w w w . L a w y e r S e r v i c e s . i n



Mohan Singh of Link Auto Spares v/s Jayantibhai S. Patel & Ors. of Devjee Agencies

    Misc. Petition No. 713 of 1976

    Decided On, 08 December 1979

    At, High Court of Judicature at Bombay

    By, THE HONOURABLE MR. JUSTICE PENDSE

    For the Appearing Parties:......................



Judgment Text

Pendse, J:

1. As regards the similar description of goods, it is held that the valves manufactured by both the parties are of the same nature and of the same composition and are used both for diesel oil engines as well as for automobiles with a slight variation and thickness and the trade channels through which these commodities are sold being the same or similar and the onus being always on the person who seeks registration of a trade mark to establish that none of the prohibition are attracted to the facts of the case, the Respondents having failed to challenge the statements of the appellant in this connection, Section 12(1) is attracted in this case. The findings of the Registrar that the appellants have not discharged the onus to prove the reputation of the mark to invoke the provisions of section 11(a) being correct, it is not necessary to reconsider these findings.

As regards the findings recorded by the Registrar under Section 12(3) of the Act, it is held that there being no claim made by the Respondents for securing relief under section 12(3) of the Act and the appellants being not called upon to meet that claim, the findings of the Registrar are set aside and the proceedings are remitted back to the Registrar for reconsidering afresh the issue arising under section 12(3) after affording opportunities to both the parties to lead evidence in support of their respective claims on this issue.

This petition is filed under Section 109 of the Trade & Merchandise Marks Act, 1958 to challenge the correctness of the order dated January 3, 1976 passed by the Assistant Registrar of Trade Marks.

2. The impugned order was passed by the Registrar in the matter of Application No. 270716 filed by the respondents on March 20, 1971 for registration of the mark consisting of the word 'VERA' on a label in respect of inlet and exhaust valves for internal combustion engines (not for land vehicles) in class 7. The Registrar raised an objection to the registration of the said mark on the ground that the mark consists of the word 'VERA' which is a feminine personal name and it conflicts with certain trade marks which are on the register and pending for registration. On such objection being raised, the respondents filed evidence of distinctiveness by way of affidavits supported by documentary proofs, substantiating the use of claim and on the strength of that evidence the Registrar accepted the application subject to the amendment in respect of the goods to read as 'Inlet and exhaust valves for internal combustion engines (not for vehicles) for sale in certain territories'. The application for amendment was advertised before acceptance under the provisions of Section 20(1) of the Act.

3. On Jaunary 12, 1973, M/s Link Auto Spares, Gill Road, Ludhiana filed a notice of opposition to the registration of the mark. The applicants claimed that they carry on the business in motor spare parts as the proprietors of the trade mark VERA in India in respect of wide range of goods in clauses 7 and 12 pending for registration. The applicants also claimed that they are the proprietors of the trade mark 'NERA' for which the application is pending in clause 7 and a mark is registered in clause 12 in the name of M/s M.K.S.P. Brothers, Ludhiana, a joint Hindu family concern. The applicants further claimed that the mark NERA is similar to the trade mark VERA and by claiming the registration of mark VERA the respondents are imitating the trade mark of the applicants. The registration of the mark of the respondents was, therefore, challenged on these various grounds.

4. The respondents thereafter filed a counter statement on September 28, 1973, challenging the grounds of opposition raised by the appellants and claimed that the goods manufactured by the respondents are differed than the goods covered in respect of the registered mark NERA in clause 12. The appellant filed an affidavit on July 3, 1974 in support of the objection while two affidavits were filed by the respondents in support of their claim. The Registrar fixed the hearing on November 21, 1975 when counsel appeared on behalf of the appellants but the respondents were absent. After taking into account the submissions made by the parties, the Registrar found that the issues involved were, first, whether the mark submitted for registration is similar or deceptively similar to the mark already registered in favour of the appellants and, therefore, the provisions of Section 12(1) are attracted. The second issue before the Registrar was, whether the mark applied for is within the prohibition of section 11(a) of the Act. The Registrar raised the further issue as to whether if section 12(1) is attracted, then the respondents are entitled to relief under Section 12(3) of the Act. The last issue was whether the respondents are the proprietors of the mark under section 18 of the Act. The Registrar recorded a finding that the mark 'NERA' registered in favour of the appellants was not similar to the mark 'VERA', and, therefore, the provisions of Section 12(1) of the Act are not attracted. The Registrar further held that the appellants have not led any evidence to hold that provisions of section 11(a) of the Act are attracted, and, therefore, the respondents are debarred from any relief. The Registrar recorded a finding in favour of the respondents under section 12(3) of the Act holding that even if Section 12(1) is applicable, still the respondents are entitled to the relief as they have established the onus conclusively and are entitled to claim the discretionary relief from the Registrar. The objection under Section 18(1) was also over ruled. The appellants have preferred this petition to challenge the impugned order.

5. In support of the claim, 3 and 4 contentions are raised to submit that findings recorded by the Registrar are clearly erroneous. It was urged that the findings of the Registrar that the prohibition under section 12(1) is not attracted because the trade mark in respect of the goods or the description of the goods of the respondents is not identical with or deceptively similar to the trade mark which is already registered in the name of the appellants, is clearly erroneous. It was not seriously disputed that on the material produced on record the finding of the Registrar that there is no prohibition under Section 11(a) of the Act is correct. On the question of exercise of powers of the Registrar under Section 12(3) of the Act, it was submitted that the Registrar has recorded this finding without giving proper opportunity to the appellants. It was urged that the respondents have not made any specific claim in connection with the relief under section 12(3) of the Act, and the appellants, therefore, were deprived from leading proper evidence. It was further urged that even on the evidence led by the respondents, it was impossible to the relief under section 12(3) of the Act. A grievance was also made that provision of rule 54 of the Trade and Merchandise Marks Act were not complied with as copies of the affidavits filed by the respondents were not supplied. The objection as regards the provision of Section 18 was also raised in this petition.

6. In view of the submissions made at the hearing, two questions really fall for determination. The first and foremost is whether the finding recorded by the Registrar that there is no prohibition in registration of mark VERA under Section 12(1) of the Act is correct. If the finding is recorded in favour of the appellants holding that the Registrar was in error, then the other question which requires determination is as to whether the Registrar was right in exercising the discretion in favour of the respondents under Section 12(3) of the Act.

7. The appreciate the first question few more facts are required to be stated. The petitioners are the registered holder of the trade mark NERA in class 12 in respect of parts of motor land vehicles. It is the claim of the appellants that the trade mark is used by them on the large and extensive scale and denote to the trade and the public in general that the goods bearing the said marks are manufactured by them. The mark NERA is written as follows:

'NERA'

Section 12(1) of the Act reads as under:

'Save as provided in sub-section (3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods'.

8. To attract the prohibition under this sub-section, it is necessary to establish that the trade mark for which registration is sought by the respondent is in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered. This sub-section prohibits the registration if either of the two conditions are established. The conditions are that the goods in both the cases are the same goods or the description of the goods is identical. To determine whether the goods are the same, I called upon both the parties to produce their respective goods for visual inspection. As mentioned herein above, the respondents are claiming that the mark VERA should be registered in respect of inlet and exhaust valves for internal combustion engines. It is undoubtedly true that the registration is sought in class 7 while the appellants are the holders of the registered trade mark NERA in class 12. It was urged on behalf of the appellants that the inlet and exhaust valves are used for internal combustion engines and are almost identical in its appearance to the inlet and exhaust valves used in motorcars. In support of the submission, the valves manufactured by the respondents and by the appellants were produced before me for my inspection and it is obvious by a mere glance at it that the goods are similar. It was submitted that the valves can be used both for internal combustion engines and also for the motor cars by slightly altering the thickness of the same. To this submission of the appellants there was no serious challenge. In fact in the affidavit filed by the appellants before the Registrar, it is specifically mentioned that the same valves are used both for the diesel oil engines as well as for automobile engines with slight variation in the thickness of the valves according to the specification of the individual engine. To this statement made in the affidavit, the respondent did not raise any objection. It is obvious that the statement made by the appellants in this connection is correct. The plain inspection of the goods manufactured by the appellants and the respondent's leaves no manner of doubt that the goods of the appellants and of the respondents are the same goods.

9. Mr. Tulzapurkar, appearing on behalf of the respondents, submitted that the question as to whether the goods were same or otherwise can be determined only by looking to the specifications for registration. It was urged that the specifications in the case of the appellants indicate that the goods are to be used for part of motor land vehicles while in case of respondents it was for engines other than vehicles. It was submitted that in view of this difference in specifications, it is not permissible to hold that the goods are similar. In support of the submission reliance was placed on a decision reported in (1889) 40 Chancery Division page 649 (Jay v. Ladler). The principle involved in this case was whether the registration of the trade mark is applicable to all the goods in the class or is to be restricted only to the particular goods mentioned in the certificate at the time of the registration. It was held that it must be restricted to the particular goods and would not cover all the goods in the class. There cannot be any dispute about the correctness of the principle laid down, but I fail to appreciate how it will support the contention in the present case that the goods are not the same. It is undoubtedly true that the goods for which the appellants have registered their mark NERA falls in class 12 and is in respect of part of motor vehicles; while the proposed mark for registration of the respondents is in respect of class 7, but in my judgment that would not make any difference. It is possible that the same goods may be covered by two classes, by the finding is that the goods are same, then prohibition under Section 12(1) of the Act must attract.

10. The appellants have seriously challenged the finding of the Registrar that the description of the goods is not identical or deceptively similar to a trade mark which is already registered. In fact the Registrar has recorded a finding which is very curious. The Registrar has held that it is rather difficult to decide the issue of similarity of the goods or the description of the goods. In fact the Registrar has proceeded on the assumption that the goods in respect of which the respondents' mark is sought to be registered are identical or goods of the same description as those of the appellants. Mr. Tulzapurkar submitted that the assumption of the Registrar was wholly incorrect and the Registrar ought to have recorded a finding that the goods are not of the same description. Mr. Tulzapurkar submitted that there are some well settled principles which must be taken into consideration to determine whether the goods are of the same description. Mr. Tulzapurkar at one stage faintly argued that the question can be decided only with reference to the two specifications of the appellants and the respondents, but at a later stage the learned Counsel very rightly, did not persist in that submission. The test for determining whether the goods are of the same description are stated in Kerly's Law of Trade Marks and Trade Names. On page 181 under the heading 'Goods of the same description' three tests noted by the Author on page 182 are (a) The nature and composition of the goods; (b) the respective uses of the articles; and (c) the trade channels through which the commodities respectively are bought and sold. The said tests are also approved by the two decisions cited by Mr. Tulzapurkar. The Judgements on which reliance is placed are reported in 1946 (63) RPC page 1 and 1946 (63) RPC page 59. On these well-settled principles, it is now necessary to determine whether in the present case it can be held that the goods are of the same description warranting prohibition under Section 12(1) of the Act.

11. Before one turns to the evidence in this case, it is necessary to mention that Mr. Tulzapurkar submitted that the onus to establish that the goods were of the same description and the prohibition under Section 12(1) comes into play is on the person who objects to the registration on the mark. The learned counsel submitted that it is not necessary for the respondents who are seeking registration of the mark to establish the requirements provided under the Act, but it is for the person who objects to such registration to establish that the goods were similar or of the same description. In answer to the submission, it was urged on behalf of the appellants that the onus is always on the respondents who seek registration of the trade mark and it never shifts on the person who objects to such registration. It was urged that is is not merely sufficient for the applicants to establish that the requirements of the Act are satisfied, but it is also essential to establish that there is nothing which prohibits registration of such marks. In support of the submission reliance is placed upon the decision reported in 7 RPC page 311 and 1926 (53) RPC page 313. These decisions undoubtedly support the submission that the onus is always upon the person who claims registration of a trade mark to establish that none of the prohibitions are attracted to the facts of the case. In view of these decisions it must be held that the onus is always on the respondents and the question of onus need not detain me any longer. Now it is necessary to find out whether the three tests are satisfied in the present dispute. Before a finding is recorded on this aspect it must be mentioned that the evidence in this connection is led by the parties by filing affidavits and no oral evidence is led. Mr. Tulzapurkar submitted that the affidavits filed by the appellants is wholly insufficient and save and except the averment made in paragraph 11 of the affidavit there is nothing to suggest the goods are of the same description. It is true that the affidavits filed by the parties in the present case are very sketchy and neither of the parties have given serious consideration to the requirements of the provisions of the Act. The applicants have filed an affidavit after the objection was lodged by the appellants and the affidavit filed on behalf of the appellant is equally sketchy. It is in this stage of circumstances that I have to record a finding whether the goods are of the same description.

12. As regards the first factor about the nature and composition of the goods, it is obvious by plain inspection of the goods produced by the parties that the goods manufactured by the appellants and the respondents are similar in nature and composition. The valves manufactured by the two parties are of the same nature and of the same composition. The second factor about the respective use of articles is also required to be decided in favour of the appellants. As indicated hereinabove, the appellants have stated in their affidavit that the goods manufactured by both the parties are used both for diesel oil engines as well as for automobiles with a slight variation and thickness and that statement is not challenged by the respondents. In this state of affairs, it must be held that the respective use of the articles is also similar. The third factor is about the trade channels through which the goods are sold. It was urged by Mr. Tulzapurkar that there is no evidence produced by the appellants to indicate that the channels are the same. It is true that there is no positive evidence produced on record, but it cannot be overlooked that the valves are sold by the same dealer, if not in Bombay at least at places outside. It is the common knowledge that a hardware merchant in the small towns and cities stocks the goods and sell it to the persons who are dealing in repairs of engines, both internal combustion engines and automobile engines. The inlet and exhaust valves are goods of common use amongst the motor mechanics and that they are stored by hardware merchants. It must also be remembered that the valves are purchased by mechanics who do the repairing work in connection with the vehicles. In these circumstances though there is no positive evidence on record, I have no hesitation in holding that the trade channel through which these commodities are sold are same or similar.

13. Mr. Tulzapurkar placed reliance upon a decision reported in 33 RPC page 389.The learned Counsel submitted that the case in hand is almost similar to the one which is reported. In my judgment, the case on which reliance is placed by the learned Counsel has no application to the facts of the present case. After perusal of the case, I find that no principle is laid down and the learned Counsel was also unable to indicate on what grounds the decision recorded by the Registrar was reversed by the Court. In absence of any reasons in support of the judgment, it is not possible to blindly apply the case and hold that the description of the goods of the appellants and the respondents are not identical or similar. In my judgement, the finding recorded by the Assistant Registrar of Trade Marks in this connection is clearly erroneous. The Registrar ought to have held that the goods in respect of which the respondents' mark is sought to be registered are identical or goods of the same description as of the appellants. The assumption on which the Registrar proceeded to determine the subsequent question was uncalled for as on the evidence I am satisfied that the goods are same or of the same description in the present case.

14. That takes me to the next issue as to whether the respondents' mark VERA and the appellant's mark NERA are similar or deceptively similar. Mr. Tulzapurkar submitted that the principle for determinination of this question is mentioned in Kerley's Book of 'Law of Trade Marks and Trade Names' at page 455. The learned Author has observed that in comparison of marks the Courts must take into account all the circumstances of the case and must consider whether as a whole the appellants' mark is substantially different from the opponent. The Principles stated by Kerley are approved in two decisions cited by Mr. Tulzapurkar. The two cases are those reported in 23 RPC page 774 and AIR 1970 SC 2062 (F. Heffimann La Roche and Co. Ltd. v. Geoffrey Manners and Co.). It is obvious from the principles laid down in these two cases that all the circumstances must be taken into account to find out whether the two marks are similar or not. It was submitted on behalf of the appellants that the two marks should be considered as a whole and the Registrar was not right in adopting a method to divide the word and distinguish a portion of it from the portion of the other. In my judgment, the submission is correct. The true test is whether the totality of the proposed trade mark is such that it is likely to cause mistake or deception or confusion in the minds of the person accustomed to the existing trade mark. Let us first find out whether there is a visual similarity between the two marks. A plain perusal of the two words NERA and VERA indicates a similarity, but the same is distinct because of the presence of line over the last three letters in the mark. The Registrar has observed that from the phenetical point of view the pronunciations are quite different and the consonant N of the appellants is hard and very distinct from the consonant V of the respondent's mark. The Registrar proceeded to record this finding by considering the appearance of the mark which is written in vernacular character. It is nobody's case that either of the marks are used in vernacular language on the goods. It is not in dispute that the two marks are used only in English language and if that is so, in my judgment, the Registrar was not right in considering it from phonetical point it was written in vernacular language. The question of resemblance is also required to be considered from the point that the goods manufactured by the respective parties are metallic articles list and there is likelihood that the portion of the mark of the impressions would be blurred in the course of use. The valves are used as a part of engine and it hardly requires any evidence to establish that the impressions do blur after continuous use. If the impression becomes very imperfect due to the wear and tear, then the word NERA is likely to resemble as VERA by deletion of one line from the word 'N'. There is one more factor which the Registrar has taken into consideration, and that is the class of customers who shall purchase the goods. The Registrar has observed that the goods are usually purchased by the customers who are from the industries and who have technical knowledge about the same. This observation of the Registrar is inaccurate. The goods are in fact purchased by ordinary mechanics from stores which are spread all over the country. I fail to appreciate what technical knowledge is required to purchase such articles from the market. Looking to these circumstances, the particulars of the goods and the trade channels and taking into account all the circumstances of the case, I have no hesitation in holding that the two marks are same and/or deceptively similar. In my judgement, the Registrar was clearly in error in holding that there is no prohibition under Section 12(1) of the Act for registration of the mark VERA sought to be registered by the respondents.

TUESDAY, 4TH DECEMBER 1979

15. The Registrar has found that the appellants have not discharged the onus to prove the reputation of the mark to invoke the provisions of Section 11(a) of the Act. Section 11(a) provides that a mark, the use of which would be likely is deceive or cause confusion shall not be registered as trade mark. It is now well settled that before the prohibition under Section 11(a) of Act is attracted, it is necessary for the objector to establish the reputation secured by him in regard to the mark. The learned Counsel appearing for the appellants did not dispute the correctness of the finding recorded by the Registrar and it is not necessary to reconsider the finding of the Registrar on that count.

16. That takes me to the other finding recorded by the Registrar under Section 12(3) of the Act. Section 12(3) reads as under:

'In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks 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'.

17. This sub-section provides that even if there is a prohibition to register the mark under Section 12(1) of the Act, the Registrar may in a proper case permit the registration of more than one proprietor of trade marks which are identical or nearly resemble each other irrespective of whether any such trade mark is already registered or not in respect of same goods or description of the goods. The principal requirement of this sub-section is that the party claiming advantage by this sub-section must establish the honest concurrent user or other special circumstances. The Registrar in the present case has proceeded to consider the claim under this sub-section inspite of the finding that there is no prohibition either under Section 12(1) or Section 11(a) of the Act. The finding recorded by the Registrar under this sub-section is in favour of the respondents and that has been seriously challenged by the appellants. It was urged on behalf of the appellants that the Registrar has considered the claim and recorded a finding under Section 12(3) of the Act without giving any opportunity to the appellants to show cause. It was submitted that in neither of the affidavits filed on behalf of the respondents the claim was made for securing the relief under Section 12(3) of the Act. It was urged that as the affidavit filed by the respondents did not refer to the claim under Section 12(3) of the Act and as there was no averment about the honest concurrent user, the appellants were not called upon to meet the claim and in the result the finding recorded by the Registrar in that connection is totally erroneous.

18. It was urged by the learned counsel for the appellants that the proceedings before the Registrar suffer from a serious infirmity, as the registrar failed to notice that Rule 54 framed under the Act was not complied with. Rule 51 onwards deals with the procedure to be followed after an opposition is filed to the Registration. Rule 53 requires the person who files the opposition to tender with the Registrar such evidence as he desires to adduce in support of his opposition and also to give copies of such evidence to the applicant. Rule 54 then provides that within two months from the receipt of the copies of affidavit in support of the opposition, the applicant shall leave with the Registrar such evidence by way of affidavit as he desires and to furnish the copies of the same to the opponent. It is the grievance of the appellants that after they filed their opposition, the respondents filed only one affidavit and the copy of the same was delivered to them, but no copies of the affidavits filed at the initial stage before notice of opposition was issued were ever furnished. The submission is that the provisions of Rule 54 are mandatory and in absence of strict compliance thereto the proceedings are vitiated. The grievance is made in this connection in regard to the finding recorded by the Registrar, both under Section 12(1) and 12(3) of the Act. In my judgment, this grievance need not detain me any longer, because I have held in favor of the appellants on the issue arising under Section 12(1) of the Act. In connection with the grievance about the findings under Section 12(3) of the Act, even assuming that the contents of the affidavit filed at the initial stage are taken into consideration, still in my judgment that does not advance the cause of the respondents any further. None of the affidavits filed on behalf of the respondents have made any claim for relief under Section 12(3) of the Act.

19. It is now well settled that the onus of justifying the registration under Section 12(3) lies on the applicants. Kerley in his book 'Law of Trade Marks and Trade Names' at page 185 observes as under:

'All the surrounding circumstances of each case have to be taken into account before a trade mark is accorded the privilege of concurrent registration under this section and a consideration of the surrounding circumstances includes a consideration of the degree of deception and confusion likely to arise from the use of the two marks'.

20. It is also equally well settled that even if there is a bar under Section 11(a) of the Act for registration of a mark, still the relief can be granted under Section 12(3) of the Act. The decision of the Supreme Court reported in AIR 1963 SC 1882 (London Rubber Co. Ltd. v. Durex Products Incorporated and Another) is on the point. Again reverting back to Kerley, the general principles of the matters which should be taken into account are summarised on page 187 of the book. The five conditions mentioned there are (1) the extent of use in time and quantity and the area of the trade; (2) the degree of confusion likely to ensue from the resemblance of the marks which is to a large extent indicative of the measure of public inconvenience; (3) the honesty of the concurrent use; (4) whether any instances of confusion have, in fact been proved; (5) the relative inconvenience which would be caused if the mark were registered.

21. Now turning to the evidence in the present case, it is crystal clear that the evidence is wholly unsatisfactory and insufficient. The respondents in all the affidavits filed by them have not even made the claim for grant of relief under Section 12(3) and even a close perusal of the affidavits do not indicate anything to establish an honest concurrent user. The order passed by the Registrar also assigns no reason to hold existence of special circumstances to indicate exercise of discretion under Section 12(3) of the Act. The grievance of the appellants in this connection that no proper opportunity was afforded to meet the claim under Section 12(3) therefore assumes importance. It does appear from the record that the respondents were insisting for registration on the ground that the proposed mark was different than one registered and the parties attention was mainly concentrated on the issue as to whether the prohibition under Section 12(1) of the Act is attracted. The respondents in fact did not even appear at the stage of the arguments before the Registrar. The question of granting relief under section 12(3) arise only when the finding is recorded against the respondents under section 12(1) of the Act. In my judgement, it is clear that neither the appellants nor the respondents were ever conscious of the requirements of Section 12(3) of the Act, and the parties attention was also not invited to lead evidence to establish their respective claims. In absence of any conscious effort on either side, it would not be just, in my judgment, to hold that the conditions of Section 12(3) of the Act are fulfilled.

22. Mr. Tulzapurkar no doubt made a faint attempt to submit that the appellants have led no evidence on this point, and therefore, whatever evidence is produced by the respondents should be accepted as a gospel truth. It is not possible to accept this submission. It is true that the respondents have stated in their affidavits that they are using the mark from the y

Please Login To View The Full Judgment!

ear 1968, but that fact does not advance their claim under Section 12(3) of the Act, because that sub-section proceeds on the footing that the mark is used concurrently by both the parties. There is nothing on record to indicate that such a concurrent user was honest or there are any other circumstances which would entitle the Registrar to exercise his discretion. In these circumstances, in my judgment, the finding recorded by the Registrar holding that the respondents are entitled to claim registration under Section 12(3) deserves to be quashed. 23.As I have already recorded a finding in favour of the appellants upholding their objection under Section 12(1) of the Act, and as I have found that there is no material on record to sustain the finding under Section 12(3) of the Act, normally I would have proceeded to allow the appeal and dismiss the application filed by the respondents for registration. But I do not propose to adopt that course, because in my judgment neither of the parties had fair trial of the issue under Section 12(3) of the Act before the Registrar. As I have observed herein above, neither of the parties were conscious of the requirements under Section 12(3) of the Act. And no efforts were made to lead any evidence. In these circumstances, it would not be proper to deprive the respondents of the relief under Section 12(3) of the Act without giving a fresh opportunity to lead the evidence. There are two courses open for me; one is to set aside the order of the Registrar and remand the proceedings to reconsider the claim under Section 12(3) of the Act and the other to call for a finding from the Registrar on the issue of grant of relief under Section 12(3) of the Act after giving opportunity to both the parties to lead evidence before the Registrar. The second course is permissible under the provisions of Section 109 of the Trade and Merchandise Marks Act which provides for filing of appeal to this Court. Sub-section (8) of Section 109 provides that subject to the provisions of the Act and the Rules made thereunder, the provisions of Code of Civil Procedure, 1908 shall apply to appeal before the High Court under this Act. There is nothing in the Act or in the Rules which prohibits the High Court from calling for a finding from the Registrar on a particular issue. Under the Code of Civil Procedure, the power has been conferred upon the Appellate Court to call for a finding on an issue under Order 41 rule 23. I propose to exercise that power and call for a finding from the Registrar as in my judgment that would prevent the multiplicity of litigation and further costs to the parties. Both the learned counsels have no objection to adopt this course. 24. Accordingly, I set aside the finding recorded by the Registrar holding that the mark could be registered under Section 12(3) of the Act. I also set aside the finding recorded by the Registrar that there is no prohibition under Section 12(1) of the Act to register the mark of the respondents. The proceedings are remitted back to the Registrar for reconsidering afresh the issue arising under Section 12(3) of the Act in the light of the observations made in the judgment. The Registrar should permit both the parties to lead evidence which they desire in support of their respective claims on this issue and record his finding and submit to this Court within a period of three months from the date of receipt of papers. The parties to appear before the Registrar for further directions on January 7, 1980. The final order in the appeal would be passed after the receipt of the findings of the Registrar.
O R