S. Ranganathan, J:

1. Though this appeal, under section 109(2) of the Trade & Merchandise Marks Act, (43 of 1958) the Act., in short, appears to involve basically only a simple question of fact, on which the Registrar of Trade Marks has reached a conclusion adverse to the appellants, a plethora of decision reported in the English Series of Reports of Patents, Design and Trade Marks Cases have been cited by both sides and it, is therefore, perhaps better to start with a brief survey of the relevant provisions of the Act.

2. A Trade mark side S. 2 (v) (ii) means that is, a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof-see S.2 (j)-used or proposed to be used in relation to goods for the purpose of indicating or as to indicate a connection in the course of trade between the goods and some person having the right either as proprietor or registered user, to use the mark whether with or without any indication of the identity of that person. It is a visual symbol, the form of a brand, a device or a label applied to articles of commerce with a view to indicate, to the purchasing public, that they are the goods manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt in by other persons. Unlike in the case of Patents, designs and copyrights, this symbol may be very ordinary and commonplace thing and need not be the result or indication of inventive skill or intellectual labour. Still, subject to certain conditions, the owner of the mark acquires a right to the exclusive use of that symbol in relation to the particular goods in respect of which it is registered or used. The Trade Marks Act, 1940, enacted in India, was almost a replica of the U.K. Trade Marks Act, 1938. After independence, the Government of India appointed a Trade Marks Enquiry Committee whose report disclosed a strong divergence of opinion on all-important matters amongst its members. The government then requested Justice Rajagopala Ayyangar to undertake a comprehensive review of the whole matter and the present Act is the outcome of the labour of this Committee. It is a comprehensive piece of legislation providing for the registration and better protection of trade marks and for the prevention of the use of fraudulent marks on merchandise. Some of the provisions of the Act which are relevant to the points as in this case may now be referred to.

3. The Act envisages the appointment of a Registrar of Trade Marks (S.4) and the maintenance of register, containing all details of all registered trade marks and comprising of two parts, A & B (S9). A trade mark may be registered in respect of any or all of the goods comprised in a prescribed class of goods (S.8). Section 11 prohibits the registration of certain marks on ground of public policy and S. 12 prohibits the registration of certain marks on ground of public policy and S. 12 prohibits the registration of a trade mark identical with or deceptively similar to a trade mark already registered in respect of the same goods or description of goods. However, under sub-section (3) of S. 12, in case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper to do so, he may permit the registration to more than one proprietor of trade mark which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose. Sections 1 to 16 lay down certain rules regarding registration which are not relevant for or present purposes. Section 17 enables a registration subject to a disclaimer. It enacts;

If a trade mark-

contains any part-

(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or

(ii) which is not separately registered by the proprietor as a trade mark; or

contains any matter which is common to the trade or is common to the trade or is otherwise of a non-distinctive character;

The Tribunal in deciding whether the trade mark shall be entered or shall remain on the register, may require, as a condition of its being on the register, that the proprietor shall either disclaim any right to the exclusive use of which the Tribunal holds him not to be entitled, to make such other disclaimer as the Tribunal may consider necessary for the purpose of defining the rights of the proprietor under the registration;

Provided that no disclaimer shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.

4. Chapter III of the Act lays down the procedure for and duration of registration. It is sufficient to note here that any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, may apply in writing to the Registrar for its registration in part A of the Register. The Registrar may refuse the application, or may accept it absolutely or subject to such amendments as modifications, conditions and limitations as he may think fit (S. 18). An acceptance can also be withdrawn by the Registrar (S.19). If an application is accepted, the Application and the terms of acceptance are advertised in some cases, even before acceptance, the Registrar may cause the application to be advertised (S. 20). Any persons opposing the registration should file their objections within the prescribed time; and the Registrar, after giving the applicant an opportunity to file a counter-statement, allowing the parties to lead evidence and hearing the parties, will decide whether and subject to what conditions and limitations, if any, the registration is to be permitted (S. 21). Where an application is not opposed within the prescribed period or the opposition is decided in favour of the applicant, the Registrar shall register the trade mark as of the date of the making the said application which shall be deemed to be the date of the registration and issue a certificate of registration under his seal (S.23). The registration of a trade mark is for a period of seven years but may be renewed from time to time in accordance with the provisions of section 25. The registration of the trade mark gives the registered proprietors the exclusive rights to use the trade mark in relation to the goods concerned and also enables him to obtain relief in respect of the infringement of the said trade mark in accordance with the provisions of the Act (Sections 27 and 28). In all legal proceedings relating to a trade mark registered in Part A, the original registration of the trade mark shall, after the expiration of seven years from the date of such registration, be valid in all respects unless it is proved:

that the original registration was obtained by fraud; or

that the trade mark was registered in contravention of the provisions of sec. 11 or offends against the provisions of that section on the date of commencement of the proceedings, or

that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietors(S.32).

Section 46 enables any person aggrieved to move an application seeking the removal of any registered trade mark from the register or, at least the imposition of certain limitations in regard to its user on the grounds of non-use of the trade mark during the specified period.

5. We are concerned in this case with a proceeding for the rectification and correction of the register dealt with in Chapter VII of the Act. Section 56, insofar as is relevant for the present purpose, enacts as follows:

56 Power to cancel or vary registration and to rectify the register. (1) On application made in the prescribed manner to a High Court or to the Registrar by any person aggrieved, the Tribunal may make such order as it may think fit for canceling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.

(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to a High Court or to the Registrar and the Tribunal may make such order for making, expunging or varying the entry as it may think fit.

(3) The Tribunal may in any proceedings under this section decide any question that may be necessary or expedient to decide in connection with the rectification of the Register.

6. In the context of the above statutory provisions, the dispute of the present case arises on the following facts. The goods we are concerned with in the appeal are washing soaps. Some how many soap manufacturers appear to have taken a fancy to a trade name comprising of a number (2, 3, 5 and 7) attached to the word Bhai. It has been brought to my notice that there had been application for the registration of the following trade mark in respect of washing soaps:

Application No.DateName of ApplicantTrade Mark

166,73020.11.54Do Bhai SoapWorksDo-Bhai

232,33515.11.68Uttam ChemicalUdyog5-Bhai

287,43917.4.73Sugar SoapFactory3-Bhai

301,79628.12.74Rishi SoapWorksBahi-Bhai

305,77924.5.75Uttam ChemicalUdyogBhai-Bhai

307,73614.8.75-do-5 Bhai





The first two had been accepted and registered and the others have been advertised before acceptance under the proviso to Sec. 20 (1) of the Act. We are concerned with the record of these which was got registered by the appellants on 15.11.68 and would have fallen for renewal on the expiry of the seven years period in November, 1975. That registration would then also have attained the conclusiveness of validity envisaged by S. 32 of the Act.

7. On 28.4.1975, the respondent Rishi Lal Gupta, proprietor of Rishi Soap works, filed before the Registrar an application for rectification of the register under S. 56 of the Act in regard to the above trade mark. At this stage, it may be mentioned that, against the above entry there had been recorded a disclaimer use of the numeral 5.The respondent now sought either that the entry relating to registered trade mark No. 252, 235 should be expunged from the register or that against it should be entered a disclaimer also on the expression BHAI. His grounds for seeking the rectification were as under: -

He had been carrying on business as a manufacturer and merchant of washing soap under the trade mark Bhai Bhai and had applied for registration thereof as early as 28-12-1974 but the appellants trade mark was cited as one of the confusing mark standing in the way of his application being accepted.

That the word (BHAI) was (public) (juris) in the washing soap trade due to its common use therein. Since the appellants had obtained its registration without disclosing this fact to the Registrar, the registration had been obtained by fraud and contrary to the provisions of the Act.

8. In support of the Application for rectification the respondent relied on the following evidence: -

(a) (i) Affidavit of Girraj Kishore, General merchant at Hasanpur Gurgaon that he had been selling washing soap manufactured by different manufacturers under the Trade Mark 3 Bhai, 2 Bhai, 5Bhai, 6 Bhai and Bhai-Bhai. Photostat copies of three bills dated August, 1972, Dec. 73 and Apl. 76 showing the purchase by him of small quantities of 6-Bhai and 3-Bhai soaps were filed alongwith the affidavit.

(ii) Affidavit of Ram Avtar, Kirana merchant at Ballabgarh, that he had been selling washing soaps of various brands such as Bhai-Bhai, 5 Bhai, 7Bhai, Padam Soap and with numerals 5 and 75, Photostat copies of bills of Dec. 74, Nov. 75, June 74 and Nov. 75 were filed with this affidavit.

(iii) Affidavit of another Ram Avtar, general merchant of Ballabgarh to a like effect referring to sales of brands such as 3-Bhai, 2-Bhai, 5-Bhai, Bhai-Bhai accompanied by photo state of bills of May 76, Jan. 76, Feb. 73, Mar. 73, Nov. 71, August 75 and Apl. 76.

(iv) Affidavit of Suresh Kumar, a kirana merchant of Sona to the effect that he had marketed washing soaps of brand A-1 Bhai, the instance of a sale as per bill dated 28-12-1974, being enclosed.

(v) Affidavit of Trilok Chand, a general merchant of Sowna, that he had been dealing, inter alia, in washing soap of brand name A-1 Bahi supported by a bill dated June, 75.

(vi) Affidavit of Satish Kumar, a general merchant at Sohna to the like effect, supported by a bill of 1973:

(vii) Affidavit of Rishi Lal Gupta, the respondent, explains that the trade mark Bhai-Bhai under which he marketed the washing soaps manufactured by him since 1.6.1973 was based on the portraits of his two sons and that this trade mark had been recognized by the public as the goods manufactured by his firm. The approximate annual turnover of these goods stated to be:

YearTurnover

Rs.

1,500-00

28,000-00

2,76,726.46

He has applied for registration of this trade mark under No. 301, 796 by application dated 28-12-1974. He claims that the word Bhai is common to the trade of washing soap and several persons/firms had been using the said word, as shown by the affidavits of these manufacturers which were also filed. The affidavit then proceeded to refer to a litigation (mentioned below) and to reply to the appellants counter-statement in details.

(b) In addition to the above affidavit, the respondent also relied on the following circumstances. The appellants had filed a civil suit in the District Court at Gurgaon against seven defendants, Sood Soap Works, Sagar Soap Factory (New Delhi and Faridabad), Krishna Soap Manufacturing Works, Khanna Soap Mills, Wadhwa General Stores and Ajai Chemicals of Delhi, Faridabad, Palwal and Ballabgarh. He case set out in the plaint was that defendants 1, 2, 3, 4, 5, 6, and 7 had recently started manufacturing washing soap under the trade names 2-Bhai, 3-Bhai 4-Bhai and 6-Bhai respectively and that the plaintiff, on account of such nafarious activities of the defendants, had suffered and will suffer damages and irreparable injury to their reputation as the defendants were putting up efforts to flood the markets with superior washing soaps bearing the impugned trade marks. It was therefore prayed that a perpetual injunction should be issued restraining the defendants from manufacturing or trading in these brands of soap and thus infringing the plaintiffs trade mark. In the written statement in the said suit filed on behalf of the defendants, it was pointed out that the defendants were separate and unconnected persons and one suit against all of them was not maintainable. It was also claimed-

The trade mark 252,835, is not valid trade-mark. Its registration is bad in law. The word Bhai is common to the trade of washing soap. There are number of manufacturers who are using the word Bhai with soap prefix earlier to the plaintiffs. The plaintiff committed fraud in appropriating the word Bhai to themselves and getting the same registered at No. 166, 716. The defendants have decided to get the trade mark 252, 835 rectified.

It was claimed that defendant I had been using the trade mark 2-Bhai since December, 1966 (no. 166, 716) defendant 2 had been using the mark 3-Bhai since Dec. 1968 (applied for registration under No. 266, 689 substituted by 287, 439); defendants 4 had been using the trade mark 4-Bhai for the past 8 months; and defendants 5 had been using the 6-Bhai mark for the last 3 years. It was claimed that the turnover of these brands had been very huge. The suit had been dismissed on 18.11.1972 against defendants 1 to 6 on the application of the plaintiff seeking the strike off their names accepting the defendants plea of misjoinder. The plaintiffs application for leave to file fresh suits against the six-defendants was rejected on 13.2.1973.

(c) Further, it was pointed out on behalf of the defendant that the trade mark 2-Bhai had been registered and application had been made on several dates for the registration of the trade marks Nos. 287439, 305779, 316854 and 313850 in respect of 3-Bhai, 4-Bhai, 7-Bhai and Bhai-Bhai respectively.

9. On the other hand, the appellant put in the following evidence.

(i) Affidavit by Lachman Dass, partner of appellant firm to the effect that the firm has been manufacturing and marketing washing soap of brand name 5 Bhai since 1967 and this trade mark had been duly registered after production of evidence in support thereof, copies enclosed. The marketing was originally done thereby M/s. Subhash Chander Vinod Kumar of Ballabgarh, who functioned as sole distributors for Haryana) by an agreement dated 23-8-1975. M/s. Hitkari Sabun Udyog of Faridabad had been appointed as registered user and had applied for registration in that capacity. The sales of the appellant of this brand of soap increased from Rs. 30,000/- in 1967-68 to about Rs. 24.80 lakhs in 1974-75 and about Rs. 14,00 lakhs between 1-4-76 to 30-9-76, thanks to the efforts taken and moneys spent for popularising the brand name. The firm had filed application before the Registrar (a) for a change in address and (b) for incorporating certain changes in the above trade mark and had also been using the trade mark in different designs and get-ups. The firm had filed a suit for infringement of trade mark and passing off against the applicants in 1975. This was pending adjudication, the respondent having obtained the stay of trial of the suit u/s 111 of the Act. The affidavit proceeded to deal with Rishi Lal Guptas application for rectification and affidavits in support thereof. It calls on the applicant to prove the sales claimed by them strictly in terms of law and states that the appellant would crave leave to inspect the account books of the application in order to verify the correctness of the sales claimed.

(b) Two affidavits of Vinod Kumar, partner of the sole distributor firm to the like effect, giving details of the sales of 5-Bhai brand made by them, and the purchases effected by them from Hitkaris after they were appointed registered users. 15 bills in support dated 1971 to 1975 were enclosed.

(c) An affidavit of Som Prakash, partner of Hitkaris covering the same ground and enclosing the bills showing their sales to the firm of sole distributors.

(d) 32 affidavits in Hindi from various dealers to the effect that they have been marketing 5-Bahi soap since 1971 in large quantities and that the brand has proved very popular some of these gives figures of sales of 5-Bhai soaps by them; and

(e) An affidavit of an artist that the block and design for the soap label 5-Bhai was prepared by him in 1967.

10. The Registrar heard the counsel for the parties at length. At the hearing both counsel agreed that the sole question to be decided in the case was, as to whether on 28-4-1975, the word Bhai had become public juris in the washing soap trade due to its common use. At the outset, the Registrar made it clear that, while the statements in the plaint in the suit filed in 1972 by the appellant would be relevant and admissible, they would not be regarded as conclusive. He also over ruled a technical objection raised to the admissibility of 30 affidavits filed on behalf of the appellants. He also agreed with the appellants that the mere fact that the trade mark 2-Bhai had been registered earlier or that subsequent applications had been filed for registration of similar trade marks could not prove the use of such trade marks. Examining the evidence placed before him, the Registrar found that the respondent had discharged the onus of proving using of our trade marks, A. One Bhai, 3-Bhai, 6-Bhai and Bhai-Bhai and concluded that the expression Bhai had become public juris in the washing soap trade as on 28-4-1975. He pointed out that the impugned trade mark despite the disclaimer attached to the numeral 5, possessed a distinctiveness and held that the ends of justice would be met in a disclaimer is imposed in respect of the word Bhai. He directed the variation of the entry against Registered Trade Mark No. 252, 835 by adding the following disclaimer: -

Registration of the trade mark shall give no right to the exclusive use of the word Bhai.

The application for rectification was to this extent allowed and this order his given rise to the present appeal.

11. Before me, the same arguments have been addressed on behalf of the appellants as had been addressed before the Registrar. Dr. Singhvi, appearing on behalf of the appellant contended that (a) a case of rectification of a registered trade mark stands on an entirely different footing from an opposition to an application for registration inasmuch as the existence of a registered trade mark in favour of one person has to be taken into account and proved to be a wrong entry: -

(b) A very heavy onus lies on an applicant for rectification to show that the registered trade mark has lost its distinctiveness and become common in trade use.

(c) The applicant for rectification should prove not sporadic, surreptatious or piraticial use of the existing trade mark or part thereof by other but common widespread and universal use such as would make the words in question in common parlance for a particular commodity; and

(d) If the applicant wants to rely on any acquiescence or abandonment by the registered owner, there should be tangible, adequate and sufficient evidence both quantitatively and qualitatively to support such a case. In the present case, he contended, that evidence led in by the respondent was too scanty to establish that the word BHAI had become public juris. Shri Anoop Singh, counsel for the respondent, did not quarrel with the broad propositions enunciated by Dr. Singhvi, though he disagreed with some of the expressions used in enunciating the propositions. He conceded that there was an onus on him to show that the expression Bhai had become public juris but contended that he had proved this by proving uninterrupted use by many people and the acquiescence of the registered owner in such use. He contended that sufficient evidence justifying the disclaimer had been led in by the respondent before the Registrar and accepted, rightly, by him.

12. As I have said earlier, both sides have referred to numerous decisions and these may be now referred to. I shall first refer to the English decisions before turning to those of our courts.

13. Ford v Foster (1872-L. R. 7 Ch. A 611) is the leading case relied on by both sides. Ford had been making and selling since 1849 shirts of a particular form invented by himself with the word Fs Eureka Shirt stamped on them. Another manufacturer in 1862 started making shirts of a similar form and stamped upon them the words The Eureka shirt F brought an action for injunction and damages for infringement of his trade mark. The defence was (i) that the term Eureka had become (public juris) like Wellington for boots and (ii) that the plaintiff had acquiesced in the use of the word by other persons in the trade and thus lost his exclusive right thereto. The Court of appeal, reversing the decision of Bacon v. C. rejected these contentions. On the first contention after referring to the onus cast on the defendants and the history and chronology of the case, the Court concluded that at the time the defendant began their operations, there was nothing whatever which tended to show that the word Eureka meant anything to anybody connected with the trade except the shirt manufactured by the plaintiff himself. The act of he defendants constituted a piracy or improper invation of the plaintiffs right and if the plaintiff had brought his action then, he would have succeeded. Posing the question, Then what has occurred, since, James L.J. observed:

A great mass of evidence has been given as to the common use of the word Eureka. But if we eliminate from that the mass of evidence the evidence of the use of that word which is to be attracted directly to the defendants. It appears to me that the evidence of (public) juris is reduced to a very small amount indeed no one has been produced who ever used the word Eureka as between him and the public or ever represented himself as a seller of Eureka shirts publicity in any manner, whatever except in one instance-an instance so small that the exception proves the rule.It was said by the Bishop Porteus that one murder makes a villion and millions a hero. I think it would hardly do to act on that principle and say that the extent of a mans pivotical invasions of him neighbours rights and the success of them is to convert his piracy into a lawful trade.

Mellish L. J. said:

Then the question is, has it become public juris and there is no doubt, I think, that the word which was originally a trade mark, to the exclusive use of which a particular trader or his successor in trade may have been entitled, may possibly subsequently become (public) (juris) as in the case before us of Harvers Saucewhat is the test by which a decision is to be arrived at whether a word which has originally a trade mark has become public juris. I think the test must be whether it still continues to be calculated to deceive the public or any part of the public, whether the use of it by other persons may still have the effect of inducting the public to buy goods not made by the trader entitled to the trade mark as if they were his goods. If the mark has come into such universal use that nobody can be deceived by the use of it and that nobody can be deceived by the use of it and that nobody can be induced from the use of it to believe that they are buying the goods of the original owner of the mark if it has become so public as that, then the right of the original owner of the mark must be gone, for it appears to me, however hard to some extent it may appear on the traders, that practically as the right to a trade mark is simply a right to prevent the person entitled to the trade mark being cheated by other persons goods being sold as his goods through the fraudulent use of the mark, therefore, if the use of the mark has ceased to deceive anybody, then the right to the mark must be practically gone.

14. I may next refer to the other cases cited by the counsel. The Tower Tea case (1889-6-R.P.C. 165) was purely a decision on the facts. L & Co. had been selling tea using a trade mark of a Tower which was not registered and sometimes his tea was asked for my customers as Tower tea. The plaintiff company, incorporated in 1880, continued the business but did not use the expression Tower-Tea for their product till 1885, when they got both the word Tower and the expression "Tower Tea registered and used them to describe their product. He alone, or with others, had been carrying on a business since 1880, partly under the name of Tower Tea Company and the defendant purchased this business. The plaintiffs filed an action in 1887 to restrain the defendants from marketing their tea under the name of Tower tea whereupon the defendant moved for rectification of the register by striking off the trade mark Tower tea the Court held that under s. 64 of the Act, trade mark must contain one of certain essential particulars: in this case, to qualify for registration is had to be a distinctive device, mark, brand, heading, label, ticket or fancy word or words not in common use. North-J. held that the mark in this case did not satisfy this requirement. It was not a fancy word and their were at least five associations using the expression in connection with tea, because of the situation of the place where they were carrying on business. In Baker v. Rowson (1890-8-R.P.C. 89) B. brought an action for infringement of a trade mark registered in 1877 and consisting of a device of a light house surrounded by two circles with certain letters and figures between the two circles. The defendants sought registration as a trade mark of a certain device with two circles round it, disclaiming the circles as common to the trade and also moved to rectify the register by recording a similar disclaimer. The plaintiff had also got registered in 1887 a lable which, they falsely claimed, had been used by them for 10 years before 1875 and the defendant sought to have it expunged on this ground. This decision, again one on facts, has been referred to only for showing that the conclusion that the two circles were common to the trade had been based only on eight instances referred to at 99-100. But this is not correct for, immediately before giving these instances, the court pointed out that there were many instances of considerable standing in which the double circles were used in connection with names or trade marks and that only a few prominent, but not the only, instances were being given. Leahy, Relly, & Leavy v. Clover (1839-10 R.P.C. 141) has been quoted only to bring out the approval, by Lord Marchagthen (on p. 159) of the test of public juris adumbrated by Mellish L.J. in Ford v. Foster (Supra). The next case cited was the Ancross case (1893-10 R.P.C. 369). T & B applied to register A cross as a trade mark for umbrellas. H & Y opposed as the registered proprietors of an old mark, the material part of which was the device of an anchor. The trade mark had been originally registered by B Co. in 1876, who transferred it to G & K. in 1884 and who in turn assigned it to H & Y in 1893. The registration was allowed but North-J. pointed out nothing could be done so long as the old trade mark was on the register. Thereupon T & B moved to have it expunged on the ground that in 1876, there were, three or more other umbrella manufacturers using the device of an anchor. On the statutory provisions as they then stood, there was no defence to the expunction and it was so expungned. Never the less it was held that the application of T & B could not be allowed as it was applied for in order that it might be used with a view to deceive. H & Y could, as person entitled to the use of the common device of an anchor, prevent T & B from obtaining the monopoly of Ancross which was like obtaining the monopoly of Ancross which was like Anchor. North-J observed (at p. 3 378).

Now in the present case, it is quite true that H & Y have no right to complain upon the ground of having a similar trade mark..but they are members of the public and the affidavit which I have read shows that they have sold a large number of umbrellas under the name of Anchor umbrellas. More than that, the public have a right to use the name of Anchor umbrellas. As the anchor is a mark in common use, anybody has a right to use it and it is thing which H & Y, as well as other members of the public have a right to use.

The Wheat-sheaf case (1915-33 R.P.C. 97) has been cited to show that where an expunction is asked for, the court may consider it sufficient to impose only a disclaimer. The plaintiff, millers carrying on business in Sheffield district, were the registered proprietors of two trade marks, one registered in 1884 and the other in 1902. The defendants, millers carrying on business chiefly in Liverpool and Manchester districts, had used a wheat sheaf mark on their sacks and bags since 1880 but had never registered the same. In 1915, their goods began to come into Sheffield. An action for infringement by the plaintiffs was met by a motion of rectification on the ground that wheat sheaf was common to the trade and the trade mark was not protected by seven years registration as it offended against the provisions for registration. The latter contention was accepted by the learned Judge as, at the time when it was registered, it was a mark which ought not to be have been protected and ought not to have been registered, it being clear on the evidence that the use of a wheat sheaf in the trade was common to the trade in 1834 and 1902. However, the court pointed out that the mark registered in 1884 was a compound mark consisting of a wheat Sheaf over the initials J. W. enclosed in an oval, and that this mark might well stand but subject to the plaintiffs undertaking to add a note on the register that no claim is made to the exclusive use of the Wheat sheaf. The Diamond T. Motor Company case (1921-38 R.P.C. 378) illustrates that disclaimers may be imposed on parts of a trade mark, which jointly may well represent a distinctive trade-mark. Since 1905, the applicants or their predecessors had been using a trade mark consisting of a combination of a diamond with the word diamond and the letter T. There had been large sales of the vehicles of the applicants in U.S.A. where the mark was distinctive of the applicants goods. It had also been registered in U.S.A. and other countries. In England itself, through the applicants vehicles had been advertised, there were no evidence of sales. Their application in 1918 for registration of the trade mark in England was refused on the ground that it was not a distinctive mark but was a common device for trade marks in the motor trade, that its registration might create an impression that the applicants had obtained a monopoly of a diamond shaped border and would prevent all persons who had the initial T. from using that initial in a diamond shaped border and that the mark bore a resemblance to three marks already on the register. At the stage of the appeal, the opposition from the owners of the three already registered owner disappeared. It was held by Lawrance, J. that the mark was a distinctive one and that the application should be proceeded with, subject to a condition that the applicant should disclaim any right both to the exclusive use of a diamond shaped border and also to the exclusive use of the word diamond. The owner of the registered trade mark Coca-Cola was unsuccessful in its claim, before the Judicial Committee of the Privy Council, that there was infringement of its trade mark, as the registered trade mark Pepsi Cola of the defendant was similar to its own and that the contemporaneous use of both mark in same area in respect of the same kind of goods would be likely to cause dealer and the users to infer that the same person assumed responsibility for their production. See Coca-Cola Co. v. Pepsi Cola Co. (1942-59 R.P.C. 127). At the trial infringement of the trade mark was held proved but on appeal the Supreme Court held that the words were not so similar as to be likely to cause confusion the only similarity lay in the word Cola and the plaintiff could not claim any monopoly in that word. Affirming this, the judicial Committee pointed out that according to the dictionaries, the word Cola appeared to be a word which might be appropriately used in association with beverages and in particular with that class of non-alcoholic Beverages colloquially knows as Soft Drinks and there was also ample evidence (a series of twenty trade marks) which showed that the word had been used in Canada in the trade as an item in the naming of different beverages.

15. The last English decision referred to was that in the (Electrux) case decided by the Court of Appeal (1953-71 R.P.C. 23) Electrolux Ltd. were the owners of the registered trade mark Electrux. They were however selling vacuum cleaners under the mark Electrix The defendants Electrix Ltd. had been selling vacuum cleaners under the mark Electrix for many years and long period to the use though not registration of the plaintiffs mark. The plaintiffs had known of such use for more than ten years but delayed bringing on action partly to enable them to bring the word Electrux into use in respect of vacuum cleaners also before bringing the action. The plaintiffs sued for infringement and the defendants moved to expunge the plaintiffs mark from the register. The court of appeal held that though no instance of confusion had been proved, the marks were so similar that there was an infringement. It was contended by the defendants that the plaintiffs had deprived themselves of their legal right, or least of any right to the equitable remedy of injuction by acquiescence, Sir Raymond Eveshed, M. R. observed (at p. 32-3):

Upon this matter, a great deal of learning has been referred to and we have also had our attention drawn to a number of cases. The latter include the well-known statement in Willmot v. Barber 1880 15 Ch. D. 96 by Fry-J (as he then was) at p. 105. He said this: It has been said that the acquiescence which will deprive a man of his legal rights must amount to fraud and in my view that is an abbreviated statement of a very true proposition. A man is not to be deprived of his legal rights unless he has acted in such a way as would make it fraudulent for him to set up those rights; Let me pause here to say that I do not understand that by the word fraudulent the learned Judge was thereby indicating conduct which would amount to A common law sort of deceit. What, then are the elements or requisites necessary to constitute fraud of that description In the first place, the plaintiff must have made a mistake as to his legal rights. Secondly, the plaintiff must have expended some money or must have done some act (not necessarily upon the defendants line) on the faith of his mistaken belief. Thirdly, the defendant, the possessor of the legal right, must know of the existence of his own right which is inconsistent with the right claimed by the plaintiff. If he does not know of it his he is in the same position as the plaintiff and the doctrine of acquiescence is founded upon conduct with a knowledge of your legal rights. Fourthly, the defendant, the possessor of the legal right, must know of the plaintiffs mistaken belief of his rights. If he does not, there is nothing which calls upon him to assert his own rights. Lastly, the defendant, the possessor of the legal right, must have encouraged the plaintiff in his expenditure of money or in the other acts which he has done, either directly or by abstaining from assenting his legal right. In reading that passage, it is perhaps necessary to note (because it makes it at first sight a little more difficult to follow) that the positions of plaintiff and defendant as they are usually met with are there transposed.. That statement of the law has been quoted many times and has, I think been followed. Lloyd Jacob. J. referred to the case of Proctor v. Bennis (1887) 4 R.P.C. 333, which was a case in this Court and in which Fry L. J. (as he then was) was a member of the court of appeal. I confess that I have found some difficulty.to make up my mind and express a view whether all the five requisites which Fry-J stated in the case of Willmot v. Barber must be present in every case in which it is said that the plaintiff will be deprived of his right to succeed in an action on the ground of acquiescence. All cases (and this is a tribute useful observation to repeat) must be read in the light of the fact of the particular cases. After making a reference to Lord Russels speech in Canadian Pacific Railway Co. v. The King (1931) A. C. 44 that the doctrine of acquiescence is also sometimes alluded to as the doctrine of acceptable estoppel, the master of the Rolls said;

I think, upon analysis, that (the appellants) argument must, in the end of all, come to this that the owner of a registered trade mark who for substantial period of time had laid by and not asserted his rights has lost those rights, notwithstanding that they are rights conferred upon him by statute. I think, so to hold, at any rate in a case where the length of time involved is no greater than in this case, would be to introduce a wholly novel-nay, revolutionary-doctrine, and I think also that it would be contrary to the principles laid down by the decided case. Indeed (counsel for appellants) himself admitted that mere delay, without more, can be no bar to the exercise by the owner of a registered trade mark of his statutory right.

After referring to Fulwood v. Fulwodd (1887) 9 Ch. D. 176 and Vidalodyes v. Levrnstein (1912) 29 RPC 245 where the proprietors had laid by for as long a period as ten years and discussing the facts of the case, the Master of the Rolls concluded.

Quite true, the plaintiff did lay by, did forbear for a substantial time for attempting to asset their rights, knowing (as I think they undoubtedly did) what the defendants were about, but that, in my judgement is all.

and agreed with the trial Judge in rejecting the defence of acquiescence.

16. To turn to the Indian decision, in chronological order, first comes Devidass & Co. v. Abboyee Chetty & Co. (AIR 1941 Madras 31) strongly relied on by Shri Anoop Singh Devidas & Co. filed a suit for a declaration that they were entilted to the exclusive use of a certain trade mark and for a perpetual injunction restraining the defendants from using a similar mark. The defence was three fold:

(a) concurrent user by the defendants: (b) acquiescence, by the plaintiffs (c) abandonment by the plaintiffs. On the plea of acquiescence, both the trial judge and the appellate court found in favour of the defendants on the basis of ample material which it is unnecessary to set out here. It is enough to set out the reference to this principle, enunciated by Fry. J. in Wilmot v. Barber (1880-15 Ch. D 496) having been applied in the trade mark cases of Rowland v. Michell (1896-13 R.P.C. 464) on appeal, 1897-14 R.P.C. 37-Codes v Addis & Sons (1923) 40 R.P.C. 133 and Mc. Caw Stevenson Orr Ltd. Vs. Lee Bross (1906)-23 R.P.C. 1 in which acquiescence for four years was held sufficient to produce the plaintiff from succeeding and to the observations at page 34:

Delay simpliciter may be no defence to a suit for infringement of a trade mark, but the decisions to which I have referred to clearly indicate that where a trader allows a rival trader to expend money over a considerable period in the building up of a business with the aid of a mark similar to his own he will not be allowed to stop his rivals business.

If he were permitted to do so great loss would be caused not only to the rival trader but to those who depend on his business for their livelihood. A village may develop into a large town as the result of the building up of a business and most of the inhabitants may be dependent on that business. No hard and fast rule can be laid down for deciding when a person has as the result of inaction, lost the right of stopping another using his mark. As pointed out in McCaw Stevenson & Ors. Ltd. v. Lee Bros. (1897) 14 RPC 37 at p. 43 each case must depend on its own circumstances but obviously a person cannot be allowed to stand by indefinitely without suffering the consequence.

17. Registrar v. Ashok Chandra Rakhit (AIR 1955 S. C. 558) was a decision under section 13 of the Trade Marks Act, 1940 (the present section 17). The respondent Co. had succeeded to a business in ghee which was being marketed under a trade mark containing inter alia, the word Shree and which had been got registered in Hong Kong in 1933 and had been in use by the Company and its predecessor since 1897. When the Indian Trade Marks Act, 1941 came into force on 21-8-1942, the company filed an application for the registration of the trade mark thereunder and was registered. The Registrar however subsequently found that the word Shree was used by Hindus as a suspicious symbol and was not distinctive. No other trade mark containing the word Shree had been registered without a disclaimer of the word and the registration of this mark was bound to be regarded as invidious discrimination. He therefore called upon the company to show cause why the register should not be rectified by entering such a disclaimer and after hearing the company directed such a rectification. The High Court of Calcutta allowed the appeal of the company but the Supreme Court restored the order of the Registrar. The Supreme Court held:

(a) The power of the Tribunal to require a disclaimer is conditioned and made dependant upon the existence of one of two thing which are set out in clauses (a) and (b) and which have been called jurisdictional facts. It is only on the establishment on one of these facts which involve a finding that there are parts or matters included in the trade mark to the exclusive use of what the proprietor is not entitled-that the Registrar can use his discretion under the section and impose a disclaimer:

(b) The existence of one of the above jurisdictional facts does not however conclude the matter and it must further be established that some good reason exists for the imposition of a disclaimer (See Eve in the ABC case, 1908-2 Ch. 86):

(c) If the Registrar has exercised his discretion in good faith and not in violation of any law, such exercise of discretion should be interfered with by the High Court merely on the ground that, in the opinion of the High Court, it could have been exercised differently or even that the High Court would have exercised it differently had the matter been brought before it in the first instance. The test is, as propounded by lord Dunedin in Reddaway & Co. case (1926-44RPC. 27). Whether the Registrar had really gone so wrong as to make it necessary to interfere with his discretion.

(d) The avowed purpose of the section is not to confer any direct benefit on the rival traders on the general public but to define the rights of the proprietors under the registration, so as to minimise, even if it cannot wholly eliminate, the possibility of extravagant and unauthorised claims being made on the score of registration of the trade mark.

(e) The proviso to section 13 preserves to proprietor any right he may otherwise have in relation to the mark or any part thereof by bringing off action or prosecution if he has acquired any rights by the long user of those parts or matters in connection with goods manufactured or sold by him or otherwise in relation to his trade.

18. The Corn Products case (AIR 1960 S.C. 142) is not of much direct assistance in the present case The Ganesh Durbar Batti case decided by the Madras High Court (AIR 1969 Madras 126 contains an exhaustive review of the decided cases by Anantanarayana C.J. and Dr. Singhvi has relied on certain passages from the judgment. The respondent in that case had sought registration, in respect of agarbatties, of a trade mark bearing the device of Lord Ganesh and the word Ganesh which he had been adopting, honestly and continuously ever since 1953. The appellant firm and certain associates, however, opposed the registration on the grounds that the word Ganesh had been in use as a trade mark in the business for a number of years, that the symbol representing a deity was public juris from the outset or had become so and lost all distinctiveness, that there were a large number of manufacturers using the mark in a particular locality alone, that the respondent had agreed to exclude certain territories from the scope of the registration on an opposition from an up country party and had so acquiesced in such was abandonment in this part.

In paras 15 and 16 of the judgement, it is pointed out that piratical or surreptitious use, which never comes to the knowledge of the proprietor cannot suffice to destroy distinctiveness and that where piracy alone is the source of the movement or user that might render the mark common to the trade Courts should be careful to see if any such movement can be inferred, as within the knowledge of the proprietor, and either acquiescence or abandonment or such feeble action relative to the movement as to amount to forfeiture can be held established. As to loss of distinctiveness of a registered trade mark, it is explained, in para 18:

If, on the contrary, the word had attained distinctiveness as the mark of the respondent firm, this distinctiveness may be lost. But, unless it is lost, it is entitled to recognition. The loss may be due to abandonment, acquiescence in successful piracy on a large scale, or a volume of common user, which is public and which destroys distinctiveness. The mark may be public juris in a particular branch of the trade only (Kerly pages 245-246). The occurrence of a few fraudulent infringement, without the knowledge of the proprietor, will not make the mark common to the trade (Dr. Venkateshwarans Treatise, pages 659 to 661). Again mere disuse for a short period, may not amount to abandonment. When rectification is attempted the onus is on the applicant to show that the mark had lost its distinctiveness. There are several authorities, including passages in Kerly, which need not be quoted again here, clearly to the effect that mere surreptitious user, sporadic user, piracy in a concealed manner against which action was taken or attempted by the proprietor, when the piracies came to light, cannot possibly destroy the distinctiveness earlier achieved.

Another passages from the judgement which has been relied upon by Dr. Singhvi is in para 20.

Hence, there are only two issues of fact in these related proceedings. The first, whether the respondent firm has established distinctiveness in respect of this mark prior to 1960, and during the period 1953 to 1960 In other words, was distinctiveness first achieved and did infringements or piracies follow in its wake, or do we commence with a situation in which the Mark has become or is becoming, public juris and one manufacturer is heading the race to obtain registration To be very clear about this the decision as between the alternative possibilities is essential, for otherwise, the argument becomes circular. If the distinctiveness is held as first established, who is the adequacy of the evidence which has been adduced by the opponents (here the appellant firm) to show that distinctiveness was destroyed and that the Mark has become public juris

19. There are two decisions of this court, one in Mohd. Rafic and another v. Modi Sugar Mills Ltd. (AIR 1972 Delhi 46) which does not touch any of the issues in the present case and the other in Metro Playing Card Co. v. Wazir Chand Kapoor, (AIR 1972-248) which shows that the mere acceptance of an application for registration of a trade mark or its advertisement confers no right on such applicant or relieve him of the consequences of infringement of a registered trade mark.

20. I come last to the pronouncement of the Supreme Court in National Ball Co. case (AIR 1971 S.C. 898) which contains an exposition of the provision of the Trade and Merchandise Marks Act, 1958. The two appellant companies before the Supreme Court claimed to have been manufacturing, since 1957 and 1947 respectively, bells and with various numerals 33, 50, 51, 40, 20, 50 & 60 inscribed thereon. The respondent company which had registered as its trade mark the numeral 50 as well as the figure Fifty in 1953 filed suits for infringement, whereupon the appellants moved the High Court for rectification seeking their expunction from the register on the ground, inter alia-,

(a) that the above numeral and figure were common to the trade at the time of the original registration and so were not distinctive of the bells manufactured by the appellants,

(b) that many other manufacturers were using these marks on or in relation to cycle-bells and so their distinctiveness had been lost. The learned trial judge cancelled the registration of the numeral but saw no reason to doubt, the distinctiveness of the other one and since a period of seven years had lapsed after its registration by the firm the rectification proceedings were launched. There were, however, appeals by both parties and the Division Bench allowed the appeals of the respondent company and dismissed the appeals of the appellant companies. Thus Supreme Court confirmed this. It is not necessary to go into the factual details on the basis of which this was done and all we are concerned with there is the interpretation by the court of the scope and effect of some of the important provisions of the Act. The court was primarily concerned with section 56 read with section 32 (c) of the Act. At the outset the court pointed out that the registration of a trade mark is prima facie evidence of its validity but this is rebuttable where seven years have not elapsed since the original registration. Also a person can apply for cancellation on the ground that the trade mark in question was not at the date of the commencement of the proceedings distinctive in the sense of section 9(3) but the burden of proof will be on the applicant seeking rectification. Turning to section 32(d) of the Act, the court observed:

The distinctiveness of the trade mark in relation to the goods of a registered proprietor of such a trade mark may be lost in a variety of ways, e.g. by the goods not being capable of being distinguished as the goods of such a proprietor or by extensive piracy so that the mark became public juris. The Principle underlying clause (c) of sec. 32 is that the property in trade mark so long as it continues to be distinctive of the goods of the registered proprietor in the eyes of the public or a section of the public. If the proprietor is not in a position to use the mark to distinguish his goods from those of others or has abandoned it or the mark has become so common in the market that it has ceased to connect him with his goods there would hardly be any justification in retaining it on the register.

A little later, referring to the fact that the respondent company had taken proceedings to assert its rights from time to time which included a suit which became infructuous on account of its having been filed in a court which had no jurisdiction. The court said:

This evidence negatives any abandonment of trade marks of letting infringements go unchallenged or misleading the other manufacturers that the respondent company would not interfere if they were to use the same marks. Rights in a mark can, of course be abandoned by its owner but so long as he remains the registered proprietor of the mark and carries on the business to which the mark is attached, a plea, of abandonment is difficult to sustain. It would, however, be a different matter, if it is shown that there were repeated, undisturbed infringements. The evidence in the present case does not show that there were repeaed breaches which went unchallenged though known to the proprietor. Mere neglect to proceed does not necessarily constitute abandonment if it is in respect of infringements which are not sufficient to effect the distinctiveness of the mark even if the proprietor is aware of them (See R. Farina, (1879) 27 WR 456). Where neglect to challenge infringement is alleged, the character and extent of the trade of the infringers and their position have to be reckoned in considering whether the registered proprietor is barred by such neglect. (See Rowland v. Mitchell, (1897) 14 RPC 37). The plea of common use must fail, for to establish it the use by other persons should be substantial. Though evidence was produced by the appellant companies to show that there were other bells in the market with Fifty or 50 inscribed on them no evidence was led to show that the use of the word Fifty or the numeral 50 was substantial. In these circumstances, it is impossible to sustain the contention founded on Clause (c) of Section 32.

Finally the court had this to say on section 56:

Under Section 56, the power to rectify is undoubtedly discretionary. Where such discretion has been properly exercised, a court of appeal would refuse to interfere. In the present case, however, the trial court did not appreciate the principle embodied in Section 32 and 11, with the result that the Division Bench was justified in interfering with the discretion exercised by the Trial Court.

21. It is in the context of above statutory provisions and principles that the correctness of the order passed by the Registrar has to be examined. The first point to be noted about the facts here is that the appellants are the owners of trade mark which has been already registered. Though a period of seven years has not elapsed since the registration, still the fact of registration is prima facie evidence of its validity (Section 31.) The fact that 2 Bhai had been registered earlier does not effect this particularly in view of section 12(3) of the Act which permits concurrent registration. Moreover as Shri Anand rightly said, the continuance of the entry in the register can be sought to be questioned in three ways. The first is under section 46 on the ground that the trade mark had been registered without any bonafide intention to use it and that there has been no bonafide use for the period mentioned in the section. The second under section 56 is that the entry had been made in the register due to some error or fraud or without sufficient cause and strictly speaking ought not to have been on the register at all. The third, also under section 56, is by showing that the entry is wrongly remaining on the register. The ground urged by counsel for the respondent in the present case is the third of the above alternatives. Though in the application under section 56 the respondent also indicated that they were challenging the correctness of the original registration, this plea has not been persisted in and there is also no evidence led by them on this aspect of the case. Both before Registrar and here, the case of the respondents only is that, whatever may have been the position at the time the appellants mark was registered, had, by 28.4.75, lost its distinctiveness in the washing soap trade [section 32 (c)]. There can be no doubt and even Shri Anoop Singh does not dispute it that a heavy onus lies on the respondent to prove this.

22. At one time, in England, there was a three-mark rule which came to the rescue of such claimants. A mark was deemed to have become public juris if three instances of its user by other in the trade could be proved. See Venkateswaran on Trade Mark 91968) p. 266. But this numerical proof is possible no longer. As pointed out by Kerly (10th Edn. Para 16.46) names which once carried a distinctive reference to a particular trader, may in consequence of successful piraciesor for other reason lose it and fall into common use and become public juris The claimant is such cases has, to let in evidence to show, in the words of Mellish L. J. in the Bureka case (1872-L.R. 7 ch. A 611) that the mark has come into such universal use that nobody can be deceived by the use of it and that nobody can be induced from the use of it to believe that they are buying the goods of the original owner of the mark. The respondent has sought to prove this in two ways

(i) by showing that, in the washing soap trade, subsequent to the appellants registration, a number of traders have been marketing their goods under marks which include a use of the word Bhai.

(ii) by showing that such user had been known to and acquiesced in by the appellant as seen by his conduct in not pursuing the litigation instituted by him at one stage.

23. On the first aspect, the respondent let in two types of evidence. One was to show that the trade mark Do Bhai had already been registered and that applications had been made by other manufacturers also to have labels including the word Bhai registered. The Registrar has rightly held that this would not be a tall helpful and that the mere existence of an application for registration would be no evidence of user at all. Shri Anoop Singh also referred to the applications made by the appellants for other trade marks which though including the word 5-Bhai represented modification thereof and suggested that this showed that the appellants themselves have not stuck to the registered mark. But, as pointed out by Shri Anand rightly, it is not the case that the appellant had discontinued the use of the registered trade mark. The mere fact they applied for registration of other marks as well cannot be evidence of non-user of abandonment or loss of distinctiveness of the registered trade mark. This set of circumstances does not therefore help the respondent.

24. The second type of evidence led by the respondent was, however, more direct and to the point. He has been able to show that a number of dealers in the trade had been marketing washing soaps, from 1971 onwards, in various brand names including the word Bhai. As pointed out by the Registrar, these relate to the mark A-1 Bhai, Three Bhai and Six Bhai besides the respondents mark Bhai-Bhai. Apart from this, the respondent has also shown that in 1972, the appellant had filed a suit against seven parties for infringement. According to the plaint filed in the suit, these persons had started manufacturing and flooding the market with goods bearing the trade 2-Bhai, 3-Bhai, 4-Bhai and 6-Bhai to the deteriment of the plaintiff. If other words, to the knowledge of the appellant, several other persons were manufacturing and selling soaps using the word Bhai in their marks. The Registrar has left this altogether out of account towards the end of his order though, in an earlier part of the order, he pointed out that the admission was admissible though not conclusive. I am inclined to accept the contention of Shri Anoop Singh that this admission and stand taken by the appellants as plaintiffs in the suit of 1972 is certainly relevant. The Registrar has left this out of account on the ground that the onus is on the respondent. But, in discharging this onus, it is certainly open to the respondent to point out and rely on an admission made by the appellant and, on the fact that the considered it worthwhile to file suit for infringement against seven traders for using the impugned word in the trade. Faced with this admission, it was for the appellants to have displaced the effect thereof by proving that those statements were not true or that these users had since been discontinued. It is inconceivable that the appellant would have filed a suit against six such traders had they not been disturbed by these products being brought into the market on large scale. The Registrar, in my opinion, should, therefore, have attached weight to this circumstance also. But even if this is left out as done by the Registrar there was, I think still sufficient material before the Registrar to conclude that the word BHAI had become public juris.

25. The principal criticism of Dr. Singhvi for the appellants is that the evidence let in by the respondents is qualitatively and quantitatively insufficient to prove loss of distinctiveness of the appellants trade mark. Quantitatively, Shri Anand pointed out that the respondents have produced only nine bills pertaining to the period 1971 to 1974 one of 1971, two of 1972 and three each of 1973 and 1974. Only one bill related to A-One Bhai (20 Kgs.) four related to 3-Bhai (60 Kgs.) one only to 6-Bhai (75 Kgs.) and 5-Bhai (10 Kgs.) one to Bhai-Bhai (10 Kgs.) and one bill is indicipherable. Qualitativerly, he contends, these were isolated and specific sales surreptiously made is violation of the appellants rights and should not be taken as evidence of universal ubiquitous and widespread use depriving the appellants mark of its distinctiveness. He also pointed out that in the affidavit of Lachman Das, the appellants had called upon the various respondents to produce their accounts and prove the extent of sales of these various brands of soap but that this had not been done. It is argued that the respondents cannot, therefore, be said to have discharged the onus of proof which heavily lay on them in this matter.

26. I am unable to accept the contention of Shri Anand. The application was being decided on the basis of affidavit evidence. The respondents had filed affidavits from six dealers who stated that they were dealing in washing soaps and that in the course of their trade they had marketed the goods of several manufacturers under various brands all using the word Bhai. It is significant that the sales do not pertain only to one brand in which even perhaps it could be suggested that some party was trying to make a surreptitious use. The sales pertain to brands used by different manufacturers who are not shown to be connected or associated in some way with one other. Some of the deponents also say that these brands were very popular and commanded good sale at their shop. The bills attached to the affidavits are only instances to prove the averments in the affidavit and the mere fact that only a few bills were filed cannot lead to the conclusion that there were only sporadic sales. May be the respondents could have made their case stronger by giving statistics of the sales of the various brands. But it should be borne in mind that it is not very easy for a trader to obtain and produce figures regarding sales of various brands used in the market particularly when they are rivals to his own mark. The dealers are also not such persons who would be in a position to produce such statistics. The affidavit evidence of these dealers should, therefore, be appreciated in the context of these handicaps. Moreover, when these affidavits howed, prima facie, sales of various brands, it was open to the appellants to have proved that these were of a very negligible order by exercising their rights under Rules 97 and 99 by seeking the Registrars permission to have the deponents cross-examined regarding the details of sales of the various brands allegedly sold by them. As against this, the evidence on behalf of the appellants was not helpful in deciding the issue. Though the respondents criticism that the affidavits filed on behalf of the appellants were inadmissible and stereo type is not tenable, they only show that the appellants trade mark was in substantial use and demand and that the words 5-Bhai were perhaps understood by the public in association with the appellants firm. But they throw no light on the other marks which were in the market and there is no evidence of any confusion having resulted or of the public having understood all the washing soaps flooding the market in various brand names as emanating from the appellant. There can be no fixed criteria or guidelines to determine the extent of evidence necessary to prove loss of distinctiveness of a trade mark. That would depend entirely on the facts and circumstances of each case. In the circumstances of this case, it is difficult to say that the use of the mark by all these traders were piracical, surreptitious or in substantial. I am unable to see any error in the conclusion arrived by the Registrar on this aspect of the matter.

Shri Anoop Singh referred to the following passages from Dr. Venkateswarans book (1968 Edn. on Trade Marks at page 645 based on the observations in the Shredded Wheat case (1940-57 R.P.C. 137-W.L.)

The question whether the applicant for rectification has discharged the onus which is on him is one of fact. If the applicants own evidence is not sufficient for this purpose he may rely on the evidence filed by the respondent, as the Court will consider the effect of the whole evidence gone into on both sides. Furthermore, it has been observed that the purity of the Registrar is a matter of concern to the Court. Where, therefore, on the evidence the Court comes to the conclusion that the mark ought to be removed from the Register it will order to that effect, even though there may be some doubt as to whether the applicant has discharged the onus of proof.

and contended that even if it can be said that the Registrar could not have clearly found against the appellants on the evidence before him, the order of disclaimer can still be supported. There is some force in this contention but in view of my conclusion that the respondents had discharged the onus of proof which lay on them, it is not necessary to affirm the order of the Registrar on this ground.

27. On the second aspect of acquiescence, the finding of the Registrar is that the appellant had the knowledge of the several trade marks and were barred from stopping the use of this trade mark. In other words, he seems to have held that there had been acquiescence on their part to the widespread use of the word Bhai in the trade. Here I am inclined to accept the contention of Shri Anand that there is no proof of acquiescence on the part of the appellants. The proceedings relied upon for the respondents show that the appellants had taken steps to stop an infringement of their trade mark by the seven defendants in the suit of 1972. Though, according to these defendants, they had been selling these brands over several years, the plaintiffs case was that their infringement was only of recent origin, and there is no evidence to show that this was not so. Thus, according to the plaintiff, he had taken prompt action to stop this infringement. Unfortunately, the plaintiff filed a common suit against all the defendants and when the mistake was pointed out withdrew the suit against six without, however, reserving or seeking the liberty to file fresh suits against them and a subsequent application to get such leave failed. But the suit against the seventh party appears to be pending and the fortuitous circumstances by which the suit against the other six got dismissed cannot support a plea of acquiescence, just as in the National Bell case (supra) the dismissal of a suit filed in a wrong court was held not to constitute acquiescence. Acquiescence involve much than mere standing by or the failure of an effect to bring the offending party to book. Unless the respondents are in a position to show positive conduct on the part of the appellants condoning, withdrawing or otherwise making manifest the acceptation of the competing marks or encouraging their use, an inference of acquiescence cannot be drawn against them. In this context the summary of the effect of the judicial decisions on this point in Kerly (10th Edn.) in para 15.40 to 15.42 may also be seen. I am, therefore, of opinion that the respondents plea of acquiescence cannot succeed.

28. However, as already discussed there was evidence on record on the basis of which the Registrar could have come to the conclusion that Bhai had become public juris as on 28.4.75. Having arrived at this conclusion, the Registrar had the discretion under section 17, of imposing a disclaimer if the marks was to be allowed to continue on the register. As pointed out by the Supreme Court in Ashok Chandra Rakhit (AIR 1955 S.C. 558), the appellate court will not interfere with the exercise of this discretion even if it feels that, on the same evidence, it would have come to a different conclusion or exercised the discretion differently. Shri Anand argued that the fulfillment of the condition precedent in clauses (a) and (b) of section 17 is not enough to justify the imposition of a disclaimer and that there should be, in addition, some good reasons for exercising the discretion in favour of a disclaimer. It is quite clear that such reason is present in this case. As pointed out by the Supreme Court, the purpose of entering a disclaimer is really to define the rights of the proprietor of the registered trade mark and to minimise the possibility of extravagant and unauthorised claims on the basis of a registered trade mark. So when the Registrar finds that the word Bhai has become almost universal in the trade, that others have been using it and that applications for registration of other marks including the word are pending, he was quite justified in thinking, while he saw no reason to expunge the mark 5-Bhai from the register altogether, that it should be made perfectly clear that the registered proprietor should lay no exclusive claim to the right to use the words Bhai in relation to washing soaps. As pointed out in Dr. Venkateswarans Law of Trade and Merchandise Marks (1963) at pp. 628 and 638, it is to be remembered that the question has to be decided not merely as one between the parties concerned but as one of public interest. In deciding this issue, the conduct of the applicant for rectification is irrelevant and so the fact that the respondent came forward with this application for rectifications is irrelevant and so the fact that the respondent came forward with this application instead of say preferring claim for concurrent registration under section 12 (3) when he was forced with a suit by the appellant and with difficulties in having his application for registration granted would be immaterial.

29. Shri Anand pointed out that, in the mark of the applicants, there had already been disclaimer in respect of number 5 and that the additional imposition of the present disclaimer renders the appellants registration totally ineffective and that, virtually, there had been an expunction thereof from the register. This argument is not tenable. If the appellant uses a trade mark containing two words both of common use he cannot escape the consequence and complain if they are declared non-distinctive. But that apart, as is shown by the Diamond T. case (supra), it is not correct to say that no rights of the appellants exclusively to use jointly the word 5-Bhai in relation to washing soaps of their manufacture and they can prevent anybody else from using this combination of words in relation to these goods. Only, he cannot restrain others from either using the numeral 5 or the word Bhai simplictiter indecently or in combination with other words. There is, therefore, no substance in this contention.

30. In the result, the appeal fails and is dismissed. I, however, make no order as to costs.