1. A rather important and interesting question relating to the law of trade marks arises on this appeal. The facts briefly are that the appellants' traae mark was registered on the 15th April 1944. It was a mars containing a Crane (bird) and the name 'Bug Chhap' and the mark was used in connection with washing soap used by the appellants. On the 1st June 1951, the first respondent made an application for registration of a trade mark which was of a Duck and bearing the name 'Batak Chhap'. On the 18th July 1951, the petitioners filed an infringement action against the first respondent before the District Court in connection with this mark and the appellants obtained an interim injunction. They also adopted criminal proceedings against the first respondent. It may be stated that the learned District Judge subsequently dissolved the interim injunction taking the view that there was no likelihood of deception comparing the two marks. On the 1st December 1951, the first respondent's mark was advertised and on the llth February 1952, the appellants filed a notice of opposition. On the 29th January 1953, the criminal case was compounded and there was also a consent decree taken in the Civil Court on the 15th April 1953, and by this consent decree the first respondent agreed to amend his mark by substituting another mark which appears at p. 10 of the paper book and which contains also a Duck but in a different posture and differently figured from the one for which he had applied for registration. On the 6th April 1953, the first respondent applied to the Registrar to amend his trade mark to bring it into conformity with the mark agreed to in the consent decree and which appears at p. 10. On the 18th May 1953, the Registrar gave notice to the appellants of this application far amendment and the appellants replied on the 8th September 1953, stating that they did not admit that the amended trade mark was dissimilar to their own trade mark and stating that they wanted to proceed with the opposition. At the hearing of the opposition the appellants were not present, their application for adjournment having been refused, and an ex parte order was passed by the Registrar on the 30th November 1954, ordering the registration of the trade mark of the first respondent as amended. The appellants appealed to this Court and Mr. Justice Coyajee dismissed the appeal and the appellants have now come in appeal to this Court.
2. Mr. Shah who appears for the respondents has very carefully drawn our attention to various aspects of the matter and the various provisions contained in the Trade Marks Act and the rules made thereunder, and his contention is that in amending the application the Registrar exercised his jurisdiction under S. 14 (3) which provides:--
"The Tribunal may at any time, whether before or after acceptance, correct any error in or in connection with the application, or may permit the applicant to amend his application upon such terms as it may think fit."
It is submitted by Mr. Shah that this sub-section gives the widest jurisdiction to the Registrar and this jurisdiction is tantamount to the Registrar allowing an amendment, whether before or after acceptance of the application, and also the jurisdiction to allow such amendment as he thinks proper.
3. Now, before we can accept this submission of Mr. Shah we must look at some other provisions of the Act and the scheme underlying the Trade Marks Act. Section 14 (1) permits the Registrar to refuse an application or to accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit. Therefore, when an application for registration is presented, it is open to the Registrar to refuse it in limine, or he may accept it subject to amendments, modifications, conditions or limitations. But when he does accept it, then under Section 15 (1) it is obligatory upon the Registrar to advertise the application in the prescribed manner. He has a discretion to advertise it before its acceptance, but after acceptance it is not a question of his discretion but it is a mandatory provision of the statute that he shall advertise an application after its acceptance, and there is very good ground why the Legislature has made it obligatory upon the Registrar to advertise a trade mark after acceptance, because under Sub-section (2) of Section 15, any person may, within the prescribed time from the date of the advertisement of the application, give notice in writing in the prescribed manner to the Registrar of opposition to the registration. Therefore, the advertisement constitutes a notice to the public and under Section 15 (2) any member of the public is entitled to came in and oppose the application for registration. Therefore, what the Act provides is that no trade mark shall be registered unless the public has had notice of an application for the registration of that trade mark and unless the public had had an opportunity- to oppose that application. If we bear in mind the fact that the Register exists in the interest of the public and the whole object of the Trade Marks Act is to serve the public and to prevent the public from being deceived by an improper trade mark being put on the Register, then it would become apparent why it is so very necessary that every trade mark application should be advertised before the trade mark is registered.
4. Now, in the light of this provision it is difficult to accept Mr. Shah's contention that if an application for registration is made and duly advertised, it is open to the Registrar at any time to amend that application so as to substitute even a different trade mark from the trade mark which was sought to be registered by the original application and which application had been advertised. If that were to be the correct interpretation of Sub-section (3) of Section 14, the result would be that although the public had notice of a particular trade mark which was sought to be registered, ultimately an entirely different trade mark might be registered without notice to the public. Take this very case. The advertisement was published on the 1st December 1951 and the public had notice that a particular trade mark was sought to be registered and the public had the right under Section 15 (2) to come in and oppose. It may be that the public may have thought that there was no proper ground for opposing that particular trade mark. Then the first respondent applied for amendment of his trade mark and ultimately that amended trade mark was registered. The public had 110 notice of this amended trade mark. Although a member of the public may not have opposed the original trade mark, he might have wanted to oppose the amended trade mark, but by the amended application or the amended trade mark not being advertised, he had no opportunity either of knowing that such an application had been made or that a different trade mark was sought to be registered.
5. Therefore, it is not possible to give to the expression 'to amend his application' the very wide connotation which Mr. Shah seeks to place upon it, and really the very narrow question that wo have to consider in this appeal is: What is the proper interpretation to be placed upon the expression 'to amend his application' used by the Legislature in Section 14 (3)? It was rather faintly urged by Mr. Shavaksha that the expression 'to amend his application' must be restricted to amending any error or mistake in the application made by the applicant for registration, and that that expression cannot be extended to mean any modification, however slight, of the trade mark itself, and in support of this it was pointed out that when we look at Section 14 (1) the Legislature has used not only the word 'amendment' but also 'modification' and that is at the pre-acceptance stage, but Sub-section (3) only uses the word 'amend' and not the word 'modify', and a distinction is therefore sought to be drawn between these two expressions. In further support of this argument reliance is placed on a passage in Kerly on Trade Marks at p. 73:--
"Whether after opposition has been entered the Registrar has power to permit a modification of the mark applied for seems to be at least doubtful. The Registrar considers that he has no jurisdiction once opposition is entered, to decide that registration shall be allowed upon a modification of the mark itself." It may be pointed out that both Section 12 (6) of the English Act of 1905 and Section 17 (7) of the English Act of 1938 are identical in terms'to Section 14 (S). But Mr. Shah has drawn our attention to another passage in Kerly at p. 52:-- "Modifications in the mark itself are sometimes allowed, the Registrar deciding whether the modification is sufficient to necessitate re-advertisement."
Therefore, it seems to us that the correct approach to the problem is not to draw a distinction between the use of the expression 'amendment' in contradistinction to the use of the expression 'modification', but rather to construe the expression 'amendment' keeping in mind the scheme of the Act and the object of the Legislature in placing this legislation on the statute book, and some assistance is afforded by look-Ing at two or three other sections of the Act. In the proviso to Section 6 (3) the language used is 'additions or alterations not substantially affecting its identity', and again in Section 44 (1) the same language is used, and finally in Section 48 (1), the language is more to the point, which permits the Registrar after registration to amend a trade mark in any manner not substantially affecting the identity thereof, and in our opinion the proper construction of Section 14 (3) is to equate the discretion exercised by the Registrar under Section 48 (1) with the discretion conferred upon him under Section 14 (3). Just as the Registrar cannot allow an amendment of a trade mark after registration which would substantially affect its identity, similarly the Registrar has no power to allow amendment of a trade mark alter the original trade mark has been advertised in a manner affecting the identity of the trade mark. The reason underlying this provision is the same both under Section 48 (1) and under Section 14 (3). Under Section 48 (1) the reason is that the trade mark having been advertised after the procedure laid down under the Act the same trade mark should continue and if any alteration has to be made it must be an insignificant alteration or a superficial alteration but not an alteration altering the identity of the trade mark itself, because if the trade mark was to be altered substantially then a fresh application would have to be made, it would have to be advertised, opposition invited, and so on. Similarly, under Section 14 (3) if an application for a trade mark has been accepted and an advertisement has been directed pursuant to Section 15 (1), then no amendment of the trade mark can be permitted such as to affect the identity of the trade mark, unless the amended trade mark is again advertised, because in the eye of the law a trade mark which is so amended as to alter its identity requires a fresh application because the application is no longer for the registration of the original trade mark but the application is for the registration of a new trade mark.
6. Mr. Shah has further urged upon us the consideration that the only obligation upon the Registrar to advertise is under Section 15 (1) and the Registrar having discharged that obligation by advertising the application of the first respondent on the 1st December 1951, there is nothing in the statute to suggest that there is any other obligation upon the Registrar to advertise the amended application. Now, there is a clear fallacy underlying this argument. There is no obligation upon the Registrar to advertise an amended application if the amendment does not result in substantially altering the identity of the trade mark, because in the eye of the law the trade mark is still the same and the same application is being pursued which has already been advertised. But when the identity of the trade mark is altered, in the eye of the law there is a new application before the Registrar and if he accepts that application under Section 13 (1) it becomes obligatory upon him to advertise that application. Therefore, whichever way one looks at it, the real position in , law seems to be that when an application for amendment is made after acceptance, it is for the Registrar to apply his mind and consider whether the application is such as would result in substantially affecting the identity of the trade mark. If he comes to that conclusion, then the amended application must be advertised. If, on the other hand, he comes to the conclusion that the amendment will not substantially affect the identity of the trade mark, then it is discretionary with him whether he should or should not order advertisement.
7. That brings us to the question as to the nature of this amendment. Now, primarily, it is for the Registrar to decide whether" the amended trade mark appearing at p. 10 of the paper book substantially affects the identity of the original trade mark which appears at p. 9 of the paper book, and if the Registrar had exercised his discretion after considering those two trade marks, the Court would be most reluctant to interfere with that discretion. Mr. Shah is right that the Registrar of Trade Marks with his vast experience of trade marks is a much better judge in these matters than the Court can ever be. But the decision of the Registrar must be given after considering the relevant and material provisions of the law and after applying his mind to what the law directs him to apply his mind to. If his judgment is given without these considerations, then if the Court interferes, it is not interfering with his discretion but it is interfering because the Re-gistrar has failed to exercise properly the juris-diction vested in him. Now, we may say this that the identity of which we have been speaking so far is not identity in the sense that if you maintain the same bird or the same animal or the same human being, you are necessarily maintaining the identity of the trade mark. The question of identity would depend upon various factors - how the particular object appears in one trade mark and how it appears in the other, what part of the object is emphasised in one and what part in the other, what impression one object will give to the purchaser and what impression the other object will give to the pur-, chaser --, and therefore we do not agree with the view that merely because in the trade mark at p. 9 and the trade mark at p. 10 we find the same bird, necessarily and inevitably the two trade marks must be identical. But that again is a question for the Registrar to consider.
8. Now, what we must try and ascertain is -- what has the Registrar decided when he ordered registration of the trade mark? When we turn to his judgment, there is unfortunately one error into which the Registrar has fallen and that is that he somehow seems to have thought that the trade mark which was sought to bo registered after amendment was the same trade mark which was the subject-matter of the infringement action and the criminal proceedings. That obviously was not so. He has also taken into consideration the question as to whether the amended trade mark was likely to cause deception comparing it with the trade mark of the appellants. Now, this, again with respect, is a totally wrong approach. At this stage what the Registrar should have considered was not whether the amended trade mark closely resembled or was identical with the trade mark of the appellants, but what he should have considered was whether as between the original trade mark applied for by the first respondent and the amended trade mark there was such alteration as to affect the identity of the original trade mark, because the comparison was not between the rival trade marks of the appellants and the first respondent, the comparison was between the two trade marks of the first respondent himself. The Registrar should have considered what the real position was as between the original trade mark of the first respondent and the amended trade mark of the first respondent from the point of view of the public and not from the point of view of the appellants because, as already pointed out, if there was a change in identity the question would.be not so much as to whether the appellants were entitled to oppose but as to whether any member of the public might be affected by the amended trade mark and would want to come in and oppose. This aspect of the matter is completely absent in the judgment of the Registrar and therefore we cannot look upon his order as having proceeded from the exercise of. his discretion under Section 14 (3) after considering the only relevant question as to whether the identity of the original trade mark was affected by the amended trade mark.
9. Turning to the judgment of the learned Judge, with great respect, what he has considered is the two trade marks and he has come to the conclusion that they are dissimilar, and Mr. Shah wants us to attach importance to the view taken by the learned Judge. We would undoubtedly have attached the greatest importance to his view, but for the fact that, with respect, it was not for the learned Judge to form this view but for the Registrar, and all the learned Judge was concerned with was to see whether the Registrar had properly exercised his discretion after considering the relevant matters which had to be considered before this discretion was exercised.
10. The result therefore is that the appeal must succeed. The order of the learned Judge will be set aside and also the order of the Registrar registering the first respondent's trade mark dated 30th November 1954.
11. With regard to costs of the appeal and costs of the hearing before Mr. Justice Coyajee, we do not think that the appellants should get their costs from the first respondent. Although they have come before us in the guise of a custodian of public interest, it must not be forgotten that the application for amendment made by the first respondent was necessitated by the compromise arrived at in the litigation between these two parties and on the strength of that compromise the application for amendment was made, and notwithstanding the appellants having agreed to the first respondent using this amended trade mark they opposed it before the Registrar and also in appeal before Mr. Justice Coyajee. Therefore, if the appellants want to render a service to the public they should do so at their own cost. Therefore there will be no order as to costs of the appeal and the costs of the hearing before Mr. Justice Coyajee.
12. With regard to the costs of the Registrar, he did appear before Mr. Justice Coyajee, and we have now laid down the practice with regard to these costs. (James Chadwick & Bros. Ltd. v. The National Sewing Thread Co. Ltd.
, (A). We see no reason why we shouid depart from that practice in this case. Therefore the costs of the Registrar must be paid by one party or the other. Inasmuch as the Registrar came to support an order which we have now held to be erroneous, the costs of the Registrar must be paid by the first respondent.
13. Liberty to the appellants' attorneys to
withdraw the sum of Es. 500 deposited in Court.
14. Appeal allowed.