137, 1985 SCR Supl. (3) 264 Author: D Madon Bench: Madon, D.P. PETITIONER: AMERICAN HOME PRODUCTS CORPORATION Vs. RESPONDENT: MAC LABORATORIES PRIVATE LIMITED AND ANR. DATE OF JUDGMENT30\/09\/1985 BENCH: MADON, D.P. BENCH: MADON, […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_lmt_disableupdate":"","_lmt_disable":"","_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[30],"tags":[],"class_list":["post-68682","post","type-post","status-publish","format-standard","hentry","category-supreme-court-of-india"],"yoast_head":"\nAmerican Home Products ... vs Mac Laboratories Private Limited ... on 30 September, 1985 - Free Judgements of Supreme Court & High Court | Legal India<\/title>\n<meta name=\"robots\" content=\"index, follow, max-snippet:-1, max-image-preview:large, max-video-preview:-1\" \/>\n<link rel=\"canonical\" href=\"https:\/\/www.legalindia.com\/judgments\/american-home-products-vs-mac-laboratories-private-limited-on-30-september-1985\" \/>\n<meta property=\"og:locale\" content=\"en_US\" \/>\n<meta property=\"og:type\" content=\"article\" \/>\n<meta property=\"og:title\" content=\"American Home Products ... vs Mac Laboratories Private Limited ... on 30 September, 1985 - 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