The Andhra Perfumery Works vs The National Flag Perfumery Works and Another

Sadasivam, J.—The Andhra Perfumery Works by its Manager S.V.A. Setty is the Petitioner in Original Petition No. 202 of 1962, and the Appellant in Civil Miscellaneous Appeal No. 203 of 1962, and for the sake of convenience I shall refer to the Appellant also as Petitioner in this judgment. The Respondents in both Original Petition and the Civil Miscellaneous Appeal are the same.

On 24th May 1960, the National Flag Perfumery Works, the first Respondent filed an application before the Assistant Registrar of Trade Marks, Madras, the second Respondent, for registration of a trade mark containing a device of Lord Ganesh and the legend Ganesh Durbar Bathi in respect of agarbathis in Part A of the Register. The first Respondent had filed applications even on 8th January 1954 and 7th January 1957, as evidenced by pages 395 and 400 of the Trade Marks Journal, 1954, but ''withdrew the same on 23rd May 1960 as the Registrar raised the objection that there should be only one application, as both the labels submitted by the first Respondent for registration were intended to be used as one mark. The consolidated application, which has given rise to the present proceedings, was filed on 24th May 1960.

One Sri Nath Kundan Lal and Brothers of Amritsar had registered the word Ganesh in respect of Dhoop (incense) and Agarbathis. The first Respondent invoked Section 12(3) of the Trade and Merchandise Marks Act (which hereinafter will be referred to as the Act) and filed evidence to prove honest and concurrent user. Messrs. Kundan Lal and Brothers who had filed notice of opposition, did not press their opposition on the first Respondent agreeing to exclude Punjab, Jammu and Kashmir, Rajasthan, and the Union territories of Delhi and Himachal Pradesh from the rights conferred by registration and the second Respondent passed orders in accordance with that agreement and dismissed that opposition.

The Petitioner and one T.L. Padmanabha Gupta also gave notices of opposition, but the said notices were dismissed after contest and both of them have preferred Civil Miscellaneous Appeals to this Court u/s 109 of the Act against the order of the second Respondent overruling their objection and directing registration of the trade mark claimed by the first Respondent. The Petitioner has also filed Original Petition No. 202 of 1962, under Sections 56, 107 and 108 of the Act to rectify Part A of the Register of Trade Marks by expunging the Registration of the Trade Mark claimed by the first Respondent. Both parties filed affidavits and documents in Original Petition No. 202 of 1962. When the Original Petition finally came up for hearing on 27th September 1963, the Petitioner''s advocate represented that he had filed a Civil Miscellaneous Appeal. Sri V. Rajagopalachari, appearing for the first Respondent, stated that both the Original Petition and the Civil Miscellaneous Appeal may be heard together and referred to Original Petition No. 206 of 1960 on the file of this Court as a precedent for such a procedure having been adopted in a similar case. He stated that if the Petitioner took out an application for the Original Petition and the Civil Miscellaneous Appeal being heard together, he will not oppose it and thereupon the Petitioner filed Application No. 1851 of 1963 in the Original Petition for directing the transfer of Civil Miscellaneous Appeal to be heard along with Original Petition. But on perusing the judgment in Original Petition No. 64 of 1961,1 found it was heard along with Original Petition No. 206 of 1960 which was really an appeal against the order of the Assistant Registrar granting conditional registration of the Applicant ''s trade mark in that case. It is clear from the judgment in that case that at first a preliminary objection was taken with regard to the maintainability of Original Petition No. 206 of 1960 and it was urged that since it was an appeal against the order of the Assistant Registrar, the same should have been filed in this Court on the appellate side and that the petition on the Original Side of the High Court was not maintainable. In fact Sri C. Vasudevan who appeared in that case for the Petitioner conceded that so far as the decisions of this Court that have dealt with the matter are concerned, it has been held that an appeal against the order of the Assistant Registrar u/s 109(2) of the Act should be filed on the appellate side. But the advocate for the Respondent in that case did not, however, rest his case on the technical objection, and both the petitions were heard together and dismissed. Hence the procedure adopted in that case cannot be relied on as a precedent for trying the present Original Petition and the Civil Miscellaneous Appeal together. The parties, however, had no objection to my hearing both the Original Petition and the Civil Miscellaneous Appeal together as they relate to the same matter. But as I was sitting on the Original Side, I directed the papers to be placed before the Chief Justice for issuing the necessary directions to post the Civil Miscellaneous Appeal before me and it was ordered. Strictly speaking, the Civil Miscellaneous Appeal should be disposed of on the materials placed before the second Respondent. In the Original Petition the parties have not only adopted the evidence adduced before the second Respondent, but also filed additional affidavits and documents. It is true that the Original Petition and the Civil Miscellaneous Appeal can be heard together and disposed of independently on the analogy of case and counter in a criminal case. In proceedings before the High Court, provisions of the CPC are applicable. If really any piece of evidence received in the Original.

Petition is of such a vital character as to affect the decision of the case there could be no difficulty for the Court to admit such evidence in the Civil Miscellaneous Appeal not only to avoid conflict of decisions, but also to render justice between the parties. I have discussed this aspect of the case at some length as Sri V. Rajagopalachari appearing for the first Respondent in Original Petition No. 202 of 1962 contended at the commencement of the hearing that the Civil Miscellaneous Appeal should be disposed of first, which is contrary to the spirit of the consent order passed by me on Application No. 1851 of 1963. But he did not subsequently press this contention.

The first Respondent has taken a plea in paragraph 2 of his counter in the Original Petition that the petition for rectification of the Trade Mark is barred by the principle of res judicata for the reason that the opposition filed by the Petitioner against the application for registration on the same grounds had been dismissed. Sri V. Rajagopalachari referred to Section 31 of the Act where it is stated that in all legal proceedings relating to a trade mark registered under the Act, including applications u/s 56, the original registration of the trade mark shall be prima fade evidence of the validity thereof. At page 186 of Kerly on Trade Marks, eighth edition, it is stated that if the Applicant for rectification is a person who has opposed the registration of the trade mark, and the grounds on which he is claiming rectification are each as were taken in the opposition, and the opposition was disallowed by the Court, the matter might be held to the res judicata between the parties, and the application for rectification refused.

It is further stated in the same passage that the

Applicant for rectification probably does not represent the public as the Petitioner for revocation of a patent does.

But it is clear from the book that no direct decision has, however, been given on the point. Further, as the order of the Registrar is itself the subject-matter of the appeal, which is heard along with the Original Petition it cannot operate as res judicata in the Original Petition.

It is an undisputed fact that the first Respondent has adopted the trade mark containing, inter alia, a device of Lord Ganesh and the legend Ganesh in respect of his Agar Bathis in 1953 and continuously and extensively used and advertised the same. The sales of the first Respondent in respect of the said trade mark progressively increased from Rs. 3,000 in 1953 to Rs. 4,50,000 in 1960. The first Respondent has spent huge sums on advertisement. The order of the second Respondent shows that the above facts were not disputed by the present Petitioner and the Advocate for the present Petitioner gave up all grounds of objection except the one u/s 9 of the Act, namely, that as the marks containing the device of Lord Ganesh and/or the word Ganesh had been in common use in Agarbathi trade, the mark of the Respondents is barred registration u/s 9 of the Act. Though the learned Advocate for the Petitioner argued both the Original Petition and the Civil Miscellaneous Appeal on the footing that the only question for consideration is whether the use of the figure of Lord Ganesh and the word Ganesh in Agarbathi trade had become public juris, he also advanced an argument that the first Respondent had failed to prove that the trade mark claimed by him had become distinctive as representing his goods. It is true that the mark cannot be distinctive, if it had become public juris, but the further contention of the Petitioner is that it had not become distinctive as required in a passing of action. The first Respondent has filed affidavits of B.N. Govindiah Setty, B.V. Aswathiah and V. Obaidur Rahman containing averments to the effect that the trade mark Ganesh Durbar Bathi is associated in the minds of the public as the product of the first Respondent. It is true that these affidavits were not filed before the second Respondent. But even the affidavits filed by the first Respondent before the second Respondent taken along with the user and sale figures under the trade mark of the first Respondent referred to in the order of the second Respondent and admitted by the Petitioner clearly prove that the trade mark had become distinctive of the goods of the first Respondent.

The main question for consideration in both the Civil Miscellaneous Appeal and the Original Petition is whether the word Ganesh and the device of Lord Ganesh have become common or public juris in the Agarbathi trade.

The learned Advocate for the Petitioner argued that as Lord Ganesh is a Deity held in high veneration by the Hindus and the name Ganesh is practically a synonym for success and welfare, the word Ganesh and the device of Lord Ganesh cannot be allowed to be appropriated exclusively by a particular trader as his trade mark. The learned Advocate for the first Respondent has filed a list of marks in which the device of Lord Ganesh and the word Ganesh have been adopted by various companies and persons for a wide range of goods. Hence it is not possible to accept the contention of the learned Advocate for the Petitioner that the device of Lord Ganesh and the word Ganesh are inappropriate for registration as trade marks. But as pointed out at page 246 of Kerly on Trade Marks, eighth edition, a mark may be public juris in a particular branch of the trade only. Thus it is open to the Petitioner to prove that the word Ganesh and the device of Lord Ganesh have become public juris in Agarbathi trade.

The contention of the learned Advocate for the Petitioner is that the word Ganesh and the device of Lord Ganesh are common to the trade in Agarbathis. It is clear from page 117 of Kerly on Trade Marks, eighth edition, that marks common to the trade include marks which (i) are in common use in the trade with respect to the goods concerned, and (ii) are open to the trade to use. Whether a trade mark is common to the trade is a question of fact. But, as pointed out at page 119, if the Applicant ''s mark has by long use become his trade mark, he cannot be prevented from registering his mark by the recent user of another person, nor is he bound first to establish his right to restrain such user, that occasional use of the mark by other persons before the date of the application for registration will not make the mark common to the trade, that the owner of the trade mark does not necessarily lose it because someone infringes the mark and that if a mark is established in the market, use by persons without the owner''s knowledge'' does not prejudice his rights. It is true distinctiveness may be lost through the action of the proprietor, or by reason of successful piracy. But as pointed out at page 245 of Kerly on Trade Marks eighth edition extensive infringement by a single trader can hardly suffice to make a trade mark common. The test whether a mark has become public juris has been clearly stated in the following passage at 452 page of Kerly on Trade Marks eighth edition:

There, is no doubt, I think said Mellish L.J. in Ford v. Foster (1872) L.R. 7 Ch. 611, 628 that a word which was originally a trade mark, to the exclusive use of which a particular trader, or his successors in trade, may have been entitled, may subsequently become public juris, as in the case which has been cited of Hartley ''s Sauce (1871) 41 L.J. Ch. 354. I think the test mast be whether the use of it by other persons is still calculated to deceive the public, whether it may still have the effect of inducing the public to buy goods not made by the original owner of the trade mark as if they were his goods. If the mark has come'' to be so public and in such universal use that nobody can be deceived by it, and can be induced from the use of it to believe that he is buying the goods of the original trader, it appears to me, however hard to some extent it may appear on the trader, yet practically, as the right to a trade mark is simply a right to prevent the trader from being cheated by other persons goods being sold as his goods through the fraudulent use of his trade mark, the right to the trade mark must be gone.

It is pointed out at page 246 of the same book that where common use is alleged of a trade mark that has been long used and registered, the use by other persons should be substantial. Thus where it was alleged that a cat and barrel were common to the trade in gin at the date of the Plaintiff�s registration in 1879, it was held in Board and Son. v. Thom and Cameron Ltd. (1907) 24 R.P.C. 697. Familiarly known as cat and barrel case (1907) 24 R.P.C. 697 that it would not be sufficient to have proved only a very sporadic use of the labels with a cat and barrel on them.

Bearing these principles in mind, I shall proceed to consider whether the affidavits and documents produced by the Petitioner are sufficient to prove the case of common user of the word and device of Ganesh in Agarbathi trade. It is not disputed that the relevant date for the determination of the question is the date of the application, namely, 24th May 1960. The Petitioner claims that he has been manufacturing Agarbathis under the trade mark Amar Ganesh Durbar Bathi from 1957 and supplying his goods in various places of South India and that there are more than forty manufacturers of Agarbathi in Mysore State, who are using devices of Lord Ganesh and/or the name Ganesh with some prefix or other as their trade mark. He has given the names and addresses of the dealers and exhibited the marks used by them. The first Respondent has filed Original Suit No. 4 of 1961, on the file of the District Court, Bangalore, against the Petitioner for passing of his goods as his goods. The Petitioner filed affidavits in that suit and he has produced certified copies of some of the affidavits before the second Respondent in support of his opposition. He has filed further affidavits both before the second Respondent and also in this Court.

T.L. Padmanabha Gupta is the only person who is alleged to have used the trade mark, Gupta Ganesh Durbar Bathi from a period anterior to 1953 when the first Respondent started using the trade mark in question. A copy of the affidavit of Padmanabha Gupta filed in Original Suit No. 4 of 1961 on the file of the District Court, Bangalore, was marked as exhibit P-1 before the second Respondent to show that he was using the Ganesh Mark from 1950. But as rightly pointed out by the second Respondent in his order there is no documentary evidence to corroborate the claim of Padmanabha Gupta that he started using the mark from 1950. An issue of the Kannada illustrated weekly Prajamata, dated 19th December 1954 was produced to show that Gupta Ganesh Durbar Bathi was advertised in it. It should be noted that this advertisement has been made after the first Respondent filed Original Suit No. 909 of 1954 on the file of the District Munsif, Bangalore, against one Ratniah Setty for infringement of his trade mark Ganesh Durbar Bathi. In fact the present first Respondent obtained a temporary injunction order in his favour two days after this advertisement. It is significant to note that none of the figures of the three varieties of Bathis advertised by Padmanabha Gupta relate to Gupta''s Ganesh Durbar Bathi. But curiously enough there is an invitation to the public in the advertisement to use always the five year famous Gupta''s Ganesh Durbar Bathis. The qualifying words five years in the advertisement have evidently been made to support the case of Padmanabha Gupta that he started manufacturing the Agarbathis under the trade mark from 1950.

Padmanabha Gupta claimed that he had an annual turnover of rupees, two and half lakhs in his Agarbathi trade. But it was conceded by the Advocate for the Petitioner in the enquiry before the second Respondent that the figures of sale given by Padmanabha Gupta relate to Agarbathis sold under many trade marks and hence it is not possible to determine the sales-under the Ganesh mark. No attempt was made by the Petitioner to cause the account books of T.L. Padmanabha Gupta to be produced to show that he started using the Ganesh mark from 1950 and prove the extent of his sales. In fact the order of the second Respondent shows that he gave an opportunity to the Petitioner''s Advocate to examine the several persons who gave affidavit, and to produce their account books in order to have satisfactory evidence about the alleged use of the word and the device of Lord Ganesh by the several persons in their trade marks. u/s 99 of the Act in any proceeding under the Act before the Registrar, evidence shall be given by affidavit provided that the Registrar may, if he thinks fit, take oral evidence in lieu of, or in addition to, such evidence by affidavit. But the Advocate for the Petitioner herein did not avail himself of the opportunity given to him by the second Respondent and stated that while it would not be difficult for his client to produce the persons who gave affidavits for viva voce examination, better evidence than what had been already given by them would not be forthcoming, as the account books maintained by these people would not show separately sales under the Ganesh mark. It is impossible to place any reliance on the affidavits of T.L. Padmanabha Gupta and others who did not avail themselves of the opportunity to examine themselves and produce the account books to substantiate their statements.

The learned Assistant Registrar of Trade Marks has considered the evidence adduced by both parties in the shape of affidavits and documents and given his findings. In addition to the affidavits and documents filed before the Assistant Registrar of Trade Marks, both the Petitioner and the first Respondent have filed further affidavits and documents in the Original Petition filed in this Court. The first Respondent has filed a counter-affidavit of the managing partner K.S. Krishniah Setty in which he has referred to everyone of the affidavits filed by the Petitioner and pointed out how they are not reliable or do not affect his case. The learned Advocate for the Petitioner commented on the affidavits filed on behalf of the first Respondent as stereotyped. But the remark will apply with equal, if not greater force to the affidavits filed on behalf of the Petitioner. In re Christiansen''s Trade Mark 3 R.P.C. 54, 60, 61 the learned Master of the Rolls has given the right approach to appreciate the evidence disclosed by affidavits. He has pointed out that if a man were to come and tell him that a horse was like a cat, or even swear to it and get fifty persons to swear to it he would not act on such evidence because it is pure nonsense. He further pointed out if people come and tell him that all the natives of India are of the same class of intelligence, and some people think they are all exceedingly sharp and some think they are all exceedingly stupid, he has aright to bring his own knowledge of the word into play; and he has a right to bring to bear that knowledge which all educated people have who have read about India or who have known the history of India and to say that such evidence is simply absurd. He has pointed out that when evidence is given upon affidavit and a dozen people or twenty people swear exactly to the same stereotyped affidavits and he is called upon to act upon their evidence, it immediately makes him suspect that the affidavits are not their own views of things and that they have adopted the view of somebody who has drawn the whole lot of affidavits. In spite of all the infirmities of affidavit evidence, one has to go through them and find out the real truth. It should, however, be noted that the Assistant Registrar of Trade Marks considered that a viva voce examination of the seven persons who gave affidavits to the Petitioner herein and inspection of their account books might help him to decide the question under consideration and asked the Petitioner herein whether he could produce such persons with their account, books for their business. The conduct of the Petitioner herein in not availing himself of the opportunity to examine the persons who gave affidavits in support of his case and produce their account books is a strong circumstance against, him which cannot be lost sight of.

One K.S. Madar Sahib has given his affidavit before the Assistant Registrar of Trade Marks and produced post cards and letters received by him for supply of Siva Ganesh Durbar Bathi from the year 1955. There is only one post card of the year 1955, four post cards and one letter of the year 1956 and 15 post cords and letters for the subsequent years 1057 to 1962. The persons who placed orders have not filed affidavits. There is nothing to show that Madar Sahib executed these orders. The few post cards and letters produced by Madar Sahib really support the contention of the first Respondent that the business of Madar Sahib under Siva Ganesh Durbar Bathi mark must be negligible. The learned Advocate for the Petitioner referred to the fact that the, first Respondent also has filed only 42 post cards in 1954, 21 postcards in 1955, 37 post cords in 1956 and 141 post cards and letters in the subsequent years 1957 to 1960 and contended that just as they are said to be few of the several orders received by the first Respondent, the documents produced by Madar Sahib and others ore only samples of the several orders received by them. But the fallacy of the contention lies in the fact that the user and sale figures of the first Respondent under the trade mark Ganesh Durbar Bathi with the device of hard, Ganesh were not disputed by the Petitioner, whereas there are no sale figures of the various rival traders trading under similar trade marks who have given affidavits to the Petitioner. If really Madar Sahib had acquired a reputation for his Siva Ganesh Durbar Bathi, he would have resisted the application for registration by the first Respondent and at least claimed honest concurrent use of the trade mark.

One K.V. Ramalingiah Setty claims to have manufactured and sold Agarbathis under the trade mark Siva Ganesh Durbar Bathi from 1955 and Lakshmi Ganesh Durbar Bathi from 1961. He has filed on affidavit only in the Original Petition. He has not produced any documents to prove the use of the trade mark Siva Ganesh Durbar Bathis during the years 1956 to 1957. He has produced three orders for the year 1958 of which one alone is a post card. He has not produced any order of the year 1959. He has produced ten orders in 1960 of which only one is prior to the application. The remarks made by me against Madar Sahib apply with equal, if not greater, force against Ramalingiah Setty.

One B. Ratniah Setty filed an affidavit before the Assistant Registrar of Trade Marks claiming that he was manufacturing and selling Uma Ganesh Durbar Bathi from 1956. But he has produced only six post cards of the year 1957 and one post cord of the year 1958 to show that orders were placed with him for supply of Uma Ganesh Durbar Bathi. There is much force in the contention of the first Respondent that the said Ratniah Setty is doing business under trading style of Coronation Perfumery Works and not as Uma Ganesh Durbar Bathi and that if he is doing so he must be doing it recently and surreptitiously without his knowledge.

The remarks made by me about K.S. Madar Sahib Ramalingiah v. Ratniah Satty would apply with equal force to B.N. Jayaramiah S.V. Parasuramiah, D.L. Krishniah Setty, Narayna Rao, C.R. Venugopal and Narasimhalu Setty, who have also produced few orders each in support of their affidavits. Further, several of the orders are subsequent to the application for registration of the trade mark by the first Respondent and they are of no value.

So far as S.V. Parasuramiah is concerned, he is none other than the brother of S.V. Anantiah Setty, the managing partner of the Petitioner''s firm. When the first Respondent came to know in 1958 that Parasuramiah was selling Agarbathis under the mark Om Ganesh Durbar Bathi, he contacted him and wanted him to stop manufacturing Agarbathis under that mark and threatened to take action if he failed, to do so. Thereupon, Parasuramiah handed over all the blocks relating to the said mark and by his letter, dated 30th June 1958 undertook not to use the mark Om Ganesh Durbar Bathi. He appears also to have used the words Bala Ganesh Durbar Bathi in his trade mark. But when the first Respondent protested about it, he gave a qualified undertaking on the same day, 30th June 1958, that as many traders are carrying on business in various and different names inclusive of the words Ganesh Durbar he would stop using the words Bala Ganesh Durbar for his goods if anyone of the said traders of equal standard stopped using his trade name containing the words Ganesh Durbar. He has produced only one letter and six postcards received by him for the supply of Bala Ganesh Agarbathis during the period of five years from 1957 to 1962. The first Respondent has stated in his affidavit that after giving the qualified undertaking S.V. Parasuramiah has wisely abandoned the use of the mark.

The Petitioner has produced an affidavit given by C.R. Venugopal to show that he is manufacturing Pooja Ganesh Durbar Bathis since 1959. He has also produced eight order forms signed by customers for supply of Pooja Ganesh Durbar Bathis. Only two of the orders are prior to the date of the application of the first Respondent for registration of his trade mark. C.R. Venugopal has given an undertaking to the first Respondent on 13th January 1959 stating that he will desist using the mark Pavitra Ganesh and he has evidently started using the mark Pooja Ganesh Durbar on his agarbathis surreptitiously and without the knowledge of the first Respondent, contrary to the spirit of the undertaking given by him.

The affidavit of B.V. Aswatiah is one of the seven affidavits filed by the Petitioner before the Assistant Registrar of Trade Marks in support of his case. Aswatiah has stated in his affidavit that he has sales of agarbathis under several marks, including the mark of B.V.A. Asati Ganesh Durbat Bathi. There is nothing to support the claim of the learned Advocate for the Petitioner that B.V. Aswatiah is using the mark from 1956. Even in 1951 the first Respondent issued a notice to him for imitating his mark Pushpaleela by adopting the mark Pushpa Lelo and he gave an apology and undertook not to use the expression Pushpa Lelo in future. Thus it is not possible to attach any value to the affidavit of Aswatiah, who has admittedly infringed a mark of the first Respondent.

The Petitioner has produced affidavits of two printers, Nanjundiah and Jayaraj to show that they used to print cartoons for the manufacturers of various Agarbathis and that the word Ganesh and the device of Lord Ganesh are the essential features of such trade marks. Jayaraj has mentioned in his affidavit that even the first Respondent, the National Flag Perfumery Works was his customer for a long time. The Assistant Registrar of Trade Marks has considered these affidavits and has rightly pointed out that the mere fact that certain traders had their Ganesh mark cartoons will not prove the actual user, and much less extensive user.

The Petitioner has also filed several affidavits of Users of Agarbathis at Chintamani, Kolar and other places, traveling agents, merchants and stockiest to show that the name of Ganesh and the device of Lord Ganesh are common in the trade. But, as already pointed out it is easy to procure such affidavits and much reliance cannot be placed on them.

Thus the affidavits filed in this case on behalf of the Petitioner do not show that on 24th May 1960, the date of the application for registration by the first Respondent, the name Ganesh and the device of Lord Ganesh were in common use in Agarbathi trade. The Petitioner has not attempted to prove the sale figures of himself and the several rival traders in respect of the manufacture and sale of Agarbathis with trade marks containing the word Ganesh with one or other of the prefixes or suffixes and the device of Lord Ganesh. There is no proof in this case that the several manufacturers of Agarbathi including the Petitioner acquired a reputation for their goods under the trade mark claimed by them containing the word Ganesh and the device of Lord Ganesh. If really any of the traders, who have given affidavits to the Petitioner had acquired any such reputation for his goods under the trade mark containing the word Ganesh and the device of Lord Ganesh, he would have resisted the application of the first Respondent for registration of the mark in question or at least claimed registration of his own trade mark on the basis that he was a honest concurrent user of the trade mark. There could be no doubt in this case that the Petitioner opposed the registration of the trade mark of the first Respondent, as the first Respondent had filed a suit against him in Original Suit No. 4 of 1961, on the file of the District Court, Bangalore, for passing of his goods as his goods. It should be noted that the Petitioner has not taken the defence of honest concurrent user. In the well known cat and barrel case 24 R.P.C. 897. referred to by me it was held that where in an action of infringement of trade mark the defence of common user is taken, it is necessary to crave that the mark of the complainer in the action of infringement be removed from the Register; that where the defence of concurrent user by the Respondent is taken it is necessary to crave that the mark of the Respondent in the action of infringement be put on the Register; that the Respondent had not properly raised the defence of concurrent user in that case. In this case also the Petitioner herein has not properly raised the defence of concurrent user and the only defence taken by him is the defence of common user. I have already referred to the relevant passages in Kerly on Trade Marks, eighth edition, and pointed out the test to be applied to find out whether the mark has become public juris. The evidence in this case is not at all sufficient to prove that the Ganesh mark was in common use on the date of the application for registration by the first Respondent.

The first Respondent has also been taking action against persons who infringed their trade mark. It could not, therefore, be said that he has abandoned the trade mark in question. I have already referred to the action taken by the first Respondent against the Petitioner''s brother S.V. Parasuramiah and C.R. Venugopal. The first Respondent also filed documents to show that he took steps against Abdul Kadar, Abdul Wahab and N.K. Attar and Sons and got undertakings from them. He has also filed suits against Bharat Trading Company and others and S. Ratniah Setty to restrain them from passing off agarbathis manufactured by them as his agarbathis and obtained compromise decrees in his favour.

The learned Advocate for the Petitioner contended that the first Respondent has stated in his affidavit that he has not come across any goods like their agarbathis with any mark containing the device of Lord Ganesh, or the word Ganesh and argued that the averment is incorrect and that the application for registration of a person who has come forward with such incorrect averments ought not to be allowed in the interest of purity of the register. There is no substance in this contention. In the same affidavit the first Respondent has stated that he has been guarding the trade mark adopted by him by taking passing of actions against persons who tried to imitate his mark. Evidently, the Petitioner has put forward this plea in view of the plea taken by the first Respondent before the Assistant Registrar of Trade Marks that as the Petitioner has not come with clean hands, the opposition should be dismissed in the exercise of discretion vested in the Registrar under the Act.

The findings of the Assistant Registrar of Trade Marks that the device of Lord Ganesh and the word Ganesh are not common in the agarbathi trade on the crucial date and that the mark was distinctive of the goods of the first Respondent herein on the said date are correct. The learned Assistant Registrar of Trade Marks has fully dealt with the facts and law of the case in a commendable manner.

For the foregoing reasons, both the Original Petition, and the Civil Miscellaneous Appeal are liable to be dismissed and they are hereby dismissed with costs.