Application of plaintiff also pending for registration

Now, we would come to the issues of registrablity of, and proprietorship in, the trademark in combination. The respondent No. 2 has held that the word SCOTCH is a dictionary word and as such anybody can adopt the same as trademark. When it is a dictionary word and not inherently distinctive, use of the word as trademark only can acquire distinctive character which lacks in the present case. When there is identical/similar mark already registered in the name of appellant, registration of similar or identical mark in favor of respondent No.1 cannot be granted. The onus to prove the registrablity of mark is on the person who applies for registration. The plea of respondent No. 1 that the Registrar heard the respondent No. 1 before ordering for advertisement before registration is no ground for proving the registration of mark when the opponent is opposing the registration. In an opposition it is more important to consider the matter from the point of view of the Public than from the point of view of the two parties to the proceedings and therefore the merits and demerits of the opponent are irrelevant. The respondent No. 2 ought to have satisfied himself that the mark applied for is registrable especially when the SCOTCH was a registered trademark of the appellant and acquired reputation/ well-known status. As per section 18 of the Act any person claiming to be the proprietor of a trademark used or proposed to be used by him and desirous of registering it may apply in writing to the Registrar.

The implication of the provision is that the prior use is not necessary but intention to use the mark should be there. In Kerly’s law of Trademarks and Trade Names 9^th edition page 27 it has been stated in paragraph 48 that though at common law no protection could be secured for a mark which had not been used, the statues dealing with registration of trademarks always encourage registration by saying that actual use is not necessary for registration as the traders are generally anxious before adopting and using a mark as a trademark to ascertain whether it is registrable that the mark applied for may be one which is already in use or may be one which is proposed to be used by the applicants that if the applicants do not use the mark, they must have at that time of the registration some definite and present intention to deal in certain goods or description of goods and not a mere general intention of expanding their business at some future time to anything which he may think desirable, and that the intention must be to use the mark as a trademark by the applicants themselves in respect of the goods for which the registration is sought. Dr. S. Venkateswaran, in his treatise on the law and practice under the Trademarks Act at page 311 says that in determining whether an applicant for registration of a trademark had intended to use the mark in relation to the relevant goods as to justify trademark registration, regard must be had to the difficulties and uncertainties of the time and a bonafide intention, on the part of the applicant to use the mark as soon as conditions allow may be sufficient to support the application. In Mohan Goldwater Breweries (Private) Limited’s case (supra), the Madras High Court observed It is true, the burden of proving that the trademark in respect of which registration is sought is entitled to go on the register is on the applicant and if there be any doubt in the matter the application will have to be refused.

It is also well established that it is incumbent on the applicant to establish that he is the proprietor of the mark before his mark could be registered. In this case the applicants are persons who have proposed to use the expression “Silver King” as a trademark and sought for registration of the same. On the date of the application for registration of that mark no one had designed and proposed to use the same. Of course they have not chosen to use the trademark either before or after the application for registration was filed. But as already stated, user is not necessary for filing an application having regard to the language of Section 18. If a bonafide intention to use the trademark immediately in connection with the goods manufactured is established, that will enable the applicant to maintain an application for registration under Section 18. I am not prepared to accept the contention of the appellants that non-preparation and non-user of the mark from the date of the application till the application came up for hearing will show that the applicants have really no intention to use the trademark. The applicants had sufficient interest in the mark so as to enable them to file an application under Section 18 as on 10th November, 1969, when no one had used or proposed to use the trademark in question. In the present case the application was filed on 14.9.1988. The application was converted to application for Part B registration. After filing application there is no proof to show the intent of use by the respondent No. 1. In Century Traders case (supra) it was held that for the purpose of claiming such proprietorship of a mark it is not necessary that the mark should have been used for considerable length of time. As a matter of fact, a single actual use with intent to continue such use consistently confers a right to such mark as a trademark. It is sufficient if the article with the mark upon it has actually become a vendible article in the market with intent on the part of the proprietor to continue its production and sales. It is not necessary that the goods should have acquired a reputation for quality under that mark. Actual use of the mark under such circumstances as showing an intention to adopt and use it as a trademark is the test rather than the extent or duration of the use.

A mere casual intermittent or experimental use may be insufficient to show the intention to adopt the mark as a trademark for specific article or goods,. There is no claim of the respondent No. 1 that they have been preparing or taking steps to manufacture and trade in electrical wires, electrical cables. It is neither the case of respondent No. 1 that the mark applied for was inherently distinct of its goods nor it has proved the distinctiveness thereof before the respondent No. 2. There is no explanation as to how the respondent No. 1 had hit upon the dictionary word as trademark out of thousands of dictionary words and it is not the claim of the respondent No. 1 that it had no knowledge that a similar mark is already on the register and is in use. As per first invoice dated 29.2.1998, the respondent No.1 was manufacturing/trading in PVC wires, therefore, it is not possible to infer that it would have been taking steps to start using of trademark SCOTCH on electrical wire and electrical cables but such steps even if taken would not take more than a decades time to accomplish. We are of the considered view that the respondent No. 1 had no bonafide intention to use the mark applied for and therefore no proprietary right of respondent No. 1 lies in the trademark SCOTCH. The counsel for respondent No. 1 had submitted before the respondent No. 2 that the law laid down by the Supreme Court in M/s. Amritdhara Pharmacy versus Satyadeo, is that the immediate qualification for becoming the proprietor of the trademark is the distinctiveness and reputation of the mark and this can never be avoided. The respondent No. 1 has not fulfilled this immediate qualification of becoming the proprietor of trademark SCOTCH. In the case of Md. Oomer’s case (supra) it was held that there is no absolute right in any one to obtain the registration of a trademark, even though his application may not fall within the prohibition of section 8 or section 10 of the Trademarks Act, 1940, there is no right in the applicant to get the trademark registered.  Having regard to above, we are unable to agree with the findings in regard to objection of sections 9 and 18 of the Act. In view of the above, we find that the order dated 14.8.2002 passed by the Assistant Registrar of Trademarks is not sustainable. Accordingly, we allow the appeal and set aside the said order of Assistant Registrar of Trademarks. There shall be no order as to costs.