AMERICAN ID1E PRODUCTS CORPORATION v. MAC LABORATORIES PRIVATE LOOTED AND ANR.

AMERICAN h.P.CORPN. V• MAC I.ABS. (YiADON, J.] 337

A 194fs, and an intention to take advantage of those provisions would, in Tll'J opinion, be a sufficient 'intention to use'."

So far as· the 'EOSTITOI' Trade Mark Case relied upon by the · ·Registrar is concerned, it baa no relevance to the question which B we have to decide. It turned upon its own facts.and what was held 1n that case was that the provisions of section 28 of· the English ,Act are riot mandatory but permissive.

The High Court also took the assistance of the Shavaksha Comnittee Report and the Ayyangar Report to enable it to place the construction which it did upon section 48(2). 1'ben it was c intended to revise the 1940 Act, the Government of India set up in 1953 that lrade ¥..arks enquiry Committee under the. Chairmanship~ of Yrr. K.s. Shavaksha, the then, Registrar of 'Irade Marks• The Report . of the .. Shavaksha COILtllittee t.as made. in 1954. The Government thereafter appointed 11.r; Alagiriswami, who had acted D as the Secretary of the Comnittee, as Special Officer to consider the· Shavaksha COILtllittee '-Report, and he made . his own · reconmendations. 'Ihe Government, ··therefore, felt that the Shavaksha ComrrJ.ttee Report and the recommendations made by the Special Officer should be further examined by a judicial authority and it accordingly appointed Mr. Justice Rajagopala E ,Ayyangar to examine the matter. Both the learned Single Judge and the Livision Bench were of. the ' opinion that the ·reconmendation made in the Ayyangar Report were accepted by the Government. 'Ibis is, : however, not correct. 'Ihe Shavaksha Conmittee had reconmended the insertion of a provision similar to clause (b) of section 29(1) of .the English Act in section 36 of the 1940 Act which corresponds to section 45,of the. 1958 Act. The F Ayyangar Report did not accept this recomn.endation but · had recommended the addition of a provision. to the effect that a registered proprietor should not .be entitled to permit use by a registered user ·unless such proprietor had used the .mark in relation to goods in the course of trade for a period of at least two years_before the date of the application for registration of G a registered user •. Parliament did not accept the reconmendation made in either of these Reports. These Reports, therefore, cannot be referred to for ascertaining the intention of Parliament when enacting the relevant provisions of the 1958 Act.

'P'rom what we have said above, we must not be understood to mean ·that a person, who does not intend to use a trade mark · himself can get it registered at)d when faced with an application

338 SUPREME COURT REPORTS [1985] SUPP.3 s.c.R.

A under clause (a) of section 46(1) to have that trade mark removed, turn round and say that he intended to use it through some person who was proposed to be got registered as a registered user. This would clearly amount to trafficking in a trade mark. 'PUSSY GAUJRE' Trade Mark Case could easily have been decided on the ground that the applications for registration made therein, B if granted, would amount to trafficking in trade marka. This has been pointed out in Halsbury's Laws of England, Fourth Edition, Volume 48, in footnote 6 to paragraph 30 at page 25.

In our opinion, to enable the proprietor of a trade mark who has got it registered on the ground that he intends to use the trade mark to avail himself of the fiction created by section c 48(2), he must have had in mind at the date of his application for registration some person to whom he intends to allow the use of the trade mark as a registered user. This would eliminate all chances of trafficking in a trade mark. If an applicant for registration did not have at the date of his application for registration a particular registered user in view, he cannot be said to have had a bona fide intention to use th£ trade mark and D in such an event he cannot resist an application made under clause (a) of section 46(1) of the 1958 Act.

Turning now to the present Appeal, the facts on the record show that only when it was decided to introduce 'DRISTAN' tablets in the Indian market through the Indian Company that the E Appellant made its application to register the trade mark 'DKISTAN'. There was a close connection in the course of trade between the Appellant and the Indian Company. The Appellant owned 40 per cent of the shareholding in the Indian Company. It had entered 1nto a technical co1laboration agreement with the Indian Company which provided for strict quality control and for formulae and services to be provided by the Appellant. The manufacture, marketing and advertising of all products under the said agreement were to be under the control of the Appellant. There was no royalty payable by the Indian Company to the Appellant in respect of the use of the trade mark 'DRISTAN'. In the event of the collaboration agreement being terminated by reason of the happening of any of the events mentioned in the said agreement, amongst which events was the shareholding of the Appellant becoming less than 40 per cent, the Indian Company was to cease to be entitled to manufacture the tablets 'DRISTAN' or to use its formula or to use tfl.e trade mark 'DRISTAN'. There was here, therefore, no question of any trafficking in a trade mark. In these circumstances, the intention of the Appellant to use the

AMERICAN H.P.CQRPN, v. MAC LABS. [MADON, J •] 339

A trade mark 'DRISTAN' through the Indian Company which was subsequently to get itself registered as the registered user of the said trade mark calU1ot but be characterized as ~ fide.

Mr. Nariman, learned Counsel for the Appellant, also urged that in addition to having a bona fide intention to use the trade B mark 'DRISTAN', the Appellant had also used it within a period of one month before the date of the Application for Rectification. For this purpose, learned Counsel relied upon the samples sent by the Appellant to the Indian Company. In the view which we have taken that the two conditions of clause (a) of section 46(1) are cumulative and that the first condition has not been satisfied in this case, we find it UlU1eceasary to consider this point. c

It was also submitted by Dr. Gauri Shankar, learned Counsel for the First Respondent that the Appellant was not entitled to retain the trade mark 1DRISTAN' on ·the register because it had obtained its registration by making a false statement in its application for registration inasmuch as it had not stated in the said application that the said trade mark was proposed to be used by a registered user but instead stated that it was to be used by the Appellant who claimed to be the proprietor thereof. This point was not raised at any time before the Registrar or the High Court and it is not open to the First Respondent to take this point for the first time in this Appeal by certificate. Apart from that, there is no substance in this point. Form 1M-l append- ed to the Trade and Merchandise Marks Rules, 1959, does not contain any column similar to the column in the new Form No. TM-2 appended to the English Trade Marks Rules, 1938. The relevant portion of Form TM-1 is as follows : F " Application is hereby made for registration in Part A(a)/B of the register of the accompanying trade mark in class (b) •••••••••••••••••••••••••••••• in respect of (c)••••••••••••••••••••••••••••••••••••• in the name(s) of (d)••••••••••••••••••••••••••••••• whose G address is (e) .••..••••..••••••••.••••••••• ,-.. who claim(s) to be the proprietor(s) thereof (and by whom the said mark is proposed to be used) (f) or (and by whom and his ( thefr) predecessor( a) in title (g) the said mark has been continuously used since ••••••••••• •••.•• 19 ••••••••••• ) in respect of the said goods(h)." H The Appellant, therefore, caru10t be said to have practised any deception in stating in its application that it intended to use

340 SUPREME COURT REPORTS [1985) SUPP.3 s.c.R.

A the trade mark itself. In our opinion, it would be better if the Central Government were to amend Form Til-1 to require the applicant to . state whether he proposes to use the trade mark himself or through a registered proprietor and if so, to state the particulars of the.proposed registered user. B It was ~t sought to be ·argued by Dr. Gauri Shankar that the trade mark 'DRISTAN' was deceptively and confusingly similar 'to the trade mark 'BISTAN' of which the registered proprietor is M/s. Prof. Gajjar's Standard Chemical Wroks Ltd. This is not one of the questions upon which the certificate was granted by the High. Court,and it is not open to the First Respondent to take c this point in this Appeal. In any event, this point too is without any substance. It was rejected by the Registrar. The learned single Judge did not deal with it. Though the Uivision Bench was.of the opinion that it.was not-necessary to decide that questi.on,. it recorded the facts relating thereto whl.ch wou1d justify the rejection of that contention. These facts are that though the proprietor of the said trade mark 'BISTAN' had made an D affidavit supporting the First Respondent in. the proceedings for rectification of the Register it had not either opposed the registration of the trade mark . 'DRISTAN' nor had it at any time alleged, apart from the said affidavit, that there would be any confusion_ or deception by the use of the trade mark 'DRISTAN',

E In the written' sul:missions filed by the First p_.;spondent after the hearing before us was concluded it was contended that the Court's discretion should be exercised against the trade mark 'DRISTAN' remaining on the Register inasmuch as to allow it so to · ·continue would be ·contrary to the policy of the · Central Government with respect to .brand names belonging to foreign , F companies· and also because two of the ingredients used in the '·<. · formula for the manufacture of . 'DRISTAN' tablets were banned by ·-..... .... the authorities. In support· of this contention copies of some 'circulars and notifications were. filed along with the written· submissions •. This point was not at any time ·taken before the . Registrar or the High Court' nor does the certificate granted by G· the High court cover it. It is not fair to produce copies of any ' circular or notification .. along' with written sul:missions after oral ; .arguments have · closed . because the other . side has. no opportunity to . meet this case. For ought we know, after some ingredients in the composition of the 'DRISTAN' tablets were banned, the manufacturers may have changed the formula, We are H not ciincerned in this Appeal with this question. The application I for registering the Indian Company as the registered user of the I

AMERICAN HoPoCORPN. Vo MAC LABS. [MADON, J.] 341

A said trade mark is atill pending and when the Central Govemment comes to consider that application, it will decide the matter for itself, After all, the best guardian of the policy of the Central Government is the Central Government itself and not a private limited company,, namely, Hae Laboratories Private Lilllited, the First Respondent before us, which has a vital interest in having B the trade mark 'DRISTAN' removed from the Register.

For the reasons given above, this Appeal must succeed and is allowed and the judgment of the Division Bench of the Calcutta High court appealed against is reversed and the order passed by it is set aside. Consequently, Appeal No. 165 of 1968 filed by c the Appellant before the Division Bench of the Calcutta High Court is allowed with costs and the judgment of the learned Single Judge of that High Court and the order passed by him are reversed and set aside. As a result Appeal No. 61 of 1965 filed by the First Respondent before the learned Single Judge of the Calcutta High Court is dismissed with costs and the order of the o Registrar of Trade Marks, Calcutta, dismissing the First Respondent's Application for Rectification No. CAL-17 with costs is confirmed.

The First Respondent will pay to the Appellant the costs of E this Appeal.

A.P.J. Appeal allowed.