Bombay High Court
M/S. Eagle Potteries Private Ltd. vs M/S. Eagle Flask Industries Pvt. on 10 December, 1992
Equivalent citations: AIR1993BOM185, AIR 1993 BOMBAY 185, 1993 (2) ARBI LR 81, (1993) 2 ARBILR 81, (1993) 3 BOM CR 536
Author: S.N. Variava
Bench: S.N. Variava
JUDGMENT
1. By this Petition, the Petitioners seek rectification of the Trade Mark Registry by having Trade Mark "Eagle and Device of Eagle" registered under No. 237136 in Class 21 expunged from the Records of the Register. In the alternative, it is also prayed that the above mentioned Mark be rectified by deleting from the specification of the goods "Glassware, Porcelainware and Earthenware", so that the registration is restricted only to "Thermally insulated containers for food, water and beverages included in class 21".
2. The facts are as follows:
In 1954 one Shivji and Co. which was a partnership firm of the present Directors of the 1st Respondents entered into an Agreement with one Eagle Bottle Manufacturing Co. Pvt. Ltd. of Japan. Pursuant to this Agreement EBMC was incorporated in India. The shareholdings of that Company was owned 1/3rd by Shivji and Co., 1/3rd by Sale Mohamed Padamsee (a partnership firm) and 1/3rd by Eagle Bottle Manufacturing Company.
3. It would appear that on 11th December 1954, an exhibition of pottery and glass was held. In that Sale Mahomed Padamsee and Co. had displayed glassware and enamelware.
This is shown by an advertisement in the Times of India which is annexed as Ex.' A1' to the Affidavit-in-Sur rejoinder dated 2nd April 1992. At this time, Shivji and Co. had also displayed vacuum flasks under the brand name "Eagle".
4. On 9th October 1956 Eagle Vacuum Bottle Manufacturing Co. Pvt. Ltd. (for short hereinafter referred to as EVBM Co.) was incorporated. The Corporate name "Eagle" was shown in a logo having an Eagle perched on a Globe with the word "Eagle" running through the Globe.
5. The pottery and glass exhibition was again held on 17th December 1956. Again Sale Mohamed Padamsee and Co. exhibited its glass and enamelware. This time in the Times of India (of that date) there was an advertisement showing that Eagle vacuum, bottles were being manufactured in India.
6. On 12th May 1958 EVBM Co. registered two Trade Marks with the Eagle Brand device in Class 21 under No. 185010. On 13th November 1959, the said EVBMCo. also registered Trade Mark No. 193366 again consisting of the device of Eagle with the word "Eagle" in Class II. This was for "ice safes installations in heating and cooking in Class II."
7. On 22nd August 1966 the said EVBMCo. got registered the impugned mark in class 21 for "Thermally insulated containers for food, water and beverages; glassware, porcelianware and earthenware included in class 21". This mark consists of the device of a head of Eagle with the word "Eagle" written underneath it. On the same day, i.e., on 22nd August 1966, the said EVBMCo. also got registered the same mark under No. 23135 in Class II for "Installations for heating, cooking and cooling ice safes".
8. By an Order dated 7th July 1976 passed in Company Application No. 15 of 1974 in Company Petition No. 57 of 1976, the said EVBMCo. was amalgamated with one Topaz Glass Private Limited and the name was changed to Topaz Glass Private Limited.
9. On 17th May 1978 pursuant to an.
Order of the Registrar of Company dated 22nd May 1977, the name of Topaz Glass Private Limited was changed to Eagle Flask Pvt. Ltd.
10. The Petitioner Company was incorporated on 18 in August 1982. The Petitioners claim that they adopted the Trade Mark "Eagle" and the device of Eagle for bone Chinaware and pottery in August 1982. They claim that they have been using this mark on bone Chinaware and pottery since that date. The salts figures disclosed by the petitioners Year Basic value 1983-85 2,93,907.90 1984-85 28,82,716.00 1985-86 56,92,385.96 1986-87 83,85,226.12 Up to Feb., 1988.
60,40,635.15
11. At this stage it is relevant to note that the mark of the Petitioners consist of a "Flying Eagle" with the words "Eagle Potteries" underneath it in a semi-circular fashion and the words "bone China" in the semicircular. At this stage, it may be noted that this device and mark prima facie appear quite similar to the mark regularly used by the 1st Respondents predecessors, i.e., the device of a "Flying Eagle" on the top of a "Globe" with the word "Eagle" through it. However these are mere prima facie observations which are not binding on either party. This is a question which would be decided on its merits at the time that the Application made by the Petitioners or registration of this mark on 22nd September 1986 is considered.
12. Eagle Flasks Pvt. Ltd. having learnt about the use of the trade mark 'Eagle', filed a Criminal Complaint in the Magistrate's Court at Esplanade, Bombay. Pursuant to this complaint, Search Warrants were issued and certain products bearing the mark Eagle and the device of Eagle were seized from the Petitioners' factory at Ghaziabad in U. P. This complaint is still pending.
13. On 22nd September 1986, the Petitioners filed their Application for Registration of their mark in respect of "Crockeries, glassware, porcelain and earthenware" in Class 21. That Application is still pending. I am told that it is not advertised in the Trade Mark Journal as yet.
14. On 28th January 1987, the Petitioners have filed in the Court at Ghaziabad Suit No.4 of 1987 against the 1st Respondents. That Suit is still pending.
15. On 28th January 1988, Eagle Flask Pvt. Ltd. was amalgamated with Eagle Flask Industries Pvt. Ltd.
16. On 24th February 1988, Eagle Flask Pvt. Ltd. filed Suit No. 4 of 1988 in the District Court at Pune against the Petitioners for infringment and passing off. On 21st March 1988 an Interim Injunction restraining the Petitioners from using the Trade Mark Eagle was granted by the District Court, Pune. The Petitioners filed Appeal No. 323 of 1988 in the Bombay High Court. That Appeal has been admitted and by an interim Order dated 9th June 1988, the Injunction granted earlier has been stayed. This on the ground that the 1st Respondents had not shown any user of their Mark in respect of "Glassware, porcelain ware, crockery and earthenware". The Appeal is still pending.
17. The Petitioners filed this Petition on 6th June 1988.
18. Mr. Mehta had submitted that even though the 1st Respondents got this Mark registered on 22nd August 1966, they did so without any intention to use the same in respect of "Glassware, porcelainware and earthenware". He submitted that in fact there has been no user of this Mark for a period of five years subsequent to the date of the Application. He submitted in view of this, the Register should be rectified by deleting from the specifications "glassware, porcelainware and earthenware'. On the other hand Mr. Daruwalla has submitted that the 1st Respondents are a very reputed Company who have a very large reputation in India under the Trade Name Tagle'. He submits that the 1 st Respondents have always used the associated mark "Eagle" on goods of the same description. He submitted that the history of the 1st Respondent Company and its pre-
decessors discloses the close association which the 1st Respondent Company has always had in respect of the goods of the same description. He submitted that in any event, the 1st Respondents have always manufactured refills of thermoses and sold them separately. He submits that the 1st respondents have, therefore, in fact manufactured "glassware". He submits that now the 1st Respondent are manufacturing "porcelain and earthenware".
19. From the abovementioned submissions, it must be noted that it is an admitted position that prior to the filing of this Petition there was no user in respect of "Porcelain and Earthenware" so far as this mark is concerned. The argument however is that there has been user on goods of the same description. It is also an admitted position that even in respect of the goods of the same description, provided they are goods of the same description, there has been no user of the impugned Mark, The Mark which has been wildly used is the device Mark of a "Flying Eagle" on top of a "Globe" with the word "Eagle" running through globe. As set out above, that is the mark which has been ' registered under Nos. 185010 and 193366. In respect of the Mark in question, i.e., the head of an Eagle with the word Eagle underneath, admittedly there has been no use at all. However, Section 54 of the Trade and Merchandise Marks Act reads as follows;
"Use of one of associated or substantially identical trade marks equivalent to use of another, (1) Where under the provisions of this Act use of a registered trade mark is required to be proved for any purpose, the tribunal may, if and so far as it shall think right, accept use of a registered associated trade mark, or of the trade mark with additions or alterations not substantially affecting its identity, as an equivalent for the use required to be proved.
(2) The use of the whole of a registered trade mark shall for the purposes of this Act be deemed to be also a use of any trade mark being a part thereof and registered in ac-
cordance with sub-section (1) of Section 15 in "the name of the same proprietor."
20. I have seen the certificate of Registration of Mark No. 193366. It is clear-that the mark No. 193366 is a "registered associated mark". However, whether the Petitioners are entitled to the benefit of Section 54 or not will depend on whether the goods on which they have used this mark could be said to be "goods of the same description". This because under Section 54 the mere use of a registered associated trade mark is not enough. The use of the registered trade mark must be in respect of the same good or goods of the same description. The main question for consideration by this Court therefore is, whether the extensive use by the 1st Respondents of Mark No. 193366 can be said to be use in respect of the goods of the same description. At this stage it must be mentioned that from the material on record, the extensive use which has been established by the 1st Respondents is in respect of vacuum flasks, thermoware which would include jugs, cassaorolles cups, mugs, trays, water containers, ice boxes and lunch boxes.
21. Both sides have cited a number of cases. These may conveniently be considered at this stage.
22. Mr. Mehta relied upon the case of Lifeguard Milk Products reported in 1957 RPC 79. This was an application for registration of the mark "Lifeguard" in respect of milk and milk products. This was opposed by the proprietors of mark comprising the words 'Life Guard' in respect of tea. The Assistant Comptroller held that whilst deciding whether the goods are of the same description or not an important consideration was the trade channel through which the goods reached the public but that that was not conclusive in itself. The Assistant Comptroller held that the production and manufacture of "tea" and "milk and milk products" was completely different inasmuch as tea was a dried leaf tea and milk was an animal secretion. He held that even though both classes of goods were for human consumption and that both the goods could be used in association with each other, they could not be regarded as goods of the same description particularly because the manufacturing processes were different and the nature and use of the product was different,
23. Mr. Mehta next relied on the case of J. Lyons and Co. reported in 1959 RPC Pg 120. This was an application for rectification of the Register by deletion "ice-cream" from the class of goods in respect of which the mark "Hostess" was registered. The Court of Appeal ordered rectification of the Register. This however on the ground that except for one year, use of the mark "Hostess" had not been shown even on "jelly" and "jelly tablets". The question whether "Ice-cream" and "Jelly" and "Jelly tablets" were goods of the same description was not decided. In the case it has been observed as follows:
".... In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases (as Mr. Levy observed) one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged, as Lindley, L.J. observed in the case already quoted, in a business sense; and this is to my mind made clear by considering the legislative background against which the problem has to be judged. By the Trade Marks legislation Parliament has provided that a registered proprietor of a mark, to be used by him in the course of his trade, has a monopoly right to that mark as an indication of the trade source or origin of the goods, and the restriction contemplated by Section 26 is an incident of the general legislative purpose. The question whether goods are or not goods of the same description must therefore (I think) be one to be answered in the context of that purpose; and having regard to that context, the cases cited, and particularly McDowell's case and the Australian Wine Case, lend some support to the view that the phrase goods of the same 'description' ought not to be given too restrictive a construction -- not at all events, so as to be limited to goods substantially analogous in kind, 01 commonly used as mere substitutes or alternatives to one for the other.
To my mind, the present question is very near the line -- a view which may explain or excuse the length of the debate on so apparently simple and short a point. It should be stated that the two things, ice creams and jellies, are not in the same classes under the rules for registration of trade mark. This, however, is admittedly irrelevant..,."
It must be mentioned that Mr, Mehta has relied upon this case for the purpose of showing that the onus of proving the user would be on the 1st Respondents.
24. Mr. Mehta also relied upon the Atlas Trade Mark reported in (1979) RPC Pg 75 59 for the proposition that the onus lay on the registered proprietors to establish that the mark had been used on goods of the same description.
25. Mr. Mehta relied upon the case of J. and J. Colman Ltd. reported in 46 RFC Pg 126. In this case the question was whether "Mustard" and "Semolina" were goods of the same description. It was held that "Mustard" fell under the description of a condiment whilst "Semolina" fell under the description cereal. It was held that "mustard" and "Semolina" were not good of the same description even though both were available side by side in a grocer's shop, in small packets and would frequently ordered at the same time.
26. Mr. Mehta next relied upon the case of John Batt and Co. reported in 1898 (2) Ch. D Pg. 43. In this case it has been held that a trader cannot properly register a trade mark for goods in which he does not deal, or in which he has not, at the time of registration, some definite and present intention to deal. It has been held that where there has been no real user of a trade mark before or since its registration, and it had been registered in a particular class, without any bona fide intention to use it in that class the Court can rectify the Register by expunging the existing mark as an entry made without sufficient cause.
27. In support of his submission that there must be definite and present intention to use on the date of registration, Mr. Mehta also cited the case In re Ducker is Trade Mark reported in 1928 (1) Ch D 405. In this case it has been held that there must be definite and present intention on the part of the proprietor to use the mark and that an intention to assign the mark to a limited company does not satisfy the requirements of the Section. It may only be mentioned that after this case, the English Act was amended in order to enable registration of mark even though the intention may be to assign them to other parties. There are similar provisions in the Indian Act also. This authority, therefore, may not have much validity any longer.
28. Mr. Mehta also relied upon the case of American Home Products Corporation v. MAC Aboratories Pvt. Ltd. . In this case, the Supreme Court has held that as the registration of a Trade Mark confers valuable rights upon the registered proprietor thereof and therefore a person cannot be permitted to register a Trade Mark when he has not used it in relation to the goods in respect of which it is sought to be registered or does not intend to use in relation to such goods. The Supreme Court held that the intention to use the Trade Mark must be genuine and real. It must be noted that in this case the Supreme Court has held that the burden of proof is on the Applicant, The Supreme Court has also held that non-use for the requisite period and the absence of bona fide intention to use at the time of registration, both have to be proved.
29. Mr. Mehta also drew my attention to P. Narayanan's Law of Trade Marks and Passing-off, 4th Edition, page 49 para 5.09 where it has been noted that the words 'proposed to be used' would suggest that the Appellant must have a present and definite intention to use the mark in relation to the goods in respect of which registration is sought and that if the Applicant has not at the time of application sufficiently present and unconditional intention to use the mark the Registrar may refuse the Application.
30. Mr. Tutzapukar, who was permitted to take over, relied upon an unreported judgment dated 4th October, 1990 in Misc. Petition No. 14 of 1989.(Syntex Corporation,' "Panama v. Ambalal Sarabhai Enterprise? Ltd. This was an appeal against the decision of the Assistant Registrar of Trade Marks rejecting the application for rectification of the register in respect of a mark "Femistatin". This mark was registered in respect of pharmaceutical preparations. In this case it was an admitted position that the mark had never been used. However, the non-user was sought to be justified on the ground that it was a well-known fact that pharmaceutical preparations need a lot of research and development and that such research and development takes a number of years and that even after such research and development there were elaborate formalities for procurement of sanction of Government authorities and that due to these special circumstances, the mark could not be used. The learned Judge, after consideration of a number of cases, many of which have been cited before me also, held that there was no data placed before the Assistant Registrar or the Court as to what research or development had been undertaken or what Applications had been made to the Government. It was held and that in the absence of any such data, the ground of special circumstances was not available. On this footing, the Court held that the non-user for a long period coupled with non-placement of factual data justifying non-user lead to the inference that there was no bona fide intention to use the mark. However, in para 127, the Court has held that the Court is entitled to take a subsequent conduct of the Respondents into consideration for the purposes of judging whether there was any bona fide intention to use or not. The Court has held that the mere non-user by itself could never mean that the registered proprietor had no bona fide intention to use the trade mark at the time of application for registration. The Court has held that if the Respondents had given some details of the experiments made or research made or filed better evidence on Affidavit or shown some definite intention to use the trade mark in the immediate future, then the consideration would have been different.
31. At this stage itself it must be mentioned that before this Court, the 1st Respondents have shown that they have started manufacturing crockery and tea coffee sets of earthenware and porcelainware. Of Course these are under the mark 193366. But as stated earlier, that is a registered associated mark.
32. On the other hand Mr. Daruwalla urged that the onus of proof is on the Petitioners. He relied upon the Supreme Court authority in the case of American Home Products (Supra) in support of this proposition. He also relied upon the passage in Law of Trade Marks and Passing off by P. Naiayanan, 14th Edition, pg. 362, para 21.32,where it is stated as follows:
"Onus of proof on applicant. Registration of a trade mark and of all subsequent assignments and transmissions of the trade mark is prima facie evidence of the validity thereof. It, therefore, follows that the onus of proof is on the applicant for rectification to show that the mark is wrongly registered or is wrongly remaining on the register. This is also clear from Ss. 101 and 102 of the Evidence Act 1872 dealing with burden of proof on the pleading and the burden of adducing evidence."
33. Mr. Daruwalla submitted that under Section 32 of the Trade and Merchandise Marks Act, after seven years the original registration is to be taken as valid. He submitted that the Petitioners have not averred or proved any ground on which it can be held that the original registration was not valid. He submitted that it was now not open to Petitioners to challenge the original registration.
34. Mr. Daruwalla relied upon the case of Eastman Photographic Materials Co. Ltd. v. The John Grieffiths Cycle Corporation Ltd. reported in 15 RPC pg. 105. This was an action for infringement and passing off and for expunging the Respondents' mark 'Kodak' in respect of bicycle and other vehicle in Class 22. The Court found that Kodak Company had got a camera especially available for use on cycles, and that these were much used by cyclists. It was also shown that Kodak had advertised these special 'Kodaks' as 'Cycle Kodaks' or 'Bicycle Kodaks' and that Kodak had considerable trade in bicycle accessories so far as they related to the adaptation of the bicycle for photographic purposes. It was held that many shops sold and dealt in bicycles and photographic cameras and materials and that they were so much connected between two classes of business that in all probability the Plaintiffs may manufacture and start selling cycles. The Court took into consideration the fact that suddenly for no apparent reason, the Defendants had started using the word 'Kodak' for cycles and that it had incorporated itself with the name Kodak Cycle Company which was merely to deceive the public. The Court held that the intention appeared to cause the public to suppose that the Defendant Company was the Plaintiff Company or connected with Plaintiff Company and thus obtain the benefit of the large reputation of Plaintiff Company. The Court held that unless the register was rectified, the public would be deceived as goods were of the same description and granted an injunction against the defendants from using the name Kodak Cycle Company Limited or the word Kodak.
35. Mr. Daruwalla also relied upon the case of Australian Wine Importer reported in 6 RPC Pg 311. In this case, there was an application for registration of a mark consisting of a device of a suspended sheep and the words 'Golden Fleece' for wine. This was opposed by the registered owner of a mark comprising of the same device and the same words in respect of spirits. The Court held that "wine" and "spirit" were goods of the same description. The Court held that in considering this too much stress could not be laid on the classification and that if one looks at the classification one would find goods of the same description in different class and goods of different description in the same class. The Court held that merely because "wine" and "spirit" were in different classes need not mean that they were not the goods of the same description. The Court held that in considering this question, one has to look at the trade and the business point of view. The Court held that both were alcohol and sold in the country by the same people and that therefore they were goods of the same description.
36. Mr. Daruwalla also relied upon the case of Gutta-Percha and Rubber Manufacturing' Co. of Toronto Ltd. reported in 1909 RFC 429. In this case a Canadian Company, whose "business was the manufacture and sale of India-rubber goods, including India-rubber footwear, began to export to and sell in the United Kingdom. All their boots and shoes had a device consisting of a Maltese Cross stamp upon them. They applied for registration of this mark for boots and shoes made wholly or partially of India-rubber. An English Company whose business of manufacture and sale of India-rubber goods opposed the application. It was an admitted position that the English company did not manufacture India-rubber footwears though they sold such footwears. But the footwears they sold were not stamped with their trade mark. The Court held that the description of the goods may be narrow or wider than a particular class and that the matter should be looked at from business and commercial point of view and if the Court was satisfied that the goods even though of different class are really of the same description the Court should exercise their discretion and refuse registration as otherwise the public might be deceived. The Court held that the goods were of the same description and that the registration should not be allowed as the confusion, which would be produced, could be very great.
37. Mr. Daruwalla also relied upon the case of George Key Ld. reported in 71 RFC Pg. 106. This was an application for cancellation of mark on the ground of non-use. The registered mark was for "men's and boys' clothing, other than silk stockings and socks". The application was made on the ground that the mark had not been used on any garments other than men's suits, overcoats, uniforms and drill overalls. The Court held that all the goods within the registration were goods of the same description as men's suits, overcoats, uniforms and drill overalls and therefore the discretion not to cancel must be exercised in favour of the proprietors of the mark.
38. Mr. Daruwalla also relied upon the case of John Taylor Pcddie reported in 61 RFC Pg. 31. This was an application by a registered proprietor of a trade mark 'Supervita' for further registration of that word. This was opposed by the registered proprietors of the mark "Supavite". The Applicants also applied for rectification of the Register by removal of the Opponents' marks. This on the ground that the Opponents' mark being deceptively similar and in respect of goods of the same description was wrongly registered. In this case it was held that the "milk products for food" were goods of the same description as "medicated vitamin preparations" in tablet form for human use. This on the ground that specifications of both include goods of a strengthening or curative character which are or may be sold in chemists' shops to some customers and both were goods of a proprietary kind which would besold by reference to the trade mark in small containers or packets.
39. Mr. Daruwalla also relied upon the case of Neutrogena Trade Mark reported in-1984 RFC Pg. 563 in support of the proposition that there can be no rectification unless there is an evidence to show that the mark has been abandoned.
40. Mr. Daruwalla also relied upon the passage from Kerly's Law of Trade Marks and Trade Names, 12th Edition, paras 10-12 which is as under:
"The test to be applied:
The test whether or not goods or services are of the same description would seem to be supplied by a question -- Are the two sets so commonly dealt in by the same trader that his customers knowing his mark in connection with one set and seeing it used in relation to the other, would be likely to suppose that it was so used also to indicate that they were his? The matter should be looked at from a business and commercial point of view. As Viscount Dunedin said in the 'NuvoP. The material considerations arising in connection with the registration of the trade marks are practical'. To the cases on this subject, the oft-quoted proposition that each was decided on its own facts is 'peculiarly applicable' and the observations below should be read with this in mind.
It would seem clear that, before goods or services can be of the same description, there must be a description that covers both, although this is not a sufficient test for a description may be too wide to be usable.
In 'Panda' Romer J. classified the various matters to be taken into account in deciding whether they are goods of the same description into three classes -
(a) the nature and composition of the goods;
(b) the respective uses of the articles;
(c) the trade channels through which the commodities respectively are brought and sold.
Mustard and semolina were not goods of the same description; although they were sold side by side in the same shops and both could be properly treated as articles of food, both being used in cooking, their real nature was different, one falling under the description of a condiment and the other under the description of a cereal.' As between goods on the one hand and services on the other, the question is whether or not they are 'associated'; and by statutory definition this is so if (and, it would seem, only if):
it is likely that those goods might be sold or otherwise traded in and those services might be provided by the same business, and so with descriptions of services'.
The first part of this definition is clear; the reference to 'descriptions' of goods and services less so. Fortunately, the need to compare a description of goods with a description of services, as distinct from comparing particular items within those descriptions should rarely if ever arise."
41. Mr. Daruwalla also referred to the commentary in P. Narayanan's Law of Trade Marks and Passing Off, 4th Edition, pages 235 and 237, paras 15.82 and 15.86 wherein it is observed as follows:
"The question whether two sets of goods are of the same description when they are not the same is one of fact to be determined by ' taking into consideration various factors. The expression 'the same goods' is not synonymous with 'goods of the same description'; 'same' does not mean identical, but denote a rather close similarity; and 'the same description' does not mean that you look for a description which applies to both goods, but rather indicates a similarity in various respects, there being no single conclusive test."
"Factors to be considered. The various matters to be taken into consideration for deciding whether the goods are of the same description are :
(a) the nature and composition of the goods;
(b) their respective uses and functions; and
(c) the trade channels through which they are brought and sold.
It is not necessary that all the three criteria should be fulfilled in order to specified goods to be of the same description as other specified goods. Each case has to be consider-
ed on its own particular facts."
42. Mr. Daruwalla also relied upon the case of Centron industrial Alliance Private Ltd. v. Hindustan Lever Ltd. reported in for "rectification of the register by expunging trade mark "Hi-Life" on the ground that there was no bona fide intention to use it when it was registered and that it has not been used for a period of 5 years. The application was rejected on the ground that the mark "Lifebuoy" had in fact been extensively used and that the use of the associated mark "LIFEBUOY" could be accepted as equivalent to the use of the mark LIFE
43. From the above authorities and the commentary, the following proposition emerges, i.e. each case has to be decided on its own particular facts. In all cases of this kind, nature and composition of goods, their respective uses and functions and trade channel through which they have been marketed and sold have to be considered. Depending on the goods in question, one or two of these characteristics may have greater significances or emphasis on the other. The matter must be judged in a business sense. Also it must be remembered that the said Act has been enacted to ensure that the registered proprietor of mark has a monopoly right to that mark. Sections 46 and 56 are part of the Legislation and are thus subject to the incident of this legislation. The question, therefore, whether or not goods are of the same description must necessarily be answered in the context of that purpose and the goods of the same description must not be given a restrictive construction. In any event the goods of the same description cannot be restricted to goods which are substantially analogous and must include goods which are commonly used as substitute or alternate for one another.
44. As has been set out earlier, the Respondents have been manufacturing variety of goods, viz., thermos flasks, thermowares which would include jugs, casaorolles, cups, mugs, trays, water containers, ice boxes and lunch boxes. AH these are used for storing and serving food, beverages and water. They are all goods which can be and are often manufactured by the same person. They are all goods which would be sold through the same trade channels. These are goods which can only be used in conjunction with crockery, cutlery, earthern-ware and pots and pans. There can be no doubt that a common man seeing these goods with the brand Eagle on crockery or porcelian ware or earthen ware is likely to be deceived into believing that they all emanate from the same Company. Considering that the source, the trade channel and use are all same, in my view, these are goods of the same description. So far as glass ware is concerned. Respondent No. 1 have shown that they have in fact been manufacturing glass refills for thermos flasks and selling these refills separately. They have, therefore, shown continuous manufacture and use of glassware. In my view, under these circumstances, the discretion which the Court obviously has under Sections 46 and 56 must necessarily be exercised in favour of the 1st Respondent.
45. There is one other matter which also need to be set out, and that is the question of burden of proof of such cases. As set out above, Mr. Mehta had contended based upon the authorities in the cases of Atlas Trade Mark reported in 1979 ROC 59 and J. Lyons and Coy Ltd. reported in 1959 RFC 120, burden of proving user was on the 1st Respondent. On the other hand, Mr. Daruwalla had submitted that on the basis of the commentary in P. Narayanan on Law of Trade Marks at page 362 as well as on the footing of Section 32 of the said Act that the burden of proof was on the petitioners. In my view, looking to the wording of the Sections, there can be no doubt that the burden of proving non-user will always be on the party making the averments in the Petition. No other evidence either by way of Affidavits from dealers and traders or oral evidence has been lead to show that there has been no use by the 1st Respondent or that these are not goods of the same description. In my view, merely making an averment is not sufficient. If a party wants to prove a particular fact, the burden is on that party and in cases like the present where the valuable rights of a registered owner are sought to be taken away, the burden must be strictly discharged. On this ground also the Petition fails.
46. Under the circumstances, the Petition stands dismissed with costs.
47. Petition dismissed.