National Sewing Thread Co. Ltd vs James Chadwick and Bros. Ltd.

Rewritten Version Notice: This is a rewritten version of the original judgment.

Court: supreme-court

Case Number: Civil Appeal No. 135 of 1952

Decision Date: 7 May 1953

Coram: Mehr Chand Mahajan, Vivian Bose, B. Jagannadhadas

In this case the Court recorded that the matter involved National Sewing Thread Co. Ltd as petitioner and James Chadwick & Bros. Ltd., also known as J.& P. Coats Ltd., as respondent, with the judgment rendered on 7 May 1953 by a bench consisting of Mehr Chand Mahajan, Vivian Bose and B. Jagannadhadas. The citation of the decision was 1953 AIR 357 and 1953 SCR 1028, and it had been referenced in subsequent reports including APL 1956 SC 202 (8) E, 1965 SC 1442 (6) R, 1968 SC 384 (4,5) RF, 1986 SC 1272 (88,89,94,95) RF, 1987 SC 2323 (10) R, and 1989 SC 2113 (31). The dispute concerned an application for registration of a trade mark under the Trade Marks Act 1940, the dismissal of that application by the Registrar, and the subsequent appeal to the High Court. The Court noted that Section 76(l) of the Trade Marks Act 1940 provided that an appeal lay from any decision of the Registrar under the Act or the rules made thereunder to the High Court having jurisdiction, but the Act did not prescribe the procedure to be followed by the High Court in such an appeal nor state whether the High Court’s order itself was appealable. The Court held that the High Court must exercise its appellate jurisdiction under Section 76 in the same way it exercised any other appellate jurisdiction, and when that jurisdiction was exercised by a Single Judge, the judgment of that Single Judge was appealable under Article 15 of the Letters Patent. The Court referred to the authorities National Telephone Co. v. Postmaster General ([1913] A.C. 546), R. M. A. R. A. Adaikappa Chettiar v. R. Chandrasekhara Thevar (74 I.A. 264) and Secretary of State v. Chellikani Rama Rao (I…L.R. 39 Mad. 617). The Court observed that the power conferred by Section 108 of the Government of India Act 1915 on the High Courts to make rules for the exercise of their jurisdiction by Single Judges or Division Courts could be applied not only to the jurisdiction the Courts possessed when the 1915 Act came into force but also to jurisdictions later granted by statutes such as Section 76 of the Trade Marks Act. The Court further explained that, under the rules and the constructions set out in Section 8 of the General Clauses Act and Section 38 of the Interpretation Act, the reference to Section 108 of the Government of India Act 1915 in Article 15 of the Letters Patent should, after the enactment of the Constitution of 1950, be read as a reference to the corresponding provisions of Article 225 of the Constitution. The Court emphasized that the ambit of the power conferred on the High Courts by Section 108 of the Government of India Act 1915 was not limited by Section 106(1) of that Act or by Article 16 of the Letters Patent of the Calcutta High Court, thereby overruling Indian Electric Works v. Registrar of Trade Marks (AIR 1947 Cal 49). The Court distinguished the earlier decisions Secretary of State v. Mask & Co. (67 I.A. 222) and the Gur-dwara Case (63 I.A. 180).

The Court held that the authority granted to the High Courts by section 108 of the Government of India Act, 1915, was not limited by section 106(l) of that Act nor by clause 16 of the Calcutta High Court’s Letters Patent. It noted that the decision in Indian Electric Works v. Registrar of Trade Marks (AIR 1947 Cal 49) was expressly overruled, while the earlier rulings in Secretary of State v. Mask & Co. (67 IA 222) and the Gur-dwara case (63 IA 180) were distinguished. The respondents were identified as a company incorporated in England that manufactured sewing thread bearing the device of an Eagle with out-stretched wings, known as the “Eagle Mark,” and had been selling that thread widely in Indian markets since 1896. The appellants were a company incorporated in India that, in 1940, began selling sewing thread marked with a bird resembling an eagle with fully spread wings and the words “Eagle Brand.” After objections from the respondents, the appellants altered the name of the mark to “Vulture Brand” while retaining the same visual device. The respondents instituted a passing-off action against the appellants, but the trial court dismissed that action. Subsequently the appellants applied to the Registrar of Trade Marks for registration of their mark, and the Registrar refused the application on the ground that the mark was so similar to the respondent’s “Eagle Mark” as to likely deceive the public and cause confusion. A single judge of the Bombay High Court reversed the Registrar’s order, but a division bench restored the Registrar’s decision on appeal. The Court affirmed that the division bench’s judgment upholding the Registrar’s refusal, on the basis of probable deception and confusion, was correct. It further observed that the factors relevant to a passing-off suit differ from those applicable to a trade-mark registration application under the Trade Marks Act, and therefore the earlier High Court decision in the passing-off case was not determinative of the registration issue. The judgment was rendered in a civil appellate jurisdiction concerning Civil Appeal No 135 of 1952, arising from the High Court of Judicature at Bombay’s order dated 19 March 1951 in Appeal No 95 of 1950, which itself stemmed from the order of 28 August 1950 in Civil Miscellaneous No 2 of 1950. Counsel for the appellants and respondents were listed, and the Registrar of Trade Marks appeared in person. The judgment, dated 7 May 1953, was delivered by Justice Mahajan, addressing the appeal from a certificate under section 109(c) of the Civil Procedure Code that reversed the judgment of Justice S C Shah and restored the Registrar’s refusal to register the appellants’ mark.

The matter before the Court concerned two principal questions. First, the Court had to decide whether the judgment delivered by Mr. Justice Shah could be appealed under clause fifteen of the Letters Patent of the Bombay High Court. Second, the Court needed to determine whether Mr. Justice Shah was correct in overriding the discretion of the Registrar of Trade Marks when the Registrar refused to register the appellants’ trade mark.

The factual background may be summarised as follows. The appellants were a limited liability company incorporated under the Indian Companies Act of 1913. Their registered office was located at Chidambaram in the South Arcot District of the Madras Province, and their business consisted of manufacturing cotton sewing thread. The respondents were also a limited liability company, this one incorporated under the English Companies Act, with its registered office at Eagley Mills, Bolton, England, where they likewise manufactured sewing thread.

The respondents had been using a trade mark on their thread that displayed an eagle with out-stretched wings. This “Eagle Mark” had first been advertised in the Calcutta Exchange Gazette on 5 June 1896 and, since that date, thread bearing the Eagle Mark had been regularly imported into India and sold throughout the Indian market on a large scale.

About the year 1940 the appellants began selling cotton sewing thread under a mark that showed a bird with fully spread wings perched on a cylinder of thread, together with the words “Eagle Brand” and the name of the appellant company. The respondents objected to the use of the word “Eagle”. In response, the appellants replaced the word “Eagle” with the word “Vulture”, so that the mark thereafter read “Vulture Brand”, although the visual device – the bird with spread wings – remained unchanged.

In 1942 the appellants applied to the Registrar of Trade Marks in Bombay for registration of the amended mark in class twenty-three, which covered cotton sewing thread. The appellants claimed that the mark had been in use by them since 1939. The respondents opposed the application under section fifteen (2), Rule thirty of the Trade Marks Act, 1940, objecting that the appellants’ mark was essentially the same as the respondents’ Eagle Mark and that describing the device as “Vulture Brand” while the picture showed an eagle was misleading and likely to cause confusion.

Prior to the trademark dispute, the respondents had instituted a passing-off action in the District Court of South Arcot against the appellants. That action was unsuccessful because the respondents presented only meagre evidence and failed to demonstrate that ordinary purchasers, exercising reasonable caution, would be deceived into believing that the defendants’ goods were those of the plaintiffs. Consequently, the respondents’ grievance remained unredressed.

Following the opposition, the Registrar of Trade Marks issued an order on 2 September rejecting the appellants’ application. The appellants appealed that order to the Bombay High Court under the provisions of section seventy-six of the Trade Marks Act. Mr. Justice Shah, hearing the appeal, set aside the Registrar’s order and directed that the appellants’ mark be entered on the Register as a trade mark. The respondents then appealed Mr. Justice Shah’s judgment under clause fifteen of the Letters Patent of the Bombay High Court. The present appeal arises from that subsequent proceeding.

In 1949 the Registrar of Trade Marks upheld the opposition filed by the respondents and consequently refused the application that the appellants had made for registration of their mark. The Registrar explained that the appellants’ mark was so closely similar to the respondents’ mark that it was likely to deceive the public or create confusion. He further observed that describing the appellants’ mark as “Vulture Brand” while the device depicted an eagle was misleading and therefore liable to cause confusion. The appellants challenged the Registrar’s order by filing an appeal to the High Court of Bombay, relying on the authority granted by section 76 of the Trade Marks Act. Mr Justice Shah entertained that appeal, set aside the Registrar’s decision and ordered that the Registrar register the appellants’ mark as a trade mark. Following Mr Justice Shah’s judgment the respondents filed a further appeal under clause 15 of the Letters Patent of the Bombay High Court. That appeal was allowed, the Registrar’s original order was reinstated and the respondents were awarded costs in the entire matter. The present appeal therefore arose from that reversal of the Registrar’s decision.

The Court observed that both questions raised in the present appeal could be answered straightforwardly despite the many objections raised during argument. It was not contested that Mr Justice Shah’s decision qualified as a “judgment” within the meaning of clause 15 of the Letters Patent. Consequently his judgment was amenable to appeal under that clause, and the relevant portion of the clause reads: “And We do further ordain that an appeal shall lie to the said High Court of Judicature at Bombay from the judgment of one Judge of the said High Court or one Judge of any Division Court, pursuant to section 108 of the Government of India Act.” Arguments were advanced that clause 15 could not be invoked for an appeal made under section 76 of the Trade Marks Act, and that the clause would not apply where the judgment had not been delivered pursuant to section 108 of the Government of India Act, 1915. The Court rejected those objections as untenable. Section 76(1) of the Trade Marks Act provides that, “Save as otherwise expressly provided in the Act, an appeal shall lie, within the period prescribed by the Central Government, from any decision of the Registrar under this Act or the rules made thereunder to the High Court having the jurisdiction.” The Act itself does not prescribe any specific procedure for the conduct of such an appeal after it reaches the High Court, and section 77 authorises the High Court to make appropriate rules. Accordingly, once the appeal is before the High Court, it must be determined in accordance with the practice and procedure of that Court and the provisions of the charter that governs its jurisdiction.

In this case the Court explained that the High Court derived its authority to hear the appeal from the provisions of the charter that created it, and that charter determined the method and manner in which the Court could exercise that jurisdiction. The Court noted that a settled rule required that whenever a statute directed an appeal to an already existing Court, the appeal had to be governed by the practice and procedure of that Court. The Court quoted Viscount Haldane L.C. in National Telephone Co., Ltd. v. Postmaster-General, stating: “When a question is stated to be referred to an established Court without more, it, in my opinion, imports that the ordinary incidents of the procedure of that Court are to attach, and also that any general right of appeal from its decision likewise attaches.” The Court further observed that the same principle was expressed by the Privy Council in R.M.A.R.A. Adaikappa Chettiar v. Ra. Chandrasekhara Thevar, where it was said: “Where a legal right is in dispute and the ordinary Courts of the country are seized of such dispute the Courts are governed by the ordinary rules of procedure, applicable thereto and an appeal lies if authorised by such rules, notwithstanding that the legal right claimed arises under a special statute which does not, in so far, confer a right of appeal.” (1) [19I3] A.C. 546. 134 (2) (1947) 74 I,A. 264. The Court also referred to Secretary of State for India v. Chellikani Rama Rao, noting that the Privy Council observed that an objection that further proceedings in Indian courts or by way of appeal were incompetent was unfounded, because once a matter reached the District Court it was to be dealt with under the ordinary rules of the Civil Procedure Code. Although the facts of those earlier cases were not identical to the facts before the Court, the Court held that the principle articulated in them was of general application and was appropriate to the present circumstances. Section 76 of the Trade Marks Act, the Court observed, merely granted a right of appeal to the High Court and did not prescribe any further procedure. Consequently, when the High Court exercised the appellate jurisdiction conferred by Section 76, it had to do so in the same way it exercised its other appellate powers. The Court further explained that when such jurisdiction was exercised by a single Judge, the judgment of that Judge became subject to appeal under clause 15 of the Letters Patent, because there was nothing in the Trade Marks Act that contradicted this result. The Court rejected the objection that Mr. Justice Shah’s judgment, delivered on an appeal under Section 76 of the Trade Marks Act, could not be said to have been delivered pursuant to section 108 of the Government of India Act, holding that the objection was without merit.

In this case the Court observed that the provision of the Government of India Act, 1915, appears to have no force because it was based on a very narrow construction of the section and on an erroneous view of its true purpose. Section 108 of that Act provides: “Each High Court may by its own rules provide as it thinks fit for the exercise, by one or more Judges, or by division courts constituted by two or more Judges … of the original and appellate jurisdiction vested in the Court.” The Court explained that this section is an enabling enactment that gives High Courts authority to make rules for exercising their jurisdiction either by a single Judge or by a division of Judges. The power granted by the section is not limited in any way; it was intended to be expressed in the widest possible terms. The Court noted that there could be no specific purpose in restricting the power in relation to the jurisdiction already possessed by the High Court, because other provisions of the Government of India Act contemplated that the existing jurisdiction was subject to the legislative power of the Governor-General and could be enlarged, modified or curtailed by the Legislature from time to time. Consequently the Court found it difficult to accept the argument that the power conferred under subsection (1) of section 108 was limited to the jurisdiction the High Court possessed at the moment the 1915 Act came into force. The expression “vested in the court” cannot be read as meaning “now vested in the court”. The Court reiterated the well-known rule of construction that when a statute confers a power, that power may be exercised whenever occasion arises unless the statute shows a contrary intention, a rule that is given statutory recognition in section 32 of the Interpretation Act. The Court further stated that the reference to section 108 in clause 15 of the Letters Patent was intended to incorporate that rule-making power into the charter of the Court, not to render it dead, rigid or inflexible. Accordingly the Court concluded that section 108 of the Government of India Act, 1915, gave the High Court a power that could be exercised from time to time with reference to its jurisdiction, whether that jurisdiction existed when the 1915 Act commenced or was later created by subsequent legislation. The Court also addressed the argument that the repeal of section 108 and its replacement by section 223 of the Government of India Act, 1935, along with the enactment of article 225 of the Constitution, meant that clause 15 of the Letters Patent could no longer refer to a valid provision. The Court rejected that objection, holding that the power conferred by section 108 continues to exist and has not been altered by the 1935 Act or the Constitution, but rather has been reaffirmed and kept alive by those statutes.

The argument advanced that, because article 225 of the Constitution of India had not been accompanied by a corresponding amendment of clause 15 of the Letters Patent, the reference to section 108 in that clause could not be understood as relating to the constitutional provisions; consequently, it was contended that the High Court lacked authority to formulate rules in 1940 when the Trade Marks Act was enacted under the repealed provision, and that the decision of Mr Justice Shah therefore could not have been rendered pursuant to section 108. The Court held that this objection was not well founded, observing that the power originally conferred on the High Court by section 108 continued to exist and had not been altered in any manner either by the Government of India Act 1935 or by the new Constitution. On the contrary, the later statutes had actively preserved and reaffirmed that power with considerable vigor. The Court further explained that the High Courts still possessed the same unfettered authority to make rules governing whether an appeal should be heard by a single judge, by a panel of judges, or by a division court comprising two or more judges, and that the particular label or nomenclature attached to that power in various statutes or in the Letters Patent was immaterial; the power remained present and could be exercised in exactly the same way as when it was first granted. Historically, the Court noted, the power was not originally created by section 108 of the 1915 Act because it had already been established by section 13 of the Indian High Courts Act 1861. Accordingly, the Court expressed the view that the reference in clause 15 to section 108 should be read as a reference to the corresponding provisions of the 1935 Act and to the Constitution. Applying the general rule of statutory construction set out in section 38 of the Interpretation Act and echoed, with modifications, in section 8 of the General Clauses Act, the Court found that there was no reasonable basis for excluding those principles when construing the charters of the various High Courts, which were themselves granted under statutory authority and remained subject to the legislative power of the Indian Parliament. Even assuming, without conceding, that the provisions of the Interpretation Act and the General Clauses Act might not technically apply, the Court saw no justification for rejecting the applicability of the construction principles embodied in those provisions to the interpretation of the charters. For these reasons, the Court concluded that the High Court was fully justified in overruling the preliminary objection and in holding that an appeal was

In this case the Court held that the appeal was competent by virtue of the judgment delivered by the late Justice Shah under clause fifteen of the Letters Patent. The appellants had relied, both in the High Court and before this Court, on the decision of the High Court of Judicature of Calcutta in Indian Electric Works v. Registrar of Trade Marks, a case in which a contrary view had been expressed. After a thorough examination of the very elaborate and exhaustive judgment rendered in that matter by the two learned Judges who heard the appeal, the Court, with due respect, concluded that the earlier decision was erroneous. The Court found that the earlier judgment was based on an unduly narrow and restricted interpretation of section one hundred eight of the Government of India Act, 1915, and that it failed to give full effect to the true intent and purpose of clause forty-four of the Letters Patent.

The learned Judges in the earlier case had taken the position that the authority granted by section one hundred eight, subsection one, of the 1915 statute to make rules for the exercise of appellate jurisdiction by one or more Judges of the Court was confined only to the jurisdiction then vested in the Court by section one of the Act as reported in A.I.R. 1947 Cal. 49 and by clause sixteen of the Letters Patent. They held that such rules could not pertain to jurisdiction created by a statute enacted after the commencement of the 1915 Act, nor to an appeal heard by the Court pursuant to such a later statute, because the jurisdiction to hear that appeal had been conferred by the later Act and could not be said to have been conferred upon, or vested in, the Court by section one hundred six, subsection one, and by clause sixteen of the Letters Patent. The present Court identified two defects in that argument. First, it ignored other relevant provisions of the Government of India Act, 1915, especially sections sixty-five and seventy-two. Section sixty-five, subsection one, expressly empowered the Governor-General in Council to make laws for all persons, all courts, and all places and things throughout British India. Section seventy-two additionally authorized the Governor-General to promulgate ordinances in emergencies. Consequently, under the Charter Act of 1915 the High Court possessed not only the jurisdiction it held at the commencement of the Act but also any jurisdiction that might later be conferred upon it by the legislative authority provided in that Act. Reference to section nine of the Indian High Courts Act, 1861—replaced by section one hundred six of the 1915 Act—clarifies this principle. Section nine expressly made the jurisdiction of the High Courts subject to the legislative powers of the Governor-General in Council. Section one hundred six merely conferred upon the High Court the jurisdiction and power to make rules regulating the practice of the Court as vested in it by the Letters Patent, and, subject to any provisions of those Letters Patent, all such jurisdiction, powers and authority that were vested in the courts at the commencement of the Act.

The Court explained that the Letters Patent conferred on the High Courts all the jurisdiction, powers and authority that those courts possessed at the beginning of the Government of India Act, 1915, subject only to any limitations expressly set out in the Letters Patent themselves. It observed that the phrase “subject to the legislative powers of the Governor-General” which appeared in section 9 of the Charter Act of 1861 was deliberately left out of the corresponding provision in the 1915 Act because section 65 of that Act gave the Governor-General a much broader legislative capacity. Consequently, the jurisdiction that the High Courts enjoyed from the moment they were created was always liable to be altered by subsequent legislation. The Court therefore rejected the argument that section 108(1) of the 1915 Act allowed the High Courts to make rules only concerning the jurisdiction that existed when the Act was passed. Instead, it held that the same provision also authorised the courts to make rules covering any jurisdiction that they currently held or might acquire in the future. In support of this view, the Court quoted Clause 16 of the Letters Patent, which the Calcutta Judges had relied upon, stating that the High Court “shall be a Court of appeal from the civil Courts of Bengal and from all other Courts subject to its superintendence and shall exercise appellate jurisdiction in such cases as are subject to appeal to the said High Court by virtue of any laws or regulations now in force.”

The Court went on to note that Clause 16 itself was subject to the legislative authority of the appropriate Legislature, as provided by Clause 44 of the Letters Patent, which expressly declares that “the provisions of the Letters Patent are subject to the legislative powers of the Governor-General in Legislative Council.” Because of this, the Court concluded that the emphasis placed by the Calcutta judgment on the words “now in force” did not change the meaning of the clause. The true purpose of Clause 44, the Court said, was to supplement Clause 16 and the other clauses of the Letters Patent by ensuring that any appellate jurisdiction created by later statutes was incorporated into the jurisdiction already granted by the Letters Patent. To illustrate this, the Court referred to Clause 15 of the 1861 Letters Patent, which had been replaced by Clause 16. Clause 15 contained language to the effect that appeals could also arise “by virtue of such laws and regulations relating to Civil Procedure as shall be hereafter made, by the Governor in Council,” in addition to the phrase “laws or regulations now in force.” The later charter omitted the former words and retained only “laws or regulations now in force,” but the Court held that this retained wording was intended to apply generally to all future legislation, thereby preserving the broad appellate jurisdiction of the High Courts.

The Court observed that the earlier passage referred to “provisions thereof by a separate clause.” The judges who rendered the Calcutta decision, however, interpreted the omission of certain words in clause 16 to mean that the appellate jurisdiction of the High Court, as set out in that clause, was limited strictly to hearing appeals from the civil courts expressly mentioned in the clause and to appeals arising under statutes and regulations that were in force up to the year 1865. The Court disagreed with that view. It held that the judges were incorrect in supposing that the jurisdiction conferred on the High Court by the Letters Patent of 1865 was narrower than the jurisdiction that the High Court possessed under clause 15 of the Letters Patent of 1861. The Court explained that any jurisdiction granted to the High Court by clause 15 of the 1861 Letters Patent was fully incorporated into the amended Letters Patent of 1865, and that the same extent of jurisdiction was reproduced by the combined effect of clauses 16 and 44 of the 1865 charter. Consequently, the Court concluded that the Calcutta judges erred in limiting the High Court’s appellate powers on the basis of the textual change.

The Court further expressed the opinion that the Calcutta decision was also mistaken when it suggested that the scope of the power given to the High Court by section 108 of the Government of India Act 1915 was curtailed by the provisions of section 106(1) of the same Act or by the terms of clause 16 of the Letters Patent. The Court found no basis for such a restrictive construction of the clear and unambiguous language of section 108. It held that section 108 is a standalone enactment, unrestricted in its reach, and that it embraces a much broader field than that covered by section 106 of the Government of India Act. The only relationship between the two sections is their sequential placement in the statute. Section 108 confers upon the High Court the authority to make rules not only concerning the jurisdiction it possessed in 1915 but also concerning any jurisdiction that may later be vested in it by statutes enacted by the Governor-General and the Legislative Council. The Court noted that the line of reasoning adopted in the Calcutta decision led the judges to the rather odd conclusion that the jurisdiction granted by the Letters Patent to the Calcutta High Court was far more limited than the jurisdiction granted to several newer High Courts in India by their own Letters Patent. To illustrate this point, the Court cited clause II of the Patna High Court Letters Patent of 1916, which provides that the High Court of Judicature at Patna shall be a Court of Appeal from the civil courts of the Province of Bihar and Orissa and from all other courts under its superintendence, and shall exercise appellate jurisdiction in cases that, immediately before the publication of the patent, were subject to appeal to the High Court of Judicature at Fort William in Bengal by virtue of any law then in force.

The provisions of the Letters Patent for the Labore High Court, the High Court of Rangoon and the Nagpur High Court all contain clauses that are identical to the one quoted previously. Those clauses show that, for cases that may be appealed to those High Courts, the civil appellate jurisdiction is intended to be flexible and capable of adjustment. In the Calcutta decision, Mr. Justice Das held that because the words underlined in clause 11 were omitted from clause 16 of the Calcutta Letters Patent, the civil appellate jurisdiction of that court under clause 16 was fixed in a rigid manner and could be exercised only over the courts and only in respect of the cases that were specifically mentioned in that clause. When the judge was reminded of the provisions of clause 44 of the Letters Patent, he was forced to acknowledge that the rigidity had been largely removed. He recognized that the powers of the Indian legislature were preserved by section 9 of the High Courts Act, by the amended clause 44 of the Letters Patent and by section 223 of the 1935 Act.

Nevertheless, the judge still expressed the view that a fundamental difference remained between the Letters Patent of the Calcutta High Court and those of the newly created High Courts. He argued that cases later declared by any Indian enactment to be appealable to the Calcutta High Court could not, strictly speaking, fall within its appellate jurisdiction under clause 16, even though the High Court actually exercised appellate jurisdiction over those cases. The Court found that this distinction could not be sustained. The Court concluded that the judge’s view was based on a misinterpretation of clause 44. The purpose of clause 44 was to stipulate that, in addition to the jurisdiction granted by clause 16, the Calcutta High Court would also exercise any appellate jurisdiction that might be conferred upon it by later statutes. It was therefore inconceivable that the newer High Courts would be given a broader appellate jurisdiction or greater rule-making powers than the Calcutta High Court.

The expression “pursuant to section 108 of the Government of India Act 1915” appearing in clause 15 of the Letters Patent does not limit the scope of the right of appeal in that clause to appeals that arise only under the jurisdiction set out in clause 16. Rather, the Court held that those rules apply to all appellate jurisdiction exercised by the Calcutta High Court, whether that jurisdiction existed originally or was later granted by subsequent legislation. The judges in the Calcutta case rejected the applicability of the principle established in the 1913 Appeal Cases 546, as pronounced by the Privy Council, to the matter before them. Their reasoning was summarized by Mr. Justice Das, who emphasized that the language of clause 16, lacking the equivalent wording found in the corresponding clauses of other High Courts, could not support a conclusion that section 76 of the Trade Marks Act merely extended the court’s jurisdiction under clause 16 to a new subject matter of appeal. The Court concluded that the Trade Marks Act created new rights, such as the right to obtain a trademark registration, and that these rights fell within the broader appellate jurisdiction intended by clause 44.

In this case the Court examined a passage quoted from Mr Justice Das in which he set out the reasoning of the Privy Council in several earlier decisions. He observed that the powers attached to the Registrar acting as a tribunal were far less extensive than the powers that had been attached to the tribunal in the Gurdwara case, a point to which Sir George Rankin had drawn particular attention. Mr Justice Das then noted that, having regard to the clear wording of clause 16 of the Letters Patent and the absence of any similar language in the concluding portions of the corresponding clauses of the Letters Patent of the other High Courts, it was impossible to conclude that section 76 of the Trade Marks Act merely enlarged the Court’s appellate jurisdiction under clause 16 by adding a new subject-matter of appeal so that the general principle set out in the 1913 Appeal Cases 546 could be applied. He continued that the Trade Marks Act had created new rights – for example, the right to obtain a registration of a trade mark – and had conferred certain new advantages that followed such registration. The Act had also created new tribunals for its own purposes and had granted a new appellate jurisdiction to this Court. Moreover, the Act had authorised the Court to make rules governing the conduct and procedure of proceedings brought under the Act, and the Court had accordingly framed a separate set of rules. This fact, according to Mr Justice Das, meant that the ordinary procedural rules applicable to appeals in this Court could not be invoked, and that an appeal under section 76 of the Act necessarily involved the exercise of a new appellate jurisdiction regulated by those new rules. The Court held that this line of reasoning was erroneous on several grounds. First, it wrongly assumed that the Gurdwara Act had not created new rights and had not conferred a new appellate jurisdiction on the High Court that it did not previously possess. In reality, the Gurdwara Act created distinctive rights for religious bodies and denied certain civil rights to large groups of Mahants and other persons, rights that were previously unknown in civil law. The High Court, as an established court of record, was constituted as a court of appeal from the decisions of the Gurdwara Tribunal. The principle articulated in the 1913 Appeal Cases 546 had been correctly applied by Sir George Rankin to appeals heard by the High Court under the newly created appellate jurisdiction arising from the Gurdwara Act. Secondly, the Court could not appreciate any special peculiarity in the rights created by the Trade Marks Act that would place the appellate jurisdiction conferred by section 76 on a different level from the jurisdiction created by the special provisions of the Gurdwara Act. The rights created by the Trade Marks Act were civil rights intended to protect persons who carried on trade under marks that had acquired a reputation, and the statute created the Registrar as a tribunal for safeguarding those rights and for giving effect to the rights created by the Act.

In this case, the Court observed that the tribunal had been established to safeguard the rights created by the Trade Marks Act and to give effect to those statutory rights, and that, without any further statutory provision, the High Court had been granted appellate jurisdiction over the decisions of that tribunal. The Court expressed difficulty in identifying any basis on which it could be said that the High Court, while exercising this appellate jurisdiction, must do so in a manner different from the way it exercises its other appellate powers. It was the Court’s view that the situation amounted merely to the addition of a new subject matter of appeal to the existing appellate jurisdiction already exercised by the High Court. The Court further identified a second error, namely the assumption that the appellate jurisdiction of the High Court of Calcutta was considerably more limited than the jurisdiction possessed by the other High Courts. This point had been examined at length earlier in the judgment. The Court also stated that it could not appreciate the emphasis placed on negating the applicability of clause fifteen of the Letters Patent by referring to the provisions of section seventy-seven of the Act. The Court explained that the provisions of section seventy-seven are merely enabling provisions and, as previously noted, the High Court is free to use them or to ignore them as it deems appropriate. There is nothing in section seventy-seven that prevents the High Court from hearing appeals under section seventy-six of the Trade Marks Act in accordance with the general rules that govern all other appeals, nor is there any restriction on the High Court from framing rules for the exercise of that jurisdiction under section one-hundred eight of the Government of India Act, 1915, whether the appeals are heard by a single judge or by a division bench. The Court added that even if section seventy-seven had not been enacted, it could not be said that the High Court would lack the power to make rules for hearing appeals under section seventy-six. Numerous legislative enactments have conferred appellate jurisdiction on the High Court without any additional conditions, and the High Court ordinarily exercises such jurisdiction by framing its own rules under the powers already vested in it by its various charters and by the statutes that have granted it authority. The Court noted that it had been suggested that the reasoning of the High Court was supported by the rule laid down in Secretary of State v. Mask and Co. (1). In the Court’s opinion, that rule had no relevance to the present case and was not in conflict with the rule set out in the 1913 Appeal Cases report forty-six, nor with the later Privy Council decisions previously cited. The Court then recounted the facts of the cited case: under section one-eighty-eight of the Sea Customs Act, the jurisdiction of the civil courts was excluded and an order made by the Collector on an appeal from an order of the Assistant Collector was declared final. A suit was subsequently filed to challenge the Collector’s order on the ground that the finality declared by section one-eighty-eight did not preclude a civil suit. That contention was rejected.

In the Court’s view, when a statute creates a liability that does not exist at common law, and that same statute also supplies a specific and unique remedy for enforcing the newly created liability, it has invariably been held that the party seeking enforcement must use the form of remedy that the statute prescribes. The Court observed that the Trade Marks Act does not establish a special forum for hearing an appeal in the manner that the Sea Customs Act had done. Instead, the Trade Marks Act merely confers appellate jurisdiction on a court that already exists within the judicial system. By contrast, the Sea Customs Act had expressly provided that an order made by the Collector on appeal became final and could not be revisited. The Court noted that the Trade Marks Act contains no comparable provision; it simply provides that an appeal from an order of the Registrar may be taken to the High Court and says nothing further regarding the finality of such orders.

Consequently, the Court concluded that the principle articulated in the 1913 Appeal Cases report at page 546 applied to the present dispute, whereas the rule set out in the case referred to as Mask’s case (67 I.A. 222) was irrelevant to the point under consideration. Regarding the substantive merits, the Court fully agreed with the High Court’s decision and with the reasoning that had been explained in that judgment.

The Court then turned to the operative provision of section 8 of the Trade Marks Act, which reads: “No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a court of justice.” Under this provision, any application to register a trade mark that is likely to deceive or cause confusion must be rejected, even if the mark bears no identity with or close resemblance to any existing trade mark. The Registrar is required to reach this conclusion independently, without merely comparing the applicant’s mark with another registered mark that is the subject of an opposition.

The Court explained that the Registrar must examine the particular circumstances of each case to determine whether the trade mark in question is likely to deceive or cause confusion. The legal principles governing such determinations are well settled. The burden of proof rests on the applicant, who must convince the Registrar that his or her trade mark does not fall within the prohibition set out in section 8 and therefore merits registration. Moreover, the duty to decide whether a mark is likely to deceive or cause confusion cannot be discharged simply by juxtaposing it with an existing registered mark that is being opposed; the decisive question is how the mark would be perceived by the relevant public.

A purchaser, who must be regarded as an ordinary person of average intelligence, would look at a particular trade mark and form an impression based on that mark, and would then decide how the mark relates to the goods that he intends to buy. In the matter before the Court, the goods sold under the respondents’ trade mark are well-known and are commonly requested as “Eagley” or “Eagle”. The distinctive element of the respondents’ trade mark that identifies the goods in the mind of the purchaser is the depiction of an eagle that forms part of the mark. If the mark conveys the idea of an eagle and an unwary purchaser is likely to accept the appellants’ goods as satisfying a request for eagle-type goods, then the appellants’ mark would undoubtedly be likely to deceive or cause confusion. The Court is of the view that the bird shown in the appellants’ trade mark would probably be taken by an average person of ordinary intelligence to be an eagle. Consequently, if a buyer asks for “Eagle” goods and receives goods bearing the appellants’ mark, it is unlikely that he would reject those goods on the ground that the bird depicted cannot be an eagle. Two years before the application for registration, the respondents described the bird in their mark as an eagle and marketed the brand as “Eagle Brand”. Later the same bird was described by the respondents as a vulture, and the respondents explained that the description was the result of an honest and bona-fide mistake. The Court has no hesitation in holding that the appellants’ attempt to disguise an eagle as a vulture by calling it a vulture is likely to cause confusion. Whatever may be said about the bird in the appellants’ mark, it certainly does not represent a vulture nor does it resemble a vulture in any shape or form. What the plaintiffs have called a vulture is, in fact, an eagle shown in a different posture. Accordingly, the High Court was entirely correct in concluding that Mr Justice Shah erred in interfering with the discretion exercised by the Registrar, and that the appellants failed to meet the heavy burden placed on them to demonstrate that the mark they sought to have registered was not likely to deceive or cause confusion. The counsel for the appellants argued that the question of whether their clients’ mark was likely to deceive or cause confusion had already been decided by the earlier judgment of the Madras High Court in the passing-off action, as referred to earlier in the judgment. The Court observes that, in a passing-off action, the burden rests on the plaintiff to prove a likelihood that the defendant’s goods will be passed off as those of the plaintiff.

In the present matter the Court observed that the plaintiff had not denied that the overall appearance of the appellant’s trade mark differed from the overall appearance of the respondent’s trade mark. Consequently, the Madras High Court, when dealing with a passing-off suit, held that on the very limited material placed before it by the plaintiffs the appellants were unable to demonstrate that the defendants’ goods might be passed off as the goods of the plaintiffs. The Court further explained that the factors to be considered in a passing-off action are not identical to those that arise in an application for registration of a mark under the Trade Marks Act. Because the two proceedings are based on different statutory regimes, the decision rendered by the Madras High Court in the passing-off case could not be regarded as controlling on the questions that the Registrar of Trademarks had to adjudicate under the provisions of the Act. Accordingly, having considered the material placed on record and the applicable legal principles, the Court formed the opinion that the appeal filed by the appellants could not succeed. In consequence, the appeal was dismissed and costs were awarded against the appellants. The order concluded with the statement that the appeal was dismissed. The agents appearing for the parties were recorded as follows: the agent for the appellants was R. A. Govind and the agent for the respondents was Rajinder Narain.