The Registrar Of Trade Marks VS. Ashok Chandra Rakhit Ltd.

Case Law No.116, Reporting JudgeDas

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Summary

The exercise of the power conferred on the Registrar by s.

13 of the Trade Marks Act is always a matter of discretion to be exercised, not capriciously or arbitrarily but, according to sound principles laid down for the exercise of all judicial discretion.

The existence of the two jurisdictional facts referred to in clauses (a) and (b) of s. 13 and the finding that the trade mark contains parts or matters to the exclusive use of which the proprietor is not entitled does not conclude the matter and it must further be established that some good ground exists for the imposition of a disclaimer and the tribunal will exercise the discretionary power for good cause shown, 253.

For the proper understanding and carrying into effect the provisions of s. 13 it is necessary to bear in mind that the section confides a discretionary power in the 'tribunal'

which by virtue of s. 2(n) means the Registrar or, as the case may be, the Court before which the proceeding concerned is pending. Assuming but not deciding that in dealing with an appeal under s. 76 of the Act from the decisions of the Registrar under s. 13 of the Act the High Court is not fettered by reason of the Registrar, on the hearing before him, having exercised his discretion and the High Court may exercise its own discretion, just as it could if the proceedings had been taken initially before it, it must be remembered that it is the Registrar to whom in the first instance is committed the discretionary power. If that authority has exercised his discretion in good faith and not in violation of any law such exercise of discretion should not be interfered with by the High Court merely on the ground that, in the opinion of the High Court it could have been exercised differently or even that the High Court would have exercised it differently, bad the matter been brought before it in the first instance. The proper approach in such a case is for the High Court to consider whether the Registrar has really gone so wrong as to make it necessary to interfere with his discretion.

The real purpose of requiring a disclaimer is to define the rights of the proprietor under registration so as to minimise, even if it cannot wholly eliminate, the possibility of extravagant and unauthorised claims being made on the score of registration of the trade marks.

The proviso to s. 13 preserves intact any right which the pro-. prietor may otherwise under any other law have in relation to the mark or any part thereof. The disclaimer is only for the purposes of the Act. It does not affect the rights of the proprietor except such -as arise out of registration. That is to say, the special advantages which the Act gives to the proprietor by reason of the regis- tration of his trade mark do not extend to the parts or matters which he disclaims.

Held, that considering all the circumstances of the present case the Registrar had not gone so wrong as to make it necessary for the High Court to interfere with his discretion. If it were to be regarded as a matter of exercise of discretion by the High Court as to whether a disclaimer should be imposed or not, it is quite clear that the attention of the High Court was not drawn to an important consideration, namely, the strong possibility of the respondent company claiming a statutory right to the word 'Shree' by virtue of the registration of its trade mark and subject others to infringement actions only on the strength of the registration and without proof of facts which it would have otherwise to establish in order to succeed in a passing off action or a prosecution under the Indian Penal Code and, therefore, the High Court cannot be said to have properly exercised its discretion, 254

Sharp v. Wakefield (L.R. 1891 A.C . 173), Albert Baker Co.s Application and Aerated Bread Company s Application In re (L.R. [1908] 2 Ch. 86; 25 R.P.C. 513), In the matter of an application by the Diamond T. Motor Car Co. ([1921] 38

R.P.C. 373 at 379), Eno v. Dun?& (L.R. [1890] 15 A.C. 252; 7

R.P.C. 311), In the matter of an application by F. Reddaway

& Co. Ltd. ([1926] 44 R.P.C,. 27), Smokeless Powder Co.'s Trade In re (L.R. [1892] 1 Ch. 590; 9 R.P.C. 109), Greers Ltd. v. Pearman and Gorder Ltd. ([1922] 39 R.P.C. 409), Cadbury Brothers' Application In re (L.R. [1915] 2 Ch. 307;

32 R.P.C. 456), De Cordova and others v. Vick Chemical Coy.

([1951] 68 R.P.C. 103), Pinto v. Badman (8 R.P.C. 181), Apollinaris Company's Trade Marks (L.R. [1891] 2 Ch. 186) and Clement & Cie In re (L . R. [1900] 1 Ch. 114), referred to.

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Extract

The Registrar Of Trade Marks VS. Ashok Chandra Rakhit Ltd.

PETITIONER: THE REGISTRAR OF TRADE MARKS Vs.

RESPONDENT: ASHOK CHANDRA RAKHIT LTD.

DATE OF JUDGMENT: 15/04/1955

BENCH: DAS, SUDHI RANJAN

BHAGWATI, NATWARLAL H.

SINHA, BHUVNESHWAR P.

CITATION: 1955 AIR 558 1955 SCR (2) 252

ACT: The Trade Marks Act 1940 (Act V of 1940) s. 13-Meaning and scope of-Registration subject to disclaimer-S. 76-Appeal to the High Court-When can the High Court interfere-Registrar, discretion of-Proper approach in such a case.

JUDGMENT: CIVIL APPELLATE JURISDICTION: Civil Appeal No. 116 of 1953.

Appeal from the Judgment and Order dated the 23rd day of August 1951 of the High Court of Judicature at Calcutta in Appeal No. 112 of 1950 arising out of the order dated the 24th day of March 1950 of the Registrar of Trade Marks in the matter of Registered Trade Mark No. 3815.

C. K. Daphtary, Solicitor-General for India (K. S.

Shavakasha and R. H. Dhebar, with him) for the appellant.

S. C. Isaacs, (P. K. Ghosh, with him) for the res- pondents.

1955. April 15. The Judgment of the Court was delivered by

DAS J.-This is an appeal from the judgment and order pronounced on the 23rd August 1951 by a Division Bench of the High Court at Calcutta in Appeal No. 112 of 1950 reversing the decision of the Registrar of Trade Marks dated the 24th March, 1950 whereby he had rectified the register by inserting a disclaimer of the word "Shree" forming part of the respondent company's registered trade mark No. 3815.

The material facts are as follows: In the year 1897 one Durga Charan Rakhit (since deceased) adopted as his trade mark in respect of the ghee produced and marketed by him a device which,...

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